AAM v. Neapco Misreads Federal Circuit Precedent to Create a New Section 101 Enablement-like Legal Requirement – Part II

“The panel majority in AAM v. Neapco takes great pains to assert that both Supreme Court and Federal Circuit precedent has compelled it to rule as it has with respect to the Section 101 issues at stake in this case. But the majority’s cited precedents compel no such thing.”

https://depositphotos.com/26284219/stock-photo-law-concept-paragraph-with-optical.htmlAs detailed in Part I of this article, the recent opinion in AAM, Inc. v. Neapco Holdings, LLC, No. 18-1763 (Fed. Cir. July 31, 2020) misreads and misinterprets Supreme Court precedent as having long imposed the enablement-like requirements set forth in the AAM ruling. Similarly, the Federal Circuit cases cited by AAM do not reflect some longstanding Section 101 eligibility rule that the claim alone must show, with “specificity,” the “way” or “how to” “achieve” such an invention, beyond a mere “result.” See, e.g., AAM, Majority Op. at 11, 16, n.7, 16-17, 20-21, 27-29.

Importantly, as the Supreme Court (among others) has indeed long held, a point of law, merely “assumed” in an opinion, not “squarely addressed,” is not authoritative,” thus leaving the issue “free” for the next court “to address … on the merits.” E.g., Brecht v. Abrahamson, 507 U.S. 619, 631 (1993); In re Stegall, 865 F.2d 140, 142 (7th Cir. 1989) (same). Following that Brecht principle, an opinion’s application of legal principles—such as its application of the two-step ineligibility framework established by the Court’s Mayo-Alice regime—does not ipso facto transform that application into a legal requirement all its own. Indeed, the terms like those freely quoted above (“how to,” “way,” “specificity”)—and as quoted by the AAM majority—are often merely the non-binding dicta or analysis that results over time from the case law’s application or discussion of the Mayo-Alice framework and whatever particular facts or arguments the panel in that particular case was addressing.

SAP Am., Inc. v. InvestPic, LLC (Fed. Cir. 2018)

For example, the AAM majority’s first-cited precedent to support these alleged enablement-type requirements for Section101, SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 1167 (Fed. Cir. 2018), held indeed that the claimed mathematical-finance subject matter was ineligible. But SAP reached this ineligibility conclusion for reasons that had nothing to do with whether the claim alone failed to demonstrate “how to” practice the invention with “specificity.” Id. Applying Mayo-Alice, SAP reached this ineligibility conclusion because the claim-at-issue was “nothing but a series of mathematical calculations based on selected information and … results of those calculations.” Id. As SAP put it, no matter how novel or “new” that claimed mathematical calculation might be, it was “still an [ineligible] abstract idea.” Id. (emphasis in original).

Internet Patents Corp. (Fed. Cir. 2015)

The majority further relied on Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) and its view that the case found “the [patent] claim abstract because it ‘contain[ed] no restriction on how the result is accomplished.’” But Internet Patents didn’t squarely address such a legal requirement for section 101. Tellingly, and to the contrary the decision expressly addressed a litany of other issues and principles bearing on Section 101-eligibility, including:

  • Most plainly, the Court’s Mayo-Alice “two-step methodology for determining patent-eligible subject matter” and its initial application to this case, id. at 1346;
  • what constitutes an “abstract idea,” per the “directed-to” step of Mayo-Alice, id. at 1347;
  • repeated discussions about Mayo and how its “inventive-concept” step requires a “pragmatic analysis of §101”—“analogous to those of §§ 102 [anticipation] and 103 [obviousness] as applied to the particular case,” at 1346-47;
  • as applied to this particular case, how the patent’s claimed use of a “web browser [having] … navigational functionalities [that can operate] without data loss” duly compared and contrasted with “the prior art,” see id. at 1347-48;
  • whether courts should cross the “threshold of §101” without first engaging in claim construction, at 1348; and
  • contrary to the AAM “claims alone” rule, the Internet Patent court extensively cited to the “specification” to conduct both steps of the Mayo-Alice eligibility analysis, holding that (i) “the character of the claimed invention is an abstract idea,” id.; and (ii) the claims’ additional limitations did “not add an inventive concept … to merely generic collection steps,” id. (citing Alice, 134 S.Ct. at 2357) (“[s]imply appending conventional steps, specified at a high level of generality,’ was not enough to supply an `inventive concept’”).

The Federal Circuit, to be sure, also pointed near the end of its opinion to the district court’s “observ[ation]” about how the claim language “contain[ed] no restriction on” how to accomplish the “result” of avoiding data loss. Id. at 1348. But unlike the legal points enumerated above—each of which the opinion elaborated on—Internet Patent didn’t address or set forth as a principle anything with respect to these “result,” “how to,” “specificity,” or “claims alone” requirements. That’s because the eligibility analysis focused indeed on eligibility and other “inventive-concept” considerations, not the enablement-like facts and analyses that AAM v. Neapco has now hardened into Section 101 law.

Affinity Labs (Fed. Cir. 2016)

The same analysis applies to the AAM majority’s other relied-on precedents. It relies, for example, on Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016), saying Affinity held the claim-at-issue ineligible “because ‘[t]here is nothing in the claim that is directed to how to implement out-of-region broadcasting on a cellular telephone.” AAM Maj. Op. at 16, n.7. But as with the other Section 101 cases, Affinity discussed no legal requirement, principle, or rule about how Mayo-Alice requires this “how-to” showing for the claimed invention, much less a requirement that the “claims alone” demonstrate this with “specificity.” See Affinity Labs, 838 F.3d at 1254-58; see also Brecht, 507 U.S. at 631 (point of law, merely “assumed” in an opinion, not “squarely addressed,” is not authoritative); Stegall, 865 F.2d at 142 (same). Affinity instead focused on what courts already considered the “now-familiar” two-part Mayo-Alice framework, id. at 1257; and thus, in identifying: (1) for step-one purposes, the “purpose” of the claims-at-issue as “directed to the dissemination of regionally broadcasted content to users outside the region,” id. at 1255; and (2) for step-two “inventive-concept” purposes, whether the patent did anything more than “take[] the abstract idea … and appl[y] it to a generic electronic device, in this case—a wireless cellular telephone.” Id.

In applying this framework, Affinity emphasized that the issue for step one focused on the “elusive” “boundary between the abstract and the concrete.” Id. In making that “abstract” determination, moreover, Affinity again engaged in analyses that did nothing to suggest the existence of a legal “how to” principle or “specificity” requirement under section 101. See, e.g., id. at 1257-58. Two such analyses stand out.

First, as it often does, the Affinity court used the ‘substantial guidance” from case law that had comparable “abstract-idea” claims, finding that this similarity supported its “abstract” step-one conclusion. Id. at 1258. In that context only, Affinity concluded that the claims there were “directed to” an abstract idea, stating that they recited “a broad and familiar concept concerning information distribution that is untethered to any specific or concrete way of implementing it.” Id.

Second, the Affinity court reviewed the magistrate judge’s rejection of arguments that the claims there were not abstract because—pursuant to a traditional or statutory enablement argument—the specification there disclosed “a downloadable application” to perform the claimed invention. See id. As with the trial court, however, the Federal Circuit rejected this enablement argument based on familiar, relevant points; viz., “the patent “merely state[d] that the application `enables’ the device to present a graphical user interface so a user can select what data that user wants to stream”; [but] the patent is “devoid of any teaching or blueprint explaining how the device can do what it purports to do.” Id. Accordingly, even for an argument predicated expressly on the specification’s disclosure, the Federal Circuit agreed it didn’t improve the patentee’s arguments to avoid ineligibility as an abstract idea. Id. Moreover, it didn’t impose any such disclosure requirement on the claims alone.

More Violence

The panel majority in AAM v. Neapco takes great pains to assert that both Supreme Court and Federal Circuit precedent has compelled it to rule as it has with respect to the Section 101 issues at stake in this case. But as explained above, the majority’s cited precedents compel no such thing. Indeed, in certain notable respects, the AAM opinion appears to substantially re-cast the holdings and analyses in precedents such as Diehr and Flook, among others. Further, AAM goes too far in pouring into the threshold Section 101-eligibility test what, for all intents-and-purposes, looks like another “irrelevant” patentability requirement, viz., the so-called enablement-like requirements that AAM imposes on the “claims alone.” Will more patent claims be struck down as a consequence? Over time, surely. But all the more, AAM expands section 101’s legal reach in ways that will only do more violence to the U.S. patent laws and system. And ultimately to American innovation, investment, and competitiveness.

 

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The Author

Judge Paul Michel (Ret.)

Judge Paul Michel (Ret.) became a private citizen on June 1, 2010 for the first time since he graduated from law school at the University of Virginia in 1966. Upon graduating from law school he became an Assistant District Attorney in Philadelphia, thus embarking upon the career of a public servant from 1966 to his retirement from the United States Court of Appeals for the Federal Circuit in 2010. Michel served on the Federal Circuit, which is the main patent appeals court in the United States, from 1988 to 2010, serving as Chief Judge from 2004 to 2010.

Judge Paul Michel (Ret.)

John Battaglia s an accomplished first-chair trial lawyer, appellate lawyer, and former US Justice Department lawyer who has successfully tried to verdict a broad array of civil and criminal cases. While the subject matter of his cases over the past 22-plus years has ranged from immigration to intellectual property, from guns, drugs, and violence to advanced electrical engineering, pharmaceuticals, and ice-hockey equipment, Mr. Battaglia's area of particular interest and expertise is patent litigation. Mr. Battaglia has successfully argued cases before the U.S. Courts of Appeal for the Federal, Second, Sixth, Seventh, and Ninth Circuits. He argued and prevailed in In re Papst Licensing Digital Camera Patent Litig. (Fed. Cir. 2015), a case involving numerous adverse issues and the first Federal Circuit case to address the impact of the Supreme Court's decision in Teva v. Sandoz. For that victory, the legal press dubbed Mr. Battaglia and his team a "Legal Lion."

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 60 Comments comments. Join the discussion.

  1. Pro Say August 23, 2020 2:32 pm

    Thank you both for an eye-opening, critically-important series.

    It’s now crystal clear that without the immediate help of Congress or SCOTUS — due to the large number of patent-hating CAFC judges — American innovation is doomed.

