CAFC Upholds District Court Finding for Netflix Invalidating Adaptive Patent Under 101

By Rebecca Tapscott
December 16, 2020

“The CAFC cited Two-Way Media Ltd. v. Comcast Cable Commc’ns in stating that ‘ideas of encoding and decoding image data and of converting formats, including when data is received from one medium and sent along through another, are by themselves abstract ideas.’”

Federal CircuitOn December 14, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the United States District Court for the Central District of California in Adaptive Streaming Inc. v. Netflix, Inc., holding that that claims of Adaptive Streaming Inc.’s patent were invalid under 35 U.S.C. § 101. In particular, the CAFC agreed with the district court that the claims of the patent in suit were directed to the abstract idea of “collecting information and transcoding it into multiple formats” and that the claims did not incorporate anything more that would transform the claimed subject matter into an eligible application of the abstract idea.

District Court Proceedings

In July 2019, Adaptive Streaming Inc. (Adaptive) sued Netflix in the district court for infringement of U.S. Patent No. 7,047,305, which was titled “Personal Broadcasting System for Audio and Video Data Using a Wide Area Network” and “provides a technique including a system for capturing audio and video information from a first source and displaying such video and audio information at a second source, where the format of the first source and the format of the second source are different from each other.” Netflix moved to dismiss the complaint, alleging that the claimed subject matter was not eligible for patenting under 35 U.S.C. § 101. The district court agreed with Netflix and dismissed Adaptive’s complaint. Adaptive appealed to the CAFC.

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Federal Circuit Analysis

On appeal, Adaptive argued that the claims of the ’305 patent were not directed to an abstract idea and that they included inventive concepts making them patent eligible. Reviewing the dismissal de novo, the CAFC explained that matter eligibility under § 101 is a question of law based on underlying facts.

The CAFC analyzed the patent eligibility of the claims using the two step framework set forth in Alice Corp. Pty. Ltd. v. CLS Bank Int’l. With respect to the first step of the Alice framework, the CAFC agreed with the district court that the claims were directed to the abstract idea of “collecting information and transcoding it into multiple formats.” Citing Solutran, Inc. v. Elavon, Inc., the CAFC also considered “what the patent asserts to be the ‘focus of the claimed advance over the prior art.’” The CAFC explained that the claims and written description of the ‘305 patent make clear that the “claimed advance is the abstract idea of format conversion, from an incoming signal’s format to a variety of formats suited to different destination devices.” The court added that the “focus is not any specific advance in coding or other techniques for implementing that idea; [thus,] no such specific technique is required.”

The CAFC cited Two-Way Media Ltd. v. Comcast Cable Commc’ns in stating that “ideas of encoding and decoding image data and of converting formats, including when data is received from one medium and sent along through another, are by themselves abstract ideas.” Thus, the CAFC concluded that the claims of the ‘305 patent were also directed to an abstract idea.

With respect to the second step of the Alice inquiry, the CAFC explained that the claims do not incorporate anything more that would transform the subject matter into an eligible application of the abstract idea. The CAFC noted that the claims recited only generic computer hardware, such as a “processor” and a “broadcasting server” with an “image retrieval portion,” “a data structure,” and a “transcoding module,” which were described in the specification as conventional. According to the CAFC, there was “no identification in the claims or written description of specific, unconventional encoding, decoding, compression, or broadcasting techniques.”

In response to Adaptive’s argument that the U.S. Patent and Trademark Office’s novelty and non-obviousness determinations, which were rendered in issuing the patent, undermined the conclusion of ineligible subject matter, the CAFC noted that “satisfying the requirements of novelty and non-obviousness does not imply eligibility under § 101, including under the second step of the Alice inquiry, because what may be novel and non-obvious may still be abstract.” Thus, the CAFC affirmed the district court’s holding of invalidity under 35 U.S.C. § 101.

