Light on analysis, heavy on conclusion, no claim construction, CAFC rules claims ineligible

federal-circuit-cafc-007On November 16, 2016, the United States Court of Appeals for the Federal Circuit issued a non-precedential opinion in Tranxition, Inc. v. Lenovo (United States) Inc. Normally when we write about a non-precedential opinion it is because there is something interesting about the case, sometimes a procedural twist worth knowing about despite the non-precedential label. Sometimes it is because it is difficult to understand why a decision on an issue that seems relatively important was made non-precedential. In this case, this non-precedential decision is really a whole lot of nothing. Nothing to see here, just another case where the Federal Circuit invalidated patent claims without doing a proper, thorough and complete claim interpretation to figure out what the claims actually cover.

The decision in Tranxition won’t be at all useful for anyone on any level to review. Other than learning that Chief Judge Prost and Judges Reyna and Chen concluded, without any thoughtful analysis, that the claims are patent ineligible we learned absolutely nothing else. There are no twists or turns. Frankly, there is almost no analysis, and what is present is hopelessly disingenuous. All we know is that a patent owner appealed a decision after having had patent claims declared invalid as being patent ineligible and for the life of me I couldn’t begin to explain why that happened. I can only imagine how the patent owner and the attorneys representing the patent owner must feel. In a word, cheated.

The patents in question were U.S. Patent No. 6,728,877 and U.S. Patent No. 7,346,766, which the United States District Court for the District of Oregon said contained patent ineligible claims. The patents both concern computer system upgrades. Typically, a person’s computer system contains many individualized settings, such as email addresses, desktop settings, and stored passwords. When a computer is replaced, those settings do not appear on the new computer by default, which requires the purchaser of the new computer to manually “migrate” the settings from their old computer to the new computer. The patents in question offer a solution by automatically transitioning these settings between computers, which the patent explains provides an advantage over the prior art because it obviates the need for the time consuming manual migration process.

The claims clearly were directed to a process, and therefore patent eligible according to the statute – 35 U.S.C. 101. But the statute is not the only question that must be answered. In their infinite wisdom the Supreme Court has said the statutory test identified by Congress needs more, which is why they created judicially created exceptions to patent eligibility. So even if the claims are patent eligible according to the Patent Act they must pass muster under the judicially created and not legislatively enacted Alice/Mayo framework.

The first inquiry (Step 2A as it is known) asks whether the claim is directed to a law of nature, a natural phenomenon, or an abstract idea (i.e., a judicial exception). If the claim is directed to a judicial exception, in order to be patent-eligible a claim directed to a judicial exception must include additional features to ensure that the claim describes a process or product that applies the exception in a meaningful way, such that it is more than a drafting effort designed to monopolize the exception. Thus, the next inquiry (Step 2B as it is known) asks whether “significantly more” has been added to the claims or whether the claims merely seek to protect a judicial exception. This is frequently referred to as a search for an ‘‘inventive concept.’’

With respect to Step 2A, the Federal Circuit said that the claim was directed to an abstract idea because manual migration is an abstract idea. Of course, the claims did not cover manual migration. Unfortunately, how or why the Federal Circuit thought it relevant that manual migration is an abstract idea is not explained. It is simply stated in a matter of fact way that manual migration is an abstract idea so, therefore, Tranxition’s arguments to the contrary are “unconvincing.” Why? Apparently the answer is because.

To be fair, the Federal Circuit did try and explain, saying:

There is nothing in the claim to suggest that, once settings have been transitioned, the target computer will be any more efficient. Cf. Enfish, 822 F.3d at 1338. The claim merely “transitions” data from one computer to another and thus automate the migration process. Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 258 F.3d 1344, 1351 (Fed. Cir. 2014). Therefore, the claim is directed to the abstract idea of migration, or transitioning, of settings.

That reasoning is absurd on its face. Apparently a better process is an abstract idea. I wonder if that ruling will be applied outside the software space to real world methods that do nothing other than improve a process. Something tells me this type of “it only improves a process” rationale will be limited to the software field, or perhaps even just to non-precedential cases within the software field.

More specifically, of course a method of transferring data to a computer wouldn’t improve the targeted computer, so pointing that out is horribly disingenuous to say the least. Clearly the process of transferring data from one computer to another is not an abstract idea if the data from the old computer actually winds up on the new computer. Something that happens is not abstract! But the Federal Circuit hasn’t seen fit to define what is and what is not an abstract idea, so we live in this Twilight Zone fictitious world where things that actually happen are nothing more than some abstract idea in the same way an H.G. Well time machine is an idea or a perpetual motion machine is an idea.

With respect to Step 2B, what the Federal Circuit wrote is nearly incomprehensible. Chief Judge Prost wrote:

Tranxition argues that the claims contain an inventive concept because a manual process would not necessarily capture all the configuration settings in a computer and that there is no record evidence showing that the automated transition process operates in the same way as a manual process. These arguments miss the mark. Though a computer could potentially have dozens, if not hundreds of settings across numerous applications, the claim language only requires one or more configuration settings. It does not provide a maximum number of settings. Further, it is not relevant that a human may perform a task differently from a computer. It is necessarily true that a human might apply an abstract idea in a different manner from a computer. What matters is the application. “Stating an abstract idea while adding the words ‘apply it with a computer’” will not render an abstract idea non-abstract. See id. at 2359. There must be more.

The Tranxition argument misses the mark? Fine, explain why. Why is it relevant that the claim does not provide a maximum number of settings? If a human would perform the task differently from a computer, which seems to be admitted by the Court, doesn’t that call into question that the claim covers an abstract idea because the way humans would do it manually is an abstract idea? And if humans would do it differently doesn’t that have to mean that the computerized process would be unconventional within the meaning of Mayo? Seriously, it seems that this paragraph, and likely the entire decision, was written by an intern who was trying to string together buzz words. Sadly, that is likely exactly what happened, why this decision is incomprehensible, and why it is considered non-precedential.

Chief Judge Prost then writes:

Here, the claim instructs a practitioner to (1) provide configuration information, (2) generate an extraction plan, (3) extract the configuration settings, (4) generate a transition plan, and (5) transition those settings to a new computer. These steps, both individually, and as an ordered combination, do not disclose an inventive concept. They merely describe a generic computer implementation, using “routine, conventional activities,” of the abstract idea, “which is insufficient to transform the patent-ineligible abstract idea into patent-eligible subject matter.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014).

So the claims do not disclose an inventive concept. I wonder whether the specification discloses an inventive concept? I wonder if the Federal Circuit even looked? I know the answer because I actually read through the specification. Sadly, despite all the cases of recent vintage that talk incessantly about the importance of what is described in the specification, when determining patent eligibility the specification is completely irrelevant. How is that possible? Well, it shouldn’t be.

In order to actually understand what the claims mean a proper claim construction requires that the entirety of the application be considered, as well as all of the prosecution history. In this case, if you actually read the specifications of the patents in question you will be left with the clear and unambiguous understanding that there is an inventive concept present. The application describes the transition architecture in great detail, for example. But the Federal Circuit didn’t do a claim construction of any kind, let along an adequate claim construction. Instead, what they did was impermissibly limit the scope of their invalidity review to a disassociated facial review of the claims without any consideration as to what the terms used in the claims mean, how they are defined in the application, how they were understood by the examiner during prosecution, or how they may have been limited by argument. In other words, the Federal Circuit didn’t do their jobs!