  2. Model 101 August 23, 2020 4:48 pm

    Face it…some of the judges are crooks…some are real judges.This case defines them.

  3. Chris W, August 24, 2020 8:51 am

    Thanks for the article Gentlemen. Apparently some of the schizophrenia that’s been plaguing the medical field has by now snuck into the IP field. I don’t expect any change from the trend which formally began in June of ’95, until Men of Action suddenly materialize, and get busy. Be Bold !! Go in numbers !! Protest !!

  4. Michael C. August 24, 2020 12:19 pm

    Judge Michel and Mr. Battaglia – thank you very much for articulating these viewpoints and for fighting for what is right. I can only hope that your insights in these pieces find their way into a successful petition for cert to the Supreme Court and ultimately, an overturning Supreme Court decision.

  5. TFCFM August 24, 2020 12:45 pm

    It seems to me that the poor state of section 101 eligibility affairs outlined in this pair of articles resembles another long-recognized poor state of affairs: that of attempting to fit a round peg into a square hole.

    Indeed, I would characterize the ‘problem’ underlying our eligibility jurisprudence as resembling attempts to fit several differently-shaped pegs into an Alice-shaped hole: A test (Alice) which MAY be appropriate in some circumstances is simply not up to the task of sorting all of the different-shaped pegs which are presented to our courts (even if some of the pegs are small enough that they still sort-of fit within the round Alice hole).

    The solution, I think, is to return to the pre-Alice recognition that there are MULTIPLE reasons why claimed subject matter might be ineligible, despite being facially within a class recited in section 101. For example:

    – Some claims are drawn merely to a functional outcome and seek to encompass all technological solutions which might achieve that outcome (as in the AAM case). These claims are ineligible because they are merely abstract. They seek to ensnare more than what was genuinely invented.

    – Some claims are drawn to mere manipulation of information. Mere information, without more, is not, and ought not be, eligible for patenting. Methods which do no more than move information around or transform information, without more, ought also to be ineligible, because they would permit monopolization of basic concepts of thought and/or communication (e.g. Bilski.

    – Some claims seek to monopolize all uses of a natural law or phenomenon (e.g., claims relating to discovery that a certain gene or molecule is linked to disease X) and are objectionable because they seek to remove all such uses from the public and thereby inhibit innovation (e.g. AMP v. Myriad Genetics).

    Alice has also been applied (to the proper objection of many) to cases in which the objection to claim patentability appears to be more nearly based on obviousness, claim scope, or sufficiency of disclosure.

    Attempting to squeeze all of these cases into a single test had necessarily required that the test be broadened enough to encompass all of them. Simply put, if one wants to apply only a single (Alice) “round hole” test, the test accommodates all of these various pegs (cases) by making the round hole very, very large — so large that it loses its differentiating capacity.

    In my view, it’s time to return to the judicial state of affairs in which we recognize multiple eligibility-disqualifying tests: some claims are ineligible because they’re “too abstract”; some are ineligible because they too much “seek to monopolize nature”; some because they are too nearly “mere information/algorithm.”

    Given that the US Supreme Court has specified the “big hole” with which all pegs must be compared (in the form of the “Alice/Mayo” test), it seems likely that only that court can declare the big hole unworkable and discontinue its use.

  6. Anon August 24, 2020 2:56 pm

    Your view, TFCFM, is widely recognized as being anti-patent in the sense that you want to deprecate the innovations of the fifth Kondratiev wave.

    As this is anti-innovation itself (and seeks to deny the essence of innovation with an overly prescriptive approach to eligibility — which, as anyone that understands innovation would know, must be written in an open-ended manner — exemplifies the weakness, rather than what you perceive as a strength, in your views.

  7. Curious August 25, 2020 11:38 am

    Some claims are drawn merely to a functional outcome and seek to encompass all technological solutions which might achieve that outcome (as in the AAM case). These claims are ineligible because they are merely abstract. They seek to ensnare more than what was genuinely invented.
    As I pointed out in the comments to Part I of this article, the claiming of characteristics of an object is extremely common in the mechanical arts because, in most instances, obtaining that characteristic is well within the knowledge of those skilled in the art. There may be instances in which the characteristic in question has not previously been obtained, and if so, then the specification needs to enable how to get that characteristic. However, that isn’t the situation here.

    Also, your “seek to ensnare more than what was genuinely invented” cannot be reconciled with the concept of improvement patents in which you can have an original patent (that covers both an original something and an improvement to the something) and an improvement patent that also covers the improvement to the something. In this instance, the original patent ensnares the improvement to the original something. THIS IS PERFECTLY ACCEPTABLE. You may not see this type of stuff in the biotech arts, but it happens all of the time in the mechanical arts.

    Some claims are drawn to mere manipulation of information. Mere information, without more, is not, and ought not be, eligible for patenting.
    Manipulating information is a process, and a process is explicitly patent eligible. What is the logical basis for saying that a process that manipulates steel or even wood (i.e., a natural product) should be deemed patent eligible more so than a process that manipulates data stored as bits in electronic memory? Why does the medium being manipulated matter with regard to 35 USC 101? Manipulating steel is 20th century technology. Manipulating data is 21st century technology. The benefits of the patent system for protecting 20th century technology should also apply to protecting 21st century technology.

    Some claims seek to monopolize all uses of a natural law or phenomenon (e.g., claims relating to discovery that a certain gene or molecule is linked to disease X) and are objectionable because they seek to remove all such uses from the public and thereby inhibit innovation (e.g. AMP v. Myriad Genetics)
    That’s all well and fine except you’ve got non-technical judges who make statements such as “The district court concluded that ‘the Asserted Claims as a whole are directed to laws of nature: Hooke’s law and friction damping.’ J.A. 10” that are incredibly divorced from reality. Saying that Edison’s patent for a light bulb [actually the filament] is directed to Ohm’s law is no less valid than the statement in American Axle about Hooke’s law. There are a LOT of things that can be deemed patent ineligible based upon that (il)logic. Also, claims that “seek to monopolize all uses of a natural law or phenomenon” aren’t enabled, which is a problem addressed by 35 USC 112, 1st paragraph.

    The problem with using 35 USC 101 as a test was that it was never intended to be a condition for patentability.

    Given that the US Supreme Court has specified the “big hole” with which all pegs must be compared (in the form of the “Alice/Mayo” test), it seems likely that only that court can declare the big hole unworkable and discontinue its use.
    Very unlikely as those judges really don’t understand what they’ve done and don’t seem willing to learn more about the issues (e.g., by taking on more 101 cases). Realistically, the only fix for 35 USC 101 is through Congress. In Congress, people can debate whether inventions directed to diagnostic tests or data processing or propeller assemblies or garage doors should patentable subject matter. If a decision is made that these are patentable subject matter and a law passed reflecting that decision, then all the Courts should respect the will of Congress (i.e., the people).

    Right now, the Courts are picking the winners and losers. If you do the hard research to identify ways to diagnose a particular disease, you are a loser. In the short term, the winners will be competing diagnostic companies and consumers. However, consumers will lose out in the long term as there will be reduced incentives to create new diagnostic tests.

    Right now, if you are a small startup software company that is trying to compete with the likes of Google, Facebook, Amazon, Apple, Microsoft, you will be a loser. Your technology will be declared merely “manipulation of information” and rejected under 35 USC 101 and the likes of Google, Facebook, Amazon, Apple, and Microsoft will merely co-opt your technology as add it into their technology. The consequences of that can easily be seen today as those companies have very few rivals. I read the NY Times and occasionally you’ll see something written decrying how big these companies have gotten. They’ve gotten this big because features (i.e., the so-called “manipulation of information”) that could be used to distinguish potential competitor’s products from their products/services are being squashed by the courts. However, I laugh when the same NY Times occasionally writes anti-patent pieces that only serve to bolster the power of these mega-tech companies. Ultimately, the biggest losers are the consumers since there is little competition.

  8. Marco August 25, 2020 11:57 am

    I respectfully submit that a central problem here with all this § 101 stuff is doctrinal confusion, run amuck. All claims that do not meet the standards of patentability under 35 USC § are, in a sense, “ineligible” for patent protection.

    But § 101 does not use the term “ineligible,” and it was never intended to be a basis for denying patent protection for claims that are simply too broad, vague, overly functional, or suffer from other infirmities appropriately addressable under §§ 102, 103, and/or 112.

    I have prosecuted and litigated hundreds of patents. In over 30 years of USPTO patent prosecution, I had maybe 2 or 3 issues raised about an alleged § 101 issue, and it was never a very serious one. However, in the last several years, almost half my submitted claims have seen a rejection under § 101, emboldened by this runaway freight train of § 101 case law, which threatens to swallow up §§ 102, 103, and/or 112 as the proper grounds for attacking over 90% of these so-called “patent ineligible” claims.

    A big problem is the lack of experienced patent prosecutors litigating and adjudicating these cases. These otherwise well-meaning people have no sense of the balance that was built into §§ 101-103 and 112, and of the very limited role § 101 should play in assessing the merit of the vast majority of patent claims that have improperly been found infirm under § 101 during this latest craze.

    Like moths drawn to a flame, many of these advocates/jurists, who know nothing of real-world patent prosecution dynamics, go to § 101 because it seems an easy way to ditch a patent claim that just does not seem right. But they don’t seem able to properly articulate what is wrong with the claim, if anything, under the other sections of Part II of the Patent Act that most any experienced patent practitioner would have little difficulty doing.

    We must find ways to reign in § 101.

  9. Curious August 26, 2020 10:04 am

    We must find ways to reign in § 101.
    The genie is already out of the bottle. The Courts are drunk on their power to kill patents with little more than hand waving. You see the same thing at the Patent Office. There is a certain segment of examiners who only give halfhearted attempts to find good prior art (and make good prior art rejections) now because they know that they are just going to maintain the 101 rejection for eternity.

    The rest of your post is spot on. And to reiterate points I’ve made before (and consistent with your own), 35 USC 101 wasn’t meant to be a condition of patentability. 35 USC 102 starts by stating “[a] person shall be entitled to a patent unless …”. Section 103 begins with “[a] patent for a claimed invention may not be obtained … if.” The terms “unless” and “if” are signals for conditions (i.e., as in conditions for patentability). 35 USC 112 contains nine separate mentions of the term “shall” — as in the “specification shall contain a written description” and “specification shall conclude with one or more claims.” These are requirements that must be met.

