CAFC Affirms District Court Section 101 Dismissal in Patent Infringement Suit Brought Against Samsung/Apple; Newman Dissents

By Nancy Braman
June 14, 2021

“The case before us enlarges this instability in all fields, for the court holds that the question of whether the components of a new device are well-known and conventional affects Section 101 eligibility, without reaching the patentability criteria of novelty and nonobviousness.” – Judge Pauline Newman, Dissenting

Section 101 - https://depositphotos.com/28667711/stock-photo-green-us-101-south-highway.htmlOn June 11, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the U.S. District Court for the Northern District of California’s grant of a motion to dismiss for Apple and Samsung in a patent infringement action brought by Yanbin Yu and Zhongxuan Zhang (collectively, “Yu”). Yu alleged infringement of Claims 1, 2, and 4 of U.S. Patent No. 6,611,289 (the ‘289 patent), titled “Digital Cameras Using Multiple Sensors with Multiple Lenses,” and the court dismissed due to ineligibility under Section 101. Judge Pauline Newman dissented.

In the district court, Samsung and Apple filed a Rule 12(b)(6) motion to dismiss the case, which was subsequently granted with prejudice, after the court determined that each asserted claim was patent ineligible under 35 U.S.C. § 101. The district court found that the claims were directed to “the abstract idea of taking two pictures and using those pictures to enhance each other in some way” and were thus patent ineligible. The court explained that, for over a century, photographers had used multiple photographs to enhance each other, so the claimed elements lacked any inventive concept. Yu appealed to the CAFC.

Mayo/Alice Framework for Patent Eligibility

In reviewing the appeal, the CAFC applied Ninth Circuit law in considering issues of material fact in the light most favorable to the nonmoving party and employed the two-step Mayo/Alice framework for determining patent eligibility. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70–73 (2012). First, under the Alice test, a claim is patent ineligible if directed to an unpatentable law of nature, natural phenomenon, or abstract idea. Second, even if a claim passes the Alice test, a claim is patent ineligible under Mayo if it does not contain an inventive concept that “transform[s] the nature of the claim into a patent-eligible application.” The CAFC determined that the asserted claims of the ‘289 patent failed both tests.

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Claim 1 is Directed to an Unpatentable Abstract Idea

Under the first step, the CAFC agreed with the district court that the asserted claims of the ‘289 patent were directed to the abstract idea of taking two photographs (optionally at different exposures) and using one to enhance the other. The court focused on the claim language and specification of representative Claim 1, citing Smart Systems in determining that Claim 1 is “directed to a result or effect that itself is the abstract idea” by simply invoking “generic processes and machinery” instead of claiming “a specific means or methods that improves the relevant technology.” Smart Sys. Innovations, LLC v. Chi. Transit Authority, 873 F.3d 1364, 1371 (Fed. Cir. 2017). Yu argued that even though the idea of using multiple photographs to enhance each other had been widely practiced for centuries, Claim 1 was not directed to this idea generally, but a specific, patent-eligible application of this idea. The CAFC disagreed, finding that the claim only recites “conventional camera components to effectuate the resulting ‘enhanced’ image” and as claimed, “perform only their basic functions and are set forth at a high degree of generality.” This was confirmed in the specification, which states “the great need for a generic solution” to the high cost of making digital cameras produce high-resolution images. Therefore, noted the CAFC, Claim 1 simply describes a generic environment in which to implement an abstract idea.

Yu further argued that the claims provide a specific solution to photographs with low resolution and non-vivid coloring due to limited pixel counts and depth and supported this contention with its specification by pointing to its particular configuration of lenses and image sensors. Citing ChargePoint, however, the CAFC reasoned that even a specification containing a high degree of technical details can conclude with abstract claims. ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 769 (Fed. Cir. 2019). Here, the court found that the solution claimed in Claim 1 is merely the abstract idea of enhancing one photograph with another. For example, even though the specification describes the advantages of using a particular four-lens, four-image-sensor configuration where three sensors are color-specific and one is black-and-white, Claim 1 only requires a two-lens, two-image-sensor configuration where no sensors are color-specific.

Claim 1 Holds No Inventive Concept

Under the second step, the CAFC held that Claim 1 does not include any sufficient inventive concept to transform the claimed abstract idea into a patentable invention. Yu argued that the prosecution history of the ‘289 patent paired with its subsequent allowance “over multiple prior art references” demonstrates the novelty of the invention. Citing Two-Way Media, the CAFC noted that claim novelty (even if it existed here) does not automatically confer patent eligibility by itself, as novelty and eligibility are separate inquiries:

“The main problem that [Yu] cannot overcome is that the claim—as opposed to something purportedly described in the specification—is missing an inventive concept.”

Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d at 1338 (Fed. Cir. 2017). Therefore, it would be inappropriate to confer patent eligibility under the second step of the framework. The CAFC also gave no credence to Yu’s procedural arguments, which stated that the district court erred in: 1) considering the undisputed fact that the practice of using one photograph to enhance another was well-known; 2) ruling on the technology at issue without first listening to expert testimony; and 3) disregarding Yu’s allegations of patent eligibility. The CAFC found that the district court’s consideration of the undisputed practice to be in line with precedent, and the district court was within the scope of its power to determine patent eligibility at the 12(b)(6) motion to dismiss stage without expert testimony. The CAFC also found that the district court did not err in deciding that the claims were directed to patent-ineligible subject matter after reviewing the intrinsic record.

Newman Finds Majority Opinion Inconsistent and Unpredictable

In her dissent, Judge Newman accused the majority of enlarging 35 U.S.C. § 101 to “deny access to patenting.” She disagreed with the finding that Claim 1 of the ‘289 patent is abstract, noting that the claimed camera is “a mechanical and electronic device of defined structure and mechanism. . . not an abstract idea.” The purpose of 35 U.S.C. § 101, she argued, is to distinguish the definition of patent-eligible subject matter from that of copyright-eligible subject matter. She supported this contention by citing the US Supreme Court’s decision in Diamond v. Diehr, which states that 35 U.S.C. § 101 covers patent-eligible subject matter, while the conditions related to novelty are covered separately under 35 U.S.C. § 102. 450 U.S. 175 (1981).

Furthermore, Judge Newman argued that according to the Patent Act of 1793, the “abstract idea” concept relating to patent eligibility is founded in the distinction between general scientific principle and specific application of that principle. Thus, the novelty of an invention is a separate determination from whether the invention falls within a category of statutory subject matter, and § 101 ineligibility “does not arise simply because a device embodies minor and predictable differences from the prior art, as the majority holds.” Citing Diamond v. Chakrabarty, she argued that Congressional intent established that statutory subject matter under § 101 includes “anything under the sun that is made by man.” 447 U.S. 303, 309 (1980). Therefore the ‘289 patent’s claims, which warranted substantive patentability review under § 102 or § 103, never received proper review after being improperly eliminated under § 101.

In closing, Judge Newman reiterated her view that the majority’s holding goes against the public’s interest in a stable patent system:

In the current state of Section 101 jurisprudence, inconsistency and unpredictability of adjudication have destabilized technologic development in important fields of commerce. Although today’s Section 101 uncertainties have arisen primarily in the biological and computer-implemented technologies, all fields are affected. The case before us enlarges this instability in all fields, for the court holds that the question of whether the components of a new device are well-known and conventional affects Section 101 eligibility, without reaching the patentability criteria of novelty and nonobviousness.

Image Source: Deposit Photos
Author: miflippo
Image ID: 28667711

The Author

Nancy Braman

Nancy Braman is a registered U.S. patent attorney. She has been contributing to IPWatchdog since 2019.

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 60 Comments comments.

  1. Bemused June 14, 2021 12:13 pm

    Absolutely no surprise with this outcome given the majority (Prost and Tarranto) on this panel.

  2. Pro Say June 14, 2021 1:40 pm

    Garage door openers . . . car axles . . . cameras . . . all abstract.

    The majority of the CAFC judges continue to have no shame.

    Instead of following SCOTUS “tread lightly” admonition, they instead stomp the life out of protection-deserving innovation.

    While Congress stands idly by . . . twiddling their thumbs.

  3. Pro Say June 14, 2021 1:46 pm

    p.s. Especially with the right-on-the-mark-yet-again Judge Newman’s dissent, this would be both an excellent case to quickly take to SCOTUS as they consider American Axle . . . and to add to the already-on-file briefs in support of American Axle.

  4. concerned June 14, 2021 2:55 pm

    My application has no 102 or 103 rejections.

    The USPTO said it is still abstract, so did their PTAB. Yet nobody can point to once instance in commerce, any commerce or any field, where my inventive concept has been used. When confronted with the preceding statement….crickets.

    Words added to statute and not defined. In fact, PTAB said my application met s101 as written, not as ruled by judges.

    The whole process should be deemed criminal.

  5. MaxDrei June 14, 2021 3:24 pm

    Pro Say, you put your finger on it when you characterize the claim at issue as “protection-deserving”. What all the cases you cite have in common is a claim that is palpably NOT deserving of protection, already, without even needing to get into the nitty-gritty of 102, 3 and 12.

    A commenter on another thread surmised that for a lot of District Court judges the appellation “101” (for assessment of eligibility) might be rather unfortunate, in that it suggests to those judges that eligibility is a preliminary issue, intended as an opportunity to dismiss a case early.

