Supreme Court Denies 43rd Petition for Cert on 101 Grounds in Villena v. Iancu

One must ask why the Supreme Court would ask advice from the Department of Justice for a point of law when one panel of the Federal Circuit holds for patent eligibility, yet consider the same point of law unworthy of attention when another panel holds against patent eligibility.”

https://depositphotos.com/151451790/stock-illustration-happy-birthday-greeting-card.htmlTo kick off the week that Alice turns five, Bud Mathis examines the Supreme Court’s 43rd denial of certiorari on a patent eligibility case. The author acted as counsel for the petitioners.

Villena v. Iancu (Supreme Court Dkt. No. 18-1223), which is the 43rd patent eligibility case to be considered for certiorari since the notorious Alice Corp. decision, was denied cert. on June 10. Villena would have been the 45th patent eligibility case to be considered for certiorari, but the Supreme Court kicked the can over to the Solicitor General for both Vanda Pharmaceuticals and Berkheimer, which happen to be Alice/Mayo cases in which the Federal Circuit held the inventions at issue to be patent eligible. That’s no coincidence. The rough probability of waiting through 43 petitions outlining the capricious decisions from the lower courts before the Supreme Court might generate a “yes” to certiorari is well-above one standard deviation and approaching two standard deviations.

It is beyond evident that the Supreme Court refuses to clean up its own mess and will continue to do so for the indefinite future.

Timing is Everything

The Villena case involved the Federal Circuit’s rejection of claims relating to “devices and methods capable of producing and quickly delivering large numbers of computer-derived estimates of residential properties known as “Automated Valuation Model” (“AVM”) estimates (or values).” Villena argued that its particular reduction to practice of these methods and systems made AVMs accessible to a larger population and more reliable and should have been considered patent eligible. The examiner initially rejected the application based on Section 102, 103 and 112 grounds, but in an answer to Villena’s appeal brief added a Section 101 rejection.  “In his terse § 101 rejection, the Examiner failed to cite a single iota of evidence that providing AVM values ‘is something that is a fundamental economic practice that has long been prevalent in our system of commerce,’” Villena argued in its petition to the High Court.

Villena had the benefit of five years of capricious horror stories from the Federal Circuit thrown onto the Supreme Court’s doorstep to consider. Villena benefited from the brilliance of a lot of dedicated attorneys dealing with an increasingly bizarre string of numerous, absurd, and capricious Federal Circuit decisions. Villena benefitted from a string of brilliant law school professors writing on the subject. Villena went to conference on June 6, 2019—the 75th anniversary of D-Day. Coincidentally, the previous two days in Room 226 of the Senate Dirksen building were dedicated to discussions on patent eligibility, where the great majority of witnesses expressed substantial criticism of the Alice/Mayo doctrine, and riveting testimony by, for example, Judge Paul Michel and Sherry Knowles, who provided information on just how capricious and destructive the Alice/Mayo doctrine is. The various discussions of Alice/Mayo can be found HERE and HERE.

Burning Down the Barn

This is not to say that everyone hates the Alice Corp. decision. Certainly, Google et al. are happy. I will admit that Alex Moss of the Electronic Frontier Foundation (EFF) gave compelling testimony as to the destructive effects of bad patents on small businesses. I agree with Ms. Moss’ position that there are ruthless sharks misusing the patent system for illicit gain. My problem with Ms. Moss’ position is that Alice Corp. is like burning the barn down to address a mosquito problem.

Villena had the advantage of being an example of reductio ad absurdum jurisprudence where it was conclusively proved that both the USPTO and Federal Circuit are so out to lunch that pointing to a more bizarre decision is nearly impossible. The Villena fiasco proves the following, as laid out in Villena’s petition for cert.:

  • The judiciary has de facto rewritten the statutory patent law into something unrecognizable.
  • Completely unknown and nonobvious limitations as evidenced under § 102 and § 103 of the Patent Act (issues of fact) nonetheless can be well-understood, routine, and conventional under § 101.
  • There really is no actual requirement to consider claim limitations as a whole, ordered combination. It is officially a fiction that may be ignored.
  • Preemption has no place in the preemption concern that underlies the exceptions to patent-eligibility under § 101. What remains is a meaningless search for an “inventive concept.”