    How does 35 USC 101 read:
    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
    The only seeming requirement is that what is being patented be “new and useful” and meet “the conditions and requirements of this title.” Being “new” is already subsumed by 102/103 and utility is an incredibly easy bar to overcome.

    Our good friend TFCFM wrote in the comments of Part 1 of this article that “Section 101 simply DOES NOT include any language by which our legislature forbade judicial interpretation — including limitations — of the recited classes of otherwise-eligible subject matter.” This is a rather silly argument. Section 101 does not include any language by which our legislature forbade judicial interpretation to include any limitations whatsoever. By that (il)logic the Courts could require that an inventor have to donate $100,000 to the part of the sitting president. If you want to worth with the fanciful hypotheticals, what is to prevent the Courts from deeming all patents to semiconductors as being directed to applying Moore’s law (please, for those who just laughed, don’t ruin the joke) and thus unpatentable subject matter. There is a difference between filling in gaps (a proper use of common law) and creating something out of nothing. The “exceptions” to patent eligibility were created out of nothing.

    Let’s take a walk down memory lane to Gottschalk v. Benson, which created this mess. This is how the Court characterized the law that preceded it:
    The Court stated in Mackay Co. v. Radio Corp., 306 U. S. 86, 306 U. S. 94, that,
    “[w]hile a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.”
    That statement followed the longstanding rule that “[a]n idea, of itself, is not patentable.” Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 87 U. S. 507.
    “A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.”
    Le Roy v. Tatham, 14 How. 156, 55 U. S. 175. Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work. As we stated in Funk Bros. Seed Co. v. Kalo Co., 333 U. S. 127, 333 U. S. 130,
    “He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.”

    What is unpatentable is “[a]n idea, of itself,” “[a] principle, in the abstract, is a fundamental truth; an original cause; a motive,” “Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts.” Is a claim to a shaft assembly any of those? NOT … EVEN … CLOSE. Where the Supreme Court jumped the shark is the following statement in Benson:
    The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that, if the judgment below is affirmed, the patent would wholly preempt the mathematical formula and, in practical effect, would be a patent of the algorithm itself.
    Compare that with the statement in Funk (reproduced above) that “If there is to be invention from such a discovery, it must come from the application of the [exception] to a new and useful end.” In Benson, the so-called exception was applied to a new and useful end. The Benson Court then places the condition that a new and useful end isn’t enough if the invention “in practical effect” preempts use of the mathematical formula.

    I could go on and on as to how the Supreme Court continues to get farther and farther away from those original decisions in which “[a]n idea, of itself,” “[a] principle, in the abstract, is a fundamental truth; an original cause; a motive,” “Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts” were deemed unpatentable.

    I just re-read Parker v. Flook and Stevens’ dissent in Diamond v. Diehr. He was incredibly ignorant when it comes to understanding technology. In his desire to make computer technology patent ineligible, he opened to the door to making just about anything patent ineligible.

  10. TFCFM August 26, 2020 12:11 pm

    @Curious RE #7

    The fact that you raise varying arguments in response to the varying types of ineligibility I discussed @#5, I think, emphasizes the sole point I attempt to make in #5:

    That there ARE different “kinds” of (or reasons for) ineligibility, and that attempting to formulate a single test (as in Alice) to encompass all of the kinds-of/reasons-for ineligibility is unworkable.

  11. MaxDrei August 26, 2020 12:21 pm

    Curious, as to the Axle case, and its process claim, if you want to clear the 101 hurdle it behoves you to offer the decider at least a plausible case that your claimed process is indeed “new” (within the meaning of 35 USC 101). That means, at the very least, refraining from admitting it to be NOT new.

    Prop shafts vibrate, in all three modes, even ones that include a “liner”. They can’t help it. All commercial designers of lined prop shafts have always performed a degree of “tuning” out unwanted vibrations, if only because if they were to omit this process step, no vehicle builder would purchase their product shafts.

    What they did, to “tune” out vibrations, was no mystery. It was admitted to be already well-known and conventional.

    And after all that, it’s more than a bit cheeky, if you ask me, to huff and puff that the claimed subject matter meets the requirements of 35 USC 101. No wonder it didn’t impress. No wonder it crashed out already, at the first hurdle.

  12. Anon August 26, 2020 12:47 pm

    And after all that, it’s more than a bit cheeky, if you ask me, to huff and puff that the claimed subject matter meets the requirements of 35 USC 101

    Says the guy who misstates US law with “indeed “new” (within the meaning of 35 USC 101)

    Cheeky indeed.

  13. Curious August 26, 2020 3:07 pm

    That there ARE different “kinds” of (or reasons for) ineligibility, and that attempting to formulate a single test (as in Alice) to encompass all of the kinds-of/reasons-for ineligibility is unworkable.
    Let’s just say, for sake of argument, that patent ineligibility under 35 USC 101 should even be a test. If so, who gets to decide what test gets applied to what subject matter? Both the creation of the test(s) and yet another test to determine what test to apply will ultimately decide the winners and losers of the US Patent System. Who gets to choose these winners and losers? The Courts? As Anon frequently points out, the US Constitution gave the power to create patent laws to Congress — not the Courts. Any fix for the mess needs to come from Congress. If they want to say that medical diagnostics and software are unpatentable subject matter, then let them do so. If Congress wants to say a claim directed to an “abstract idea,” is unpatentable, then let them do so — provided they give us a definition of what constitutes a claim that is directed to an abstract idea (a definition that the Supreme Court punted on).

    A well-written law should be one that someone can read and easily discern what is permissible versus what is impermissible. The mess created by the Courts is the exact opposite of a well-written law. Alice came out 6 years ago and patent prosecutors, to this day, still have little certainty as to whether a particular claim will pass muster under 35 USC 101 or not. This uncertainty as to patent eligibility has cost inventors untold millions of dollars in attorney fees (in trying to obtain a patent) and increased the uncertainty as to current patent holders as to the value of their currently-issued patents. In the business world, uncertainty = reduced value. A business cannot rely upon uncertain assets.

    There are some that still hold out hope for the Courts to fix things. Its been 6 years since Alice and nothing has changed. I take that back, it has only gotten worse and it will only continue to get worse as competing factions in the Federal Circuit create exceptions to prior decisions and exceptions to those exceptions. It is gotten to the point where whether your patent survives merely depends upon which case law the Federal Circuit chooses to employ. They employ one line of cases, your patent is dead. They employ another line of cases, your patent is dead. In reality, whether your patent survives or dies is up to the panel of judges you get at the Federal Circuit. This ‘star chamber’ version of patent justice has introduced a huge amount of uncertainty into the value of patents. This uncertainty is terrible for the patent system as a whole.

  14. Curious August 26, 2020 3:19 pm

    What they did, to “tune” out vibrations, was no mystery. It was admitted to be already well-known and conventional.
    That is correct, how to “tune” out vibrations is not a mystery to those skilled in the art. However, such an admission is inconsistent with the Court’s analysis.

    That means, at the very least, refraining from admitting it to be NOT new.
    This is where you have a strained relationship with the truth. Claim 1 of the American Axle patent recites the following limitations:
    positioning the at least one liner within the shaft member such that the at least one liner is configured to damp shell mode vibrations in the shaft member by an amount that is greater than or equal to about 2%, and the at least one liner is also configured to damp bending mode vibrations in the shaft member, the at least one liner being tuned to within about .+-.20% of a bending mode natural frequency of the shaft assembly as installed in the driveline system

    In this instance, the claim require that the “at least one liner” acts as a damper to the shaft member. Additionally, the claim requires that liner dampens “shell mode vibrations in the shaft member by an amount that is greater than or equal to about 2%” and dampens “bending mode vibrations in the shaft member” such that “the at least one liner being tuned to within about .+-.20% of a bending mode natural frequency of the shaft assembly as installed in the driveline system.”

    This is not merely a simplistic description of dampening a shaft. Instead, the claim identifies two particular type of vibrations to be dampened (i.e., shell mode vibrations and bending mode vibrations) and describes certain characteristics/value by which the vibrations are to be dampened/tuned. I recall seeing nothing that indicates that these limitations were admitted “to be NOT new.”

  15. Model 101 August 26, 2020 6:21 pm

    This is my last post on Dog.

    My lawyer said that after speaking with a staffer at the office of Senator Coons today…that retroactivity in the 101 bill is highly unlikely.

    My patents taught the silicon valley skunks how to do it.

    I wasted millions on it.

    Decades of work down the toilet. Nothing more.

    Judge Michel…thank you for being the tip of the spear for 101 reform.

    Gene…you are the best!

    Onward down.

    I could have saved America trillions which was my goal.

    Model 101

  16. Curious August 26, 2020 8:16 pm

    My lawyer said that after speaking with a staffer at the office of Senator Coons today…that retroactivity in the 101 bill is highly unlikely.
    What do you mean “retroactivity in the 101 bill”? Does it mean that patents killed under 101 cannot be revived. And/or does it mean that patents issued prior to the passing of a (hypothetical) new 101 statute don’t get the benefit of the new statute?

  17. Model 101 August 26, 2020 9:18 pm

    Curious –

    Probably both.

    The new 101 bill is being decided outside of DC.

    He said that nothing would happen before Jan 2021.

    He said the staffer said that no one is in support of retroactive application of a new 101 bill. (Except the 400+ patent owners who were screwed)

    US Inventor…Please help!!!!

  18. Curious August 27, 2020 9:23 am

    He said that nothing would happen before Jan 2021
    That’s obvious. There is nothing going to get done before the inauguration. A question worth exploring is what party/president would be best for the patent system.

    He said the staffer said that no one is in support of retroactive application of a new 101 bill. (Except the 400+ patent owners who were screwed)
    That refers to patent owners whose patents have been invalidated. Once you’ve exhausted your appeals, a final judgement is, by definition, final. We do know that pre-AIA patents are subject to being hauled into the PTAB. As such, there can be retroactive application of patent statutes to issued patents.

  19. TFCFM August 27, 2020 9:50 am

    Curious@#13: “Let’s just say, for sake of argument, that patent ineligibility under 35 USC 101 should even be a test. If so, who gets to decide what test gets applied to what subject matter?