How patent claims can be invalidated without a proper and thorough claim construction is baffling. It flies in the face of everything patent law stands for and does nothing but encourage patent examiners, PTAB judges and district courts to do a facial check based on a gut feeling, nothing more. On its face do I think without any thoughtful consideration of the invention that these claims are patent eligible? That type of subjective, half-baked analysis is antithetical to the patent process and the Federal Circuit should be ashamed for engaging in such a review. The only way to competently determine what a claim is directed to and whether the claim adds significantly more, whatever that means, is to do a proper, thorough and competent claim construction, period.

Seriously, if the Court is going to publish a decision like this that is heavy on conclusions, non-existent on analysis, and almost certainly drafted by an intern or Staff Attorney, then why even make it a non-precedential opinion? Why not just make it a Rule 36 summary affirmance? At least that way there won’t be any evidence of the half-hearted attempt and the stringing together of buzz words that make no sense and raise more questions than they provide answers.

To be polite, this decision is not the best work of the Federal Circuit. To be blunt, even if this is the correct decision from a legal perspective the decision is an embarrassment. Tranxition deserves better, and so does the public.



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78 comments so far.

  • [Avatar for step back]
    step back
    December 6, 2016 07:57 pm

    VC @77
    You seem very angry and in rant mode.
    Please take a few deep breaths, step back and try to say what you intend in a more coherent and concise way. Right now it does not make sense. Tires? Firestone? What the …?

  • [Avatar for Very Confused]
    Very Confused
    December 6, 2016 05:27 pm

    @#69 Sorry Charlie

    Thanks for not providing any sort of answer besides saying Strawman!!
    You answered none of my questions and called me confused. If you actually practice law, I see why so many Patents are being ruled ineligible. Because your only defence seems to be insulting people. Maybe I’ll show you MY Work one day and you can realize how many people like yourself have been beaten by me since you seem unable to formulate a single simple argument or point. You think it is an invention because someone said it was and wrote a spec. Well maybe it is, too bad they didn’t claim it as one.

    If you want to show me up, then show me how the inventors could not sue EVERYONE and ANYONE they forcebly transmitted the information to. Oh, that is right, you can’t.

    BTW if you understood any form of writing or grammar, you would have noticed that I didn’t say the “tires” I mentioned WERE NOT PATENTABLE, YOU ASSUMED I DID.

    “Comparing this invention with car tires is about the best strawman fallacy I have heard. One of the chief criticisms of Alice is that it enables strawman 101 decisions, where the meets and bounds of the claims and the blueprints in the spec can be completely ignored. Why, because I can just conjure up my local Firestone store and imagine them moving tires around. LOL

    The point is that they apparently built the first any-to-any data-driven personality transitioning thingie. I don’t know about you, but I’m sure my average circuit judge or firestone worker or would not be able to do it with “Pen and Paper”, or by just moving tires and using pneumatic drills. ”

    I said “It even seems to say in the abstract that to improve it, it has to actually be sent to the target system and applied. So wouldn’t it be like claiming a new method to put old tires on a new car more efficiently and after taking off the tires and modifying the rims to fit the new car, you never put them on the new car, pretty much making the modified tires pretty useless. So not only do you make it useless, but if the new car having the old tires is the improvement it seems like the step of actually putting the tires on the car would have to be present at some point, otherwise you don’t actually have your improvement do you?”

    Which means, that if you don’t actually apply the new tires, you don’t have a new invention. But if you did, you would. THAT IS NOTHING LIKE WHAT YOU ASSUMED I SAID. PLEASE PLEASE PLEASE, either learn to read or if you somehow already know, actually read. For Jesus Christ.

  • [Avatar for step back]
    step back
    December 3, 2016 06:24 pm

    I am not aware of any patent web site directed to lay persons and their understanding of the US patent system.

    This here is definitely a deep geek site where we start spouting statutory section numbers and court case names right off the bat.

    Maybe someone else here knows of a fair and balanced such site that gives truthful information? Of course you can always jump to the virulently anti-inventor, anti-patent web sites that tell “innovation” wants to be free and inventors deserve nada, nothing. Some will even tell you that your AI design is nothing but math, ones and zeroes. Even a bunch of monkeys on two key typewriters can punch out endless streams of binary code.

    So clearly anyone can do it. Even the Vice President of the United States: 😉

    Take a look at U Toob watch?v=aaYk_nt4kVo

    Of course once you learn to “code” you can also manage a “Moonshot” to take down cancer once and for all

    U Toob watch?v=iNliLaXzjwA

  • [Avatar for Mike Archbold]
    Mike Archbold
    December 3, 2016 02:29 pm

    OK, Ok, OK,… I am going to drop the topic for a moment having declared my background and my opinion. I see your points, just don’t agree. Future comments I will try to temper a bit more given the history and nature of the board.

  • [Avatar for step back]
    step back
    December 3, 2016 01:46 pm

    So in your opinion, Supremes who don’t know even how to use email are nonetheless correct with their home grown theories about laws of nature, natural phenomenon, abstract ideas and fundamental building blocks of science and progress in the useful arts?

    All the practitioners here (Gene, EG, Anon, Night Writer, me) who deride the SCOTUS opinions are wrong? (Because they/we are not part of the SCOTeti?)

    Dred Scott was/is a great again opinion?

  • [Avatar for Mike Archbold]
    Mike Archbold
    December 3, 2016 01:01 pm

    Your argument fails not because I disrespect the legal profession (actually I have great respect for lawyers — I could not do it as I am not quick witted enough… I can come up with an argument but it takes me too long) but rather because I am simply agreeing with the Supreme Court and United States Court of Appeals for the Federal Circuit as in this article. The analogy to the doctor fails as well — for the analogy to work you’d have to present some findings of, eg., the Surgeon General that the Harvard doctor disputes. If I went to the Harvard doctor and he said “smoking does not lead to cancer, I am correct but the Surgeon General is incorrect.” Doubtless that looks like a silly analogy but you get my point.

  • [Avatar for step back]
    step back
    December 3, 2016 10:31 am

    BTW, I never told you how many years of edu. I have, in what fields, how many years of practice and in what aspects of patent law and technology.

    I was just giving you a general lay of the land map. So you get an idea about Gene Quinn and many of the other people participating here. So you get the idea that “subject matter eligibility” is specialized legal jargon that has a long history behind it stretching back from before Benson v. Gottchalk, and sweeping forward through Alice v. CLS, Mayo v. Prometheus and so on.

    Everyone else here has read those SCt. opinions. Have you?

    Check out this below posting for more info:

  • [Avatar for step back]
    step back
    December 3, 2016 10:21 am

    When I go to a doctor, Mike and see on the exam room wall that he went to Harvard Medical school for H years, did his internship at medical facility X, residency at Y and is a board certified specialist in specialties Q R S and T; I don’t say to myself:

    “Hey look at this blowhard. He thinks he is on a higher intellectual plane than me due to his H+I+J+K years of med school and post grad educations etc etc. I’m not going to respect anything he has to say and already I know I understand better than him about things medical, His diagnostic tests are no more than laws of nature and their results are merely abstract. “Abstract” is one of those I know it when I see it things. Believe ME. His stuff is abstract. End of discussion.”

    No. I realize this person went through many many years of education and practice in his field to get to where he (or she) is today. I have none of that. So I’m not going to tell him he is doing it all wrong.

    When it comes to the Alice/Mayo test, you are telling us (those having many years of edu + practice) that you know what an “idea” is. You know the many categories of “idea” including the “abstract” kind and the many other kinds. You know how to look at a patent and instantly know if it is “directed to” that abstract idea realm. You know how to determine if there is “something significantly more”.