The Author

Rebecca Tapscott

Rebecca Tapscott is an intellectual property attorney who has joined IPWatchdog as our Staff Writer. She received her Bachelor of Science degree in chemistry from the University of Central Florida and received her Juris Doctorate in 2002 from the George Mason School of Law in Arlington, VA.

Prior to joining IPWatchdog, Rebecca has worked as a senior associate attorney for the Bilicki Law Firm and Diederiks & Whitelaw, PLC. Her practice has involved intellectual property litigation, the preparation and prosecution of patent applications in the chemical, mechanical arts, and electrical arts, strategic alliance and development agreements, and trademark prosecution and opposition matters. In addition, she is admitted to the Virginia State Bar and is a registered patent attorney with the United States Patent and Trademark Office. She is also a member of the American Bar Association and the American Intellectual Property Law Association.

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 27 Comments comments. Join the discussion.

  1. Anonymous December 16, 2020 11:16 am

    Congress, where are you? Tillis? Coons? Anyone? Let’s fix this 101 mess already.

  2. __tr__ December 16, 2020 12:55 pm

    I do not know how anyone could read this 7-page opinion and understand how the CAFC drew the line between patentable and unpatentable subject matter. It did not use the “how to solve the problem” analysis that it has been using in a majority of these cases recently.

    Here, the claim provides an explicit rule as to how it determines what encoding format to use for the second compression format:

    “wherein at least one of the second compression formats is more suitable for the at least one client device than the first format.”

    Based on a reading of recent cases like Dropbox and GREE v. Supercell Oy, shouldn’t that limitation at least be relevant in the Alice framework analysis that the CAFC has been applying.

    If the law cannot provide more clarity to practitioners on how to draft claims to the technology of the information age, the US will soon be left behind.

  3. Jonathan Stroud December 16, 2020 2:54 pm

    I’m not commenting on 101 or the ruling itself, but look at the claim here: it’s just a generic processor and server programmed to receive and pick particular signals based on format.

    39. A system to broadcast to at least one client device, the system comprising:

    a processor; and
    a broadcasting server coupled to the processor, the broadcasting server including:
    an image retrieval portion to retrieve at least one incoming video signal having a first format;
    a data structure usable to determine parameters for second compression formats for the at least one incoming video signal;
    and
    at least one transcoding module coupled to the image retrieval portion and which has access to the data structure, the
    transcoding module being capable to transcode the at least one incoming video signal from the first format into multiple compressed output video signals having respective second compression formats based at least in part on the parameters;
    wherein at least one of the second compression formats is more suitable for the at least one client device than the first format; and
    wherein the multiple compressed output video signals having the at least one second compression format more suitable for the at
    least one client device can be provided by the broadcasting server, wherein any one of the multiple compressed output video signals can be selected to be presented at the at least one
    client device.

  4. __tr__ December 16, 2020 4:48 pm

    The claim is not complicated. It is simply the idea that you have a broadcast being recorded in one format and many client devices to send it out to that play video in a different format. For instance, one user may have been using Quicktime, another using VLC, another using TikTok, or whatever. Instead of deciding which signal to send to all users, the claim recites a method that sends many signals that are likely to be used by client devices. That way, the user can select (e.g., from a dropdown) which output format they want to use. One commenter on Patentlyo noted that this technology actually had been used since the days of set-top boxes because broadcasts from Europe had different scan lines per display than those in the United States.

    So, the case is probably a slam-dunk under 102. I’m surprised an examiner ever allowed this claim at all based on the prior art. But then why not invalidate it under 102? It’s essentially the digital video equivalent of a pocket knife with multiple toolsets. Still, if someone tried to patent a pocket knife, the court wouldn’t say, “well, pocket knives are a fundamental idea.” They would look at what existed at the time and determine if it was, in fact, a new pocket knife.