    That seems like an easy question:

    As has always been the case in our Constitutional system, the courts are charged with faithfully interpreting our laws, including our patent laws. In the context of section 101, that includes courts recognizing that section 101 recites conditions that are necessary for eligibility, but not necessarily sufficient for eligibility.

    Our courts should, as they always have, continue applying prior decisional law, except where contradicted by a new or amended law. In the context of section 101, that means our common law courts ought to continue to recognize long-standing decisions relating to ineligibility of certain kinds of subject matter (decisions which have not been contradicted by legislative additions to, or modification of, our patent laws).

    Our legislature should, as always, continue making new laws and amending our existing ones as it sees fit. In the context of section 101, if the legislature intends that all claims written to facially appear to be within one of the recited categories of eligible subject matter are to be eligible “no matter what” (and ignoring prior judicially-recognized exceptions that have long been applied), then the legislature should amend section 101 to say that, because our current section 101 does not say that.

    As has always been the case, folks who are unhappy with a given judicial interpretation of existing law have two options: i) seeking to convince the courts that the interpretation is faulty and ii) seeking to convince the legislature to ‘overrule’ the interpretation by enacting a new or modified law that compels a different interpretation. In the context of section 101, that means that folks seeking to monopolize subject matter that courts’ interpretations have prevented them from monopolizing can either i) convince the courts to let them (hasn’t worked) or ii) convince the legislature to let them (also hasn’t worked).

    That’s how our system works and has, essentially, always worked — at least in the US.

    That a few seek to be enriched at the expense of the many is a tough sell under most circumstances. Our current patent system exists despite that facially ‘bad deal’ because folks recognize that rewarding inventors with monopolies can make “the many” better off, at least under some circumstances.

    Given that human nature tends to cause folks to try to maximally exploit advantages created through law (including patent laws), there’s little wonder that the grant of patent monopolies for inventions has been carefully restrained and have been denied for types of subject matter for which society is not prepared to grant monopoly rights.

  20. Anon August 27, 2020 11:03 am

    A question worth exploring is what party/president would be best for the patent system.

    A: (sadly) – NEITHER of the two main candidates. That said, Biden would likely be worse, as at least with Trump, Iancu may continue to serve in his role.

  21. MaxDrei August 27, 2020 11:37 am

    Thanks, Curious, for your # 14. It reveals the perversity of the “parameter-itis” pandemic, in patent claiming, flagged up as a problem, many years ago, at least in Europe.

    One games the system by freighting one’s claim with a mix of fancy parameters and impressive-looking numerical ranges, in such a way that the claim covers any competing product but is problematic to prove as old. Another example of “asymmetric warfare” if you like.

    Imagine a claim to a coil of rolled strip (steel or aluminium) which recites a mix of starting material composition, production process variables (temperature, time) and mechanical, electrical or chemical characteristics of the product. The ranges are all wide enough to embrace the competing product. Finding in the prior art, however, a disclosure of all of these ranges and characteristics in combination is a nightmare.

    But the prop shaft of the Axle case is nothing like so sophisticated a claim. It is merely two numbers 2% and 20%. Sorry but it is grotesquely clear that these numbers fail to rise above the level of “purely arbitrary”. Why 2%? Why 20%? Why not 3%? Why not 15%? The claimed numerical ranges are chosen to be as narrow as possible (and thereby as impressive as possible) while still being wide enough to embrace any competing product that performs well enough to be competitive.

    To promote the “general welfare” the PTO and the courts need to be alive to the guile of Applicants and their lawyers, and sharp enough to get on top of the parameter-itis pandemic, with measures that command general acceptance.

    Control at the EPO is exercised by its obviousness enquiry. At the USPTO, as here, it is the 101 enquiry. I know which approach I find more intellectually satisfying and therefore the easier one to defend against critics.

  22. MaxDrei August 27, 2020 12:24 pm

    I forgot to mention the notorious “five and a half inch plate” hypo promulgated by one of England’s most illustrious patent judges (now retired) as evidence that a TSM approach to obviousness cannot see off spurious “parameter” claims. The argument is that there is no TSM to choose a plate diameter of 5.5 inches, so the choice cannot have been obvious, so the claimed subject matter must perforce be accepted as “inventive”.

    The judge later found out that the EPO’s “Problem-Solution” TSM approach to obviousness deals effortlessly with his hypo. The pity is that the message still hasn’t reached all his followers, who continue to parrot his hypo.

    Perhaps also in the USA, TSM is disparaged using examples such as the 5 1/2 plate? Tell me because I don’t know.

  23. Curious August 27, 2020 1:19 pm

    In the context of section 101, that means our common law courts ought to continue to recognize long-standing decisions relating to ineligibility of certain kinds of subject matter (decisions which have not been contradicted by legislative additions to, or modification of, our patent laws).

    So, unelected jurists get to make policy decisions as to the “winners” and “losers” of the patent system – not based upon facts (because Appellate Courts are not fact finders) but based upon their own whims as to what should be patentable or not. And does anybody wonder why the system is so screwed up?

    The problem is that our courts don’t recognize long-standing decisions relating to ineligibility. Rather, they are constantly expanding the scope of those decisions. I spent the first decade of my career rarely ever seeing a 101 rejection. Now, I’m pleasantly surprised when I don’t see a 101 rejection. More importantly, whether the application I’m working on gets a 101 rejection is highly dependent on the Examiner – not the law. The same applies in litigation – whether your claim gets killed is far more dependent upon the judge applying the law than the law itself. These are signs of badly written and/or interpreted laws.

    101 case law of today bears little semblance to what it was 15 years ago. Then, not only could I predict what was going to be patent ineligible (or not), even if it was patent eligible, I would know how to fix it. My clients aren’t in the business of patenting “abstract ideas.” They are in the business of creating real products. If one’s invention is embodied in a real product, then it isn’t an “abstract idea.”

    That a few seek to be enriched at the expense of the many is a tough sell under most circumstances.
    What a joke of a comment and emblematic of someone who believes in patent communism whereby the “commune” (i.e., everybody else) gets to benefit from the fruits of the labor of the few. This is classical communism. Go talk to the average person on the street and ask them if they think an inventor should receive protection for their invention. This is hardly a “tough sell under most circumstances.” The average person I talk to when they find out that I’m a patent attorney loves to tell me about how they have ideas on things that they would like to obtain a patent on. From my experience, the average person LOVES the idea of patents.

    Our current patent system exists despite that facially ‘bad deal’ because folks recognize that rewarding inventors with monopolies can make “the many” better off, at least under some circumstances.
    No wonder you write what you do – you doubt the fundamental premise of the patent system – which is that patents promote innovation and the promotion of innovation is GOOD FOR EVERYONE. The fruit that isn’t grown cannot be shared with anyone. That fundamental premise applies to all technology.

    Given that human nature tends to cause folks to try to maximally exploit advantages created through law (including patent laws), there’s little wonder that the grant of patent monopolies for inventions has been carefully restrained and have been denied for types of subject matter for which society is not prepared to grant monopoly rights.
    Which is why there are a number of big tech companies that are maximally exploiting their size advantages and through the law are practicing efficient infringement knowing that small guys can no longer rely upon the patent system to protect their inventions. This American Axle case is just the fallout of what happens when the judiciary (not society) has decided that patent rights should not be granted on certain types of subject matter. They’ve re-written the law so broadly that it is encompassing more subject matter than they intended. However, they really don’t care with the collateral damage because, like you, they really don’t believe in the system.

    Your “Society” is embodied by Congress – not the Courts, and Congress did not limit patent eligibility to “certain types of subject matter.” As I noted above:
    Why does the medium being manipulated matter with regard to 35 USC 101? Manipulating steel is 20th century technology. Manipulating data is 21st century technology. The benefits of the patent system for protecting 20th century technology should also apply to protecting 21st century technology.
    Few (and certainly not you) want to address those points. As I also stated above, those are points best addressed by Congress (i.e., representatives of the people, i.e., your “Society”), not the Courts.

  24. Anon August 27, 2020 1:43 pm

    that includes courts recognizing that section 101 recites conditions that are necessary for eligibility, but not necessarily sufficient for eligibility.

    You (severely) misunderstand the difference between interpret and write (wholesale).

    Sufficiency is NOT within the realm of interpretation and violates Separation of Powers.

    I am beginning to think that while you still may be an attorney, you may not be a US attorney.

  25. Anon August 27, 2020 1:47 pm

    That a few seek to be enriched at the expense of the many is a tough sell under most circumstances. Our current patent system exists despite that facially ‘bad deal’

    At the expense of the many…? Do you even understand innovation and the Quid Pro Quo?

    Can you be any less of an anti-patent wolf in those (threadbare) sheep’s clothing?

  26. Anon August 27, 2020 1:52 pm

    Apologies Curious, I wrote two responses prior to see your addressing of the statements by TFCFM.

    I agree with you. TFCFM should be shamed, and that he does not feel shame (at all), is an even larger issue.

  27. Curious August 27, 2020 2:02 pm

    A: (sadly) – NEITHER of the two main candidates. That said, Biden would likely be worse, as at least with Trump, Iancu may continue to serve in his role.
    Your response includes no analysis beyond the assertion that Trump has given us Iancu. However, has Iancu been any great revelation at the patent office? I get the same lousy 101 rejections today that I got when Michelle Lee was at the helm. While Iancu has been pro-patent, he has given us little.

    Frankly, after 3 ½ years in office, it is readily apparent that Trump cares nothing about patents, the patent system, or the patent office. Moreover, I am unaware of anybody in his inner circle that does. On the other hand, you do realize who was elected to Biden’s Senate seat after Biden became VP and also have a very strong relationship with Biden? That would be Senator Coons — easily one the most pro-patent legislators in Congress.

    If you do some research on Coons, you’ll understand why he is pro-patent. I won’t go into it here, but it can easily be found. If Biden is looking for a successor to Iancu or to nominate judges for Federal Circuit (we are due for many retirements), who do you think he’ll look to for advice? I’ll grant that Trump is more likely to put someone on the Supreme Court that is more patent-friendly than Biden, but that is more by accident than by choice. Let’s not forget that the conservatives have had control of the Supreme Court for a very long time and that has not produced position results. As such, a conservative appointment to the Supreme Court guarantees nothing.