In my opinion, Villena further proves that:

  • The Federal Circuit is shamelessly willing to misrepresent the evidentiary record when addressing an Alice/Mayo
  • Berkheimer is already dead at the Federal Circuit.
  • The requirement for “invention,” while rejected by the Supreme Court as a condition for patentability under § 103 (see Graham v. John Deere, 383 U.S. 1, 11) is nonetheless appropriate to determine patent eligibility under § 101.

The Alice/Mayo doctrine is a proven failure. The “rough filter” of Section 101 under the doctrine of invention is nothing but a capricious flame-thrower that allows examiners and judges to torch any patent claim that fails to suitably impress. Imagine a PTAB panel holding that five separate claim limitations can be unknown and nonobvious under Sections 102/103 and yet be well-known, routine, and conventional under Section 101. Imagine a PTAB panel that refused to address the claims as a whole and that routinely prejudiced an appellant. Imagine a Federal Circuit panel that refused to set aside such a Section 101 decision while proclaiming that there was sufficient evidence to support factual issues the USPTO never addressed. The problem is understandable. The Federal Circuit had painted itself into a corner with one lawless and bizarre decision after another until all that was left in Villena was to close one’s eyes and ignore the issues.

A String of Failures

Turning back to the Supreme Court, one amazing part about the Supreme Court’s denial of certiorari is that Villena shared a common issue with the Berkheimer case: the requirement that evidence be available to support the idea that claim limitations be well-understood, routine, and conventional. The only proper course of action would have been to hold the Villena case in abeyance until Berkheimer was decided. That didn’t happen, and one must ask why the Supreme Court would ask advice from the Department of Justice for a point of law when one panel of the Federal Circuit holds for patent eligibility yet consider the same point of law unworthy of attention when another Federal Circuit panel holds against patent eligibility. The Supreme Court’s Villena certiorari decision is problematic by any metric including due process, equal protection, and some de minimus level of intellectual honesty. All that said, Villena is merely the latest failure in a string of failures spanning five years of failure. However, as with the Federal Circuit, the Supreme Court doesn’t intend to be fair.

Decades ago the honorable Justice Jackson criticized the Supreme Court’s “strong passion” for striking patents down “so that the only patent that is valid is one which this Court has not been able to get its hands on.” Jungersen v. Ostby & Barton Co., 335 U. S. 560, 572 (1949). As of today, the Federal Circuit and Supreme Court have reversed exactly zero Alice/Mayo rejections from the USPTO. They’ve created the perfect killing field for patents.

It’s time for Congress clean up the mess the courts in their ineptitude and hubris created, and the recent Senate hearings are a hopeful sign. We as a society love to mock our politicians but hold our judges in high reverence. The legal community goes into the vapors when one dares to use words about judges and justices we routinely assign to congressmen and senators. However, between the politicians and their Article III counterparts, only Congress merits respect on this issue.

 

The Author

Burman York (Bud) Mathis III

Burman York (Bud) Mathis III is a sole-practitioner in the Washington D.C. area with experience in patent drafting and prosecution, opinion writing, due diligence, litigation and appellate work. Mr. Mathis technical expertise and experience is far-ranging. For example, Mr. Mathis’ experience covers a wide variety of highly-technical subject matter that includes wired and wireless communications (including MIMO, 3G, 3GPP/LTE, D2D and 4G technology), analog and digital electronics, image processing, semiconductor devices and processes, solid-state physics, material science, printers and copiers, projectors, cameras, speech recognition and synthesis, xerography, cryptography, control systems, magnetic and optical disc technologies, fiber optics, MEMS technologies, nanosensors, GPS navigation systems, software, computer networking and business methods.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 26 Comments comments.

  1. Concerned June 16, 2019 6:25 pm

    B:

    I understand the frustration. My application was shot down under s101 also. The Examiner claimed well understood, conventional and routine, yet no s101, s103 or s112 rejections.