    So now, let’s think about 2020. Say a practitioner is writing a claim to manage notifications that are coming in on a smartphone. The inventor wrote some code that determines how much a user interacts with a certain app, and based on that determination, modifies the way it is displayed on the phone screen. Maybe a user spends 10 hours per week on LinkedIn, but only a half-hour on Instagram, so the code sends LinkedIn notifications to the wake screen but only stores Instagram ones in a slide-up notification manager. It may sound super obvious, but at some point, someone probably got that exact update on their phone, and it was beneficial for them. How is a practitioner supposed to know if that innovation is protectable by a patent based on this nebulous standard so that they can competently serve the client? How is a patent examiner supposed to know where that falls in the Alice “standard”?

    And if the company decides to disclose the nuts and bolts of how the notification management system works through patents and then the CAFC decides that notification technology is not patent-eligible, how is that fair? It all just feels sloppy.

  5. Pro Say December 16, 2020 5:42 pm

    . . . yet another “ends-justifies-the means” decision by the CAFC kings of such decisions.

    Stroud: “it’s just a generic processor and server programmed to receive and pick particular signals based on format.”

    Great! If that’s all the claim is . . . then reject away . . . on 102 and/or 103.

    Fact is — these claims are eligible.

    It’s. Not. Even. Close.

  6. Curious December 16, 2020 7:36 pm

    Still, if someone tried to patent a pocket knife, the court wouldn’t say, “well, pocket knives are a fundamental idea.”
    Dear God, I hope not. Pocket knives are not a fundamental “idea.” They are mechanical things that clearly fall within the scope of 35 USC 101. However, it is that kind of lazy analysis in which anything is an “abstract idea” so long as the CAFC says it is that has gotten us into this mess.

    This court stated “the claims and written description make clear that the focus of the claimed advance is the abstract idea of format conversion, from an incoming signal’s format to a variety of formats suited to different destination devices.” THIS IS NOT AN ABSTRACT IDEA. Rather, this statement is an abstraction of an invention that NECESSARILY requires the use of a computer.

    Compare this invention to the one in DDR Holdings.

    13. An e-commerce outsourcing system comprising:
    a) a data store including a look and feel description associated with a host web page having a link correlated with a commerce object; and
    b) a computer processor coupled to the data store and in communication through the Internet with the host web page and programmed, upon receiving an indication that the link has been activated by a visitor computer in Internet communication with the host web page, to serve a composite web page to the visitor computer wit[h] a look and feel based on the look and feel description in the data store and with content based on the commerce object associated wit[h] the link.

    What is the difference between this patent eligible claim and the one held patent ineligible? Seriously?

    The only real difference is that this panel was Prost, Taranto, and Clevenger. We got Chief Judge Prost who has rarely met a patent she doesn’t want to drive a stake through the heart of which. We’ve got 83 year old Clevenger who took Senior Status 14 years ago and likely has little interest in the current state of the law. We’ve also got Taranto. None of whom have technical degrees or any relevant patent law experience before arriving at the Federal Circuit. All of this ‘software stuff’ is just magical gobbledygook to them, and magic shouldn’t be patentable.

  7. Reginald D Chatman December 17, 2020 5:40 am

    GOD bless the 83 year old, UNITED WE STAND,And INVAILED THEY FALL,THE TRUTH IS NOTHING BUT THE TRUTH, FRAUD IS A SERIOUS ISSUE IN TODAY’S PATENTS FIELD, COLLEGE DEGREE and Big Words and Hackings ain’t NOTHING To COMMON SENCE!! If you wrong it’s just that your wrong!! And the whole world knows it!!

  8. concerned December 17, 2020 5:51 am

    I am wondering how a court will decide on my application. Both the examiner and I are in agreement that the process solved a business problem that has been beyond the reach of experts and professionals for decades. And the solution is spelled out in detail step by step. To me, it should be cased closed at that point, here is your patent.

    The examiner wants to argue it was not the right type of problem being solved or not “wow’ enough. I talk to consultants and attorneys who actually have worked in my field for years. Their comments are of a congratulatory nature, not of a “so-what” nature.