    Well then, holy bullocks mate, you are on that higher plane. You belong on the Supreme Court so that you can lecture to us sub-par IQ’s about the fundamental building blocks of science and human ingenuity and all that other good stuff.

    Move over Clarence. You’ve got company.

  • [Avatar for Mike Archbold]
    Mike Archbold
    December 2, 2016 09:24 pm

    #68, step back, most of your arguments take the form of “I am on a higher intellectual plane than you due to my 3 years of law school or 4 years of night school, my CS degree, etc etc.” But that alone doesn’t work. I understand you have an argument, but I think my point that started this still holds: that the Alice decision was sound, that I see what “abstract idea” means, and that the conversion program here is an abstract idea.

    As far as the problem of protecting AI intellectual property, that is why I am reading and participating here.

  • [Avatar for Sorry Charlie]
    Sorry Charlie
    December 2, 2016 06:06 pm

    Mike Archibald,

    A conversion is a one off case where you look at the data structures on one side and then figure out how to map them to another data structure. These are straight-forward processes of a one-to-one data remapping.

    Having actually read the spec, The Tranxition patents are not that kind of conversion at all. And clearly, what you and “Very Confused” are doing is playing pro football in your minds on Tuesday morning,a generation after the game.

    The Tranxition patents describe something like an “any-to-any” system setting transitioning system that used a personality data-structure to capture heterogeneous personality and transition it, not knowing in advance what the OS is nor what the versions of the apps are.

    Back in 1998, I don’t remember anyone doing anything like this. Would it in practice mean one single process for IT and end users regardless of the versioning details of the individual applications and OS? If so, even now, that’s cool.

    @ Very Confused. Yes, you are. Comparing this invention with car tires is about the best strawman fallacy I have heard. One of the chief criticisms of Alice is that it enables strawman 101 decisions, where the meets and bounds of the claims and the blueprints in the spec can be completely ignored. Why, because I can just conjure up my local Firestone store and imagine them moving tires around. LOL

    The point is that they apparently built the first any-to-any data-driven personality transitioning thingie. I don’t know about you, but I’m sure my average circuit judge or firestone worker or would not be able to do it with “Pen and Paper”, or by just moving tires and using pneumatic drills.

    One of the things that needs to become part of conversational discourse is that people who have not studied something in detail, whether it be law, or whether it be a specific technology, or even just a patent, should just be mature enough to say, “I have not formed an opinion on it because I have not studied it in detail.” Meaningless opinions are the witchcraft of this age.

    And how is “computer personality” and its relationship to configuration settings not “inventive?”

  • [Avatar for step back]
    step back
    December 2, 2016 05:26 pm

    (Not Sharky) Mike A @67

    Good to know you are open minded.

    Patent law is not as easy as it seems on first blush.
    For most patent lawyers, after getting an EE, ME, ChemE of CS degree (4 years or more) and then working in the field (5 years plus), going to law school (4 years nights, 3 if by day) and then landing a job at a patent boutique firm; it still takes a few more years (i.e. 3) of hands on practice before they start “getting it”. Many of the concepts are counter intuitive.

    I don’t blame you for thinking about the trade secrets route.
    However if someone else figures out the same AI scheme, patents it and then sues you, what are you going to do then? If some big company simply copies and takes over the market, what are you going to do then?

    There are reasons for why patents were invented in the first place and then implemented throughout the industrialized world.

    Good luck.

  • [Avatar for Mike Archbold]
    Mike Archbold
    December 2, 2016 03:02 pm

    Post #60, Gene, these articles are of great use to me; I have been reading for a couple of years. In fact what I know about Alice was only through reading here! I’m not trying to troll it up here or make enemies. In fact I would like to make some contacts. I have overstepped the limits of my knowledge, admittedly… I have probably already read the articles you link to. I am working on my own AI scheme, and so are many others that I know through the internet and in person. I sometimes post links to ipwatchdog articles on my AI forum. Exactly how to protect such IP is a huge problem, especially given the shaky and contentious nature of the supporting structure. I’m led to believe that trade secret is the best route.

    Posts by Step Back, no I am not sharky Mike. As far as your point about having a 2nd year engineering student write a conversion program, that is pretty much my point. I noticed also that no one stepped up and said anything about having written a conversion/migration program. If you had, it would put a lot of this in greater perspective. You could have done the same thing 30 years ago when I got started, then called “data processing with program”, but now it’s “IT with apps”. Same thing though; it’s just a shell game. Input, function, output under different guises.

  • [Avatar for step back]
    step back
    December 2, 2016 02:40 pm

    I think 101 says “or” improvement thereof.
    It doesn’t have to be an improvement.
    That’s just one option.

    Hope that takes away the confusion. 😉

  • [Avatar for Very Confused]
    Very Confused
    December 1, 2016 11:36 pm

    One final note, the abstract states
    ” The transition package is sent to a target computing system. The transition package is infused on the target computing system to automatically transition configuration settings from the source computing system to the target computing system. The method and system may vastly reduce transition, ”

    It even seems to say in the abstract that to improve it, it has to actually be sent to the target system and applied. So wouldn’t it be like claiming a new method to put old tires on a new car more efficiently and after taking off the tires and modifying the rims to fit the new car, you never put them on the new car, pretty much making the modified tires pretty useless. So not only do you make it useless, but if the new car having the old tires is the improvement it seems like the step of actually putting the tires on the car would have to be present at some point, otherwise you don’t actually have your improvement do you?

  • [Avatar for Very Confused]
    Very Confused
    December 1, 2016 11:29 pm

    I’m asking this because, if they don’t apply the settings, isn’t it pretty much just a claim to transfering information in groups? Which I believe is one of the Alice check boxes right? Also maybe I’m missing something, but I don’t believe the claim even states that the target system even receives the settings does it? It seems a middle system just changes the format to a format used by the target system but the target system actually never becomes involved in the process does it? So if your improvement is to improve the target computer system by allowing the old settings to be applied to it, then if the target system never even receives the settings, you can’t really say that you have improved it? Maybe I’m missing something, I did just skim over this.

  • [Avatar for Very Confused]
    Very Confused
    December 1, 2016 11:23 pm

    Could this be because, although the settings are set over, the target computer isn’t actually claimed to have the new settings applied to it?

  • [Avatar for step back]
    step back
    December 1, 2016 09:24 pm

    Mike A @59

    You got me confused.
    I thought the claimed subject matter was for “migrating” user settings from an old legacy system to a new system that does not have exactly the same settings in the same places. Presumably none of us did it which is why the patent was issued. It was novel, useful and non-obvious.

    Of course, unbeknownst to most of us, any of these judges can walk into any Silicon Valley coffee shop, pick out any random 2nd year engineering student, convey the “idea”, say “make it so” and then over weekend’s last dawning the magical mythical 2year student will have done it on his magical mythical, “generic” computer. So no biggie.

  • [Avatar for step back]
    step back
    December 1, 2016 09:13 pm

    BTW, Mike A, which Mike A are you?
    Are you Shark Tank Mike or some other Mike?

  • [Avatar for Gene Quinn]
    Gene Quinn
    December 1, 2016 08:06 pm

    Mike A-

    I went back and reviewed the comments to catch up to date. I think the group here has been trying to explain that the fact that you understand the technology does not mean that you understand the law. You seem to be struggling with that a bit and your most recent comment suggest that you think because you have so much experience working with large scale systems that your legal views and opinions should be given equal weight as those of us who have been patent professionals for a generation (or longer).