    No evidence offered by the Examiner. and no rebuttal of my evidence that proved nobody on Earth is using my process or has used my process. Not one of my claims individually or as a whole has ever been used (period).

    I get it but I do not appreciate it. Patents are to be destroyed at all costs regardless if a legal reason exists. Just reject by any and all means truthful or otherwise.

  2. B June 16, 2019 10:35 pm

    @ Concerned “I understand the frustration. My application was shot down under s101 also. The Examiner claimed well understood, conventional and routine, yet no s101, s103 or s112 rejections.”

    The Supreme Court stated in Cuno Speed (1941) (https://supreme.justia.com/cases/federal/us/314/84/) that, without “invention” measured by the flash of “creative genius,” Congress exceeds its authority under Art 1, s8 of the Constitution to allow patents to be issued.

    Graham v. John Deere tells us that removing “invention” from 103 doesn’t violate the Constitution.

    The question remains: why is it Constitutionally required to measure patent eligibility (101) under the standard of “invention” but not Constitutionally required to measure patent validity (103) under the standard of “invention?”

    Berkheimer asks the question whether patent eligibility is an issue of fact or of law. It’s a badly-worded question. Stupid actually. I’d tell you to appeal under the exact same question, but the Federal Circuit judges act dishonestly and inconsistently. In all actuality most CAFC judges are morally offended at the idea of patents and don’t mind lying here and there to destroy a person’s intellectual property.

    Outside of Judge Moore and two others, the rest of the CAFC doesn’t seem to realize that determining whether something is “well-known, routine, and conventional” is a comparison of claim limitations to the prior art – or they will do what Judge Stoll did to my clients – knowingly misrepresent the record.

    Years ago I told my clients that the Courts weren’t the same miserably, dishonest gits as the USPTO – that the Federal Circuit wasn’t in the habit of dismissing issues of fact without evidence, making brain-dead statements, lying about the record, yadda yadda yadda.

    The courts made a liar out of me.

    You cannot imagine the feeling of personal disgrace I feel after standing up for the integrity of the Federal Circuit with my clients only to have a CAFC panel lie through their teeth on some issues and unlawfully ignore those issues that interfered with their outcome.

  3. B June 16, 2019 10:37 pm

    @ Concerned “I get it but I do not appreciate it. Patents are to be destroyed at all costs regardless if a legal reason exists”

    If a legal reason doesn’t exist the CAFC will invent one

  4. Pro Say June 16, 2019 10:59 pm

    Bud — SCOTUS not taking this miscarriage of justice case is worse than sickening.

    First the Examiner / Patent Office robbed you and your clients.

    Then the CAFC robbed you and your clients.

    And now SCOTUS has robbed you and your clients.

    This is evil plain and simple.

    EVIL.

    Only Congress can end this madness.

    Only Congress.

  5. Concerned June 17, 2019 4:47 am

    B:

    As a lay person, it is hard to understand the s101 “matter of law” view that is void of facts and the truth.

    Sure, murder and going to prison for life is a matter of law. Does it matter that the facts of dna, an air tight alibi and fingerprints all prove a person’s innocence? Not under the patent standard of law.

    Hard to understand any legal setting where truth and facts do not matter. Harder to understand why such a legal setting is even permitted to openly exist.

  6. Joachim Martillo June 17, 2019 7:21 am

    I understand that Mathis and his clients are angry, but there are some serious problems with how the patent application was written. It might have been better to treat the system as combination of a software invention qua manufacture with several other standard components.

    I discuss how to claim a manufacture that is a software invention in Preface: Fixing the US Patent System (Part I).

    Focus on sections entitled: Abstract Idea, Validity of Claims that Include a Computer Program…, and New Claim Type…

    I have asked Director Iancu about this claim format. He expressed concern that SCOTUS might consider a logic gate state a conventional component. I disbelieve, and Iancu’s engineering background is far different from mine.

  7. Anon June 17, 2019 7:44 am

    My first reaction is one of lack of surprise, as the unwillingness of the High Court to do more than muck things up was well testified to in the recent Tillis Congressional hearings.

