Alice in 2020: Slashing Software Patents and Searching for Functional Language at the Federal Circuit (Part I)

By Theodore Rand
January 7, 2021

“In 2020, there were 27 software-related patents on appeal for subject matter eligibility. The CAFC found four of the patents either partially or fully eligible under Section 101. It found 22 patents invalid and remanded one case to the district court.”

https://depositphotos.com/38756235/stock-photo-software-concept.htmlLast year was an active one at the United States Court of Appeals for the Federal Circuit (CAFC) for software eligibility. It also was a brutal year for patent owners, as the CAFC invalidated almost every software patent on appeal for eligibility. Despite the many cases decided last year, there is still some uncertainty about what passes muster under the Alice two-step framework promulgated by the Supreme Court in 2014.

But one thing that has become increasingly clear is that the CAFC wants to see how a particular result is achieved or how a problem is solved. This desire for a “how” or rule set from the claims creates an evident tension with the traditional notion that patent claims should recite structure, not functional language. These recent CAFC cases have also made it clear that courts will look to the specification for implementation details, even if these details do not emerge in the claims. This analysis has previously been reserved for the written description requirement under Section 112 but found its way into the Alice two-step.

This collection of cases may not fully represent what some consider to be every software patent case the CAFC decided last year. For instance, bioinformatics cases were not included in this case list even though they arguably may be “software-related.” Before we dive into the case summaries, here is a list of the Section 101 cases the CAFC decided under Alice in 2020. In total, there were 27 software-related patents on appeal for subject matter eligibility. The CAFC found four of the patents either partially or fully eligible under Section 101. It found 22 patents invalid and remanded one case to the district court, finding that it had not fully addressed the issue.

  1. Customedia Technologies, LLC v. Dish Network Corp.

In March, the CAFC decided Customedia Technologies, LLC v. Dish Network Corporation, holding claims to dedicating memory for and delivering targeted advertising ineligible under Section 101. The CAFC rejected the argument that reserving specific memory for the targeted advertising improved computer functionality and noted that merely enhancing a user’s experience (by, for instance, providing targeted advertising), without more, was not enough to pass muster under 101.

  1. In re Thomas

In In re Thomas, the CAFC affirmed a rejection by the PTAB to claims for notifying a user of an electronic device about recent patent publications. In a terse opinion, the CAFC agreed with the Patent Trial and Appeal Board’s (PTAB’s) reasoning that the claims were directed the abstract idea of “alerting by notification message notice of a new publication indicated as relevant to the notifiee.” It also noted that the claims’ additional features did not add an inventive concept but did not elaborate as to what may have cleared the Section 101 hurdle.

  1. WhitServe LLC v. Donuts Inc.

Then, in April, the CAFC held ineligible patents directed to “systems and methods by which providers of professional services, using the Internet, send reminders to clients and obtain responses from them” in WhitServe LLC v. Donuts Inc. The CAFC observed that the claims were essentially for notifying professionals about approaching deadlines, a fundamental economic practice involving simple information exchange. It then honed in on the computer’s generic nature and the lack of constraints on the generic components, such as the database and processor. Unlike some recent decisions, the CAFC did not take issue because the lower court decided the case without factual inquiry.

  1. Bozeman Financial LLC v. Federal Reserve Bank

On the same day as WhitServe, the CAFC also held ineligible claims to collect and analyze financial transaction fraud in Bozeman Financial LLC v. Federal Reserve Bank. The CAFC noted that verifying financial documents to reduce transaction fraud is a fundamental business practice. The claims collect such data, compare it, and display the results to a user. Bozeman argued that the claimed process was physical because it involved the actual processing of financial records. Still, the CAFC pointed to its similar decision in Solutran, Inc. v. Elavon, Inc., where it held that the presence of paper checks was not enough to make the process anything but abstract.

  1. In re Morsa

In the third case of the April 10, 2020 trilogy, the CAFC invalidated claims directed to “matching advertisers with entities via computer networks” in In re Morsa. The CAFC rejected the argument that because advertising is a “real, tangible, and concrete” thing, the claims were not abstract and honed in on the lack of specific implementation details that would change the computer and components from being merely generic. This case illustrates the uphill battle that patentees face when dealing with claims related to targeted advertising. The CAFC distinguished from BASCOM, where technology was related to filtering traffic on a network and noted the longstanding nature of targeting consumers with ads.

  1. In re Gopalan

Just three days after In re Morsa, the CAFC invalidated claims for developing measurement strategies for spectrally-based measurements in In re Gopalan. While Gopalan argued that the claims optimized measuring “the number of true positives and false positives” in spectral measurement, the CAFC honed in on the generality of the claims and the lack of specific characteristics in the measurement process that would limit the claims to any particular context. The In re Morsa case illustrates the further refining of a distinction that the CAFC started to make in McRO, namely, that the claims did not limit themselves to any particular set of rules in solving the problem. The rule argument is an interesting one from a software perspective. At a high level computers simply store and manipulate 1s and 0s, so some amount of abstraction must be inherent in any claims not directed to bitwise (1 and 0) operations. However, the CAFC seems to look for some intermediate protocol that is more detailed than simple natural language.

