![[IPWatchdog Logo]](https://ipwatchdog.com/wp-content/themes/IPWatchdog%20-%202023/assets/images/temp/logo-small@2x.png){kind=logo}
50 “Most non-big tech lobbyists reason that the positive effects of eliminating 101 exceptions are greater than the negative effects of 100 and 112, so they will support it. But they misjudge the future. Software is already everywhere and will permeate more and more products. Soon, this will harm them too.”
When it was announced that I would be testifying to the Senate Judiciary Subcommittee on IP about Section 101, I was surprised. Not only did they grant a critic of the 101 roundtables a chance to speak, but not one inventor who used patents to fund a startup has testified in any patent-related hearing in decades.
This gave me faith that Senators Tillis and Coons are serious about fixing 101 right by considering what inventors need.
When the hearing was announced, several inventors contacted me. They wanted to personally tell their stories to Congress. They trusted the government to protect them, but instead lost their careers, their secrets, and their investments of hard work and money. A few even lost their families, their home, or their health.
Six years ago, I started walking the halls of Congress. I also crossed the country in my pickup to visit inventors in the majority of the lower 48 states. I met many inventors who had their companies crushed, but it didn’t sink in until those phone calls. I had just become the only voice speaking for all of them.
Different Language, Same Damage
The inventors were happy about eliminating all 101 exceptions, but the draft language of 100(k) and 112(f) transfer the damage to those sections.
100(k) will bring back 101 exclusions because “technology” will be interpreted by the same anti-patent courts. No doubt business methods and software will be excluded, but there will be others.
Software can be made to do anything because software code is made of multi-purpose building blocks that can be woven together in almost infinite ways to accomplish the same thing.
But under the proposed 112(f), every possible way of coding the same thing must be disclosed in the specification. For any given thing, it is impossible to think of every way to arrange the building blocks in all 571 coding languages.
If even one is not disclosed, a hole is created that an infringer can slither through by simply rearranging the building blocks to perform the invention but avoid infringement. And if a new coding language comes out after the patent is filed, the patent will not cover it.
Code is also encrypted and compiled to machine language, which will make it impossible to determine infringement prior to filing suit and getting discovery.
Establishing an “equivalent” under the current 112(k) will be difficult for the courts. Each programming language has a unique set of keywords and a special syntax for organizing program instructions. The same thing coded in a different language will not appear equivalent and courts will struggle determining equivalence.
In the end, nothing will change. Inventors betting their careers and sacred fortunes will be duped into disclosing their secrets to infringers under the promise of patent protection, only to be betrayed.
The effects on early stage investment will be the same. Investors do not invest in dubious assets that have no value and will not stop infringement. For this reason, a patent is an uninvestible asset and this is harming early stage funding in the United States. That will not change. The effects will be the same.
112(f) narrows the property lines of hundreds of thousands of issued patents, effectively taking that property, which will trigger litigation under the takings clause with billions of dollars in damages.
![[[Advertisement]]](https://ipwatchdog.com/wp-content/uploads/2024/04/Patent-Litigation-Masters-2024-banner-early-bird-ends-Apr-21-last-chance-938x313-1.jpeg)
Big Tech’s Role in the Debate
The 101 draft bill is tasked with fixing the broken 101. But 100 or 112 have been working well for decades. So why is Congress proposing the changes to 100 and 112?
101 exceptions deny patents primarily for business methods and software inventions. These are the core technologies underpinning big tech monopolies, and as such, only patented business methods and software can challenge the dominance of big tech monopolies.
101 exceptions have also served big tech by eliminating competition from uppity inventors with better technology. It is a shield protecting the core of their monopolies. But it also protects big tech megamarkets that they fully control through app stores because apps are built on business methods and software.
For example, Apple has 1.4 billion active devices—four times the population of the United States. The only way to put a product on this market is through Apple’s App Store. 101 exceptions make apps untouchable, and therefore shield Apple’s monopoly control over its megamarket.
Eliminating 101 exceptions threatens the very core of big tech monopolies. But, when other industries objected to codifying 101 exceptions, Senators Tillis and Coons eliminated the exceptions. Big tech then pushed the 100 and 112 changes into the draft to stealthily preserve 101 exceptions under those provisions.
Huawei released phones with 5G long before Apple. Huawei also has superior technology in many other areas. While Apple’s phone sales are dropping because of being out-teched by Huawei, their services revenue is rising. The bulk of Apple’s services revenue comes from the App Store. So, Apples’ focus is not on better phone technology. It is focused on increasing phone app revenue.
It is not surprising that Apple has lobbied hard to eliminate patent protection for phone app technologies. Both the app store and the apps can only be disrupted by patented business methods and software. It’s about preserving their monopoly.
But in China, business methods and software are protected by patents. Huawei uses Android to provide its phone apps, so its focus is on developing phone technology in a patent system that protects it.
It should surprise no one that Huawei leads Apple in technology.
Most non-big tech lobbyists reason that the positive effects of eliminating 101 exceptions are greater than the negative effects of 100 and 112, so they will support it. But they misjudge the future. Software is already everywhere and will permeate more and more products. Soon, this will harm them too. But at least they can get back to business now.
But for small inventors and startups that will not be the case. We will not get back into business. Our choice is to be shot in the front of the head or the back.
Time to Decide
I’ve sat for the last couple of weeks arguing with myself. If the 101 language is retroactive and the 100 and 112 language is not, the gap created between the effects of 101 and 100/112 would allow me to defend my patents. Since my patents begin expiring next February, this may be my last chance to recover the 20 years of my life lost to a failed patent system. We could ask Congress for that and they may do it if we agree to support the legislation.
But this patent debate is not inconsequential. It is about the future of America. We are deciding whether America will continue to lead the world in technology, or we will yield that position to China.