    I think some of the others have raised this with you and I will also. What you are saying is not something that is outrageous or ridiculous. It is, however, incorrect legally. This is not open to interpretation or debate. The issues you seem to be concerned about are related to obviousness and likely also with respect to disclosure. The issue being discussed in these cases has nothing to do with obviousness, whether what was described would have been known to others of skill in the area and should have been patented. What is being decided here is whether this sort of invention is even capable of being patented even if it is the most new and non-obvious thing every created. If something is patent ineligible it does not matter whether it is new and non-obvious. No patent, period.

    As for the issue of obviousness, even that one is not as simple as you expect it to be I’m sure. These patents were first filed in 1999 and the priority date for invention purposes would be well before the date the application was first filed. So in reality to argue that the invention disclosed here is obvious you would have to demonstrate that it would be obvious to those of skill in the art circa 1998 (maybe earlier). So you can talk about the ease of moving data from computer to computer, but without talking about it in the appropriate time frame for analytical purposes your analysis is not only unhelpful but it is misleading and legally flawed.

    If you are interested in becoming versed in this area of law I recommend you do some basic reading. Pretty much every Saturday for years now I’ve published articles aimed at newbie inventors so they can start to understand this complicated area of law. So there are a lot of basic tutorials here on I’d recommend you start here:

    For some good primers on software patent basics see:


  • [Avatar for Mike A]
    Mike A
    December 1, 2016 04:01 pm

    I said I wasn’t going to keep posting, but one or two more perhaps…. you guys keep saying I am in over my head, don’t know the terrain, should educate myself before opening my mouth, etc. I’m an “armchair quarterback.” Now I have the same criticism of this group. How many of you have worked on a major conversion for a large scale system. How many of you have actually written a conversion program akin to the one in this patent? How many?

  • [Avatar for step back]
    step back
    December 1, 2016 10:51 am

    The Founding Fathers would be rolling over if they knew what the “origiinalist” Court has wrought.

  • [Avatar for Anon]
    December 1, 2016 09:27 am


    I do wonder what the innovation climate would be if there were more Lincoln-types on the High Court.

  • [Avatar for EG]
    December 1, 2016 08:55 am

    Adding to my comment @35, what makes SCOTUS’ view that there are “exceptions” to patent-eligibility as expressly defined in 35 USC 101 completely and utterly hypocritical and duplicitous is how it treats the corresponding infringement statutes in 35 USC 271. When determining whether there is patent infringement under all the various paragraphs in 35 USC 271, Our Judicial Mount Olympus changes its tune and says there are no “exceptions,” only the express language of the statute, especially if it allows the alleged infringer to escape liability. Witness the Deepsouth Packing case where SCOTUS allowed a deft accused infringer to escape liability solely by shipping all of the individual components of the claimed device abroad for assembly there. That hypocrisy and duplicity can only be attributed to SCOTUS being virulently anti-patent.

  • [Avatar for Night Writer]
    Night Writer
    December 1, 2016 07:15 am

    @paul morgain : “Just do it in any computer” without a disclosed enablement is now increasingly insufficient when HOW to do it in a computer is what is claimed to be unobvious

    This type of statement is typical of the judicial activist. The question is whether it is enabling or not–that’s it. How can be conventional means and the novelty can be the combination of elements.

    Get past that step and then you can complain about 103, but try to do it as a professional using patent law methodology.

  • [Avatar for Anon]
    December 1, 2016 06:27 am

    step back @ 52,

    That’s a great link, but not a perfect link (it misstates the holding from Marbury as judicial review is not a sole power of the Supreme Court, but rather is held to belong to the judicial branch of Article III).

    Note as well the important factor in the link of the limited role of the judiciary (present case or controversy – no advisory decisions) and of course, the Court’s limited original jurisdiction which is something that comes into play when the Congressional power of jurisdiction stripping is discussed.

    It would be of worthy note to reference the Federalist Papers at this point and the concern of the Founding Fathers with a Court that was TOO powerful.

  • [Avatar for Anon]
    December 1, 2016 06:00 am

    Mike @ 50,

    Please do not dismiss your participation.

    Your attempt at dissuading groupthink is a noble contribution. Mis-aimed, because of the lack of understanding of the terrain, but apparently well-intended.

    Your contribution is important because it does draw focus to a different area of law (103) and because the Court itself is conflating 103 and 101 (the historical backdrop to 103 is a spotlight to the ultra vires, Ends-driven, actions of the Court in their legislating from the bench and implicitly and explicitly rewriting the words of Congress).

    What you may think you see as “elitist and condescending” stems in part because of the solemnity that our profession places on us and our nexus with the law. Sometimes we speak in extreme earnestness because of that duty and that earnestness can rub those wanting to “armchair quarterback” the wrong way. It does not take obtaining an juris doctor to discuss the law, but obtaining a juris doctor and taking an oath does place a higher onus on us (which is also why I posted at 40 that my sadness is generated more so from those who should know better).

    curmudgeon at 51,

    In addition to the rebuttal from step back, I would also draw your attention to your own attorney’s oath. I do not know which State that you are barred in, but I can guarantee that your oath does not place the Supreme Court above the Constitution in the rank of where your duty lies. To so boldly (and incorrectly) proclaim that pointing out the errors of the Court – with reason based on law and facts – has no weight whatsoever is analogous to saying that the Court can do no wrong whatsoever, and is an abrogation of your own sworn duty (presuming that you are an attorney).

  • [Avatar for step back]
    step back
    December 1, 2016 02:17 am

    The US Supreme Court has no armies, no navies and no collectors of tax to fill its coffers.

    Its only power is the respect it gets for the reasonings of its opinions.

    If it looses that respect it becomes a powerless shadow organization.
    Its declarations, proclamations, opinions, rulings become nothing more than mere ink on paper that is subject to derision, mockery and disregard.

    So what “We the People” have to say about SCOTUS and its badly made decisions (Dred Scott, Citizens United, Alice, Mayo, …) does count for something.

  • [Avatar for curmudgeon]
    November 30, 2016 10:50 pm

    Re: “Some of us are not “suggesting” that the Supreme Court is wrong.
    We are outright declaring that the Supreme Court is wrong.
    And we are presenting the legal (and yes factual) reasons why the Supreme Court is wrong.”

    [And those declarations and presentations by anyone not on the Sup. Ct. have no weight whatsoever.]

  • [Avatar for Mike Archbold]
    Mike Archbold
    November 30, 2016 10:28 pm

    I can see there is a huge problem in deciding what does constitute a patent. I can see what doesn’t though, like a more or less ordinary conversion program of the type described above. That basically is what I had to say here, to try to throw a wrench into what looks like groupthink going on, so I will leave it at that. I think you should lose the condescending, elitist attitude. I benefit from the articles listed but will try not to interject again. not sure there is any point to it.

  • [Avatar for step back]
    step back
    November 30, 2016 09:00 pm

    Remember that movies, Sixth Sense (with Bruce Willis)?

    Well dealing with the SCOTeti and their minions is kind of like that.
    We walk around saying we see ignorant people who don’t know how ignorant they are about patent law and about science. They don’t understand how ignorant they are. They believe in the magic of the 2nd year engineering student as a weekend warrior. They believe in doing biotech by plucking leaves off of trees. Don’t get us started here. This is all documented fact.

    Check out U Toob at watch?v=QUYKSWQmkrg

  • [Avatar for step back]
    step back
    November 30, 2016 08:52 pm

    Mike @47

    You keep assuming this is about you and we are out to get you.
    Nothing could be further from the truth.

    This discussion is about the law and how the SCOTUS has horribly mishandled the patent branch of the law.

    Do you want gossip about how the SCOTeti can’t even do emails? OK. Here it is. But that is not an issue.