  1. Ericsson Inc. v. TCL Comm. Tech. Holdings Ltd.

One day after In re Gopalan, the CAFC again rejected claims as invalid under Alice in Ericsson Inc. v. TCL Comm. Tech. In Ericsson, the CAFC noted that only including technical jargon in a claim set would not be enough to save the claims from ineligibility under Alice. It collapsed several of the limitations recited in the claims, noting that the “security access manager” and the “decision entity” controlling access to the network in claim 1 were the same thing. It rejected Ericsson’s argument that the claim was directed to mobile networks specifically, noting that controlling access to resources “can be performed in the human mind, or by using a pen and paper.” Harkening back to the reasoning in In re Gopalan, the CAFC found it persuasive that the claims did not “ha[ve] the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it.” Like Gopalan, the reasoning begs why and to what extent the CAFC has adopted this methodological bent on Alice. What level of code must a practitioner go down to for a claim to be “non-abstract” under this new “way of achieving results” analysis?

  1. Uniloc USA, Inc. v. LG Electronics USA, Inc.

On April 30, 2020, the CAFC held software patent claims eligible in Uniloc USA, Inc. v. LG Electronics USA, Inc. The invention was a way of managing connections in ad hoc networks known as “piconets.” The piconets manage relationships between a primary station (i.e., a laptop) and at least one secondary station (e.g., a mouse or keyboard). While conventional piconets sent separate signals for (1) detecting new secondary stations and (2) polling active secondary stations, the claim at issue recited doing both with the same data packet:

  1. A primary station for use in a communication system comprising at least one secondary station, wherein means are provided:

for broadcasting a series of inquiry messages, each in the form of a plurality of predetermined data fields arranged according to a first communications protocol, and

for adding to each inquiry message to transmission an additional data field for polling at least one secondary station.

The CAFC reiterated the concept outlined in DDR that overcoming a problem arising in computer networks could be a patent-eligible concept. It also noted the similarity between the claims at issue and those in Enfish. Like Enfish, the claims do recite an improvement to computer functionality in that they reduce latency caused by “parked secondary stations” in communications systems. The CAFC rejected LG’s contention that the claims contemplated combining two sets of data, similar to the claims in Digitech Image Technologies, LLC v. Electronics For Imaging, Inc. It noted that the claims do not merely recite generalized steps, but rather “adding to each inquiry message before transmission an additional data field for polling at least one secondary station.” The case affirms the notion that the CAFC will find claims eligible if the patentee can describe:

  • how a system or method manipulates a piece of data, and
  • what is done with the manipulated data to improve functionality (e.g., send one signal instead of two, use one database instead of two, etc.).
  1. In re Jobin

In the first case of May 2020, In re Jobin, the CAFC affirmed the ineligibility of claims for developing “products, advertisements, games, and other creative realizations” by relying on contributors—who obtain stakes in the designed products. Specifically, claim 221 recited a system for receiving and evaluating developers’ contributions and compensating participants based on the evaluation. In affirming the examiner’s rejection of the claims, the PTAB relied on 2019 PEG, finding the claims to recite an abstract idea based on “methods of organizing human activity and mental processes.”

The CAFC refused to apply the Office Guidance in determining if the claims were eligible, noting that they use “the relevant Supreme Court precedent, not the Office Guidance when analyzing subject matter eligibility.” It is an intriguing stance given that the 2019 PEG is based on Supreme Court precedent and an issue that may become more relevant if the CAFC ever distinguishes its application of precedent from that promulgated by the USPTO. Nevertheless, the CAFC rejected Jobin’s argument that the “built-in capabilities” of the invention “pertaining to timing and measurement,” including an improved data structure, passed muster under Alice. It noted that a method of organizing human activity is “a hallmark” of abstract claims. At Alice step two, the court found the elements of Jobin’s claim 221 insufficient to transform the abstract idea into a patentable application.

  1. Cisco Sys. v. Uniloc 2017 LLC

In Cisco Sys. v. Uniloc 2017 LLC, the CAFC affirmed that a patent for a radio communication system comprising a plurality of stations capable of forming an ad-hoc network was ineligible. The claim recited:

  1. A method of operating an ad-hoc radio communication system having a plurality of stations formed into at least one network, the method comprising the step of:

determining a master/slave rank of each station in the network representative of the station’s suitability for acting as master in the network using antenna performance characteristics of each station in view of the antenna’s local environment; and enabling a station with the highest rank to be master.

Interestingly, the abstract idea the district court found the claims directed to was “ranking stations based on antenna performance characteristics and selecting the station with the highest rank to act as master in a network.” In rejecting Uniloc’s argument that the claims were for improving the computer or network functionality, the CAFC reiterated that such ideas can still be found abstract.