If we pass the draft legislation, China will certainty overtake us in artificial intelligence and other technologies critical to our economic and national security. Big tech monopolies will continue to be protected until someday years from now we look back to figure out what happened. But by then, it will be too late.
I’ve made my decision. If the draft legislation codifies 101 exceptions, or if it includes the draft changes to 100 and 112, I am going to do everything that I can to kill the legislation. I hope that other inventors will join me.
Image Source: Deposit Photos
Image ID: 122798564
Copyright: mstanley
![[Advertisement]](https://ipwatchdog.com/wp-content/uploads/2024/04/Patent-Litigation-Masters-2024-sidebar-early-bird-ends-Apr-21-last-chance-700x500-1.jpg)
![[Advertisement]](https://ipwatchdog.com/wp-content/uploads/2021/12/WEBINAR-336-x-280-px.png)
![[Advertisement]](https://ipwatchdog.com/wp-content/uploads/2021/12/2021-Patent-Practice-on-Demand-recorded-Feb-2021-336-x-280.jpg)
![[Advertisement]](https://ipwatchdog.com/wp-content/uploads/2021/12/Ad-4-The-Invent-Patent-System™.png)
Join the Discussion
50 comments so far.
ChrisW
July 10, 2019 03:44 pmWhat’s needed is a separate 101 for software inventions, separate from the 101 used in all other fields. Inventions are too diverse in nature, interpretation, and enforcement for a single 101 to cover every invention equitably for all purposes. Need a 101A, and a 101B. Or, just create a separate codified section for eligibility of software / computer inventions, and let the current 101 be interpreted how its been since 1952 and earlier. The physicists still don’t have a unified theory, how can we reasonably expect the legal field to be successful in having a single eligibity code be applicable to all inventions ?? I think they’re trying to wedge too much into one section of the laws, when another section would handle it, and the rest of us non-software folk don’t have to be bothered by the frustrations of the computer-related inventions. 🙂
staff
July 1, 2019 05:23 pm‘Senators Tillis and Coons are serious about fixing 101’
No one in Congress can restore the patent system when their measures are written or heavily influenced by large multinational infringers (thieves). We will only get more of the same -legalized theft. Inventors must lead the way. We are convinced we must draft the bill ourselves with the help of our like minded allies while working with our friends in Congress. That is exactly what they have asked us to do and exactly what we will do. We welcome the challenge and their support.
For our position and the changes we advocate (the rest of the truth) to restore the patent system, or to join our effort, please visit us at https://aminventorsforjustice.wordpress.com/category/our-position/
or, contact us at [email protected]
Night Writer
July 1, 2019 12:19 pmGreg L >>” I suspect that ‘big pharma’ is just a throw-away epithet of the sort that says more about the speaker than about the one described, in which case I am not sure that the phrase ‘mirror to big pharma’ has any semantic content.”
That is a ridiculous comment. “Big pharma” has a very definite meaning of the large pharma corporations. There aren’t many. In the business pages “big pharma” refers to the few big pharmaceutical corporations like Pfizer.
It is a sector in stocks.
Greg DeLassus
June 27, 2019 03:57 pmNo offense taken. I was trying to convey a light hearted banter. If my #44 seems dour, please re-read it in the light hearted sense in which it was intended. ?
B
June 27, 2019 03:56 pm@ Greg DeLassus “As I said above, I think that scuttling the 101 reforms so long as they come packaged with the 100/112 revisions is an unwise instance of making the perfect to be the enemy of the better.”
I agree despite the reasons I stated above (esp. 100k), which won’t be popular with many on this Board, and let’s face it — the courts are readily capable of screwing up the perfect.
B
June 27, 2019 03:51 pm@ Greg “Um, thanks, I think…”
Take the compliments when you get them.
“I do not have much of a response to this, except to wonder what folks mean by ‘big’ in ‘big pharma.’”
Just FYI, I was most of the Senate hearings. Pharma was split on the issue with the generic drug producers being pro-Alice and the R&D drug people being against Alice. Anyone who doesn’t understand why doesn’t understand Alice. I was merely aping the words being used against you. Whatever “big pharma” is, I don’t think its the problem.
” I suspect that ‘big pharma’ is just a throw-away epithet of the sort that says more about the speaker than about the one described, in which case I am not sure that the phrase ‘mirror to big pharma’ has any semantic content.”
To tell the truth, I fully agree with you. I apologize if you took offense at anything I said.
Greg DeLassus
June 27, 2019 02:54 pm@41 My point is that Mr. DeLassus isn’t evil incarnate…
Um, thanks, I think…
I don’t see his position as a mirror to big pharma.
I do not have much of a response to this, except to wonder what folks mean by “big” in “big pharma.” My company does not yet have even a single FDA-approved product, so our market share is literally 0%. That seems about as far from “big” as one can get. On the other hand, I suspect that “big pharma” is just a throw-away epithet of the sort that says more about the speaker than about the one described, in which case I am not sure that the phrase “mirror to big pharma” has any semantic content.
Greg DeLassus
June 27, 2019 02:47 pm@40 Pharma and Diagnostics:… how’d [the AIA] work out for you?
Er, just fine. Why do you ask?
Paul Morinville
June 27, 2019 02:20 pmB. The letter you refer to that Judge Michel signed supports the draft 101 language, but does not support 100 and 112. Reread the letter. Had they supported 100 and 112, it would have said so.
B
June 27, 2019 02:08 pm@ Anon “Mr. DeLassus has long now had a habit of posting with partial truths and rhetoric in favor of established entities (which happens to coincide with his role as a Pharma inside counsel).”
I respectfully disagree. FYI, Judge Paul Michel just signed onto a letter that endorsed the latest 100, 101, and 112f draft language, and if there’s any judges left worth trusting, he’s in the top handful.