    My second reaction is “only” 43rd? I thought that the hearings indicated the denial of cert on 101 items was in the eighties.

    My third reaction is that it appears that the Court is shying away from taking control of its own mess by way of the Kavanaugh Scissors route, and is taking a “wait and see what Congress actually does” path instead.

    I think that could be sub-optimal.

    On the personally gratifying side, it would have been classic to have the Court pick up and employ a mechanism that i first noted. Also, with the Citizens United effects certainly to be felt in efforts of Congress, a properly stern rebuke of the Court is not likely to be obtained, and even though Official “Reprimand” by way of abrogation of Court-scrivened 101 mess may be provided, I think that Congress will NOT rebuke the Judicial Branch harshly enough, and that judicial branch will continue to muck with statutory law with their continued insistence on thrusting their fingers into the wax nose of patent law (and possibly expanding that wax nose from merely 101 to any modifications in 100 and 112).

    To this end, I would advise Tillis et al to take a “bite-size” approach and ONLY fix 101 at this point in time.

    I make this suggestion though with little hope of its being taken up and followed, primarily because any bill to make it though at this point may well need to contain “compromises.”

    Separately, Bud, my condolences for the effects of putting your faith in the CAFC. I have noted for quite some time now (dating back to the struggles that Rader and before), that the CAFC simply lacked a strong enough willed judge capable of pushing back against the training of “fire-hosing the simians in a cage” Supreme Court and the relentless denigrations of the Court towards the lower court actually set by Congress to ensure patent law was being judged properly. To this end, the optimal solution of Jurisdiction stripping and resetting a properly equipped Article III court (NOT being the Supreme Court) will not likely be a consideration of the current Congress — and I surmise is the reason why the Court is not willing to apply the Kavanaugh Scissors.

  8. Ternary June 17, 2019 10:32 am

    “… SCOTUS might consider a logic gate state a conventional component.” I can live with that. A “logic gate” nowadays is like a gear, a lever, a motor, an axle in the mechanical arts. It is usually the combination of multiple logic gates that is unconventional and not routine. And how are multiple logic gates combined? Indeed, by a configuration tool called a computer program! This is why the current use of the concept of a “general purpose computer” (as analyzed by Anon in another IPWatch post) is such travesty of its original meaning.

    The Courts (and some Art Units) live in a universe that is entirely different from where the inventors live and operate. A sort of Alice in Wonderland world. It is getting worse, not better. I am now in discussion in a case wherein I maintain that an addition over a finite field GF(2^n) is a description of a circuit and not strictly a mathematical expression. (In fact, it is a circuit realized with n XOR devices.) It is like using the term “modulo-2 addition circuit” for an XOR gate. It is exactly the same. But it uses the term “addition.” Oh no, mathematics. Alarm: Abstract, abstract, abstract!!!

    To be fair, it is a particular group within the USPTO that has this issue. And of course almost all of the Courts.

  9. B June 17, 2019 11:28 am

    @ Anon “Separately, Bud, my condolences for the effects of putting your faith in the CAFC. I have noted for quite some time now . . . that the CAFC simply lacked a strong enough willed judge capable of pushing back against the training of “fire-hosing the simians in a cage”

    Respectfully, I disagree. The judges at the CAFC are willing to outright misrepresent – knowingly and willingly – anything. They’re willing and eager to ignore issues, the law, anything, and why? This isn’t about a paucity of will – it’s about a lack of basic integrity.

    My clients are financially ruined thanks to the dishonesty and outright stupidity of the PTAB and CAFC.

    FWIW, the Investpic case will be considered for cert on the 20th. Taranto created his own moronic test having nothing to do with preemption (not even mentioned in Taranto’s opinion) and that vitiates 112(f) by declaring all functional claiming invalid. It’s as if no one at the CAFC ever read Alice Corp. and 112(f). I wrote an amicus in Investpic and wrote articles lambasting Taranto’s outrageous shortcomings since the CAFC published the Investpic decision. That said, I expect cert to be denied.

    I’m hoping articles like this will raise pressure on the courts and awareness in Congress.