  1. Elec. Commun. Techs., LLC v. ShoppersChoice.com, LLC

In Elec. Commun. Techs., LLC v. ShoppersChoice.com, LLC, the CAFC affirmed that a patent for providing advance notification to a customer that a “mobile thing” is being delivered or ready for pickup was abstract. The district court found the claim to be directed to “business practices designed to advise customers of the status of delivery of goods,” which they held to have “existed for several decades, if not longer.” The CAFC noted that while claim 11 additionally recites added measures for increasing the security of the delivery (“enabling a first party to input authentication information, storing the authentication information, and providing the authentication information along with the advance notice of arrival to help ensure the customer that the notice”), those functions were also abstract. Notably, the CAFC did not elaborate on whether combining two abstract ideas could generally amount to “significantly more” than an abstract idea.

In rejecting ECT’s arguments that claim 11 was “unique” and “is directed toward and addresses solutions to minimize hacker’s impacts when mimicking order conversations and shipment notification emails.” The CAFC noted that claimed techniques could be “groundbreaking, innovative, or even brilliant,” but that is not enough for eligibility. Confoundingly, the CAFC’s reasoning did not elaborate on how such a technique is distinguishable from BASCOM, where claims were directed to an improvement to an existing technological solution. At step 1 of Alice, it also rejected the notion that the prosecution history reflected that the claims were not abstract. The growing divide between the CAFC’s view on eligibility and that of the Patent Office may become more contentious as more opinions from the Federal Circuit veer from the USPTO’s standards and guidance for examining these kinds of patents.

At step two, the CAFC summarily rejected ECT’s argument that the claims were similar in substance to Amdocs (Israel) Ltd. v. Openet Telecom, Inc., noting that the number of words in the claim does not determine eligibility. It also rejected the argument that the district court should have undergone claim construction to assess eligibility, finding no terms worthy of claim construction to determine eligibility.

  1. British Telecommunications PLC v. IAC/InterActiveCorp

In British Telecommunications PLC v. IAC/InterActiveCorp, the CAFC held invalid claims directed to a computer-implemented method for automatically delivering shortlists of location-specific information to mobile users based on user preferences. The court noted that in Intellectual Ventures I LLC v. Capital One Bank, it had previously held that “tailoring the provision of information to a user’s characteristics, such as location, is an abstract idea.” This holding seems to be a clear departure from the USPTO’s standards, which seem to allow patenting features for increasing user experience by configuring a digital response or display based on a user’s preference. It went on to find no elements of the claim to “require[] anything other than an off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information.”

  1. In re Rosenberg

The CAFC rejected a patent directed to collecting performance-related data about a clinical trial, analyzing that data, and reporting whether to make adjustments to the clinical trial based on a review of the collected data. Unlike some of the other cases on this list, this case squarely falls within a very traditional notion of the abstract idea exception. The CAFC agreed with the PTAB that the claims recited the “basic idea of deciding whether to fine-tune a given system (here, a clinical trial) based on reviewing the system’s performance data.”

The CAFC compared the claims to those in Electric Power. It held ineligible claims directed to optimally managing an electric power grid at a central location by receiving data streams from geographically distinct electric power grid locations, analyzing them for vulnerabilities, and then displaying the results. It went on to note that, contrary to the applicant’s arguments, the claims did not require the collection of the data to be “in real-time.” It also reiterated its reasoning from the first Alice case of the year that “‘claiming the improved speed or efficiency inherent with applying the abstract idea on a computer’ is insufficient to render the claims patent-eligible.” This reasoning harkens back to Alice—where the patentee argued that the system’s speed was an improvement over the human counterpart to the claimed invention was insufficient to render the claims eligible.

At step two, the court rejected the argument that the “pre-programmed computer module” was not generic. In doing so, it affirmed that the In re Allapat reasoning—that programming a computer for a particular purpose indeed makes it a “special-purpose computer”—is no longer valid.

Part II will recap the remaining 14 cases.

 

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The Author

Theodore Rand

Theodore Rand is a registered patent agent and recent graduate from UNH Franklin Pierce School of Law. Theodore will be joining Morgan, Lewis, & Bockius LLP as an associate in the Silicon Valley’s patent prosecution practice group in October 2021.

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 30 Comments comments.

  1. Model 101 January 7, 2021 4:59 pm

    What did you expect from a bunch of crooks?

  2. Pro Say January 7, 2021 6:51 pm

    CAFC (pick one or more — don’t worry, there are no wrong answers):

    1. Mumbo-Jumbo

    2. Gobbledygook

    3. Flim-Flam

  3. Pro Se January 7, 2021 7:08 pm

    In about 2 more years, this will snowball into needing to invent your own language, provide a legend of translations in the Abstract to avoid having Webster’s Dictionary cited as all words of a Letters Patent comprising “generic” and well known language.

    You can’t go anywhere in the world and find a patent law, in say, China, that allow American companies to come in and violate and destroy Chinese company rights…

    America is the only IP country that destroyed their own legacy of idea makers for knee-jerk legal egos of judges who have run so far in proving their ability to change law, there’s simply no laws left.