I have an opinion that the 112 language is merely a reflection of what is now based on Citrix. If you want to keep a claim limitation out of 112f throw a bit of structure or a step in the mix. Big pharma isn’t so affected by 112f as is big tech. Anyway, Gene Q wrote a great article on 112f, which emphasizes that structure is the key to avoiding 112f. https://ipwatchdog.com/2017/11/15/primer-indefiniteness-means-plus-function/id=89708/
As to 100K there are two potential pitfalls including the requirement of “technology” and “through human intervention”
“Technology” because I think the word is too limiting. Games, anyone? I personally would prefer to omit the word.
“Through human endeavor” because some knucklehead in a black robe will insist that direct human intervention will be required. These words have pitfalls in big tech, bit little to no effect in big pharma.
My point is that Mr. DeLassus isn’t evil incarnate and I don’t see his position as a mirror to big pharma. He merely has opinions that aren’t 100% popular with the church of patent purists (that would be us). With this I mind, are we to take pitchforks and torches in hand every time someone disagrees on a tertiary issue?
All that said, it is my impression that Congress is trying to do the right thing. While the proposed language may not be perfect, I’m not sure perfect language is achievable. Certainly Judges Taranto, Reyna, Stoll, et al. will screw things up at the first opportunity perfect language or not. I’ll stick to mocking these jurists when they do something extraordinarily capricious or dishonest, but I won’t hesitate to praise them if/when they unexpectedly do something wise.
Anyway, at the end of the day, I’m tired of arguing 101 to clueless judges who refuse to actually read the statute or even opinions they supposedly wrote. I’d rather deal with 112f issues by writing good specs and good claim language – something within my control.
Pro Say
June 27, 2019 01:20 pmWell said Paul, Jeff, Paul Morgan, Night Writer, Anon, and B.
Indeed Anon; half truths are NO truth at all.
If pharma and the closely-related diagnostic folks think the 101 / eligibility disaster is bad, just wait until they see what the courts do with the proposed 100(k) and 112(f).
Pharma and Diagnostics: Remember back when you supported the AIA?
Well, how’d that work out for you?
Greg DeLassus
June 27, 2019 01:08 pm@36 “[M]ost or all of your clients are BioPharma… [Y]our clients would be better off without draft 100 and 112 legislation as long as they get the draft 101 legislation.”
Three brief responses:
(1) I am an in-house counsel, so depending on how you care to think about it I have either only one client (Nant), or nine (the a href=”https://nantworks.com/” rel=nofollow>(the Nant family of companies). As you can see from the linked chart, Nant has pharmaceutical business interests, but it also has business interests in mobile communications technology, artificial intelligence, cloud data storage, etc.
(2) I really could not speak to what exact statutory revisions would best serve my company. Maybe the statute that you propose would work well for Nant, or maybe it would not. I really do not know. In any event, given the diverse range of industries in which my company works, I cannot afford to slight one industry in favor of another. I want a statute that works well for all industries, and for all U.S. consumers.
(3) In any event, it is not clear to me that we get choice between a statute with the 100/101/112 revisions, or a statute with only the 101 revisions. I gather that the choice is rather between a statute with the 100/101/112 revisions and the statutory status quo. If so, I vote for the proposed 100/101/112 revisions. As I said above, I think that scuttling the 101 reforms so long as they come packaged with the 100/112 revisions is an unwise instance of making the perfect to be the enemy of the better.
Anon
June 27, 2019 09:39 amMr. DeLassus has long now had a habit of posting with partial truths and rhetoric in favor of established entities (which happens to coincide with his role as a Pharma inside counsel).
No one should be surprised that Greg posts the views that he does that it is (somehow) NOT patents that provides for a disruptive innovation protection engine that very well DOES provide a mechanism for resetting the more-monopoly type power of established entities.
There is indeed a kernel of truth in his statement that many small entities innovate with the aim of being bought out by established entities.
And there is a kernel of truth that WHEN a large established entity DOES “buy in” to the innovation set-up BY respecting the power of patents AND buying those patents that small innovators come up with, that THEN the established entity is indeed more powerful.
And there is a kernel of truth that AT THAT TIME those government agencies that do watch over too much power conglomeration, SHOULD be acting (and have the resources to act).
BUT NONE OF THIS speaks to the other side of the coin that patents DO provide the “trust-busting” aspects that people do remark upon. It is a fallacy to accept Greg’s partial truths and jump to the overall conclusion that he would posit.
The plain fact of the matter is that the ENTIRE large-scale “Oh Noes Tr011s” scare campaign is the product of established entity propaganda, and that this propaganda effort was the direct result of people realizing that the Armageddon War Chest efforts of established entities stockpiling their own patents could easily be defeated by having innovation protection property held by a non-practicing entity.
Sure, there were “bad players” (as there WILL BE in all ventures of human endeavors). But the bottom line remains the same: established entities would rather compete on non-innovation factors – such as those that the established entities HAVE by being established – rather than on patent-protected innovation.
Half-truths are always the enemy of full truths.
Night Writer
June 27, 2019 07:47 amGreg >>In other words, imagine that Snap could patent their methods, and that they were amenable to being bought out. In that hypo, the patentability of their methods actually entrenches monopoly. In other words, it is scarcely intuitive that expanding the scope of patent eligibility under U.S. law will act as a check on monopoly. It is at least as plausible that such a change in law would enhance and accelerate monopolization trends in this industry.
These are the most ridiculous comments I’ve seen in a long time. The problem is the entrenched players can take from the little players and there is nothing the littler player can do about it without patents. What has happened in the past is the little players have disrupted whole industries, but only if they can protect what they are doing with patents.
You always have the same pattern to your arguments where you set up a strawman. Burn it down and then conclude that information processing patents are garbage.