  10. B June 17, 2019 11:47 am

    @ Joachim “I understand that Mathis and his clients are angry, but there are some serious problems with how the patent application was written. It might have been better to treat the system as combination of a software invention qua manufacture with several other standard components.

    Respectfully, your statement about the specification is idiotic, and had you read the Villena opinion in light of the briefing you’d realize that your points didn’t make the radar.

    As to “standard components” I wasn’t stupid enough to admit that a single claim element was “standard,” and there was no evidence of a single claim element being standard. Hint: FIVE SEPARATE CLAIM LIMITATIONS were held by the PTAB to be completely unknown and nonobvious, and Alice Corp. expressly states that the use of a computer makes no difference in the Alice/Mayo analysis.

    Inserting “standard components” into a test that discounts everything that is “routine?” Are you serious?

  11. B June 17, 2019 12:23 pm

    @ Joachim “It might have been better to treat the system as combination of a software invention qua manufacture with several other standard components.”

    FYI, your standard components” argument just lost (again) last week. I understand what you’re trying to do – just that it makes no difference

    “Reese does not point to any non-generic telephone net-work components and instead, asserts that “no successful combination of caller ID and call waiting yet existed” and that his “combination of known switching equipment with the steps set forth” in the claims removes them from abstractness”

    http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1971.Opinion.6-10-2019.pdf

    Respectfully, you’re missing the point on Alice Corp. New, improved, breakthrough, non-preemptive, nonobvious – none of this matters. What matters is the search for an inventive concept – a term the courts refuse to define

  12. Joachim Martillo June 17, 2019 12:45 pm

    I do not propose claiming a logic gate. That approach would be ineffectual and silly.

    I propose to claim an unordered set of Logic Gate States (a data structure). Or

    I propose to claim an ordered sequence of Logic Gate States (a subroutine).

    Claiming unstable and transitory chemical intermediates is longstanding practice.

    Why shouldn’t it be possible to claim transitory digital electronic intermediates, which are obvious manufactures and thus certainly § 101-eligible?

    It’s time to explain to judges and justices that a compilable or synthesizable program is not mathematics but is really a specification for execution (logic state transition) by a program-executing or a progammable device.

  13. PTO-Indentured June 17, 2019 3:07 pm

    ‘Hate Crime’ in effect? Time to so analogize? All in favor raise your hands.

    We among the low-ranked peons of patents have flat out not been able to reverse the ‘win’ momentum, proportionality that untold amounts of corporate wealth purchase, day-in day-out, continually yielding a ‘patents bad’ top-of-mind attitude (prejudiced thinking of enormous scale). The patent troll narrative (having never adequately, truthfully, comparatively been substantiated) ‘has won’. This is the ‘devil known’. We need to admit it, recognize in its prevailing fear-engendering powers the death-grip bias, favoring oligarch business, that has overtaken a lion’s share of patent-fate decision makers.

    Yes but, are they wittingly or unwittingly perpetrators of a ‘conditioned’ lizard-brain level of decisions, meant (via a troll narrative) to reap what looks more and more like practices out of some hate-crime playbook?

    In even a brief analysis of how the alleged ‘troll narrative’ succeeds, one can quickly see (coincidence? you be the judge) a number of the deplorable tactics used by hate-crime mongerers: continual denegrating and minimizing of a group to an alleged ‘lesser class’ status preferably using an intended-derogatory easy-to-remember nickname; asserting (falsely) a supposed superiority of a (alleged) ‘greater class’ claiming to have been / to be continually threatened and substantially diminished by actions of the ‘lesser class’; creating a double-standard system and privileges favoring the ‘greater class’; amassing and directing over-powering resources both personal and institutional against the alleged lesser class, such that the latter is relegated to an outcast status, experiences guaranteed-diminishing opportunities, is impotent against the proportionality of such resourses; and of course, is preferably left with only a ‘get out’ or face annihilation choice*. Corporations who have been a perpetrator of, or an accomplice in any of these, deserve to now be called out for having being thus.