    So, congratulations American patent legal institutions… within 6 years, no one will no longer graduate Magna Cum Laude in Intellectual Property Law…

    There will only be a Rhodes Scholarship for U.S. Intellectual Property Historical Studies… nestled within an extra credit Liberal Arts program.

  4. Anon January 7, 2021 8:46 pm

    One-O-whatever

  5. TFCFM January 8, 2021 9:48 am

    Article:: “one thing that has become increasingly clear is that the CAFC wants to see how a particular result is achieved or how a problem is solved. This desire for a “how” or rule set from the claims creates an evident tension with the traditional notion that patent claims should recite structure, not functional language.

    I don’t think that “tension” exists for the simple reason that the premise is wrong: The courts and the Patent Office don’t want to “see how a particular result is achieved or how a problem is solved” — they want you to SPECIFY IN ONE’S CLAIM what the recited invention IS.

    If you’re claiming a method, specify what the method IS, not merely “anything and everything that achieves the same goal” (either overall or at some part). It is precisely the generic-ness of such “anything and everything that works” elements that lends the shorthand term “abstract” to such elements and results in denial/invalidation when such generic-ness lurks at the heart of what one asserts to differentiate “inventive” subject matter from other subject matter.

  6. Anon January 8, 2021 10:22 am

    TFCFM,

    No.

    Your mantra is simply not reflecting what is in play here.

    It is beyond clear that this is not an area that you have any actual experience in (and do not see these items as an actual practitioner).

  7. Thiscountryisoutofcontrol January 8, 2021 11:00 am

    Thanks for the great article! This just helps prove that most, if not all, judges are unqualified to adjudicate patent cases. I listened to a CLE the other day and a former federal judge was on the panel of speakers. He had no clue what he was talking about from a legal standpoint at all. That doesn’t even begin to take into account the underlying technologies that his court decided cases on.

  8. PTO-Indentured January 8, 2021 11:14 am

    Mumbo-jumbo (intended) = ambiguity (intended) = All-New! IP enforcement sweet-spot ‘Ante Up Fee’ of $3M to $4M court battle (intended). A finely-tuned, barrier-to-entry threshold, perfected — sufficing to crush just about all U.S. independent inventors.

    Can’t meet this fee to get into court to defend / get ‘a pittance’ out of / your invention? Perfect. No need to bandy about such long-in-the-tooth terms as “Patent Troll’ and “Efficient Infringer” anymore, if the ‘little guy / gal’ can’t pay for this jacked-up ticket price, we got ’em where we want ’em: out of the game — forever. Big money wins.

    Thank you courts, well done. Double-standard maintained / entrenched.

  9. J. Doerre January 8, 2021 1:44 pm

    I did not exhaustively review, but from a quick glance: did you exclude cases in which a R.36 was issued?

  10. Curious January 8, 2021 2:29 pm

    If you’re claiming a method, specify what the method IS, not merely “anything and everything that achieves the same goal” (either overall or at some part).
    Sigh … the same thread-bare commentary from the peanut gallery.

    The claims (for a method) are not intended to be a set of instructions to perform the invention. Enablement (i.e., how to make and use the invention) is the subject of the 1st paragraph of 35 USC 112 and refers to the specification. Moreover, enablement is an issue that takes into account the knowledge of those skilled in the art.

    I claim, for example, a claim comprising a number of elements including “welding element A to element B.” Is that sufficiently detailed for you or is that an abstraction? This is a method step that essentially identifies a particular goal (i.e., element A is welded to element B). In reality, the intent of that particular limitation is to the claim anything and everything that achieves the same goal. Is that wrong? Welding one element to another element is well-known in the art. That alone isn’t the invention so why would it be abstract?

    As I have written many times before (oftentimes in response to your tripe), you confuse how many biotech claims are frequently written (e.g., “a compound being effective to provide X benefit”) with how most claims in the other arts are written. If it is a method claim, it is typically written as several steps in which how to perform many portions of the steps are well-known. As such, there is no need to expound, in great detail, as to how these particular steps are performed. Additionally, to the extent that a new step is identified, in most instances, it is well within the scope of knowledge of one skilled in the art to replicate that step — once it has been identified. If there are things that need to be further spelled out (because practicing these steps are not within the knowledge of those skilled in the art) there is no need to do it in the claims — that is what the specification is for. See 35 USC 112.

  11. Ted January 8, 2021 3:42 pm

    @J. Doerre, yes, those were excluded for this analysis, but that is definitely an issue on my radar after seeing the recent Snapizzi case come down without an opinion.

  12. Anon January 8, 2021 4:54 pm

    Curious,

    It is not just the same “from the peanut gallery” — it is the same nonsense from the particular ‘but’ of TFCFM, to whom you, I, and even the new guy __tr__ have taken to the woodshed many times.

    It’s as if he were a litigator trying to impress his non-litigator friends, without any understanding of the audience of this blog that sees immediately through his tripe.

  13. concerned January 9, 2021 4:32 am

    The irony does not escape me that this article is written by Rand, as in Ayn Rand and Atlas Shrugged.