Paul Morinville
June 26, 2019 10:09 pmGreg DeLassus @35 “In other words, imagine that Snap could patent their methods, and that they were amenable to being bought out. ”
OK. They would have been bought out if the antitrust folks allowed it. But under today’s patent system, they are fools not to sell because their core technology cannot be protected.
But if it is protected and they don’t want to sell or the antitrust folks did not allow the acquisition, then neither Google nor Facebook (or anyone else for that matter) could steal it and then, using their huge user base and deep pockets, run them out of business as they are doing now.
Snap would remain a competitor and continue to grow. Competition in big tech is not about products, It is about amassing huge numbers of users and the product is only used to attract the users. The true product is user data. The more users they amass, the more money they make by selling their users private information. So, today, big tech simply steals the product, which has the effect of taking the user base. With less companies sharing users, the data is made more scarce and it is worth more. This give big tech’s megalomaniacs a huge user base that they use to run any uppity competition out of business. They also get to restrict access to news and other things they don’t like so they can sway public opinion, which is an amusing pastime for a megalomaniac.
Antitrust law will always play a role in approving mergers and acquisitions. The difference is that antitrust must now play a role in breaking up big tech. That is because there is no patent protection for business methods that are the core technologies of anyone who would dare compete with big tech. But if they could protect it and antitrust law was used on the front end, big tech will not be able to monopolize.
It appears to me that most or all of your clients are BioPharma… https://www.linkedin.com/in/greg-delassus-a8b2255/… Your opinion map to your clients. But your arguments do not consider what drives or destroys competition in the big tech market.
I think you would agree that your clients would be better off without draft 100 and 112 legislation as long as they get the draft 101 legislation. I believe that they are willing to settle with it because it does not harm them as much as 101 and they don’t think they can win a fight big tech. We have killed damaging legislation before, and we will kill this legislation too. We don’t want to leave your clients in a bad position having to continue to deal with 101 as it is today, but we can’t accept the draft 100 and 112 because it kills us. Perhaps, you clients should consider taking up that fight with big tech and helping us remove it from the 101 legislation.
Greg DeLassus
June 26, 2019 07:13 pm@27 Look at snapchat. They gain a huge market. Google and Facebook both try to acquire them. Snap refuses, so Google and Facebook both just copy their system and implement it in their own systems… [I]f [Snap] had patent protection, they could enjoin Google and Facebook, which creates another competitor.
Sure, but that is hardly a foregone conclusion. As you say, Snap resisted the acquisition, but most small companies do not resist when larger, well-capitalized companies try to acquire them. Indeed, for most small companies, being bought-out by Google or Apple or Facebook is the end goal toward which they hope to proceed.
In other words, imagine that Snap could patent their methods, and that they were amenable to being bought out. In that hypo, the patentability of their methods actually entrenches monopoly. In other words, it is scarcely intuitive that expanding the scope of patent eligibility under U.S. law will act as a check on monopoly. It is at least as plausible that such a change in law would enhance and accelerate monopolization trends in this industry.
Anyone who wants to resist monopolization trends (and everyone should) would be wasting time fussing with patent law. We already have the laws on the books to do the trust-busting job, we just need the regulatory agencies charged with enforcing these laws to change their regs to favor more aggressive anti-trust enforcement (and more generous budget allocations to these agencies). Patent policy is all but tangential to monopolization trends (which is why major changes in patent law like Alice or the AIA have no discernible effect on Google’s growth, or Apple’s growth, or Microsoft’s growth, as shown in those charts that I linked above).
B
June 26, 2019 12:13 pm@ Night Writer “That’s it. If you do that one thing, then everything else falls in place and is straightforward to think about. When people start talking about things like inventive concept, flash of genius, something more, etc., then we are no longer talking about actual physical constructs but people’s opinion of the invention.”
Hahaha – true but get this: The SCOTUS (Cuno Engineering) considered invention / flash of genius etc. as a Constitutional requirement to issue a patent.
Is invention / flash of genius an issue of law, an issue of fact, or an issue of law with factual underpinnings? Are econ and poly-sci majors with a JD and black robe remotely fit to make such a call as to whether a particular thing or process is the product of a flash of genius?
Anyway, Berkheimer and Vanda are still before the SCOTUS on what constitutes “something more” under step 2 of Alice/Mayo. Apparently someone at the CAFC accidentally held for patent eligibility by addressing the limitations as a whole, not distorting the record below, addressing all issues as required by law, and applying an objective standard.
So of course the Supreme Court is concerned.
However, you must appreciate the incompetence of the Federal Circuit on the issue. On May 31, 2018, the CAFC affirmed Berkheimer en banc stating that step 2 is a factual inquiry based on the state of the art at the time of the patent. On June 1 the CAFC affirmed the 101 rejection of In re Bhagat en banc, which discounted two limitations and treated the remaining limitations beyond the abstract as an issue of law – no “invention” or “transformation” under Funk Brothers – a case overruled by the 1952 Patent act.
24 hours – completely different outcomes. I wonder what it takes to get a clerkship there these days?
Paul Morinville
June 26, 2019 10:52 amThis article explains the same problem of narrowing the claims, but in a better way than I did.
https://www.law360.com/articles/1172368/senate-may-want-to-reconsider-section-112-f-patent-reform
Night Writer
June 26, 2019 05:42 amLook—J. Rich got all this right back in the 1950’s. Nothing has changed other than now on the CAFC there are a lot of people that don’t understand patent law and have an intent to cripple the patent system.
Everything in patent law is really quite simple when actual structure is considered. Just think of the scope of the claims and the actual physical structures that are both enabled and have a WD by a person skilled in the art in view of the specification.
That’s it. If you do that one thing, then everything else falls in place and is straightforward to think about. When people start talking about things like inventive concept, flash of genius, something more, etc., then we are no longer talking about actual physical constructs but people’s opinion of the invention.