    The first examiner admitted my application should get a patent, that the higher ups are the issue. Then mysteriously I get a second examiner who makes statements that are not supported by the official record.

    Perhaps the USPTO should grant my patent application and let potential infringers actually pony up some “non-existent” proof to the contrary. Why is it “all out war” against the patent applicant at the expense of facts and evidence submitted in the official record?

  9. __tr__ December 17, 2020 8:36 am

    @Curious, I think when it comes to DDR… it comes down to how persuasive your “quasi-nonobviousness” argument is in Alice-land. I would not be surprised if a certain panel on the CAFC completely abrogates the case at some point and demand it be stricken from the MPEP. At this point, I’ve given up caring about how hard the standard is to meet; I just want to see any level of discernible consistency as to how they apply the law.

    Because after all, patent prosecutors are supposed to know what’s patentable, aren’t they? ¯\_(?)_/¯

    @concerned from my limited experience, some examiners are willing to accept the fact that SOME software is patentable, while others completely dismiss any attempt to circumvent Alice. Honestly, sometimes it sadly comes down to whether you are willing to appeal and/or file an RCE and try to get a different examiner. I found this article insightful:

    https://www.fr.com/defeating-alice/

  10. TFCFM December 17, 2020 10:21 am

    I’m just waiting for the patent that issues with the title “Anything That Works.” (And of course the howls of protest that will, again, accompany a court holding its “anything that works” claims invalid for abstractness.

  11. Jonathan R Stroud December 17, 2020 12:39 pm

    @pro say, no argument here.

    We have been looking to EPO practice recently, and I like their approach much better. They will parse a claim for what is a device and what is the purported abstract idea, and reject the subject matter challenge but then use the isolated idea in conjunction with prior art for an obviousness challenge. To my mind, the really unworkable part of Alice is the hand-waving of extending the incentive concept to cover all of the recited non-abstract but generic elements. It’s intellectually concerning.

    Anyhow, no argument on these claims being 102 and 103 suspect.

  12. __tr__ December 17, 2020 2:51 pm

    @Jonathan R Stroud I whole-heartedly agree that the EPO’s approach is much better. In some ways, it is harder to fit into, but it provides a lot more certainty.

    Alice’s worst feature (or “bug”) is not the standard that software claims are held to, but not knowing what the standard is or what it will be when the claims one is drafting are litigated. It leads to anomalous results when the courts invalidate the same types of claims granted by the USPTO.

    As the former USPTO Director Kappos noted about recent Office guidance in 2019, “the USPTO is at the bottom of this food chain, not at the top of this food chain. The law needs to be corrected, and the USPTO cannot do that.”

  13. Curious December 17, 2020 4:37 pm

    I’m just waiting for the patent that issues with the title “Anything That Works.” (And of course the howls of protest that will, again, accompany a court holding its “anything that works” claims invalid for abstractness.
    More drivel from the peanut gallery. Seriously, is this is the best you can come up with?

  14. concerned December 18, 2020 8:13 am

    __TR__@ 9″

    Thank you for the article. My application is in appeal.

    My application has many merits. The innovative concept is not used anywhere in commerce. And, although the courts state novelty does not save an applicant from being abstract, this inventive concept solves a long-term problem.

    The application does not just slap a computer on a known process, the computer is used because the problem being solved is rooted in the Administering Agency’s computer network. The network is significantly improved after my process and the network performs a function that brings legal compliance that has not been possible for decades. The preceding statement should speak volumes since working professionals do not intentionally violate the law if my solution was conventional, well understood and routine. The Administering Agency is not complicit in fraud just to appease a patent rejection as the examiner’s argument would seem to indirectly imply.

    The claims are not overly broad, the claims are concrete steps, at a concrete time, on concrete situations.

    Although there is much controversy surrounding Alice, there is no authority for the examiner to make statements that are not factual and are not supported by the record. The examiner never directly addresses our arguments nor does he dispute the same.