    The real problem is that they are horribly incompetent in this area of law, easily swayed by so-called friends of the court (amici curie) who have other agenda than doing the right thing, and they (the SCOTUS) don’t know how incompetent they are. 🙁

  • [Avatar for Mike Archbold]
    Mike Archbold
    November 30, 2016 07:11 pm

    I don’t win arguments with lawyers, especially judges, but a couple of comments….

    As far as a musician getting a patent for a CD, I did not say that. The physical medium, the CD, the HARDWARE MEDIUM technology may have been under patent, owned not by the musician (probably the patent for CDs expired?)…. works of art are copyright only, not patent. Give me a little credit. You were hoping to set me up to look like a fool and then sprang right in when you discovered my answer was ambiguous/vague. I’m not anonymous, by the way…

    as far as the declaration the Supreme Court knows “ZERO” about technology. I’ve heard this repeated on this website often. Obviously that is a patently false statement with no further elaboration required. Zero, nothing, what Hegel had in mind as the opposite of Being? Nothing? Really? Zip? They aren’t supposed to be experts; they are supposed to be wise generalists, or so I thought. They aren’t experts in health care either but they decided the fate of the ACA.

  • [Avatar for Anon]
    November 30, 2016 06:42 pm


    Some of us are not “suggesting” that the Supreme Court is wrong.

    We are outright declaring that the Supreme Court is wrong.

    And we are presenting the legal (and yes factual) reasons why the Supreme Court is wrong.

  • [Avatar for step back]
    step back
    November 30, 2016 06:02 pm

    Mike @43

    Stop diverting the discussion to the ad hominum space.

    The point is that guessing (“I think”) is not a reasonable way of answering these tough kinds of questions.

    No, the musician does not get a patent for the CD. He (or she) did not invent a new CD technology.

    The relevant statute reads:

    “35 U.S.C. 101 Inventions patentable.
    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

    Of course the Supremes hold themselves above this law, above the Constitution and therefore sua sponte invent their own eligible subject matter laws. (Otherwise known as the Alice/Mayo quagmire.)

    Cheers. 🙂

  • [Avatar for Curious]
    November 30, 2016 04:10 pm

    if you write a program to move data from one computer to another it doesn’t rise to the level of a patent
    No patent claims just that. The problem I have seen with the technical crowd, when reviewing patents (e.g., such as on slashdot and Wired), is that they have a fundamental misunderstanding as to what is actually being claimed. Few understand the level of detail that is contained in claims. Instead, the vast, vast majority of comments I’ve read involve generalizing the invention to almost beyond recognition. Without the knowledge of what is actually being claimed (and moreover what is the purpose of claims — which is not to describe the invention in detail but to distinguish it over the prior art), the technically-informed yet legally-ignor ant make comments that simply have no basis in reality.

    Until you understand exactly what is being claimed (and this is something many patent attorneys have trouble with), you cannot make informed comments on the topic. The Supreme Court — unlike patent attorneys — have ZERO technical backgrounds. I doubt any of them have written a single line of code; played with the settings tab in their browser, application, or operating system; or know have any knowledge of physics/science beyond introductory-level courses they took 40 years ago in college. As such, when it comes to the intersection of law and science, they do a very poor job in understanding the fundamentals.

  • [Avatar for Mike Archbold]
    Mike Archbold
    November 30, 2016 01:38 pm

    The music would be subject to copyright, and the CD a patent, I think. I don’t consider myself the “average Joe” by the way, and don’t appreciate the condescending attitude. It sounds like by your reasoning the Supreme Court is thinking what the “average Joe” is thinking, which then means that it is probably working.

  • [Avatar for step back]
    step back
    November 30, 2016 01:21 pm

    Mike @41

    You are not being ridiculed because you are not the only one who believes as you do.

    You are echoing the sentiments of the average Joe.

    However your sentiments are misplaced.
    You do not even comprehend that which we are discussing here.

    The issue is not whether a specific person “deserves” a specific patent.
    (BTW, in 35 USC 102 Congress wrote that an application filer is statutorily “entitled” to a patent unless … (102, 103, 112).)

    The issue is what kind of stuff can be applied for in the first place.
    For example if you are a musician and you record your new and nonobvious musical composition as computer code on a CD, is that CD an article of manufacture that is eligible for patenting? And if not, what legal principle justifies the answer?

  • [Avatar for Mike Archbold]
    Mike Archbold
    November 30, 2016 01:01 pm

    I’m trying to learn the legal side of this. I can’t be ALL THAT incorrect as to be held up to ridicule if the Supreme Court basically decides the same thing. Basically, a lot of the “Mike’s of the world”, sans legalese, think if you write a program to move data from one computer to another it doesn’t rise to the level of a patent. You’ve got some larger ideas about computing in general and an overall “idea” of the situation at hand. You “abstract” some part of the situation (“move data from A to B”). You then have an “abstract idea”. You have made an abstraction from a larger context. So you implement using conventional methods. It’s not anti-software. It seems that if you didn’t want your process discovered you could run it from the cloud, and keep it as a trade secret.

  • [Avatar for Anon]
    November 30, 2016 11:48 am

    What I find immensely sad are not the “Mike’s of the world” (Mike, the bristling that you may be being exposed to is not personal, but comes from the fact that many of those with a foot in only one world (technical) want to make statements without having a foot in both worlds (technical and legal)).

    What I find immensely sad are those IN law (including the Justices of the Supreme Court) who should know better and yet who still pursue an anti-software patent agenda. So very often (and in fact, I do not recall any sustained voice otherwise), this anti-software patent agenda is pursued with falsehoods and material misrepresentations from both worlds of technical and legal.

    It is those whom should know better that the greater condemnation should descend upon.

  • [Avatar for step back]
    step back
    November 30, 2016 10:25 am

    Mike Archbold @33 Part 2

    With that said, you can start reading EG @35 and start scratching the tip of his iceberg.

    He is talking Constitutional law.
    The question there is whether SCOTUS (Supreme Court of the US) has the Constitutionally vested power to ignore the laws that the legislative branch of our government (aka Congress) has passed and make up crazy new ones all on their own that conflict with the laws that Congress has passed?

    Welcome to the party. (Again)

  • [Avatar for step back]
    step back
    November 30, 2016 10:18 am

    Mike Archbold @33

    Yes. Clearly you are not a lawyer.
    And apparently you have been drinking the Kool Aid they are feeding to you “technologically superior” practitioners in the computer/electronics degree-ed arts.

    A couple of problems with that Kool Aid.
    Guess what? Many of us evil-doing, conspiracy embroiled, troll loving, lawyering types are also heavily degree-ed in the electrical engineering (EE), chemistry (CE), mechanical engineering (ME) and computer science (CS) studies. Many of us have worked in the field.

    And then we went on to get yet more degrees … in “the law”.

    Law school takes about 3 years (days) or 4 years (night school).
    There is a reason it takes so long.
    It’s not easy. “Getting it” requires a lot more than a 2 minute U Toob.

    As for patent law (an esoteric segment of general law), deserving-hood for a patent is not supposed to be dependent on the subjective whims of an individual (you). It’s complicated.

    Even the high and mighty Supremes don’t get patent law.

    The “subject matter eligibility” question we are discussing here is not what you think it is.

    There is a statute passed by Congress. 35 USC 101. Look it up.

    The Supremes have ignored that statute and have made up one of their own out of thin air and with clear misapprehension of what science is is.

    If you can wrap your head around that, then welcome to the party. 🙂

  • [Avatar for Anon2]
    November 30, 2016 09:45 am


    Can you think up an example of the following or is it impossible.