This is all very simple when viewed in terms of actual embodiments of the invention and in terms of 103, 112, and 102. Then it is all about putting together the actual physical structure of the invention and building the actual physical structure of the invention and whether it is enabled and described in the specification in view of anyone skilled in the art.
Martin Nguyen
June 26, 2019 12:58 amTotally agree with Paul.
Also, I believe the AIA was somehow established much to benefit both big and foreign companies. Their only goal was to find a way to INVALIDATE patents from independent inventors who have no money to defend their rights. So, let’s eliminate both- AIA and PTAB.
mike
June 25, 2019 05:24 pmAs a software developer and pro se inventor, the concerns Paul Morinville mentions regarding 112(f) in comment #24. above is 100% correct.
B
June 25, 2019 04:17 pm@ Paul “Williamson does not make all claim elements means plus function as you imply.”
I was actually referring to the USPTO’s current practice in view of Citrix. Still, I believe that I’m correct in view of Citrix, and that you should write every patent specification as if every one of your claim limitations is vulnerable under 112f despite vast amounts of structural language in the claim limitations, because an infringing party will vigorously make a 122f argument when convenient.
“However, under the draft 112f, it will because all claim elements become means plus function claims.”
I don’t see it because you speak of a single word “inheritance” as opposed to a particular claim limitation having some form of function with respect to something else. If you’re speaking about object-oriented programming, “inheritance” is well-known and you don’t need to define it. You would need to provide an example in the specification of an inheritance process, but this is basic 112a. Still I maintain that a well-described “inheritance” routine in the spec covers pretty much all OOP with a particular computer language being nothing more than an equivalent. I even define my equivalents in the spec when possible.
Robert Greenspoon’s recent 112f article is instructive, and the IMS Technology decision is instructive. I understand your concerns. I merely disagree that a judge is likely to entertain the notion that every word in isolation is suspect. This from a person who distrusts judges.
Paul Morinville
June 25, 2019 03:50 pmGreg DeLassus: “Any §100 problems only may or may not emerge in implementation. We can try to see that §100 be implemented in a sane fashion as cases arise that present relevant issues. If the cases are decided poorly, we can come back to Sen. Tillis or Sen. Coons and (in an irenic spirit of good faith and cooperation) ask them to fix these unintended ill effects.”
That is another flawed understanding of how the world works. The courts will interpret the law and that could sway things one way or another. But virtually every decision coming from the CAFC and SCOTUS has been against the small in favor of powerful big tech corporation for the last 15 years. Why would anyone expect anything different?
Congress will not come back to change it. If what you say is true, why have they not come back to change the PTAB? It is especially damaging to small inventors, so according to your take on things they would fix it. But they haven’t and they won’t. In Minnesota, it is still OK to shoot 5 or more Indians if they congregate together on one place. I suppose if someone shot them today, they would eliminate the law. But the point is that once made law, it remains law and nothing gets fixed in Congress unless and until there is an emergency that forces them to change it. That is just the way things work on our form of government. It is set up to be difficult to pass a law and easy to kill a law.
Unless you understand how tech works to create monopolies, you will not understand that an emergency even exists. Today the evidence of the emergency is clear. These companies have consolidate wealth and power at rates and levels never before seen. Their companies are larger than any that have ever come before them. They use that power to affect news feeds and public opinion, and to hide their own indiscretions. They influence Congress by creating perceived emergencies and then pumping hundreds of millions of dollars in campaign contributions to pass legislation that helps them further monopolize.
I am a free market capitalist. But we no longer have free markets. We have markets controlled by huge corporations exercising sovereign power. Antitrust must break up the hold that these companies have on markets, but that effort is useless unless we also fix the patent system so others can compete and keep the monopolies from reforming. None of that will be corrected if they pass the draft language of 100 and 112.
Paul Morinville
June 25, 2019 03:21 pmGreg DeLassus: You believe that breaking up big tech with patent laws is like a mosquito sinking an oil tanker. That’s because you don’t understand big tech business models. First they are built on business methods. Amazon built the world’s largest retailer on the shopping cart, which they did not invent. Google built their company on the page ranking algorithm. Facebook on the like button.
If someone comes up with better technology, they can unseat them, but those kind of inventions are not patentable under current 101 jurisprudence and will not become patentable under draft 100 and 112 legislation. The draft legislation therefore serves to perpetuate their monopolies.
It is not like the oil tankers have existed forever. They were mosquitos only a few short years ago. In the world of the internet and massive customer adoption to things customers like, mosquitos become oil tankers in just a few short years. With patents they become battleships capable of sharing the high seas or sinking the oil tankers.
The problem you do not understand is the power of phone apps and how these big tech companies exercise absolute control over these megamarkets. You can’t put an app on their stores without their permission, so you can’t access the largest markets ever created. There are more phones than computers on the market, so if you are going to put a product on the market, you have to be able to access the phone market. But the oil tankers control it and therefore they control the birth and growth of mosquitos. If they never let them grow, they can’t compete.
An app store itself is a business method. So are the apps on the store. Making these things unpatentable or unenforceable means that nobody can crack the megamarket of phone apps. If we pass the draft legislation as written, you are right. The only way to crack it is with antitrust laws. It may already be the case that antitrust is necessary to break the hold on these megamarkets. But if we had a patent system where business methods were patentable, they would not have been able to monopolize these markets in the first place. Antitrust can be used to restore free markets. But it will not prevent future monopolization. For that we have to fix the patent system to allow business methods, so that patents do a the heavy lifting of keep monopolies from reforming.
Doubt what I say is true? Look at snapchat. They gain a huge market. Google and Facebook both try to acquire them. Snap refuses, so Google and Facebook both just copy their system and implement it in their own systems. Snap will probably not survive as a result. But if they had patent protection, they could enjoin Google and Facebook, which creates another competitor. There are many other examples of this playing out to consolidate the market into the hands of a few powerful big tech corporations.