    * These are but a sampling of the institutionalized biases / results to which the group reading this article can attest.

    Make no mistake, the point of this is not to say that U.S. inventors have encountered anything like that which results from institutionalized racism. It is instead an effort to now make a stand, having a footing sufficient to go eye-to-eye against prevailing, tremendous resources which have, and will continue unless effectively challenged and finally reversed, to produce gross, often humiliating, and opportunity-crushing injustices. And those more subtle e.g., wherein we of the peon class, in response to reading the above article can conclude (with an understandably earned PTSD-like timidity): “Realistically, maybe we dare not hope for anything more at this time than a 101 bit of tweaking.” (paraphrased).

    This is not sufficient. Patent related decisions being consulted on and decided now, can and will very likely have consequences that last for decades (for, or invalidating, entire patent-terms) to come.

    The ‘troll’ / ‘patents bad’ false narratives — well-fueled ($$$) for over a decade, to work their tentacles deep into the psyche of U.S. IP-fate decision makers — have yielded their intended ‘minds made up’ with accompanying attitudes, that can further be, and those having proven to be, a terrible thing.

    Now, more than ever, a memorable context with a sufficing counter-force of equal or greater staying power, is urgently needed.

    And, if for all intents and purposes something ‘looks like’, ‘sounds like’ and ‘acts like’ a hate-crime, then… at least analogize it as being such, so that there is a least some hope that an intensity of such an analogy prevails over an intended lie (narrative) and all witting or unwitting decison-making attributable to ‘the lie’.

    I respectfully suggest we deliberately and thoughtfully give this ‘the college try’ even if repeated a mere fraction of the times ‘the lie’ has been purported. If it doesn’t succeed, we can always choose to go back to remaining essentially powerless.

  14. Pro Say June 17, 2019 5:06 pm

    Joachim — (Since you’ve taken the time to review and consider the Villena app’s disclosure / spec) what would be helpful to us all would be if you were willing to posit a claim utilizing your above-stated claiming approach … I know I’d like to better understand it.

  15. Ternary June 17, 2019 9:14 pm

    Of course you can claim a “logic gate.” Why not? You can claim a physical realization of a “logic gate.” The representations of all 2-input/1-output binary logic gate are well known. There are 16 of them. You can realize them as TTL, as relays devices, as optical devices, in CMOS, even in memory. All of them have been tried and realized. So in that sense, individual binary logic gates are somewhat conventional, if you don’t use a novel physical realization. No realization of a logic gate is abstract (even if you describe it in mathematical or Boolean logic expression.) There are no physical 0s and 1s as physical logic states. That is just a name. What exist (in the physical binary realization) are states LOW and HIGH. The physical state LOW may actually be represented by the logic state 1.

    In some applications, such as error correcting coding and cryptography, and in machine arithmetic the processing speed and/or gate count is important. In those applications you may see claims wherein the actual gate structure is claimed.

    In many other applications, the actual switching speed is so great that you don’t have to worry much how about the actual realization of the switching patterns on a gate level. In that case a certain level of abstraction, a Boolean description, or an Assembler language, or a compiled language description can be used. If needed, one could still map out all steps on a physical switching level. But since Shannon’s Master Thesis, engineers know that this is not necessary, as the language description is equivalent to a physical realization.

    There is this huge confusion between what engineers understand to be a level of abstraction (but still realizable) and what the Courts consider to be directed to an abstract idea.

  16. Joachim Martillo June 17, 2019 10:17 pm

    I am in the midst of writing a complex appellate brief, but I will try to put an example claim together by the weekend.

    I have one qualm. Take a look at the patent specification in the appendix. When I put on my engineering hat, I consider the written description and drawings to be far closer to a functional specification than a design spec, which is used in the role of enablement for an engineering project. From such a functional spec I can generate a design spec, which I might use with other docs in producing the written description and drawings.

    Because my design might differ fundamentally from that of the inventor, I consider the written description to have a serious § 112 (a) problem both with respect to possession and also with respect to enablement.