    The examiner just advances court cases that are way outside my field of commerce and are not on point. Not one of those court cases quoted by the examiner reflect a process where all the parties are in agreement that a long term problem was solved, a problem looking for a solution that has been sought by experts and professionals for decades.

  15. __tr__ December 18, 2020 10:30 am

    @curious, I am in no position to provide legal advice or comment on the Office’s actions. This is an informational forum, and we are all just sharing thoughts on what the law ought to be.

    All I can say is that if you look at DDR in the context of the case that directly preceded it (Ultramercial v. Hulu), the “technological solution to a technological problem” approach usually isn’t enough to convince an examiner or court. It normally requires:
    (a) the technical solution works against the normal operation of a computer (DDR: a link (meaning the type) that doesn’t take a user to a new webpage)
    (b) the rules for solving the problem on the computer are different from what a human would do in solving the same problem (McRO); or
    (c) the solution fixes a prior art approach for solving the same problem (BASCOM).

    Beyond that, call your elected officials. Your consternation as an earnest innovator proves why this is not an area that should be subject to judicial oversight, not for practitioners’ sake but the sake of you, the innovators.

  16. Anon December 18, 2020 2:46 pm

    __tr__ at 15,

    I would beg to differ.

    That your statement MAY be said of certain court cases, I do not disagree.

    But critically, your statement simply does not adhere to ALL court cases, and it must be recognized that the courts (starting with the Supreme Court) have written themselves into a Gordian Knot of contradictions.

    I note as well here that your options between (a), (b), and (c) MAY WELL BE met by a “technological solution to a technological problem.”

    Finally, I would also distinguish your comment in at least the notion that “we are all just sharing thoughts on what the law ought to be” – as that sounds in us trying to formulate a future law. MANY of us here are actually advocating for the PROPER application of the law as it already is (that is – as it is written by Congress as opposed to as it is being attempted to be REWRITTEN by the Court(s)).

  17. __tr__ December 18, 2020 3:23 pm

    @Anon, I get your point about the Gordian Knot, but you may want to re-read what I said.

    I didn’t say, “these are the factors,” and I’m not formulating a law school outline about Section 101 here. I’m just saying that one of those three elements seems to be required in most instances, (CITE: “the “technological solution to a technological problem” approach usually isn’t enough”), IN ADDITION TO a “technological solution to a technological problem” for claims to have a chance to be found valid.

    There are examiners (and possibly courts, though I would say, show me a case) who apply DDR as the CAFC penned it, but we are talking about a patent application that is now on appeal, which means that was not the case in this instance.

    You talk about the law “as it already is” like Benson never happened, but that is not how people practice the law right now. It would be incompetent to attempt to patent a software claim based on the 1952 Patent Act, especially if you got lucky and happened to get it granted by the USPTO (which, as previously noted, is at the bottom of the totem pole in this discussion).

  18. concerned December 18, 2020 3:58 pm

    “Technological solution to a technological problem” approach usually isn’t enough.” According to the SCOTUS decisions below, it should be enough. It is not all about the computer and its performance, although some examiners and courts like to believe it.

    Per Justice Bradley in Webster Loom Co. v. Higgins, 105 U.S. 580, 591 (1881): “It may be laid down as a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention.”

    Mayo v. Prometheus, 566 U. S. 66 (2012). At some level, “all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Id. Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. See Diamond v. Diehr, 450 U. S. 175, 187 (1981). “[A]pplication[s]” of such concepts “‘to a new and useful end,’” we have said, remain eligible
    for patent protection. Gottschalk v. Benson, 409 U. S. 63, 67 (1972).

    The fact that my process produced a new and very useful end is not in dispute by any party.