Greg DeLassus
June 25, 2019 12:35 pmA slight caveat to my immediately previous comment—at the end of the last hearing, Sen Coons indicated that they would likely be further revising the draft text. Who knows how we will all feel about whatever emerges from that revising process?
Night Writer
June 25, 2019 12:23 pm@22 B
The whole game of “functional language” is like Alice. It is a way to try and cripple huge swaths of patents and make it almost impossible to write new patent applications on anything but very narrow inventions that are easily designed around.
The fact is that when one just goes to embodiments that are enabled that it is easy to see why all this is nonsense.
Paul Morinville
June 25, 2019 11:37 amB. Williamson does not make all claim elements means plus function as you imply. It does however expand how a claim element can be classified as means plus function and even describes some words that should trigger means plus function like module. Effectively it removed the strict requirement of stating “means for” or “step for” to trigger 112f broadening it to include sparsely defined words like module even if means and step are not used.
But there are other functional words like “inheritance” that have specific meaning in the art. Inheritance under the current 112 would probably not trigger means plus function analysis because it is defined in the art and understood by persons skilled in the art.
However, under the draft 112f, it will because all claim elements become means plus function claims. The inventor would then be required to specify how inheritance is performed, which can only reasonably done in code. There are literally thousands of ways to perform inheritance in code. That is just one functional word. So the effect will be to force inventors of software to define each and every claim in code. Courts will not be able to determine equivalence because the command words used in code are different from programming language to programming language, and because several different commands will be required to perform the function. These commands can be set up in many different ways.
If the inventor comes up with a new function, it should be well described, which is the reason for 112f as it stands. But if the function already exists in the art, it should not be required to describe it because that takes the invention down to the level that holes are created so infringers to slither through.
Greg DeLassus
June 25, 2019 11:33 am@18 [S]ome industries reason that the improvement under 101 is greater than the damage of 100 and 112.
Just to be clear, I speak for myself, not my “industry” (whatever that is). In any event, I certainly think that the improvement under the revised §101 outweighs the potential downside under revised §100. I deny that there is any “damage” as such under revised §112 (at least not relative to the status quo) for the reasons that B makes clear in #22.
[N]evermind the damage to small software inventors and the resulting perpetuation of big tech monopolies. If it doesn’t effect you, well, it’s not important.
A few thoughts. First, I disagree that the enactment or scuttling of this proposed Title 35 reform will have any effect on “perpetuation of big tech monopolies.” That is to say, the perpetuation of such monopolies do not become a whit less likely if the reforms are enacted than if they are derailed. If you want to break up monopolies, you should look to the antitrust enforcement regs. The patent laws have about as much leverage to achieve this sort of trust busting as a mosquito has to move an oil tanker.
Here is Microsoft’s market cap over time.
https://www.google.com/search?q=microsoft+market+cap+over+time&rlz=1C1GCEU_enUS821US821&oq=microsoft+market+cap+over+time&aqs=chrome..69i57j0l5.4151j1j7&sourceid=chrome&ie=UTF-8
Here is Apple’s.
https://www.google.com/search?rlz=1C1GCEU_enUS821US821&ei=MDsSXZ2HNIyo_Qb115LwCQ&q=apple+market+cap+over+time&oq=apple+market+cap+over+time&gs_l=psy-ab.3..0.63475.64112..64273…0.0..0.117.568.0j5……0….1..gws-wiz…….0i71j0i7i30.8jZMxn7lI-Y
Here is Google’s.
https://www.google.com/search?rlz=1C1GCEU_enUS821US821&ei=cjsSXd-vFuu6ggf6y5u4Cw&q=google+market+cap+over+time&oq=google+market+cap+over+time&gs_l=psy-ab.3..0.32987.33762..33946…0.0..0.127.697.0j6……0….1..gws-wiz…….0i71j0i7i30j0i13.1w328hwGxhk
Can you spot the advent of Alice, or Mayo, or Ebay, or the AIA, or any other patent law specific event in those trend lines? The forces moving consolidation in the computer technology industry are not driven by patent law considerations, and adjustments to patent law will not materially change these market dynamics.
Second, my thinking about this proposed reform is not that considerations are unimportant unless they affect me. Rather, my thinking is motivated by the consideration of what happens if the relevant community rises up to block these reforms. Senators Tillis and Coons are advancing this reform because they think that there is a problem and they think that they have a solution. If, after putting their reputations on the line to move this process forward, their ostensible allies drop the hammer on them and call for the effort to be scuttled, their logical reaction will not be “well, I suppose that next time I should adjust X, Y, & Z about the proposed §100 text.” Instead it will be “this is a thankless task and the patent law can rot to ruin for all I care.”
There is presently an effort moving with real momentum to improve §101. We should be pushing in the direction of that momentum, not trying to block it.
Any §100 problems only may or may not emerge in implementation. We can try to see that §100 be implemented in a sane fashion as cases arise that present relevant issues. If the cases are decided poorly, we can come back to Sen. Tillis or Sen. Coons and (in an irenic spirit of good faith and cooperation) ask them to fix these unintended ill effects.
If, on the other hand, we scuttle the most promising forward movement that we have seen in the last five years, then we can pretty much resign ourselves to at least another five years of further rot before we can return to the effort of improvement. Under those circumstances, I think that scuttling this reform would be a case of making the perfect into the enemy of the better.
B
June 25, 2019 10:27 am@ Paul Morinville
Just FYI, the USPTO has already abrogated the presumption of non-means-plus-function interpretation, and is now assuming that any claim limitation that recites only function evokes 112(f) in view of Williamson. v. Citrix.
112(f) as proposed is 112(f) in reality.
I think that the appropriate claim language, e.g., a first software module containing one or more instructions, should be sufficient to avoid 112(f), but I very respectfully think you’re overlooking the reality of things.