    Getting back to Coons, he is also one of the few Democratic Senators who shows a willingness to work across the aisle. Imagine a situation in which Coons puts together a proposal that can pass the Senate (because he gets votes from both side of the aisle) and Biden has shown a willingness to support it because of his relationship with Coons and because Biden in not beholden to big tech, I think there is a pretty good chance of that kind of legislation passing the House.

    If Trump gets reelected, he’ll almost certainly face a Democratic-led House, and I doubt the House will be willing to give him many legislative victories. With a Trump victory, I see little substantive legislation happening over the next 2 years and if the Democrats retain the House in 2022, you can make the next 4 years.

    Nothing about my comments should be construed as me agreeing or disagreeing with either candidate on anything else. However, on purely the question as to what candidate would be better for the patent system, I’m going to side with Biden. You might have to go back to Jefferson to find a President that had a serious interest in patent law. As such, I’m not going to hold an indifference as to patent law against either candidate. However, with Biden, I see a candidate who wants to work with the other side and has a close relationship with someone (in Senator Coons) who is very pro-patent. If I’m going to sum up the benefits of both candidates, it would be the following:

    Biden: better Federal Circuit judges, better chance of passing pro-patent legislation, better chance of getting someone more pro-patent than Iancu
    Trump: better chance of having a pro-patent Supreme Court justice

    To me, the most important factor is the better chance of passing pro-patent legislation. The Supreme Court isn’t particularly interested in disturbing past precedent. Granted, much of my analysis hinges upon Senator Coons’ influence. However, there is simply no one comparable among the Republicans who could wield anywhere close to the same influence on Trump.

  28. Curious August 27, 2020 2:19 pm

    in such a way that the claim covers any competing product but is problematic to prove as old.
    Problematic to prove as old? If the invention covered old products, it would be quite easy to prove anticipation. Either the products were specifically tuned in that matter (in which case there should be documentation as to that fact) or the products would be inherently tuned in such manner, in which case you should be able to prove that as well.

    Finding in the prior art, however, a disclosure of all of these ranges and characteristics in combination is a nightmare.
    Only for an incompetent attorney.

    The claimed numerical ranges are chosen to be as narrow as possible (and thereby as impressive as possible) while still being wide enough to embrace any competing product that performs well enough to be competitive.
    Speculate much? Of course you do, as you are totally talking out of your &^% at this point. If the product (other than the tuning) was old, then how could the claim cover “any competing product” but not the old products?

    Control at the EPO is exercised by its obviousness enquiry. At the USPTO, as here, it is the 101 enquiry.
    Making s*&t up again, I see. The 101 inquiry has nothing to do with your “parameter-itis.”

    I know which approach I find more intellectually satisfying
    Color me unsurprised, you’ve been spouting your EPO is better BS for over a decade now.

    I don’t know.
    Clearly, the most accurate thing you’ve written so far. See MPEP 2144.05. Tell me who I should send the bill to?

  29. Pro Say August 27, 2020 2:37 pm

    Model 101: “He said the staffer said that no one is in support of retroactive application of a new 101 bill.”

    Justice — our Constitution — can not be bifurcated.

    Because SCOTUS’ Alice, Mayo, etc. exceptions to patent eligibility usurped that which is the exclusive province under our constitution of Congress, ALL rulings by ALL courts AND the PTAB (and indeed the denial of patent applications by examiners) were and are unconstitutional.

    Accordingly, any attempt by Congress to deny the restoration of patent / claim validity to ALL patents / claims which were unconstitutionally invalidated would itself be . . . unconstitutional.

    Justice for all means exactly what it says: Justice for all.

    Not even Congress gets to pick and choose who receives justice . . . and who doesn’t.

  30. MaxDrei August 27, 2020 4:30 pm

    Curious, at # 28 asserts in relation to the Axle case, novelty-destroying prior art, and the “2%” and “20%” tuning parameters recited in the claim:

    “Either the products were specifically tuned in that matter (in which case there should be documentation as to that fact) or the products would be inherently tuned in such manner, in which case you should be able to prove that as well.”

    This is hand-waving, Curious. You might very well suppose what you write. But when it comes to proving it, clearly and convincingly, it ain’t that straightforward. No trouble to read a patent 15 years old, but finding a product from 15 years ago, and then reproducing its production process and then measuring its vibration parameters as they were 15 years earlier, that is a different proposition altogether.

    This is precisely because the numbers in the claim are i) arbitrary and anyway ii) a parameter nobody would have bothered to measure. As I say, a good example of parameter-itis.

  31. Curious August 27, 2020 11:07 pm

    No trouble to read a patent 15 years old, but finding a product from 15 years ago, and then reproducing its production process and then measuring its vibration parameters as they were 15 years earlier, that is a different proposition altogether.
    Then perhaps it wasn’t so obvious (or anticipated) as you thought it was.

    Its not like propeller shaft assemblies are some new-fangled technology. Look at the face of the patent — there were patents cited from the 90s, 80s 70s, 60s, 50s, and even the 30s. U.S. Patent No. 2,001,166, filed on November 27, 1933 (a CIP of an application filed on June 7, 1932), was directed to a propeller shaft. This is was is stated in column 2: “and, of course, some vibrations occurring ahead or behind the propeller shaft may be transmitted directly through the propeller shaft unless the same is properly constructed to dampen out such vibration.” This is what was also stated: “I prevent harmonics from affecting the shaft either by filling or plugging the same with a relative non-resonant material to dampen vibration and eliminate the phenomena of resonance.”

    This is claim 1:
    “A hollow propeller shaft for a motor vehicle power transmission train adapted to have suitable power transmitting connections at opposite ends, and a plug of non-resonant material frictionally engaging the inside of the shaft to dampen vibrations of the walls thereof.”

    This is a statement contained in U.S. Patent No. 2,751,765, which was filed in 1953: “Vibration of a propeller shaft is an undesideratum … While considerable research and development work has been carried out with a view toward reducing the vibrations.” 55+ years ago people were conducting “[c]onsiderable research and development work” to reduce vibrations in propeller shafts, and you think it would be difficult to find prior art?

    People have been trying to dampen vibrations in propeller shafts for AT LEAST 88 years and you are bemoaning the ability to find prior art. Again, to repeat what I wrote earlier, only an incompetent attorney would have trouble finding prior art … if it actually existed.

    This is precisely because the numbers in the claim are i) arbitrary and anyway ii) a parameter nobody would have bothered to measure.
    Ignorance is a poor excuse. The numbers are arbitrary because you don’t understand them. If it is a parameter that “nobody would have bothered to measure,” it was because nobody recognized its importance.

  32. MaxDrei August 28, 2020 4:49 am

    I’m delighted by your answer, Curious, because it vindicates everything I have been writing about a “scrivened parameter at the point of novelty” claim. Next time you are prosecuting such a 2%/20% claim through the EPO, see how far you can get with your argument that:

    “The numbers are arbitrary because you don’t understand them. If it is a parameter that “nobody would have bothered to measure,” it was because nobody recognized its importance.”

    In a case where the specific numbers are indeed arbitrary, as here, that argument will simply confirm the correctness of the objection.

  33. Anon August 28, 2020 6:05 am

    MaxDrei,

    You sir are an extreme oddity, with a mind hell-bent against being open to understanding.

    You take delight in a post that eviscerates your view and claim that that evisceration serves the opposite of its reality and validates your hackneyed statements.

    The addressing HERE of “you don’t understand them” is quite different than that which would be addressed to the examiners. If indeed ‘arbitrary,’ then YOU may show the arbitrariness has nothing to do with the measurements of any purported infringing item.

    No sir, your protestations, as feeble as they are, do NOT serve to make your conclusions into reality. As here, it is YOUR ‘argument’ that confirms that Curious is correct and that you are pulling things out of your arse.

  34. Anon August 28, 2020 6:09 am

    … and frankly, MaxDrei, I do not know what type of technical background you have, but you display a rather profound lack of critical reasoning that should be present in most all technical backgrounds.

    One need not be an expert in physical dampening systems to be able to appreciate what Curious has been saying.

    But you sit there insisting that what Curious is saying validates your statements — and this is beyond ludicrous.

    You are either tr011ing, being purposefully deceitful, or are delusional beyond hope of rationality.

  35. Anon August 28, 2020 6:14 am

    Curious @27,

    Thank you for these thoughts. I will reflect upon them.

    I am no fan of Trump (and hence my first view that neither candidate provides the succor that I desire), but the cognitive decline and puppet-nature of Biden reminds me of the adage of “the devil I know rather than the one I do not.” I am not sure just how much I could ‘trust’ the tangent to Coons, but I do agree that Trump is by NO means the Pro-Patent leader that we deserve.

  36. Anon August 28, 2020 6:21 am

    Pro Say @29,

    It is this type of over the top rant that is a disservice to what you are trying to accomplish.

    I think that I ‘get’ what you mean, but your hyperbole of “all” simply is not correct, and your throwing around of “unconstitutional” — standing here untethered to what may be unconstitutional — is more likely to be dismissed than taken seriously.

    I think that your post is an expression of emotion, but would caution that emotion MUST be matched with reason.

  37. TFCFM August 28, 2020 11:29 am

    Curious@#20: “I spent the first decade of my career rarely ever seeing a 101 rejection. Now, I’m pleasantly surprised when I don’t see a 101 rejection.

    Similarly, I spent about the first decade of MY career rarely seeing folks trying to patent software and abstract methods (because everyone “knew,” prior to the now-widely-discredited State Street Bank decision that software and ‘methods-of-doing-business’ weren’t patentable (and 101 rejections were therefore rarely needed or made).

    State Street Bank might have improved the situation by extending eligibility to the relatively rare software- and ‘business method’-related patent that ought genuinely to be considered eligible. Unfortunately, State Street Bank also unleashed a tidal wave of nonsense-claiming that has directly led to the necessity of reestablishing a new lower standard of eligibility.

    My comments in this article are directed to the phenomenon that:

    – just as the easy-to-apply, black-and-white eligibility rules that preceded State Street Bank were inappropriately over-simplified (essentially “no patenting at all of software or ‘business methods,’ no matter what”)

    so too

    – are attempts (like the Supreme Court’s decision in Alice to establish an easy-to-apply, one-size-fits-all-eligibility-exceptions rule both i) already performs unacceptably and ii) is doomed to failure. This is why Alice needs to be replaced.