    Perhaps all the inventors and creative minds should just leave society and go hide. Then the balance of the population could go ask Judge Alice when she’s ten feet tall. There is no logic and proportion at this point to fall sloppy dead.

  14. TFCFM January 11, 2021 9:54 am

    Curious@#10: “..you confuse how many biotech claims are frequently written (e.g., “a compound being effective to provide X benefit”) with how most claims in the other arts are written.

    Your comment suggests, perhaps, why section 101 ‘abstractness’ holdings may be more common in computer-related subject matter fields than in any other. Although use of common terms having relatively broad scope (e.g., “a fastener” as a quintessential example) are in well-known and -accepted use in patent practice, it is the use of generic terms at the “point of novelty” (a helpful literary term, even if not a proper patent law term) that often renders a claim abstract (“anything that works, whether I’ve invented it or not)”. This is true for “biotech” patent applications. It is true for mechanical applications, and — no matter how much fools wish to kick, scream, and insist otherwise — it is also true for computer-related patent applications.

    The fact that computer-related art units at the USPTO might have ignored this for a few years in the 1990’s and 2000’s does not change the underlying truth (even if it does influence why so many reported cases involve computer-related patents).

    There’s nothing inherently unpatentable about computer-related technologies, but the same laws relating to patentability (including laws prohibiting abstract claims) apply, EVEN if a few practitioners mistakenly became accustomed to not-complying with those laws, and even if a few applications were inappropriately allowed as a result.

    Given that this article is written by a relative newcomer to our field, I’ll note that for practitioners hoping to overcome past shortcomings, the “trick” is for them to use this ever-lengthening line of cases as a candle to light their future way, rather than to curse the darkness which some past practitioners claim to perceive.

    (Because it’s off-topic, I’ll do no more than note than the howlingly-funny inaccuracy of your assertion about “how biotech claims are frequently written.” Although so ridiculously abstract a claim might occasionally be written by an inexperienced practitioner {your excuse, I presume}, no serious/sane biotech practitioner would write so blatantly-obviously unpatentable-for-abstractness a claim, at least since Bilski first percolated upwards {if even that late}. I expect that biotech practitioners reading this are all thinking, “Yep. THAT’s what computer-nonsense practitioners don’t understand.”)

  15. Anon January 11, 2021 2:23 pm

    TFCFM: “ at the “point of novelty” (a helpful literary term, even if not a proper patent law term)

    How is this helpful, when the ‘literary’ notion causes confusion BECAUSE it is not a proper patent law term?

    Are you still in a ‘impress your non-lawyer friends’ mode?

    What is the (proper) legal point that you are trying to make?

  16. Curious January 11, 2021 4:32 pm

    it is the use of generic terms at the “point of novelty” (a helpful literary term, even if not a proper patent law term) that often renders a claim abstract (“anything that works, whether I’ve invented it or not)”.
    This must be the era where unsubstantiated claims are assumed correct despite the lack of evidence. In the course of prosecuting hundreds and hundreds of applications, I cannot recall a single instance where the “point of novelty” was claimed in generic terms. Again, this appears to be a biotech construction (e.g., “a compound being effective to provide X benefit”). Moreover, to the extent that some applicant has created some new terminology to describe some previously-unknown function, it is self-enabling. In other words, those skilled in the art would know how to make and use this inventive aspect — again, unlike “a compound being effective to provide X benefit,” which is not self-enabling.

    I’ll note that for practitioners hoping to overcome past shortcomings, the “trick” is for them to use this ever-lengthening line of cases as a candle to light their future way, rather than to curse the darkness which some past practitioners claim to perceive.
    There is no path for practitioners to follow. Rather, 101 jurisprudence form the Federal Circuit is a constantly-shifting maze where nearly identical paths can lead to entirely different results. There is no consistency in these decisions. Arguments that work in one application/patent fail in another — ALL THE TIME.

    We’ve had 6 1/2 years of Alice. One would think that in all that time that practitioners would be able to easily predict how a particular application/patent would fare with regard to 35 USC 101. One would think that patent attorneys would be able to draft specifications/claims that would overcome 101. Unlike 102/103 in which the scope of prior art is not known with any certainty, 101/112 are (supposedly) known standards that patent attorneys should be able to get around. For the most part, true 112 rejections (i.e., rejections that are not just a simple clerical error) are rare — because the jurisprudence is known and generally consistent. The same cannot be said about 101.

    Why are claims written 4 years after Alice being rejected based upon Alice? Patent attorneys are very smart — they don’t get into this profession by being dumb, average, and just above average. They should be able to react to well-conceived/explained law by presenting claims that overcome 101. However, in 2021, it is still a crapshoot as to what claims make it past 101 and what claims do not. If you are before the patent office, whether your claims make it or not can be dependent upon whether the application gets classified in 2100 vs. 3600. If you are before the Federal Circuit, if you before a panel populated by the many non-technical judges and/or older judges, odds are that your computer-implemented patent is going to get tanked.