Night Writer
June 25, 2019 09:23 amLazardTech is the case that explains how claim construction should be done.
The scope of the claims should be scope of enablement based on how a person of ordinary skill in the art would interpret the claims in view of the specification and that only includes embodiments that meet the WD requirement.
If there is new non-obvious ways to perform the functions claimed then the patentee risks the claims being invalidated.
What I have just described is the only reasonable way to deal with the scope of claims.
Concerned
June 25, 2019 06:53 amCWS @14:
Good point about Ebay.
28 USC 1498 allows the government to infringe, but pay a royalty. It is similar to eminent domain.
If Congress wanted the public at large to infringe without injunction, I assume Congress would have said as much in 28 USC 1498.
People have claimed SCOTUS is anti patent. There appears to be an argument for such.
Anon
June 24, 2019 10:34 pmThe good (for a select some) is even more often the enemy of the better (for the greater some).
Paul Morinville
June 24, 2019 08:35 pmGreg DeLassus. You make my point for me that some industries reason that the improvement under 101 is greater than the damage of 100 and 112. Your field, biopharm, good enough is good enough, nevermind the damage to small software inventors and the resulting perpetuation of big tech monopolies. If it doesn’t effect you, well, it’s not important.
Greg DeLassus
June 24, 2019 08:11 pmThe perfect is too often the enemy of the good.
Jam
June 24, 2019 05:36 pmMy apologies for re-posting, forgot that matching gator signs (less than eventually followed by a greater than) are treated as xml tags and always get removed.
Regarding 101 and 100(k), the easiest way to fix this is to simply remove “useful” from 101, just like the term “new” was removed. Alternatively, 100(k) can be amended. E.g.,
‘100(k): The term “useful” means any invention or discovery [that can be used by a human or] that provides specific and practical utility in any field of technology through human intervention.’
Regarding 112f, does the step “receiving data with a processor” trigger the proposed 112f or not? “receiving” is an act and “processor” is a structure so the proposed 112(f) should not be triggered since the element is expressed as a specified function with recital of structure and act in support thereof. Examples need to be found that 1) express a function *with* structure, material, acts and 2) express a function *without* structure, material, acts. Two fixes for the proposed 112f would be:
‘112(f): Functional Claim Elements— An element in a claim [may be] expressed as a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover [at least] the corresponding structure, material, or acts described in the specification and equivalents thereof.’
Carolyn Hafeman
June 24, 2019 04:50 pmPaul: (And also referring also to Jam’s comments) . . . can you please add on the US Inventor’s site the exact proposed language you would like to change regarding the current draft bill, and then perhaps inventors can sign a more targeted petition aimed at legislators with the exact changes inventors want? Otherwise many inventors are not going to understand how to convey what exact changes you would like to our legislators, and on another note . . . some of the legislators I have spoken with are not going to be able to figure out exactly the changes inventors need on their own. Perhaps if you could post something that inventors could then sign and agree to, that would be easier to send to their local legislators. A targeted, specific call to action would be helpful. Thanks Paul.
CW5
June 24, 2019 04:13 pmWhile we are amending the patent statute, we should also statutorily abrogate the eBay decision. How can an inventor have exclusive rights to an invention if he or she cannot get an injunction to stop an infringer from infringing?
Night Writer
June 24, 2019 03:35 pm@11 B >>It’s not the known solutions that bother people. It’s preemption of the unknown. I doubt that Congress will let this issue go.
This isn’t really a problem. The issue is whether an unknown solution is non-obvious. If it is a non-obvious new embodiment that would be included in the claim scope, then the claims can be invalidated based on this. There is a case that goes through this from the CAFC that escapes me. The other way to deal with it is to not include it in the scope if it is new and non-obvious.
Jam
June 24, 2019 12:12 pmRegarding 101 and 100(k), an easy way to fix this is to simply remove “useful” from 101, just like the term “new” was removed. Alternatively, 100(k) can be amended. E.g.,
‘100(k): The term “useful” means any invention or discovery >>>that can be used by a human or<<>>may be<<>>at least<<< the corresponding structure, material, or acts described in the specification and equivalents thereof.'
B
June 24, 2019 12:10 pm@ Night Writer “Note too that I have quoted from engineering books about 1) that functional language is meant to include all known solutions”
It’s not the known solutions that bother people. It’s preemption of the unknown. I doubt that Congress will let this issue go.
B
June 24, 2019 11:49 amFYI, Invespic denied cert today
B
June 24, 2019 11:48 am@ Paul “The term “useful” means any invention or discovery that provides specific and practical utility in any field of technology through human intervention.”
The trouble I see in 100(k) is the requirement of “specific utility,” which has a different meaning than general utility and refers to an advantage. Technology? Seems to eliminate games but I’m not sure about business methods as they are themselves a form of technology. I’m in favor of nixing 100(k)
However, I’m not so sure of122(f). I need to think longer on the issue
Paul F. Morgan
June 24, 2019 11:12 amI would like to discuss the conclusion that “Most NON-big tech lobbyists reason that the positive effects of eliminating 101 exceptions are greater than the negative effects of 100 and 112, so they will support it” That is if they really thought about it further. The number of patent claims shot down on 101-Alice in patent litigation is minuscule compared to the huge number of patent claims with functional language that could get shot down as non-infringed or held invalid for lack of enablement under the proposed much narrower 102(f) claim scope.
Also, one cannot lump as unified the views of the pharma and medical diagnostics industries [from a majority of the Committee hearing speakers and by far the biggest 101 broadening potential beneficiaries] with the views of large Silicon Valley large companies that did NOT testify but have large lobbying activities and are by far the biggest patent suit defendants with the highest damages claims] for all software related patent suits in which the proposed 102(f) expansion would greatly assist them. Why would they not attack this legislation in the usual way? Not even to mention opposition in the House from those who would be opposed to a reversal of Mayo and a significant increase in patentable subject matter by the pharma and medical diagnostics industries.