  6. Anonymous June 14, 2021 5:54 pm

    The majority opinion here is a complete embarrassment to the rule of law. The majority does not even pretend there is a STATUTE, but instead jumps to their own judicially conjured “exception”. The so-called exception has literally swallowed and become the entire rule. SCOTUS said not to do that, but the Federal Circuit has.

    Congress needs to fix this mess ASAP.

  7. ipguy June 14, 2021 8:11 pm

    Judge Newman is a national treasure.

  8. B June 15, 2021 1:17 am

    I repeat my earlier-made statement that Judge Richard Taranto is totally incompetent and not fit to judge a hotdog eating contest.

    His decisions are capricious as the terms he uses, he’s too inept to define the term “inventive concept,” and he could not possibly describe how he determines whether a claim is directed to an “abstract idea.” (Hint: he makes it up)

    Judge Taranto, feel free to prove me wrong sometime in the next ten years and define the term. You won’t, of course.

    @ ipguy “Judge Newman is a national treasure.”

    As is Judge Kimberly Moore and Judge Plager.

  9. TFCFM June 15, 2021 11:59 am

    Little surprise here: another “anything and everything that works (whether or not disclosed)” claim bites the dust.

    Claim 1 recites well-known physical and electromechanical components and shamelessly punts at the point of invention. According to claim 1, the well-known components are tied to:

    … a digital image processor … producing a resultant digital image from said first digital image enhanced with said second digital image.

    What does the “producing” and “enhancing” and how does it do it, you might ask. Why ANYTHING AND EVERYTHING THAT WORKS, of course!

    Prepare to be shocked, but the patentees failed to disclose anything and everything that might possibly work for these purposes in their description. As the majority noted, there might well be certain components/processes disclosed that can achieve these desired functions, but the claim is plainly not limited to those. It instead seeks to snatch from future inventors and improvers anything and everything that might compete with what-the-applicants-actually-invented.

    “Abstract” doesn’t even BEGIN to describe such bald-faced attempts to preempt the future. Of course this claim is ineligible on account of abstractness.

    It seems to me that J. Newman’s dissent is not so much an assertion that the claims ought to be considered valid as it is a mere complaint that the claims were held invalid for the wrong reason. That is, that the abstractness of the claimed invention ought to have been held to fail to satisfy written-description, enablement, definiteness, or other requirements for patentability, despite how clearly unpatentable the claim, as written, is.

    No serious patent prosecutor can still have any reasonable doubt that claims to “anything and everything that performs the same function(s) as whatever I may have invented” will increasingly usually not issue and will be invalidated upon assertion if the patent office is fooled into issuing them.

  10. Anon-noyed June 15, 2021 1:31 pm

    @8
    ‘I repeat my earlier-made statement that Judge Richard Taranto is totally incompetent and not fit to judge a hotdog eating contest.’

    Well, what can you expect from someone so incompetent that he clerked for Judge Robert Bork and then clerked for Justice Sandra Day O’Connor.

    If you need to blame something for Taranto sitting on the Federal Circuit, you can always blame homophobia.

  11. B June 15, 2021 3:12 pm

    @ TFCFM “‘Abstract’ doesn’t even BEGIN to describe such bald-faced attempts to preempt the future. Of course this claim is ineligible on account of abstractness.”

    Every claim in every patent ever written preempts the future, fake patent attorney, and you have no idea what “abstract” means.

  12. B June 15, 2021 3:24 pm

    @ Anon-noyed “Well, what can you expect from someone so incompetent that he clerked for Judge Robert Bork and then clerked for Justice Sandra Day O’Connor.”

    Taranto also clerked for Judge Judge Abraham Sofaer and was appointed by Obama, but, yeah badmouth two jurist who wrote decisions you never once read.

    “If you need to blame something for Taranto sitting on the Federal Circuit, you can always blame homophobia.”

    Obama is homophobic?

  13. B June 15, 2021 3:35 pm

    @ TFCFM

    Feel free to name a single Robert Bork decision you disagreed with and why. Ever met the man or heard him speak?

    I can name a bunch of decisions from Taranto that are idiotic, and describe why they are idiotic.

  14. Anon June 15, 2021 3:54 pm

    Anon-noyed,

    not to speak for B, but your comment on clerking does NOT carry over to having any clerk BE a competent judge merely because that person clerked.

    Perhaps, he should have stayed a clerk….

    I sincerely have no clue what your “blame homophobia” comment has to do with anything or with what anyone has ever said on the topic of Judge Taranto. This appears to be something entirely within your own mind.

  15. Curious June 15, 2021 4:42 pm

    Prepare to be shocked, but the patentees failed to disclose anything and everything that might possibly work for these purposes in their description.
    Are you as incompetent as your writing suggests? Help me understand where this nonsense that continually emanates from you comes from?