    Now I know that the rejections are made on all sorts of grounds — some of which seem contradictory. Courts, patent prosecutors, and litigators have tremendous problems with software inventions. For this reason and others, I recommend changes to § 100, § 101, and § 112.

  17. Pro Say June 17, 2019 10:37 pm

    “I am in the midst of writing a complex appellate brief, but I will try to put an example claim together by the weekend.”

    That would be great Joachim — thanks.

  18. Joachim Martillo June 18, 2019 7:25 am

    Ternary@15. Advocates for software inventions seem to fail to explain adequately to the court what the manufacture is that constitutes a software invention.

    I am not arguing that a logic gate state claim is easy to write. I consider such a claim comparable to an antibody pharma claim. At least the latter sort of claim usually does not fall victim to § 101-eligibility doctrine.

    Once the Courts understand what a software invention really is and software invention claims describe the metes and bounds of the actual invention, § 101-eligibility doctrine should be obsoleted.

  19. Ternary June 18, 2019 10:33 am

    Joachim, I think we mostly agree. However, I do not believe that the fault lies with advocates of software inventions. The disconnect is with the other side (Examiners and Courts) who refuse to accept what a software invention actually is, and are more concerned about the intent of an invention.

    There is fundamentally no functional difference (with some notable exceptions) between a software description of an inventions or a gate-level description. The most significant difference is that “descriptive” variables on the gate level are physical states, while on the software level the descriptors are usually names and labels with a “meaning” to an outside reader. That is, a 64 bit word that is stored on a memory has no direct interpretation. Clearly an “amount” stored in memory has a financial interpretation.

    Blaauw and Brooks, both students of Aiken, are the co-architects (with Amdahl) of the legendary IBM System/360, arguably the first commercial “general purpose computer.” Blaauw and Brooks created a computer design theory (based on Shannon’s approach) that greatly reduces the complexity of the design process. They distinguished 3 design levels: the highest level is the architecture that describes the functional aspects of a machine, as seen by a user; the middle level is the “implementation” or the logic design of the functions; the third level is the physical realization of these functions. To be relieved of the “physical realization” Blaauw/Brooks used a computer language (APL) to design the functional units. APL also allows a higher level architecture description. All these levels are equivalent. That is, if you can describe it on an architecture level, you can realize it on the physical level.

    The above is so fundamental to computer design and consequently to application design (which uses the physical realization) that it seems useless to have to argue this with any reviewer. I had in one case an Examiner argue that a “truth table” stored in addressable memory is different from a combinational circuit and abstract, because it is a software application. Hopeless.

    The issue in software inventions are the intent of the inventions, not the lack of physical realization, which (mostly) everyone understands to be enabled.

  20. Anon June 18, 2019 10:37 am

    Joachim,

    I would point out to you that Bud’s own personal misfortune is an example of the failure of your advice to “just explain better.”

    It is more than just a little Pollyanna of you to not account for the fact that the Court is itself already having a policy in mind (regardless of facts or controlling law) when it re-writes to its own liking the statutory law of 35 USC 101. What you state as “should be obsoleted” should have NEVER occurred in the first place.

  21. Joachim Martillo June 18, 2019 12:50 pm

    I with both Ternary and also Anon, but I qualify that I see more confusion in patent-related decisions than I see policy. I spoke with one judge on the CAFC to get an idea of acceptable claims to a software invention.

    Basing claims to a software invention in information derivable from a software architecture is better than purely functional claims, which are what the judges believe they are seeing, but I am trying to develop a claim format that is somewhere between Blauw/Brooks Level 2 & 3 and that pertains not to the computer but to a software invention qua manufacture. Only by rubbing the noses of the judges in logical gate states are we ever going to get past § 101-eligibility doctrine.

  22. B June 18, 2019 1:50 pm

    @ Anon “I would point out to you that Bud’s own personal misfortune is an example of the failure of your advice to ‘just explain better.’”

    Not my personal misfortune. It’s my Clients’ misfortune. I’m angry, but you misunderstand why.

    I told my Clients to trust the courts, and the courts screwed them.

    My mistake was believing that the Federal Circuit had an iota of honesty. Under the APA the USPTO had three strikes – multiple violations of law, ZERO evidence, and prejudicial behavior. How could they lose?