  19. Curious December 18, 2020 5:25 pm

    the technical solution works against the normal operation of a computer (DDR: a link (meaning the type) that doesn’t take a user to a new webpage)
    Contemplate really hard what the “technical” solution is in DDR. This is the key language: “a composite web page to the visitor computer wit[h] a look and feel based on the look and feel description in the data store and with content based on the commerce object associated wit[h] the link.” In other words, you a serving a web page that looks like another web page. The problem being solved is that instead of taking the consumer to a different web page (thereby losing the customer from your server) you are serving the consumer with a web page that looks like it came from the site they wanted to go to, but in reality isn’t. The problem is a business problem (losing a customer) and the solution is a known business solution (a “store with a store”).

    The whole point is that depending upon whether a judge picks DDR Holdings or some other Federal Circuit decision, they can have the claims stand or fall under 35 USC 101. Really, it is up to the panel as there is no consistent law being applied. Who really knows what is an abstract idea (or not)? Who really knows what is a technical solution to a technical problem (or not)? 101 jurisprudence is rife with subjective standards that the Federal Circuit applies at the whim of the panel.

    The law has devolved to the point that there is no law — there is only the opinion of the individuals that constitute panel that matters. It is a star chamber where big seemingly wins out over small far more often than would be expected.

  20. concerned December 19, 2020 9:47 am

    @19: The law has devolved to the point that there is no law — there is only the opinion of the individuals that constitute panel that matters. It is a star chamber where big seemingly wins out over small far more often than would be expected.

    The Rule of Law is now Rule of Opinion. I am getting plenty of those opinions, unsupported by fact or evidence, during the prosecution of my patent application.

    It is counterintuitive that a court or examiner would object to a patent application that contains a solution that has escaped any group of experts and professionals, especially when all parties are in agreement that a solution was found. The preceding statement is how far the patent process has fallen.

    Then the small time inventor learns one big tech has over 9,000 patents. Really, one big tech company has solved 9,000 “decades old” problems that their peers could not?

    Frankly, I do not know how members of the bar association can practice patent prosecution daily under such a frustrating set of circumstances where the rules change frequently and favoritism is in abundance.

  21. Anon December 19, 2020 1:32 pm

    __tr__,

    From your post at 9, I enjoyed the link that you provided to the (commercial) message of Fish Richardson.

    I have taken a few minutes to read that commercial carefully, and while there is some good general advice, I am curious as to what in particular it was that you found to be insightful.

  22. __tr__ December 19, 2020 1:49 pm

    @concerned The sad part is that it is not all bad for practitioners. Clients will pay top dollar for practitioners who have learned the “tricks” of the new landscape (essentially being able to make software inventions sound more like “hard tech” through linguistic acrobatics, affectionately known as the “draftsman’s art”). And it allows the courts to load up cases in their docket that can be decided without having to look to pesky facts and prior art or engage in claim construction.

  23. __tr__ December 19, 2020 4:58 pm

    @Anon, while it obviously is a marketing piece and not a practice guide, I think the article makes two solid points:

    1. Assess the Examiner’s Philosophy. Is “the Alice rejection [] intractable or [is] the examiner [] amenable to eventually allowing the application”? Did the original claim include vague, non-technical words like “writes,” “computes,” “module,” and/or silly limitations like “written in Python®”? Did the examiner leave any hook in the rejection that makes you think there’s a way to move the needle?

    2. In terms of “hard tech” rather than “pure software.” Is the software described in terms that an examiner may see in a technical manual?

    DISCLAIMER: not legal advice

  24. concerned December 20, 2020 6:15 am

    Assess the Examiner’s Philosophy.

    When the first examiner admits that your application is patentable, a second examiner is mysteriously assigned. Been there, done that.

    If an inventor and his counsel cannot argue black letter law, facts, evidence, and common sense, then there is not a patent system to grant the application anyway. Any arguments of a lesser degree seem like a** kissing to me.