    The disaster that is the Federal Circuit’s treatment of 35 USC 101 is evident by how many claims still get tanked using this section. No attorney wants their claims tanked and most will do whatever it takes to get a claim allowed that will hold up in court. The fact that so many don’t is a reflection of the Federal Circuit’s inability to set forth a coherent set of principles that practitioners can rely upon.

    I guarantee that there will be claims, issued by the Patent Office in 2021, that will at some time in the not-too-distant future be invalidated by the Federal Circuit under 35 USC 101. If the Patent Office, with all of its institutional expertise, cannot figure out 7 years after Alice what is patentable under 35 USC 101 and what isn’t, how can the average practitioner or average inventor?

    I would posit that if you took all the claims issued by the Patent Office in 2021 and subjected them to a hypothetical treatment by the Federal Circuit, that the vast majority of them in the computer arts would fail under 35 USC 101. There is sufficient case law out there to tank ALL of them — all it takes is a sufficiently motivated Federal Circuit panel to make it happen — and the vast majority of them have shown to be so sufficient motivated.

  17. TFCFM January 12, 2021 9:54 am

    TFCFM@#14: “…at the “point of novelty” (a helpful literary term, even if not a proper patent law term)

    Anon@#15: “What is the (proper) legal point that you are trying to make?

    The US Supreme Court, the Federal Circuit, innumerable district courts, and the US and other patent offices have, of course, found it difficult to definitively state this point. I am honored that you believe that my profound, infallible knowledge permits me to rattle off a precise formulation of this point — where so many others have failed — in a 12-deep reply to an post on one of many patent-related blogs. Alas, I must inform you that my knowledge is less than perfect on this score. Like all of these others, I have not yet worked out a perfect, logically unassailable delineation of the metes and bounds of this point.

    Nonetheless, everyone here knows what I’m talking about: Abstractness is fine for immaterial, peripheral aspects of a claimed invention (e.g., exactly which specific type of “fastener” is used to fasten together unimportant parts of the claimed invention), but is impermissible for claiming “the important parts” of an invention (e.g., “what I’ve actually invented and/or anything else that performs the same function”).

    Hopefully one of these courts (or I, although I doubt the latter) will enunciate the perfect standard one of these days. Nonetheless, the difficulty of delineating the precise standard does not prevent the standard’s application — especially in cases (such as many of those decided) in which the standard is blatantly not satisfied.

    The perfect, in short, need not be the mortal enemy of the good.

  18. TFCFM January 12, 2021 11:01 am

    Curious@#16: “There is no path for practitioners to follow. Rather, 101 jurisprudence form the Federal Circuit is a constantly-shifting maze where nearly identical paths can lead to entirely different results.

    I think that’s clearly an over-statement. Bilski alone gave notice to all who had ears to listen that the “anything goes” potential-interpretation of the State Street Bank decision wasn’t going to fly (to the extent anyone believed that potential interpretation to begin with).

    You’ll find (and, indeed, I think you’ve found) no argument that Alice is a perfect, flawless exposition of the metes and bounds of section 1010. Nonetheless, the case law is evolving in a pretty clear direction, even if some folks wish it weren’t.

    Just as it’s easy to casually describe what “pi” is (the ratio of the circumference of a circle to its diameter), but much more difficult to determine its precise, unassailable meaning (it’s “about 3,” “about 3.14,” “about 3.141592653589793238,” and so on), so is it easy to describe the “abstractness” limitation on patentable subject matter (roughly, “if a claimed invention is abstract, then it’s not patentable,” or “if a claimed invention is defined by what it does without adequately specifying what it is, then it’s not patentable,” and so on).

    You’ll get no argument that patentable (or even “abstract” in its various potential forms) subject matter has been perfectly defined, but the blaze marks are there for anyone not-to-stubborn to follow the trail. New (and old) practitioners can follow the case law on patent-eligible subject matter to avoid known trouble, stick to safe paths, and judge when they are in potential hazard.

  19. Anon January 12, 2021 1:03 pm

    The view that there is not a Gordian Knot of irreconcilable contradictions is simply not tenable.

    This is not just my opinion (and no, your spin above that I was paying you a compliment is plainly absurd), as leaders of all three branches of the government have plainly stated otherwise.

    To be colloquial: pull your head out.

  20. Curious January 12, 2021 1:59 pm

    Abstractness is fine for immaterial, peripheral aspects of a claimed invention (e.g., exactly which specific type of “fastener” is used to fasten together unimportant parts of the claimed invention), but is impermissible for claiming “the important parts” of an invention (e.g., “what I’ve actually invented and/or anything else that performs the same function”).
    Patents claims are defined by words. Words are abstract representations of real-world things. Hence, patent claims are abstract representations of real-world things. Under that logic, all claims are abstractions, which in reality, that is what they are.

    Thus, any time a court wants to look for abstract ideas being claimed, it is quite easy to find them. Just look at American Axle, they found the claims directed to Hooke’s law (despite Hooke’s law not even being recited). One would have to look very hard to find an invention to a mechanical device that I couldn’t present an argument that the claimed invention inherently invoked some type of physical law (i.e., abstract idea).