Patent attorney
June 24, 2019 10:44 amI understand Paul’s concerns with respect to all software language as being interpreted as being means-plus-function elements under 112(f) (although I wonder whether this is even a change, or simply involves codifying Williamson v. Citrix), but also wonder whether he is interpreting “algorithm” too narrowly. Paul seems to assert that rather specific software code must be disclosed to satisfy the written description requirement for means-plus-function limitations. Case law does not necessarily require that rather specific software code, or an analogous algorithm, is disclosed to satisfy the written description requirement for computer related means-plus-function limitations. Most cases finding lack of written description for computer related means-plus-function limitations were due to no description of how a specific computer component (e.g., “symbol generator”) achieved claimed function (e.g., generated symbols).
The court stated in Williamson v. Citrix that “[t]he algorithm may be expressed as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.” Accordingly, for example a general flow chart (or two different flow charts) could be disclosed as the algorithm, with a very specific embodiment being disclosed as a coding example. In theory, any equivalent could be based on the general flow chart, not the more specific coding example.
Another question that is not at all clear from the proposed legislation is whether the 112(f) modifications would apply to computer device claims or computer implemented method claims. In the past (i.e, the WMS Gaming/Williamson line of cases), 112(f) has generally only applied to device claims. Accordingly, there is a possibility that computer implemented method claims would not be impacted by the proposed 112(f) modifications.
Sheng T. Tsao
June 24, 2019 09:44 amI agree with what Paul Morinville’ opinions on 100(k) and 112(f)
Pro Say
June 24, 2019 09:03 amThanks Paul – insightful, excellent info, analysis, and recommendations as usual.
Three recent happenings in the 101 / eligibility / draft reform sphere from this past week:
Committee member Steve Stivers’ 6.20.19 presentation / conversation at AEI:
https://www.aei.org/events/patent-reform-in-2019-a-conversation-with-rep-steve-stivers-r-oh/
Director Iancu’s 6/19/19 presentation / conversation at the Hudson Institute:
https://www.hudson.org/events/1700-fostering-american-innovation-a-conversation-with-uspto-director-andrei-iancu62019
Former Chief CAFC Judge Michel’s 6/19/19 IAM article (thank you IAM for this important, free public access):
https://www.iam-media.com/law-policy/what-do-conflicting-testimony-patent-eligibility
Gonzalo
June 23, 2019 11:12 pmI Suppotrt his view & advocate in his behalf
Kelly Barnett
June 23, 2019 08:26 pmId like to testify to Congress as a small inventor. Not only in patent issues, but the failures of the AIA and the ease in which IP is copied or taken by larger companies.
Night Writer
June 23, 2019 07:06 pmI agree. The only proper scope for claims is the scope of enablement as interpreted by a person skilled in the relevant art in view of the specification. A scope that is less than that is trivially infringed as embodiments are enabled and not part of the claim scope. The changes to 112(f) would make it almost impossible to get a scope of enablement for the claims.
Note too that I have quoted from engineering books about 1) that functional language is meant to include all known solutions and 2) that the ladders of abstract are usually the first thing taught in an in an engineering course.
Additionally, the 101 changes will bring in “technical” just like in Europe. We should remember that Europe has a software industry about 1/10 of that of the USA.
The changes to 101 proposed are meant to trash information processing while at the same time helping pharma.
Jeff Hardin
June 23, 2019 04:34 pmI can personally vouch that what Paul Morinville says here is true. I join Paul in these very concerns on 100(k) and 112(f). I will join him in stopping the legislation for the very reasons he mentions.
America’s future is at stake, and we cannot let Silicon Valley dictate our future and limit our innovation by their efforts to destroy our patent system and deny competition. They deny others the very privilege they previously received in their pursuit to the top, and they now preach a false narrative. “Orwellian doublespeak” as Director Iancu called it, is exactly what it is.
I am an inventor and asked to testify to Congress in the Section 101 hearings. Paul was our only voice. I spoke with him prior to his hearing.
I do appreciate that Congress is stepping up to the plate to fix 101. Their first draft published in April sought to codify what SCOTUS created from the bench. On May 8, I testified in front of the USPTO pursuant to the SUCCESS ACT. I noted that Iancu’s January Guidance has no legal binding, quoting the Federal Ciurcuit’s very words. I said Congress must fix this, and I then spoke against Congress’ first published framework, emphasizing that it would actually codify what the Court has written from the bench. I referenced Knowles and Prosser’s paper on the matter, and demanded the complete removal of SCOTUS’ judicial exceptions from what our elected officials wrote into law in 1952. Accordingly, I was delighted to see these removed in the second draft (May 22) framework.
Surprisingly, new introductions on 100(k)and 112(f) were added — introductions that would obliterate hardware and software technologies.
WHERE DID THESE COME FROM? WHO LOBBIED FOR THESE? They weren’t in the original draft, and they are not related to the SCOTUS-created problems on 101. Someone caved.
Paul’s analysis in this article is 100% correct. Big tech already pulled up the ladder to their monopolies with the AIA. The rulings in Mayo and Alice pulled up the ladder even more. So now that Congress is working on 101, they see this as their opportunity to solidify their monopolies from better innovations by corrupting 100 and 112. This is the only explanation for the introduction of 100(k) and 112(f) amendments into the 101 reform framework and discussion.
I say that we demand a FOIA request on which office caved to big tech on this one. Our government is a government of the people, and there will be consequences from the people when our government does not represent us.
We stopped the SCOTUS codification from appearing in the second framework. We must now demand that the “big tech ladder pull” on 100 and 112 NOT appear in their final revision.