    I really do not feel like kissing the a** of an examiner who is advancing arguments not supported by the official record and only looks to be rejecting the application at all costs. If the examiner really has a legal position, then write the truth. Do not state my process only computerized an existing solution then not produce such evidence. It would be pretty difficult to produce said evidence since the official record has evidence that no authority in the nation uses my process. Evidence was submitted on all 50 authorities. (Berkheimer on steroids)

    The truth shall and MUST set us free, not my planted lips.

  25. Anon December 20, 2020 10:46 am

    __tr__,

    Thanks for the reply.

    I hear what you are saying in regards to the notion of evaluating the examiner’s position – but consider this a minimal level of effort by competent counsel.

    I also hear what you are saying in regards to “hard tech’ versus ‘pure software,’ but would push back (and push back hard) as to whether this ‘tactic’ is anything BUT a rather lazy*** ‘take what you can‘ move.

    This second item is one in which I find great fault in the piece that you present, and runs to some aspects of that piece that I find to be the opposite of ‘insightful’ — including some of the rather boastful “we helped set the stage” proclamations that are the opposite of what I would be proclaiming.

    That being said, and in part to avoid a purely negative contrarian stance, I would add that the parts of the piece that I did like were:

    1) noting that examiners may be driven by their bosses (SPEs) and the sense that some art units are like fiefdoms (the ‘is another question entirely angle)**** and

    2) the value of a network of similarly practiced colleagues each of whom are paying attention and exchanging ‘best practices.’

    *** Don’t get me wrong – some times the ‘lazy’ path IS the path to take, and of course, that depends on the circumstances and desires of the client. That being said though, such a path is NOT a path of leadership and advocacy towards a proper implementation of the law and a push back against those who only too gladly would constrain innovation protection ‘bit by bit’ (to insert a play on words).

    **** Again, while positive results may be limited by client desires, some of the worst offenders are NOT limited to the courts, as this site has shown (and the USPTO even provides data) that there ARE examiners (and unfortunately even PTAB ‘judges’) who have in their mind that software (regardless of any ‘designation’ of ‘real technical merit’ or ‘pure software’ [whatever that means], or any other gobbledy gook handwaving characterization, “Shall Not Pass.”

    As you may understand if you follow my advocacy on the blogs long enough, our voices should NOT be merely “what works,” but should most definitely be “hey – this NEEDS to work, and as it is not, SOMETHING needs to be done.” As attorneys, each of us take an oath to advance the laws under the Constitution, and in patent law (in particular) we are at a state in which government actors themselves are NOT advancing the laws under the Constitution. I fully “get” the aspect of “do the best we can now,” but in no way does that inform our ethical responsibilities in advocacy to the exclusion of challenging the ‘current state.’

  26. __tr__ December 20, 2020 2:23 pm

    @Anon points well taken. In an earlier comment, I was sloppy to call your approach of adhering to the 1952 Patent Act “incompetent.” I agree that some points enumerated in the FR article represent a competent counsel’s minimal level of effort. I’ll set aside the point about the “hard tech” approach being “lazy” as a difference of opinion; as you noted, all clients have different needs.

    Regarding the point that competent advocacy requires demanding that Congress abrogate Alice, I would note that your interpretation of Article I, Section 8, Clause 8–that the judicial exclusions “are not advancing the laws of the Constitution”–is not universally shared as the correct interpretation (even though I agree with you; see Justice Stevens’ concurrence in Bilski v. Kappos, clearly enunciating a different interpretation). Further, you are describing two different “ethical responsibilities.” One of which is mandatory and relates to clients, and the other is aspirational and relates to the legal system as a whole.

    As to following your “advocacy on the blogs,” I have seen “Anon” as long as I’ve been reading IPW. I respect and agree with the viewpoints espoused by the “Anon” that I believe to be you (but as you pointed out in one recent post, other people post as “Anon” on this blog all the time). You have more years of experience as a registered patent practitioner than I do and probably have more opportunity to influence change to the system as a whole. But as I have in other comments on this post, I will continue to use the voice I do have to challenge the current state of the law, and if I find an opportunity to make my voice have a greater impact, I will.