    Nearly 6 1/2 years after Alice, the Courts, the Patent Office, patent practitioners, and inventors are still struggling to figure out what is patent eligible subject matter under 35 USC 101 and what isn’t. That is the sign of an ill-conceived test.

    The perfect, in short, need not be the mortal enemy of the good.
    LOL. Forget perfect — at this point, we cannot even hold out hope for something that can provide even some small modicum of predictability. This judge-made law is hopelessly irreconcilable. It is about as far from perfect as one can get.

  21. TFCFM January 13, 2021 10:02 am

    Curious@#20: “Patents claims are defined by words. Words are abstract representations of real-world things. Hence, patent claims are abstract representations of real-world things. Under that logic, all claims are abstractions, which in reality, that is what they are.

    If you want to push arguments that NOTHING is patentable or that EVERYTHING is patentable, go ahead. I’ll wager you’ll find little backing or interest for either line of argument. In fact, go ahead and argue that “life is just a dream” while you’re arguing about how many angels can dance on the head of a pin.

    The rest of us are too busy implementing a practical, workable patent system to be thus distracted.

  22. Curious January 13, 2021 1:34 pm

    I wrote “There is no path for practitioners to follow. Rather, 101 jurisprudence form the Federal Circuit is a constantly-shifting maze where nearly identical paths can lead to entirely different results.”

    You responded as such:
    I think that’s clearly an over-statement. Bilski alone gave notice to all who had ears to listen that the “anything goes” potential-interpretation of the State Street Bank decision wasn’t going to fly (to the extent anyone believed that potential interpretation to begin with).
    Are you calling Bilski a path? This is what the Supreme Court wrote in Alice about Bilski:
    Like the risk hedging in Bilski, the concept of intermediated settlement is “ ‘a fundamental economic practice long prevalent in our system of commerce,’ ” ibid., and the use of a third-party intermediary (or “clearing house”) is abuilding block of the modern economy. Thus, intermediated settlement, like hedging, is an “abstract idea” beyond §101’s scope.
    Based upon Alice and Bilski, all we needed to do is avoid fundamental economic practices long prevalent in our system of commerce. However, that is UNQUESTIONABLY not the path that the Federal Circuit has laid out in order to get around 35 USC 101.

    Nonetheless, the case law is evolving in a pretty clear direction, even if some folks wish it weren’t.
    The case law is evolving in a pretty clear direction — everything is unpatentable. The number of patent-eligible decisions at the Federal Circuit are few and far between. In addition, whatever guidance provided by those decisions is fleeting as arguments based upon those past decisions are mostly ignored by the Federal Circuit. DDR Holdings, BASCOM, Berkheimer — they are ignored ALL THE TIME. This is because there is so much case law out there that (implicitly) allows the Federal Circuit to ignore most limitations. As annother example, despite the Supreme Court describing “preemption” as an important concern, arguments regarding lack of preemption can generously be described as ‘dead on arrival’ at the Federal Circuit.

    Just as it’s easy to casually describe what “pi” is
    Let’s just place this under the category of “one of the more useless analogies ever” and leave it at that.

    New (and old) practitioners can follow the case law on patent-eligible subject matter to avoid known trouble, stick to safe paths, and judge when they are in potential hazard.
    Have you read anything that has been written on this blog? There are no safe paths. When, for example, a 200 word claim can be reduced, with the flourish of a pen, to “gathering, processing, and transmitting information” nothing in computer realm is safe.

    If you want to push arguments that NOTHING is patentable or that EVERYTHING is patentable, go ahead.
    I’m not pushing those arguments … that is doing of the Federal Circuit — if not by words, then by actions.

    The rest of us are too busy implementing a practical, workable patent system to be thus distracted.
    I’ve had hundreds and hundreds and hundreds and hundreds (did I mention hundreds?) of patents issued since Alice. Despite a great many receiving 101 rejections at one point (that were ultimately overcome), I won’t delude myself into thinking that these patents would be held to be patent eligible at the Federal Circuit. With the right (or wrong, depending upon how you look it) panel of Federal Circuit judges, I have no doubt that 95% would be held to be patent ineligible — not because they are, but because that is how the Federal Circuit is operating these days.

    There is no clear (or even tortuous) path to patent eligibility these days. Rather, a patentee needs to get really lucky with the panel they draw at the Federal Circuit and hope that the patent gods are feeling generous that day. It’s even worse at the Supreme Court. It has been 40 years since Diamond v. Diehr was decided at the Supreme Court in favor of patent eligibility. In the mean time, other than a decision in 2001 that patent breeds can be patentable subject matter, I cannot recall another Supreme Court decision that has been in favor of patent eligibility.

    I would like to see an article that identifies all of the patent cases that were issued in 2020 by the Federal Circuit (including Rule 36 affirmances) involving 101. My guess is that the number of times a 101 rejection was affirmed is close to 90%.