    Imagine an application which meets all of the specific requirements (112, 102, 103, utility under 101, literally claiming a statutory category 101, etc. etc.), and imagine a court analyzing these, doing a full claims construction, and concluding this first, now imagine that the court turns to the subject matter analysis (Mayo/Alice) of 101 as the very last part of its analysis, it acts as intellectually honest as is possible (within current Mayo/Alice framework) and concludes ineligibility.

    What is the subject matter and form of the claims of your imagined application?

  • [Avatar for Eric Berend]
    Eric Berend
    November 30, 2016 08:39 am

    Meanwhile, there is a collateral issue of harm done to the interests of inventors creating the more physically based or historically conventional inventions based upon mechanical, electrical magnetic or chemical (process) innovations; all, merely to satisfy the whims and tenets of the computer software cohorts of the technologist population as a whole.

    These whimsical, arbitrary distortions are poised to wreak havoc upon emerging technologies in nanoscale materials (“nanotechnology”), quantum physics, medical devices, micro-engineering, and so forth.

    In essence, this wrongheaded detour revives feudalism at the expense of the modern public interest. In the place of inventors being occasionally richly rewarded for innovation, with that advantage seeming to be unfair to those not so ingenious; instead, we now have corrupted academic and judicial lords arbitrarily picking winners and losers, in pandering to those who have ‘lined their pockets’.

  • [Avatar for EG]
    November 30, 2016 08:28 am

    What SCOTUS has done with patent-eligibility by imposing on us the nonsensical and broken Mayo/Alice framework is even worse than just reading exceptions into 35 USC 101, or being in opposition to its prior precedent in Diehr and Chakrabarty. As Curious correctly suggests, at least the supposed 1st step of that framework is in utter conflict with 35 USC 112, 2nd paragraph (now 35 USC 112(b)) that the claims (and only the claims) can define what the invention is/means, and only the claim(s) “as a whole” as Diehr correctly notes. Saying that you can parse the claim (or as Anon correctly notes “gist” it) by saying what it is “directed to” simply reads 35 USC 112, 2nd paragraph/35 USC 112 (b) out of the patent statutes. It also creates a fundamental disconnect with 35 USC 103 which says the claimed invention must be viewed “as a whole” which Diehr recognized meant that the claimed invention must be viewed “as a whole” across all the patent statutes, including 35 USC 101. Again, by imposing the Mayo/Alice framework on us, SCOTUS is exercising judicial fiat, not the rule of law, and for that, Our Judicial Olympus rightly deserves to be condemned for overreaching its Constitutional authority.

  • [Avatar for Anon]
    November 30, 2016 07:16 am

    Mike Archbold,

    Do you understand the difference between ineligible and not patentable (for other reasons)?

    Your post seems to make the impression that you do not understand the context for the debate itself.

    Perhaps it would be helpful for you to understand the area that you want to comment upon prior to making up your mind and opening your mouth. Not to be too hard on you, but would you perform brain surgery based on your degrees in computers/electronics? Having one foot in the technical world gives you as much capability of stepping into the legal world as it does for you to step into the medical world.

    The fact of Turing and “can be” does not mean that ALL such future improvements to machines are thus not eligible.

    Lastly, you offer an opinion on trade secrets that evidences a lack of knowledge in that area as well. You should not get into the habit of speaking about things that you do not know just because you may know some things in the technical world.

  • [Avatar for Mike Archbold]
    Mike Archbold
    November 30, 2016 03:29 am

    I’m not a lawyer. I have degrees in computers/electronics… when I read these articles I can immediately seize upon what is meant by an “abstract idea” and why it is not worthy of a patent (I agree with the Alice decision which I know runs counter to most here). An “abstract idea” is like “let’s write a program to move data from one machine to another.” It’s like “when operating mining equipment, write some values to a file at time A, then at time B write some other values, then produce a total.” Is this likely to be something new? Sure, it’s new. Is it an improvement? Possibly. But in general we are just taking some idea about doing some data processing using conventional methods. If that’s all that you are doing in my opinion that doesn’t rise to the level of deserving a patent. That’s what computers are great at doing. If you read Alan Turing’s original paper which describes his well known logical machine, it seems to me that most of the cases I read here can be implemented on such a machine. But I don’t recall him including in his paper anything that defended the notion that just because you could create some unique variation of a Turing machine to do the kinds of ordinary things described here, like moving data around, you could, therefore, prevent others from doing the same thing by taking out a patent. It seems to me that if that is your goal, your most realistic avenue is to take the trade secret approach.

  • [Avatar for Anon]
    November 29, 2016 07:37 pm

    Curious @ 30 – I daresay that you have nailed it.


  • [Avatar for Gene Quinn]
    Gene Quinn
    November 29, 2016 07:12 pm

    Paul Morgan-

    Short specs? You must have looked at different patents.

    As I pointed out earlier, these applications were filed originally back in 1999. Although not an issue raised by the case or this article, it is ridiculous that we are evaluating these patents based on an amorphous standard that came into being circa 2014-2016.

    Save for a minute that we disagree on whether these specs actually teach the innovation (which I believe is still the point unless you use means plus function claiming in which case whether you teach the innovation is apparently irrelevant). Clearly, these specs would not have been considered at all thin back in 1999. And therein lies a huge problem with the U.S. patent system. We published an article on dictators and property rights, which appropriate explained that when dictators can arbitrarily take away property rights there is no reason to invest or create those rights. That is, of course, what we have with our ever evolving patent system. Fine in 1999, not fine in 2016. Too bad for you, sucks to be you!


  • [Avatar for Curious]
    November 29, 2016 07:07 pm

    This is not to suggest that § 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable.
    Ah yes … “the do as I say — not do as I do” admonition.

    You should familiarize yourself with some of the criticism of Benson. The Benson put their holding, in a “nutshell” (their word not mine) as follows:
    It is conceded that one may not patent an idea. But, in practical effect, that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that, if the judgment below is affirmed, the patent would wholly preempt the mathematical formula and, in practical effect, would be a patent of the algorithm itself.
    The assertion that the the “practical effect” would be “a patent of the algorithm itself” is that if we ignore the technical environment in which this invention has applicability, we can distill the invention down to an idea. In REALITY, the claims are directed to a process necessarily performed by a computer — it is not an idea. In essence, the Court says ‘it is an abstract idea because we chose to describe it as an abstract idea.” The important part is that they CHOSE to describe it one particular way — oftentimes quite differently than how the inventor chose to describe the invention.

    Once you get to choose to ignore aspects of any invention, almost any invention can be directed to an abstract idea.

    This whole 101 mess, which will go on ad infinitum (absent Congress stepping in), is because the court now gets to redefine the invention any way they choose. The courts have literally free reign to decide what limitations they can ignore. Moreover, depending upon the court, the same type of limitations may save the day or be ignored. Ultimately, every patent will have to be litigated to determine whether it met the requirements of 35 USC 101. Otherwise, there will always be uncertainty as to its validity.

    Because of the GREAT UNCERTAINTY associated with the Supreme Court’s failure to define what is or is not an abstract idea, patents (as a class of assets) have been greatly devalued. Moreover, because of devaluing of these assets, their utility in promoting the progress of science and the useful arts has been greatly diminished.

    IMHO, patents owned by small entities are little more than pretty pieces of paper to hang on the wall. They are expensive to obtain, and the benefits they convey are minimal. Moreover, they gave the false impression that they have value against potential infringers — particularly well-heeled infringers. Inventors would be better of knowing that a large company can easily rip off their invention (and plan accordingly) that falsely believe that a patent will help them. While there are always exceptions, in general, today’s patent environment is about as toxic to small individuals/businesses as any time in recent memory.