    **** However, I do not believe that facilitating innovation means that one absolutely cannot inform an inventor about one practical approach to understanding the current way that the law is applied that others have used to achieve desired results successfully. After all, as scientists and engineers, we all acknowledge that the “laws” of physics are not absolute. Rather, they are merely the best ways we have discovered (that have not yet been disproven) to explain our experimental results, in order to succeed in future repetitions until a new and better understanding is discovered.

  27. Anon December 20, 2020 9:16 pm

    __tr__,

    I will say this: I have enjoyed your posts to date, and hope that you maintain an active presence.

    As to “Further, you are describing two different “ethical responsibilities.” One of which is mandatory and relates to clients, and the other is aspirational and relates to the legal system as a whole.” – a very astute observation.

    Yes, there are indeed two different ethical responsibilities in play, and that there is a difference as between ethical responsibilities to clients and those to (as you put it) to the legal system as a whole.

    However, I would NOT call the latter ‘aspirational’ as you have labeled it. That responsibility is no less ‘real’ than the responsibility to clients.

    I would daresay that it is even MORE real. Perhaps this is semantics, as I take “aspirational” as a term meaning “try, but if you do not live up to the highest levels, it is the trying that matters.” I do not view the ‘high level’ uphold the Constitution as ‘aspirational’ in any way of optionality. I view this as the core of the responsibility of an attorney – something that must give life to every act of legal effect.

    As to ‘differences of opinion,’ I certainly agree that there are those who view things differently (and Justice Stevens is certainly but one Supreme Court Justice that fits that category).

    That does not change the fact that Justice Stevens — especially in regards to patent law — is flat out wrong. Justice Stevens lost his majority position on what was to be his ‘Bookend’ decision due in large part because what he wanted to do was NOT supported by the Constitution.

    Just because one (or many) have an opinion – in no way substantiates that opinion as being in accord with the Rule of Law (including Separation of Powers). I would further note that Justice Sotomayor (whom Justice Stevens served as protegee) exemplifies more of the same type of disregard for Rule of Law (and insertion of her own Ends).

    In regards to advocacy on blogs, yes, I have noted that others use the pseudonym of Anon. That is a small price for my choice to use that pseudonym (with many layers of reasons why I do use that pseudonym). As I have noted though, I DO hope that your advocacy on blogs continues, as I find your writings refreshingly crisp, with strong overtones of inte11ectual honesty.

    As to your comment on “means that one absolutely cannot inform an inventor about one practical approach to understanding the current way that the law is applied” I completely agree. This is where the difference you note between ethics to a client and ethics to the larger institution of law may indeed make a difference. Our clients are not here to pay for our crusades, and we do in fact serve the needs of our clients. Those needs may well call for ‘the lazy’ as I put it.

    Nevertheless, we at a minimum owe our clients the advice to persevere.

    And to this point I wanted to draw a First Amendment parallel to the article that you linked, and a major fault that I have with that article. There is a notion in the article as to ‘real’ innovation, as opposed to a (Court-inflicted) “mere‘ Apply It On a Computer sense.

    I find such a sense to be absolutely abhorrent, and rises to a level of chilling innovation. We live in a 5th (some say 6th) Kondratiev wave of innovation and that ‘mere apply’ HAPPENS to be the predominant form of innovation in this wave. If we allow (or even promote) this type of rhetoric, we serve ANTI-innovation more than we serve innovation.

    One additional observation to your concluding comment: whether or not OUR observations are absolute should not be confused with whether or not ACTUAL laws of nature are absolute.

    I have oft referred to Magritte’s Treachery of Images (This is Not A Pipe) in reference to the fact that what MAN postulates should not be confused with any underlying actual law of nature. Phlogisten, Aether, and countless other ‘laws’ (supposedly immutable) have always had the same lesson: the map is not the land.

    This TOO should inform the reach of patent eligibility.

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