    We need to recognize that ineligibility stemming from “abstractness” is different from ineligibility stemming from “claiming mere information and/or processing of information” and that both of these are different from ineligibility stemming from “attempting to monopolize all uses of a natural law/phenomenon.”

    You must be at least [this] tall to ride” might work well enough for roller coaster ticket booths, but, unfortunately, less well so for sensibly distinguishing subject matter for which patent monopolization should be permitted from subject matter for which it should not.

  38. Model 101 August 28, 2020 11:34 am

    Pro Say

    Thank you
    Quoted ypu to the Senate.

    Anything else you have can be sent also.

    Bring it!!

  39. Curious August 28, 2020 11:42 am

    I am no fan of Trump (and hence my first view that neither candidate provides the succor that I desire), but the cognitive decline and puppet-nature of Biden reminds me of the adage of “the devil I know rather than the one I do not.” I am not sure just how much I could ‘trust’ the tangent to Coons, but I do agree that Trump is by NO means the Pro-Patent leader that we deserve.
    As for the “cognitive decline,” neither Trump nor Biden are the sharpest tools in the shed. However, does that really matter? Neither of them will be writing any laws or pondering great thoughts about patent law or about the people they will be putting in place in the judiciary. As such, the more relevant question is who will they trust to aid them in identifying potential candidates to the lead the USPTO or to nominate for the Federal Circuit or decide whether to support a particular position or bill? You may not trust the “tangent to Coons,” but Coons was the FIRST Senator to endorse Biden (this from a tweet dated April 25, 2019). This is from an article in Politico dated June 23, 2020. The title is: “The Biden whisperer in the Senate.” The byline is “Sen. Chris Coons is poised to play a critical role in advancing Biden’s agenda if Trump is defeated.” This is also from the article:
    The Delaware Democrat maintains almost familial ties with Biden, while also enjoying close relationships with GOP senators, with whom he’s starting to have conversations about what the Senate could look like if Biden is elected president.
    Here is another snippet:
    Coons is known for embracing the centrist, consensus-oriented politics that animate Biden, whose Senate seat he now holds. He’s hopeful that Republicans may be more willing to work with Biden than they did with President Barack Obama. But he also has no illusions about the state of the polarized Senate. And he insists Biden “is not naive.”
    The article also talks about him as a possible cabinet member. There is also an article (cited in Coon’s wiki profile) from the Washington Post in 2016 that described Coons as a possible replacement for Scalia for the Supreme Court.

    Let me take my “Imagine a situation” situation one step further. Let’s say Coons shepherds a patent reform bill through Congress that is far more pro-patent than what we’ve had in the past. Then imagine Bryer or RBG decides to retire. Frankly, if RBG retires, I think Biden will face incredible pressure to nominate a woman. However, if it is Breyer (he’s 82 at the moment), imagine Biden nominating Coons to replace him — he has a great shot of being confirmed based upon his good relations with the Republican Senators. While it may be an exceedingly outside shot of happening, imagine a pro-patent judge sitting on the Supreme Court?

    As I wrote before, Trump would is more likely to nominate a Supreme Court justice that is pro-patent, but that would be more be far more accidental than intentional. However, it isn’t guaranteed as conservatives such as Thomas (in particular) and Alito haven’t been great friends to the US Patent System. However, with Biden, there is a real chance (again, admittedly, still remote) that a REAL pro-patent judge could be placed at the Supreme Court.

    Last thing about Biden, I didn’t watch any of the conventions, but I do know that the Republicans wanted to paint Biden as some AOC/Sanders puppet. However, Biden didn’t run as a progressive — he ran as a centrist, and if he wins the election, it will be because he ran as a centrist. I would be shocked if he took a hard turn left if he was elected — because that is not who he has been his entire career. He is an old-school politician that is looking to work across the aisle — not antagonize the opposition like Trump (and others on the Democratic side as well).

  40. TFCFM August 28, 2020 11:51 am

    Responding to some of your more pedestrian points in #23 (sorry if I said #20 in the preceding message — I can’t see whether I did as I type this one):

    Curious@#23: “unelected jurists get to make policy decisions as to the “winners” and “losers” of the patent system – not based upon facts (because Appellate Courts are not fact finders)…

    Appellate courts do not, of course, hear cases in the first instance. Instead, without exception, they hear appeals of cases in which a trial court (through its jury and/or judge) made factual findings in the first instance. Moreover, those factual findings are subject to applellate review, even if at higher level of deference than are findings of law.

    Curious@#23: “Go talk to the average person on the street and ask them if they think an inventor should receive protection for their invention. This is hardly a ‘tough sell under most circumstances.’ “

    Our Constitution was not written by “the average person on the street” (thank heavens), nor is it interpreted according to the whims of the mob. The Patent and Copyright Clause was, instead, an attempt to balance a long-term good (creation of valuable intellectual works) with a short-term evil (monopolization of works). The purpose of that clause was to encourage production of the long-term good by tolerating as little of the short-term evil as might be necessary to induce creation of the good. The purpose most decidedly was NOT merely to enrich creators; otherwise perpetual monopolies would surely have been awarded.

    Moreover, your prediction that the mob would vote for royalties and exclusivity is belied by the reality of widespread internet piracy of music and software (where/when it was possible) and by the competitive success in the marketplace of cheaper infringing alternative, where available. If the mobs were the angels you make them out to be, a patent/copyright system would not be needed.

    Curious@#23: “Your ‘Society’ is embodied by Congress – not the Courts, and Congress did not limit patent eligibility

    Our “Society” is embodied in our Constitution, which provides for three branches of government. If you believe otherwise, you should be on the streets advocating the abolition of the Judicial and Executive branches.

    Each of our three branches of government has a constitutionally-provided and vital role. The role of the courts is to interpret and pronounce the meaning of laws enacted by the legislature. Where the legislature enacts legislation adding to (without abolishing or replacing, as with section 101) the common law background, it is the proper role of the courts to interpret that legislation against that common law background. That is what the courts properly do and are doing (with debatable efficacy) in the context of attempting to determine and fix the bounds of patent eligibility, taking into account legislative enactments and not-overruled-or-superceded prior decisions.

    (As with Anon‘s dreck, I’ll pass on replying to mere-attempted-insults.)

  41. MaxDrei August 28, 2020 12:17 pm

    anon, in support of the defence of the claimed subject matter (why had nobody thought of it before?) Curious assures us that prop shaft vibrations and tuning them out is conventional, old technology. Continuing, he tells us that despite 55 years of trying, the technical problem of prop shaft vibrations had defeated all attempts to solve it.

    Now, we are asked to believe that the reason for 55 years of failure, and the success since the claim in suit was scrivened, was a failure to appreciate the existence of a parameter, and the “importance” of attaining the 2% and 20% values of the parameter recited in the claim. Simple as that!

    Why did it take so long? It can only be that we are dealing here with a flash of genius. Who could have guessed? Who knew?

    Oh come on! In the words of the inimitable John McInroe “You cannot be serious!”

    Once again, this is a bog standard case of a spurious parameter claim. Once again, there is no performance discontinuity at 2% nor at 20%. These numbers are therefore a matter of choice ie arbitrary.

  42. Curious August 28, 2020 12:59 pm

    Moreover, those factual findings are subject to applellate review, even if at higher level of deference than are findings of law.
    Review of facts are not findings of fact. Like this one … “‘M]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it,’ thereby thwarting the primary object of the patent laws.” Who made this [wishy-washy] finding? Where is the evidence? This is the stated justification for the whole exceptions to patent eligibility yet it comes out of thin air.

    The purpose most decidedly was NOT merely to enrich creators; otherwise perpetual monopolies would surely have been awarded.
    Nobody said anything about needing perpetual monopolies. Did I write that the purpose was to “enrich creators”? Oh wait, I didn’t. I wrote “the fundamental premise of the patent system – which is that patents promote innovation and the promotion of innovation is GOOD FOR EVERYONE.”

    Moreover, your prediction that the mob would vote for royalties and exclusivity is belied by the reality of widespread internet piracy of music and software (where/when it was possible) and by the competitive success in the marketplace of cheaper infringing alternative, where available.
    You are conflating two different things. Do nearly all people think it is wrong to steal? Absolutely. However, if one is walking by a local apple orchard and thousands of apples on the ground, would most people feel bad about picking up one of those apples for himself/herself? Likely not despite it technically be stealing. They’ll rationalize it as a de minimis act. However, if some giant conglomeration comes in strips all of the trees of apples, these same people (who took an apple) will decry that action as being illegal. Oh I forget, you really don’t do nuance.

    Our “Society” is embodied in our Constitution, which provides for three branches of government. If you believe otherwise, you should be on the streets advocating the abolition of the Judicial and Executive branches.
    Congress is the representatives of the people. That is why they call them Representatives. The judiciary is to interpret the law — not MAKE the law. Again, as Anon likes to point out many times, the US Constitution gave the power to make patent law to Congress — not the judiciary. The exceptions to patent eligible subject matter is judge-made law — by judges who are not elected and not representatives of the people.

    That is what the courts properly do and are doing (with debatable efficacy) in the context of attempting to determine and fix the bounds of patent eligibility
    Determining and fixing the bounds of patent eligibility is not the job of the judiciary. They don’t know what does or does not promote innovation because it isn’t their job to know. They aren’t given the tools to find out. They cannot hold hearings that solicit testimony from all sides of a given issue and/or solicit opinions for their constituents as to what should be the proper scope of patent eligible subject matter. Instead, they’ve made these decisions based upon their own prejudices and the limited amount of “facts” provided by the briefs they receive. I put “facts” in quotations because the facts are oftentimes shaded (or outright misstated). There is no public debate as to what constitutes patent eligible subject matter.

    I almost entirely forgot about this doozy of a comment in Bilski: “This Court has ‘more than once cautioned that courts ‘should not read into the patent laws limitations and conditions which the legislature has not expressed.’'” How does this statement reconcile with your position that the court is merely “attempting to determine and fix the bounds of patent eligibility”? It doesn’t. However, like you, the Supreme Court only pays lip service to that cautioning. The simple point, one that you implicitly recognize, is that the Court does engage in reading limitations and conditions into the patent laws.