  23. Anon January 13, 2021 2:38 pm

    I do NOT see you — in any way — being one of those “too busy implementing a practical, workable patent system to be thus distracted

    ALL that I see from you is an anti-innovation view and a lack of understanding that innovation has largely moved into the 5th Kondratiev wave.

  24. TFCFM January 14, 2021 9:59 am

    TFCFM@#21: “Just as it’s easy to casually describe what ‘pi’ is… [so too the precise boundaries of 101-abstractness]

    Curious@#22: “Let’s just place this under the category of “one of the more useless analogies ever” and leave it at that.

    It is, indeed, wise to punt on fourth-and-forever when deep in your own territory, down by a bunch of touchdowns, with the fourth-quarter of the “everything-I-want-should-be-patent-eligible” bowl running out.

  25. Curious January 14, 2021 3:33 pm

    It is, indeed, wise to punt on fourth-and-forever when deep in your own territory, down by a bunch of touchdowns, with the fourth-quarter of the “everything-I-want-should-be-patent-eligible” bowl running out.
    Hmmm … you discuss the least consequential of everything I wrote. Talk about punting. Color me not surprised.

  26. Anon January 16, 2021 10:25 am

    Curious, Are you surprised?

    TFCFM has repeatedly shown that he has no actual interest with a discussion on the merits, and only shows up to get up on his own soapbox, say his piece, and then go home.

  27. Curious January 16, 2021 2:00 pm

    TFCFM has repeatedly shown that he has no actual interest with a discussion on the merits, and only shows up to get up on his own soapbox, say his piece, and then go home.
    Well, yeah. It is easy to do the drive-by regurgitation of the same comments and then not address substantive remarks thereafter.

  28. Anon January 18, 2021 8:28 am

    Absolutely Curious.

    It is an unfortunate drawback to this type of forum that we engage in.

    (I have in the past offered Rules for forum moderation that took such into effect, although I fully recognize that the level of effort of enforcing such rules might be more than forum moderators would be willing to provide – those Rules deal with the concept of inte11ectual honesty; THIS SITE does a far better job of moderating for outright dishonesty, but the tactic of repeated drive-by inte11ectual dishonesty would take even more diligence and effort)

  29. George January 23, 2021 5:33 pm

    @ TFCFM

    Agree. However a formal and concise description of what your invention ‘is’ and ‘does’ should be able to be made in plain English too, or (now) in a way that computers could understand and evaluate as was done with original ‘Letters Patents’. Those earliest patents didn’t involve much of any legal ‘mumbo-jumbo’. They were written so any scientist, engineer or even lay person could, fairly easily, understand and practice what was disclosed and taught, and so everyone could also ‘agree about’ (or disagree about) what was new and ‘significant’ about a particular invention and what wasn’t (on the basis of a ‘scientific evaluation’ alone). We shouldn’t forget that in the past patents didn’t used to require teams of lawyers and judges to decide such (fairly obvious) things. Also, the Nobel committee does that every year, and they don’t need lawyers to do it! No one takes the Nobel Committee to court to overrule one of their decisions.

    In the past competitors could usually agree on what was being claimed by one inventor or another and would just respect those claims or face fairly swift consequences. Of course, they also didn’t have to worry too much about inventions or competition from other countries, since there wasn’t that much. Patent infringement wasn’t a big problem in the first 100 years of patent rights (unless the inventions were easy to make by anyone – like the ‘cotton gin’), and it wasn’t that hard to decide who invented what and the ‘significance’ of those inventions relative to other inventions. In fact, new inventions were usually celebrated and welcomed, not feared (as they are today)!

    There is no (good) reason we couldn’t go back to those ‘simpler times’. Computers and AI could let us do that now (for the first time in history)! Computers could get human biases and emotions out of the ‘equation’ for getting a patent as broad as logically reasonable and ‘algorithmically’ allowed (by simply passing a series of ‘Alice-like’ tests). Future disputes could then also be decided by computers and algorithms, rather than relying on subjective, inconsistent and ever-changing ‘opinions’ (that never make anyone happy now). If such patent-allowance algorithms would occasionally need updating or ‘bug fixing’, then they would just be revised as needed (and agreed on), with prior decisions being upheld, unless a serious and obvious ‘bug’ was discovered in a prior algorithm.

    After all, algorithms are simply rules and instructions. Computers just make decisions based on those rules and instructions. They can’t discriminate, they can’t have ‘opinions’ or ‘gut feelings’, they don’t make mistakes, they can’t be vindictive or have ulterior motives, they can’t play favorites, can’t have secret agendas, can’t protect special interests, can’t be inconsistent and, most of all, they don’t care about money and therefore can’t be corrupted!

    I think most inventors would welcome ‘computer overlords’ over our current current system consisting of (fallible) human overlords and (sometimes) incompetent examiners. Computer overlords would also work for FREE! I’d trust computers over humans (almost) any day!

  30. George January 24, 2021 11:18 pm

    Replies to comments should appear tabbed below each comment (like on other comment boards). This shouldn’t be too hard to do. Also commentators should be notified if someone replies to their comments (again like on other message boards). Otherwise productive discussions become too difficult.