  • [Avatar for Anon]
    November 29, 2016 06:50 pm

    …and by decisions, I mean all of them, noting the historical periods and even changing make-up of the Court.

    This is not a static or “one-time” usurpation of the authority of the legislative branch, but much more like a slow boiling of a frog in a glass beaker (gradual changes and the frog does not jump out contrasting with a frog immediately jumping out if simply placed into a beaker of boiling water).

  • [Avatar for Anon]
    November 29, 2016 06:47 pm

    Mr. Morgan, 35 USC 101 did not exist prior to 1952.

    Yes there was a prior paragraph containing many of the same words – but also remember that the Act of 1952 also introduced Section 103 for a replacement (and rebuke of the High Court) concerning the rescinded ability to use the tool of common law evolution to define “invention” (or gist of the invention, or dozens of other euphemisms).

    Read again the decisions and note just how carefully the Court tries to parse its words.

  • [Avatar for Anon]
    November 29, 2016 06:28 pm


    If an explicit and both party agreement that no issue (remember the case or controversy requirement for proper judicial power) existed as to some claims being clearly meeting the “machine” statutory requirement, how is a lesser mere clue concerning “machine or transformation” going to get you lemonade?

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    November 29, 2016 06:25 pm

    Curious, that is a nice cite for a general caution, but note that the Supreme Court in Chakrabarty also much more specifically stated that: “This is not to suggest that § 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable.* See Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978); Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 255, 34 L.Ed.2d 273 (1972); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 441, 92 L.Ed. 588 (1948); O’Reilly v. Morse, 15 How. 62, 112-121, 14 L.Ed. 601 (1854); Le Roy v. Tatham, 14 How. 156, 175, 14 L.Ed. 367 (1853).”

    *none of those frequently ignored Chakrabarty words are from 35 USC 101 itself.

  • [Avatar for Anon]
    November 29, 2016 06:23 pm

    As an historical note, one should take a careful look at what the Supreme Court had done since the Act of 1952 became law.

    First by dicta, then by implied, and most recently by overt and explicit wording, the Court has re-written (and dispensed with unambiguous portions) of the statutory law as written by Congress.

    As extreme as that may sound, such is an accurate reflection of the legislating from the Bench that had occurred since 1952.

    Not all coups happen by sword, nor are immediately noticeable.

  • [Avatar for Anon]
    November 29, 2016 06:16 pm

    Mr. Morgan,

    If as you say the Court is not grounding its writing in the statutory text, then they are violating the separation of powers and the Constitutional allocation to the legislative branch to write patent law.

    You cannot have it both ways.

  • [Avatar for Curious]
    November 29, 2016 04:11 pm

    the Alice 101 test is not, and never has been, based on the words of 101 itself
    From Bilski:
    This Court has “more than once cautioned that courts ‘should not read into the patent laws limitations and conditions which the legislature has not expressed.’ ” Diamond v. Diehr, 450 U.S. 175, 182, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981) (quoting Chakrabarty, supra, at 308, 100 S.Ct. 2204; some internal quotation marks omitted).

    … and people wonder why we keep beating that dead horse.

  • [Avatar for Night Writer]
    Night Writer
    November 29, 2016 01:12 pm

    @13 KenF: Me too. I cannot stand the witch laws that have arisen around patents that have nothing to do with law or reality. And, having to dig in the mind of someone that has no training in science, technology, or the real world of business to try to understand how they understand an invention is so painful. Thanks Obama.

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    November 29, 2016 12:58 pm

    Curious, that is a very good point – the Alice 101 test is not, and never has been, based on the words of 101 itself, so there no good reason for anyone to keep beating that dead horse. It is a long Sup. established list of other things the Sup. Ct. says are unpatentable subject matter. Also, like it or not, it is clear that many 103 issues are folded into the Alice test in practice.

    But as to 112 and these patents, I was clearly talking about specification enablements, not claims, and arguing that enablement is not needed because it is obvious is not helpfully consistent with avoiding 103.

  • [Avatar for Curious]
    November 29, 2016 11:43 am

    “Just do it in any computer” without a disclosed enablement is now increasingly insufficient when HOW to do it in a computer is what is claimed to be unobvious, and is asserted to be the only unobvious distinction from something previously known to be done manually.
    Did you read the claims of this patent? The claims did more than just say migrate settings using a computer. Looking at the first issued patent, I saw limitations that were not necessary to perform to perform the migration.

    Yes, the PTO should have been doing a better job of 112 rejections in many patents claiming end results with no meat on the bones
    Claims are supposed to distinguish the claimed invention over the prior art — not enable the invention. Also, enablement also takes into account the skill level of those in the art. If all of the individual components of the claimed invention are well known, there is no need to expound upon any of them. If the invention is a rearrangement of known components, then all that needs to be disclosed is the rearrangement.

  • [Avatar for Curious]
    November 29, 2016 11:37 am

    the Supreme Court created a “Gist/Abstract” sword that completely nullifies a claim that both parties stipulated as to meeting the statutory category of “machine.”
    Most of us get that point — i.e., the Supreme Court ignored the plain language of 35 USC 101. However, when given lemons, my suggestion is to make some lemonade. The MOT test, by the explicit language of the Supreme Court, should be given substantial weight. However, everybody (including the Federal Circuit) treats it like dead letter law.

  • [Avatar for Morley Proulx]
    Morley Proulx
    November 29, 2016 11:18 am

    @morgan. Short patent specs? Having read the patent, the disclosure is intense and highly descriptive to this engineer. It is full of innovations.

  • [Avatar for Gene Quinn]
    Gene Quinn
    November 29, 2016 11:01 am

    IP Newbie @11…

    You say that the claims are obvious, which may or may not be the case. That was, however, clearly not the issue. The question was whether these claims are patent eligible and under any fair reading of Federal Circuit precedent these claims are most definitely patent eligible.

    As for whether the claims are obvious, a great deal more than your conclusion would be required to determine that the claims would be obvious.

    The priority filing date here is from April 1999. Do you really know off the top of your head that computer programmers prior to April 1999 would have deemed the claimed invention to be obvious? Of course, you couldn’t possibly know for certain given that the priority filing date wouldn’t be the priority date for purposes of prior art. So this would have had to have been obvious sometime before that first filing.

    It is very easy in 2016 to proclaim that something is obvious, but the critical date involved here is almost a generation ago. So saying that these claims would clearly be obvious with just a naked conclusion really isn’t particularly helpful and only feeds into the public hysteria about patents.


  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    November 29, 2016 10:53 am

    I took a look at the short patent specs here. I did not see any enabling algorithm or software to accomplish the claimed goal, just collections of black boxes.
    “Just do it in any computer” without a disclosed enablement is now increasingly insufficient when HOW to do it in a computer is what is claimed to be unobvious, and is asserted to be the only unobvious distinction from something previously known to be done manually.
    Yes, the PTO should have been doing a better job of 112 rejections in many patents claiming end results with no meat on the bones, but they did not. Arguing 112 successfully in patent litigation [other than for a means-function claim] means a full blown trial and appeal. Now the Sup. Ct. has stuck everyone with a “fix” for patent litigation costs – an undefined but front end “abstraction” test, and the Fed. Cir. is stuck with trying to draw lines in sand dunes.
    Also, a non-precedential opinion like this is not supposed to have any value as a precedent, and merely represents sustaining of that particular D.C. decision. For all we know the D.C. opinion may have done a more thorough analysis, although in that case one wonders why this was not just a per curium opinion?