    You’ve stated before “Section 101 simply DOES NOT include any language by which our legislature forbade judicial interpretation.” You can apply that (il)logic to any statute. Well, this statute does not forbid us (i.e., the Courts) to creating some judicial exception to whatever that happens to be the subject of this statute, so let’s interject our own opinion as to what can or cannot be permissible based upon this statute.

    With American Axle (and the other decisions preceding it), the Federal Circuit has made the exceptions under 101 so malleable that there are few patents I couldn’t kill using 35 USC 101 with a receptive District Court judge.

  43. Curious August 28, 2020 1:25 pm

    Now, we are asked to believe that the reason for 55 years of failure, and the success since the claim in suit was scrivened, was a failure to appreciate the existence of a parameter, and the “importance” of attaining the 2% and 20% values of the parameter recited in the claim. Simple as that!
    The depth of your ignorance is astounding. I have little doubt, as I was once an engineer whose job was to make things, that there are dozens if not hundreds of different parameters that could be used to characterize aspects of a propeller shaft assembly. What these particular inventors determined was inventive was to tune these particular parameters in a particular manner. I have little doubt that the prior art probably tuned different characteristics of propeller shafts.

    These numbers are therefore a matter of choice ie arbitrary.
    If the numbers are so arbitrary then wouldn’t it be simple enough to DESIGN AROUND THEM? Am I right? Also, if these characteristics weren’t novel, one should be able to find these characteristics on at least one of the hundreds of thousands of propeller shafts that are already out there (again, this is a field that is probably a 100 years old). Am I right? If you cannot find these characteristics, then they aren’t novel. Also, why would another company infringe if these characteristics were merely arbitrary or spurious? Are you saying that one company created these arbitrary characteristics that were never seen before (i.e., novel) and another company just happened to stumble upon the same “arbitrary” or “spurious” characteristics at the same time and decided they want to use them as well? What a coincidence.

    Why did it take so long? It can only be that we are dealing here with a flash of genius. Who could have guessed? Who knew?
    ??? Why does it take so long for any improvement to technology that has been around for a century? We are still getting improvements to automobiles (you know, the century-old technology that is the bastion of German industry), are we not? Why did it take so long for these improvements?

  44. MaxDrei August 28, 2020 1:47 pm

    Curious, the claim is to a process, not the shaft as such. Finding an old prop shaft that is more or less vibration-free is not enough to prove the claimed combination of method steps to be old.

    Imagine a 15 year old claim to a process of making a coil of aluminium strip. Steps of rolling, intermediate anneal, more rolling, final anneal; temperatures, times, rolling reduction per pass, etc, etc. You can find a 16 year old Audi with Al body panels, OK, but how do you prove from such a panel that it was made, 16 years ago, with a process that renders the claimed process claim invalid?

    Once again, even if you can find a 15 year old prop shaft that is more or less vibration-free, that by itself isn’t enough to anticipate the cunning 2%/20% process claim. Nevertheless, the claim will bite on any current competitor (because, today, no prop shaft that fails to meet the 2%/20% standard is saleable. The auto makers won’t buy it.

    Learned Hand had it right: a good patent gives the public something it did not have before whereas the bad patent deprives the public of something it already had. For promoting the progress it is just as important to knock down the bad patents as it is to enforce the good ones, quickly and economically.

  45. Anon August 28, 2020 2:29 pm

    TFCFM,

    That you do not understand the difference between interpret and write does not reflect dreck of me.

    That you might think otherwise only reflects ever more poorly on you.

  46. Curious August 28, 2020 5:33 pm

    Finding an old prop shaft that is more or less vibration-free is not enough to prove the claimed combination of method steps to be old.
    You really don’t understand the claim language, do you?

    Claim 1 recites “positioning the at least one liner within the shaft member such that the at least one liner is configured to damp shell mode vibrations in the shaft member by an amount that is greater than or equal to about 2%.” This is a measurable property, and if the property corresponds to what is recited, then it was was positioned in the manner claim.

    Claim 1 also recites “the at least one liner being tuned to within about .+-.20% of a bending mode natural frequency of the shaft assembly as installed in the driveline system.” Again, this is a measurable property.

    Also, the fact that “an old prop shaft that is more or less vibration-free” is not material to the claim. What is material is that the liner (in combination with the shaft member) have these properties. Find a shaft assembly with these properties and the claim is anticipated (so long as everything else is the same).

    Imagine a 15 year old claim to a process of making a coil of aluminium strip. Steps of rolling, intermediate anneal, more rolling, final anneal; temperatures, times, rolling reduction per pass, etc, etc
    Not close to be comparable. The claim doesn’t recite any properties of the intermediate manufacturing steps.

    Nevertheless, the claim will bite on any current competitor (because, today, no prop shaft that fails to meet the 2%/20% standard is saleable. The auto makers won’t buy it.
    You really need to avoid speculation. You have absolute NO IDEA what currently meets this standard. The fact that something may be tuned for one mode doesn’t mean it is tuned for all modes. A body in 3D space has 6 modes of vibration. A shaft assembly is constituted of many bodies. The claim refers to a “shell mode” which is particular mode associated with thin wall cylinders.

    The claim recites “the at least one liner being tuned to within about .+-.20% of a bending mode natural frequency of the shaft assembly.” This is a requirement regarding the liner relative to the shaft assembly. This isn’t just some ‘tune it so that there is no vibration’ limitation.

    If I told you to make the hardness of the balls of a ball bearing assembly to within +/- .2% of the hardness of the race of the ball bearing assembly, would you say that this is abstract? Absolutely not. Alternatively, I could claim making part A have a weight that is within +/- .2% of the weight of part B. How this is accomplished is immaterial to the invention. Rather, what is important is that these parts have this claimed relationship. This is what is being claimed in American Axle, and it is AN EXTREMELY COMMON practice in the mechanical arts to describe parts as having certain characteristics or characteristics relative to one another.

  47. Anon August 28, 2020 7:17 pm

    Curious,

    As you can no doubt figure out by now, both MaxDrei and TFCFM have zero credibility.

  48. Curious August 28, 2020 11:14 pm

    As you can no doubt figure out by now, both MaxDrei and TFCFM have zero credibility.
    I figured that out about MadMax nearly a decade ago. As for TFCFM, he is just a slightly less annoying version of Malcolm Mooney. They are useful foils (muses?).

  49. MaxDrei August 29, 2020 4:48 am

    Curious, I’m obliged to you for taking the time, at # 46, to explain so much of the subject of damping the six modes of vibration of any real life prop shaft. I’m following progress in the EPO patent family member, EP-A-1994291, where there are novelty and obviousness objections to overcome. Applicant has replied to the First Office Action with extensive claim amendments and a concise (but inevitably lengthy) letter which thoughtfully addresses all the novelty and obviousness objections. The next Office Action might be quite interesting, at least for me.

    A standard drafting approach with parameter claims is to express the novelty as some sort of ratio (as here). Searching the prior art manufacturing process art, for a teaching to hold to such a ratio, is an onerous task, as any Patent Office Examiner will tell you.

    If the 2%/20% values are anything but arbitrary, then comparative experimental data would reveal that any departure from these values results in significantly more vibration in the shaft. Is there any such data, anywhere?

  50. Anon August 29, 2020 10:30 am

    Curious @ 48,

    I could not agree more on both accounts.

    For example, MaxDrei @ 49 serves his typical foil role as at once, he thanks you for details (that STILL wreck his mantra), and then he turns right around and repeats his mantra.

    It’s as if he is desperate to prove how closed-minded he is.

    He condescends on “standard drafting approach” FOR ‘parameter claims‘ as if you had said NOT ONE WORD – right after he thanks you for the details of your words.

    He then compounds his idiocy with a ‘search is onerous, why is there no data’ quip — as if the presence of data would somehow validate the type of claim being sought (and any sane, or at least thinking individual, would immediately recognize that had such data be present as he asks, the claims would have been obvious, if not anticipated.

    He does not seem to even recognize that AS he is asking for something not there, the very fact that such is not there detracts from his mantra.

    The foil here is that as much as he is oblivious (and ONLY holds his own view as impenetrable), he shows just how NON-thinking his view is.

    This of course mirrors TFCFM, who is only more brazenly egotistic about his own views (and has never shown why he would deserve any sense of that ego).

    And I thank you for the continued political points – definitely food for thought. Although, I cannot see Biden going with Coons for a Supreme Court seat, as to me Biden is a mere puppet- again, his cognitive decline cannot be denied. The Bench will NOT be replaced with a Coons when so many other Liberal Left ‘needs’ will have much larger voice$.

  51. Marco August 29, 2020 11:10 am

    This debate over §101 reminds me of the hilarious1965 western “mockumentary” titled The Hallelujah Trail. It was set in the year 1867, where, in anticipation of the worst winter ever, the town of Denver decides to procure 40 wagons of whiskey to help the citizenry “survive,” and during which many competing and diverse factions (US cavalry, Indian tribes, wagon train teamsters, a crusading temperance group under protection of a second US cavalry group, and a citizen’s militia) all converge to fight it out over control of the precious cargo on its way back to Denver in the middle of a blinding sandstorm and, in the ensuing maelstrom, they all end up hilariously fighting perceived foe and friend alike, while the precious cargo sinks into quicksand and is believed to be forever lost. But the whiskey barrels start to pop up, via buoyancy, in the quicksand bog, and are recovered, to almost everyone’s delight. No bad winter ensues, the whiskey is saved, and most everyone gets a share of the loot and many stagger away happy, sort of, in an alcoholic stupor.

    Remember, this is America. In times of crisis, someone always seems to emerge, often by some seemingly improbable combination of an act of God, just in the nick of time and, with irrefutably plain logic and common sense, offers a solution that defies all efforts of critical denunciation, and which is eventually settled upon by the “powers at be” as a long-term solution. And it probably won’t be some “Alice (in wonderland)” solution dreamed up by an uninitiated court that has no practical, working knowledge of how the US patent system is designed to work. This will inevitably happen to end this stupid and wasteful §101 calamity, which will ultimately be relegated to its proper role as a statute that rarely needs to be invoked and only against those very few infirm, overbroad patent claims that somehow made it through the §102, 103, and 112 workhorse filters as properly applied by the USPTO.