    How? Using express misrepresentations in the opinion and lies of omission. The question is: why? What compelled CAFC judges to engage in such serial misrepresentations? There’s a reason the APA isn’t mentioned in the Villena opinion. There’s a reason it took a record five months after oral argument to issue an opinion.

    I raised the question in Berkheimer before and after the Berkheimer decision was issued. Quoting myself is a bit brash, but I’m on record as stating the point of law in Berkheimer was dead long ago.

    https://www.ipwatchdog.com/2018/08/01/no-light-at-the-end-of-the-tunnel/id=99473/

  23. Joachim Martillo June 18, 2019 4:04 pm

    [Fixing Typos]

    I AGREE with both Ternary and also Anon, but I qualify that I see more confusion in patent-related decisions than I see policy. I spoke with one judge on the CAFC to get an idea of acceptable claims to a software invention.

    Basing claims to a software invention in information derivable from a software architecture is better than purely functional claims, which are what the judges believe they are seeing.

    BEAUREGARD CLAIMS DO NOT ESCAPE § 101-ELIGIBILITY DOCTRINE.

    I am trying to develop a claim format that is somewhere between Blauw/Brooks Level 2 & 3 and that pertains not to the COMPILABLE OR SYNTHESIZABLE computer PROGRAM but to a software invention qua manufacture. Only by rubbing the noses of the judges in logical gate states are we ever going to get past § 101-eligibility doctrine.

  24. Anon June 18, 2019 4:28 pm

    Apologies Bud, if the “personification” misses the mark, as I generally equate that which is good for the client (itself being proper) as a personal “feeling” of the attorney speaking for the client.

    I definitely “get” that not only was the client “shafted,” but that they were shafted because in part you thought that the court would do the proper thing.

    Also, as from above (your comment 9), we have not always seen eye to eye as to the legal mockery and exactly who is to blame for the same. While I certainly agree that there is plenty of blame to go around, in the judicial branch, my MAJOR party to be blamed is first and foremost the Supreme Court. Certainly, the lower court has its share of blame. But — and per my comment about that lower court being trained as if they were firehosed simians in a cage — it is the Supreme Court that holds the firehose.

  25. B June 18, 2019 8:12 pm

    @ Joachim “I am trying to develop a claim format that is somewhere between Blauw/Brooks Level 2 & 3 and that pertains not to the COMPILABLE OR SYNTHESIZABLE”

    Respectfully, you’re missing the entire point of the Alice/Mayo test. It’s not about software, gates, tangible or intangible, well-understood, routine, conventional, tangible, man-made, machines, transformations, improvements, statutory language, etc.

    It’s about wrecking patent portfolios in the name of “invention,” a word so stupid the courts haven’t been able to define in over 160 years.

    Can you tell me what the heck an “inventive concept” is?

    It’s not about well-understood, routine, and conventional. Villena, Investpic, Electric Power Group, ChargePoint, and about a hundred other cases prove this. I demanded the CAFC define the word bon rehearing and every one of those black-robed dullards passed.

    @ Anon “I definitely ‘get’ that not only was the client ‘shafted,’ but that they were shafted because in part you thought that the court would do the proper thing.”

  26. Joachim Martillo June 19, 2019 6:39 am

    While the Prometheus claims were almost certainly unpatentable, the legal logic of the Mayo part of the Alice-Mayo test is simply inconsistent to the point at which it becomes embarrassing to read. The Mayo v Prometheus case will eventually be studied in US law schools as one of the great embarrassments of SCOTUS.

    Defining an invention by the presence of an inventive concept is circular and useless.

    I am inclined toward originalism and try to understand the patent system from the standpoint of the thinking of the late 18th and early 19th century. From an historical POV, all these terms have clear and obvious meaning.

    The CAFC and SCOTUS are doing some sort of weird allegorical moralistic or casuistic exegesis that went out of style in the study of the classics sometime in the 15th & 16th century. I consider allegorical exegesis to be a symptom of confusion and not of malevolence.