  • [Avatar for John Locke]
    John Locke
    November 29, 2016 10:42 am

    Take the time to listen to the oral arguments in this case. I think I actually heard Judge Reyna ask if this patent tries to Patent the entire Internet, as if anyone could.

    In the oral arguments, Lenovo actually admitted that this patent was a computer solution to a computer problem, meaning that DDR holdings would have applied.

    Lenovo counsel was excoriated for suggesting that Judge Mayers infamous concurrence was the law of the Federal Circuit. And check out that strange footnote that nonsensically tries to sidestep the record.

    Most worrisome in this case was that Prost noted that there was an unrebutted declaration from the inventor, which was enough to overturn the decision in Bascom in favor of the patent holder. Why was tranxition not afforded this luxury?

    And why was McRo not applied to this particular case? Is it because Tranxition is a small company?

    The rule of law is under seige. We see that the scales of justice weigh ideologies and not facts.

  • [Avatar for Gene]
    November 29, 2016 09:38 am

    the court can’t provide a construction for smoke and mirrors. “the configuration information including a name and location of each configuration setting”. a name and location of each configuration setting? seriously?

  • [Avatar for KenF]
    November 29, 2016 09:37 am

    It’s sh*t like this that makes me want to get out of law and go do something real, like construction. There, at least if I hit my thumb with a hammer, it will hurt…… in a very non-abstract sort of way.

  • [Avatar for Anon]
    November 29, 2016 06:47 am

    step back,

    Your words appear to need to be reordered…

    Equity (read that as legislating from the bench) exposes the abhorrent vacuum (concerning the Rule of Law) in the judge’s heads. 😉

  • [Avatar for IP Newbie]
    IP Newbie
    November 29, 2016 02:44 am

    The method disclosed in the ‘877 patent would be obvious to any entry-level programmer tasked with creating such a mechanism.

  • [Avatar for step back]
    step back
    November 28, 2016 08:12 pm

    If I recall correctly (IIRC), equity abhors a vacuum (in the judge’s head) 😉

  • [Avatar for Night Writer]
    Night Writer
    November 28, 2016 08:07 pm

    @8: Yes Anon. It is equity not law.

  • [Avatar for Anon]
    November 28, 2016 05:59 pm


    See the past discussions between Mr. Quinn and I, wherein I pointed out that the Supreme Court created a “Gist/Abstract” sword that completely nullifies a claim that both parties stipulated as to meeting the statutory category of “machine.”

    If the Court is going to toss something that everyone agrees is a machine, there is no way anyone’s efforts can stop them from reaching their desired Ends.

  • [Avatar for Curious]
    November 28, 2016 05:08 pm

    Various thoughts on this decision:

    The Court writes “the patent is directed to solving problems arising out [sic] ‘migration,’ which was performed manually.” This statement is inaccurate. While the process was performed using a person, it necessarily required the use of a machine. Hence, it was not a pure “manual” operation. If the Court’s disregarding of the machine aspect of the process is proper, then nearly ANY process could be deemed as previously being performed “manually” as almost all process, at some point, involve a human being.

    The Court writes “the claim is directed to the abstract idea of migration, or transitioning, of settings.” In Bilski, the Supreme Court stated that the “machine or transformation” test was not the sole test but it was “an important and useful clue.” However, almost every Federal Circuit decision I have read has COMPLETELY IGNORED this “important and useful clue.” In fact, I think I have read at least one that (inaccurately) characterized the Supreme Court as rejecting this test.

    If I had a brief to write before the Federal Circuit or Supreme Court on this issue, I would argue that the MOT test should have a role as part of the Alice/Mayo test (assuming that I wasn’t already arguing to toss out the whole test completely). Where I would place the MOT test is at step 2A. Specifically, if the characterization of what the invention is “directed to” involves either a machine or a transformation, then the invention cannot be “directed to” an abstract idea. There may be other ways to determine that it isn’t an abstract idea, but this should be one of those ways.

    In this instance, the alleged abstract idea of “migration, or transitioning, of settings” meets both aspects of the MOT test. The settings refers to settings of a computer, and these settings necessarily reconfigure (i.e., transform) the computer. Consequently, this invention would not be “directed to” an abstract idea. If the alleged “abstract idea” is tied to a machine it isn’t abstract. Similarly, if it produces a transformation, it also cannot be abstract.

    I recognize one argument would be “but Curious, couldn’t the Court just keep abstracting the abstract idea until they eliminate machine or the transformation?” That is true. However, a more abstract abstraction is easier to attack upon multiple fronts. First, the claim invention must be considered, as a whole. As such, if the abstraction becomes too abstract, then there is an argument that the finder of the abstraction (e.g., the USPTO or the Court) has failed to consider the claimed invention, as a whole. Also, the Supreme Court’s of the relevant question is “whether the claims here do more than simply instruct the practitioner to implement the abstract idea of [blank] on a on a generic computer”). If there is a lot more to the invention than the alleged abstraction, you can argue that the claims do more than say ‘apply it on a generic computer.’ This also dovetails into the Step 2B part of the analysis regarding whether the limitations are substantial more. The more that gets abstracted out in step 2A means the more that must be considered as part of the 2B analysis.

  • [Avatar for Night Writer]
    Night Writer
    November 28, 2016 03:45 pm

    The way to understand 101 is simple. Their is an abstraction in the head of the judge and they compare it to the claimed invention. It is witch law. Patent law is comparing the claimed invention to prior art. And making sure it is enabled and supported in the specification.

    Very simple to understand 101 once you understand this. Then all of the 101 jurisprudence is whatever bizarre abstraction is in the head of the judge is compared to the claimed invention and any result the judge wants is produced.
    Sure you can figure out all their preferences etc., but the key to understanding 101 jurisprudence is that it is not law, but equity.

  • [Avatar for step back]
    step back
    November 28, 2016 03:40 pm


  • [Avatar for Anon]
    November 28, 2016 01:57 pm

    The term “void for vagueness” comes to mind.

    Would the High Court be able to recognize such in their own scrivening…?

  • [Avatar for Valuationguy]
    November 28, 2016 12:27 pm

    With Prost authoring the decision….I’m just curious on why you appear surprised. Prost to me needs no evidence to support or inject her agenda of patent destruction into her decisions….no matter how convoluted, bizarre, or false the reasoning. The recent paralysis at the SCOTUS since the loss of Scalia has only emboldened her and her allies to strike down even more patents in less transparent ways…knowing that the current makeup of the SCOTUS doesn’t have the fortitude or votes to currently overturn her agenda.

  • [Avatar for step back]
    step back
    November 28, 2016 09:28 am

    Ditto what EG said.

    All this pompous deference to the supreme minds of our hopelessly out of touch SCOTeti is counterproductive.

    A full out attack must be mounted against the way the inhabitants of our judicial Mount Olympus took out their coloring crayons and drew up a kiddies’ map (“framework”) on how claims are “drawn to” fundamental abstract building blocks of their self proclaimed ingenuity.

    There is nothing ingenious in their babblings. They are simply the three plus unthinking stooges fumbling and tumbling across the circus stage in accordance with the wishes of their masters, otherwise known as “friends” (amici) of the court.

  • [Avatar for EG]
    November 28, 2016 09:00 am

    Hey Gene,

    Until SCOTUS’ nonsensical and broken Mayo/Alice framework is overruled by Congress, we’ll continue to see these sorts of arbitrary rulings. Frankly, I could predict patent-eligibility better now with a Ouija board.