  52. Curious August 29, 2020 11:42 am

    Searching the prior art manufacturing process art, for a teaching to hold to such a ratio, is an onerous task, as any Patent Office Examiner will tell you.
    If somebody else recognized the importance, then it would be easy. Also, it wouldn’t be hard if you could find art that mention the two parameters (which are compared to one another) and calculate the ratio oneself.

    Ask yourself, if this ratio was inherent, then shouldn’t it be easy to identify it in real-life products that predated the inventive date?

    If the 2%/20% values are anything but arbitrary, then comparative experimental data would reveal that any departure from these values results in significantly more vibration in the shaft. Is there any such data, anywhere?
    I don’t know. I have absolutely zero ties to any of the parties, the particular industry, or particular technology. Also, there is no need to establish that “any departure from these values results in significant more vibration.” There could be some other benefit that is provided.

    Let me make a point perfectly clear, the fact that the assembly doesn’t vibrate doesn’t necessarily mean that these properties were tuned in the manner claimed. It could mean, that a shaft assembly can be tuned in this manner (e.g., using a finite element analysis on the constituent components) during a design process. The Federal Circuit’s decision mentions using finite element analysis during the design process, and it is plain as freak’n day that they didn’t understand what it is or what it does. Personally, as an engineer, I’ve never used it myself, but I know a little about it (and that little is certainly far more than the Federal Circuit).

    In layman’s terms, finite element analysis (FEA) involves taking representation of an object and breaking down that object into hundreds, thousands, hundreds of thousands (if not much more) individual discrete elements, and using a modeling process on a computer, being able to identify a variety of different properties of the object as a whole. Many first-order approximations (e.g., Hooke’s law) of physical properties of an object are based upon idealized situations that cannot be readily used with objects having complex shapes. FEA allows a designer to determine these properties. For example, if you have a rotating cylindrical part and you want to add a through hole within it, you can model that proposed change using the FEA to determine how it impacts the characteristics of the part. These days, it is an extremely common tool when designing parts.

    This is from the Federal Circuit’s decision:
    But neither established processes nor “improved” processes for implementing the underlying natural laws are claimed. While AAM may have discovered patentable refinements of the prior art process, such as particular uses of “sophisticated FEA [finite element analysis] models during its design process,” id. at 45, neither the specifics of any novel computer modelling, nor the specifics of any experimental modal analysis are included as limitations in claim 22.6 These unclaimed features cannot function to remove claim 22 from the realm of ineligible subject matter. See ChargePoint, 920 F.3d at 766

    What the Federal Circuit clearly didn’t understand is that there is no need for “novel computer model” and that the “specific of any experimental modal analysis” would be a routine operation to one skilled in the art. As I gain a better understanding of the invention and the underlying technology, the tuning is probably little more than:

    (i) upload models of liner, shaft member, shaft assembly (and whatever other components) into FEA program
    (ii) identify particular characteristics to be modeled
    (iii) compare those characteristics to the desired characteristics (e.g., those that were compared)
    (iv) if desired characteristics aren’t met, modify one or more of the models is some way and repeat (i)-(iii).
    My guess is that modifying of step (iv) probably could be automated by the system.

    The important part of the invention, and that which was claimed, was the determination that the claimed elements having these characteristics provided a better shaft assembly. How it is accomplished is likely well within the skill of one having ordinary skill in the art as it would be to ask one skilled in the art to create a register (in a HVAC system) that restricts 45-50% of the airflow at a certain CFM. There are dozens of ways that could be accomplished — and easily accomplished by one skilled in the art. The title of this article was about creating “a New Section 101 Enablement-like Legal Requirement.” This is what happens when you have non-technical judges (e.g., Stark at the District Court and Dyk and Taranto) opining on technology that they simply don’t understand. They see this “tuning” operation being claimed and they are completely clueless as to how it works.

    They think … how in the world would anybody know how to do this? It must be abstract.. However, in reality, tuning the elements in this manner in well within the knowledge of one skilled in the art. As correctly pointed out by the dissent, the majority is essentially trying to create an enablement requirement, which looks to the specification and the knowledge that those skilled in the art possess. Regardless, claims aren’t required to describe how to make and use the invention, which is precisely what Dyk and Taranto are complaining that is missing (“claim 22 here does not specify how target frequencies are determined or how, using that information, liners are tuned to attenuate two different vibration modes simultaneously, or how such liners are tuned to dampen bending mode vibrations”). The “how” is enablement — plain and simple, and the claims aren’t required to explain how an invention works. Compare this statement in American Axle, with what this statement in S3 Inc. v. nVIDIA Corp., 259 F.3d 1364, 1369 (Fed. Cir. 2001): “[t]he purpose of claims is not to explain the technology or how it works, but to state the legal boundaries of the patent grant.” These are irreconcilable.

    As I’m scanning the American Axle opinion, I come across this statement:
    The dissent’s arguments do not alter our conclusion that claim 22 in all but name recites Hooke’s Law and nothing more to tune the liner to achieve the claimed result of reducing two types of vibration.
    Absolutely freak’n clueless. 50 years from now, there will be books written that point to this statement as one of the reasons why the Federal Circuit was changed to require judges to have technical degrees. It is hard for me to express how utterly divorced from reality that statement is. I guess something at least understandable to a judge would be to say that this statement is comparable to someone in a crowded theater (pre-COVID) being told to be quiet and them responding “I don’t have to be quiet, you are interfering with my first amendments rights to free speech.” To the layperson, this sounds somewhat accurate. However, to those that know anything about the First Amendment to the US Constitution, that statement is Absolutely freak’n clueless.

  53. Curious August 29, 2020 11:47 am

    The Bench will NOT be replaced with a Coons when so many other Liberal Left ‘needs’ will have much larger voice$.
    Biden did not win the Democratic primary running on the liberal left. As AOC pointed out herself, only in America would her and Biden be in the same party. Biden is a centrist and that is how I suspect he’ll govern (if elected). If Bernie was the Democratic nominee, I have no doubt he would nominate the most far-left judicial candidates possible. Ultimately, Biden won the nomination because while the far left makes the most noise, they don’t have the most influence in the Democratic party.

  54. Anon August 29, 2020 1:25 pm

    Thanks again Curious.

  55. MaxDrei August 29, 2020 4:46 pm

    But even after all that (# 52) Curious, when all’s said and done, after all the smoke and mirrors shenanigans, there is no evidence that the decisive step to solving the long-standing problem of prop shaft vibration is to plug the numbers 2% and 20% into a FEA design exercise, routine for any component susceptible to fatigue failure. There is no evidence to show that the choice of numbers 2 and 20 is anything but arbitrary. All that these numbers do is to provide an arbitrary boundary between those shafts that have acceptably low vibration and those which do not.

    In chemistry, it is notorious to claim the subject matter in the form “anything which works” . Here, it’s just more of the same but in engineering.

  56. Curious August 30, 2020 7:52 pm

    there is no evidence that the decisive step to solving the long-standing problem of prop shaft vibration is to plug the numbers 2% and 20% into a FEA design exercise, routine for any component susceptible to fatigue failure
    That has nothing to do with patent eligibility in the USA. You are just making stuff up at this point.

    There is no evidence to show that the choice of numbers 2 and 20 is anything but arbitrary
    Immaterial.

    All that these numbers do is to provide an arbitrary boundary between those shafts that have acceptably low vibration and those which do not.
    Again, not all shaft that have low vibration have those numbers. If so, then the invention would have been anticipated.

    Clearly, you don’t understand the invention or the technology. Just admit as much and stop making a fool of yourself.

  57. MaxDrei August 31, 2020 4:53 am

    Curious, my attitude to patents like this one is coloured by my experience acting for the Opponent, at the EPO. I don’t do that as often as I act for an Applicant for a patent but in my time I’ve handled more than a hundred oppositions. In this respect, I’m like the patent judges in England, who are recruited from the ranks of the best and most experienced patent trial lawyers (hired guns who alternate between representing the patent owner and representing the infringer). These judges have a keen sense of when they are having the wool pulled over their eyes. Thank goodness.

    And at the EPO, its Problem-Solution Approach to inventive step is very effective at weeding out claims that do not correspond to a meaningful contribution to the art.

    My sense is that, despite its consequence of setting up the proverbial “battle of the experts”, the concept of “plausibility”, well-established in chemical case jurisprudence, is gaining traction, world-wide, as an indicator of eligibility/patentability, also in engineering cases. If you fail to make it plausible, in your application as filed, that your claim corresponds to something of substance, do not be surprised if it is looked upon dubiously, by the PTO and the courts, which will then likely give you a summary judgement rather than let the case blunder on indefinitely, into a swamp of conflicting expert evidence.

    I think by now we have, by now, in this thread, ground to a standstill. So, let us together watch progress of the counterpart case at the EPO. It will be interesting for me. Perhaps for you too?

  58. Anon August 31, 2020 8:13 am

    MaxDrei,

    For all your professed (and implied) knowledge, you show a substantial lack of critical reasoning and a degree of “sniff” that has increasingly plagued the US courts.

    You have recently espoused a ‘love of the Rule of Law.”

    It is more than a little odd that your degree of “sniff” is exactly counter to an understanding of the Rule of Law. Much like the exchange here — as Curious notes, “you don’t understand the invention or the technology. Just admit as much and stop making a fool of yourself. — You declare yourself to BE LIKE A SEASONED JUDGE, and you have a hyper-inflated view of your own views.

    No wonder then, that you have left so many horses to die of thirst at the well of wisdom that I have brought you to concerning US jurisprudence over the last decade or so. You simply will have NO view except the one that you want to have, and any other choices by another Sovereign be damned.

  59. Curious August 31, 2020 6:01 pm

    So, let us together watch progress of the counterpart case at the EPO. It will be interesting for me. Perhaps for you too?
    Seriously, I … couldn’t … care … less.

  60. MaxDrei September 1, 2020 3:50 am

    Curious, you’re funny. That’s exactly what I thought you’d say.

    It set me wondering what was it that prompted you to choose for yourself the pseudonym “Curious”. So I checked out Merriam Webster. It can’t be Definition # 1 that you had in mind. Was it perhaps Definition # 2 (namely “odd”)? Do you perhaps see yourself as an oddity? How interesting.

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