    You appear to be clueless to how mechanical/electronic inventions work. If I claimed a switch connected by a wire to both a light and a battery, there are literally hundreds of thousands of permutations of that particular combination. Despite the fact that I have “failed to disclose anything and everything that might possibly work for these purposes,” it isn’t “abstract” under 35 USC 101, indefinite under 35 USC 112, 2nd, or not enabled under 35 USC 112, 1st.

    FYI — I can make the same observation (i.e., about the hundreds of thousands of permutations) for nearly every mechanical/electronic invention out there.

    It instead seeks to snatch from future inventors and improvers anything and everything that might compete with what-the-applicants-actually-invented.
    ALL CLAIMS capture improvements that fall within the scope of those claims. How do you not know this?

    Your continued ramblings are an embarrassment to those of us who are patent prosecution professionals.

  16. B June 15, 2021 5:25 pm

    @ Anon “I sincerely have no clue what your ‘blame homophobia’ comment has to do with anything or with what anyone has ever said on the topic of Judge Taranto.”

    The knee-jerk reaction to this crowd is always homophobia, climate change, or white supremacy.

    FYI, I’m digging into the briefs and appendix to this case now. I think I see where things went wacko. For instance, the Dist.Ct. judge appears to have fabricated his own evidence, the Dist.Ct. judge decided no claim construction was necessary, and there’s generally an impenetrable wall of mindless b.s. decisions to pick and choose from. By way of example, the Dist.Ct. judge declares that photographers were doing the same thing in analog for over a century BEFORE any evidence was submitted. Also, I’m fairly certain the last limitation is subject to a means-plus-function construction, buuuut there was no Markman brief and claim construction is for lesser judges who lack omniscience.

    Can’t fight this level of stupid.

  17. Anon-noyed June 15, 2021 5:31 pm

    Basic research is beyond B’s and Anon’s abilities.

  18. Anon June 15, 2021 7:58 pm

    Anon-noyed,

    You presume that your comments warrant “basic research.”

    They do not.

  19. TFCFM June 16, 2021 10:43 am

    Curious@#15: “ALL CLAIMS capture improvements that fall within the scope of those claims.

    The mere fact that the patentee’s claim 1 “captures improvements” within its scope is not what is objectionable.

    What is objectionable is that the patentee’s claim 1 captures any and every improvement, without so much as pretending to describe all such improvements in their specification. Claim 1 encompasses “improvements” that have not been even-imagined yet, and it encompasses ALL such improvements, despite the fact that the public has not been put into possession of them by the patentee. That is what makes the claim abstract and unpatentable under numerous portions of the patent statute (including section 101).

    If the patentees had limited claim 1 to the “improvements” that they described and enabled in their specification, then I (and, I suspect, the court) would have no quarrel with the claim’s abstractness.

  20. TFCFM June 16, 2021 10:48 am

    B@#16: “I’m fairly certain the last limitation is subject to a means-plus-function construction…

    I’m assuming you’re referring to the magic “producing” and “enhanced” limitations that I highlighted @#9.

    On what basis do you assert that those terms are “subject to a means-plus-function construction“? Did the patentee insist on such a construction in its infringement contentions? Is there controlling precedent to this effect? Please explain.

  21. Curious June 16, 2021 2:21 pm

    What is objectionable is that the patentee’s claim 1 captures any and every improvement, without so much as pretending to describe all such improvements in their specification.
    You’ve described nothing that couldn’t be said about just about any other claim to a mechanical/electrical device.

    Claim 1 encompasses “improvements” that have not been even-imagined yet, and it encompasses ALL such improvements, despite the fact that the public has not been put into possession of them by the patentee.
    See above.

    That is what makes the claim abstract and unpatentable under numerous portions of the patent statute (including section 101).
    Your comments confirm that your inability to understand/comprehend how mechanical/electrical devices are claimed.

    Let’s go back to my hypothetical claim of: “a switch connected by a wire to both a light and a battery.” It also encompasses a situation in which a charging device is connected to the battery that permits the batter to be charged when it reaches a certain level. It also covers LED lights that weren’t around when I claimed my “light.” It also covers an switch configuration that wasn’t around when the specification was written.

    Seriously, have you ever heard of improvement patents?

  22. Anon-noyed June 16, 2021 2:56 pm

    @18

    Thank you for proving my point.

  23. B June 16, 2021 6:55 pm

    @ TFCFM “What is objectionable is that the patentee’s claim 1 captures any and every improvement, without so much as pretending to describe all such improvements in their specification”

    This is a total fabrication, fake patent attorney, and you have no idea why.

    “On what basis do you assert that those terms are ‘subject to a means-plus-function construction’“?

    You just proved my point

    “Did the patentee insist on such a construction in its infringement contentions?”

    The Plaintiff/Petitioner did demand a hearing on claim construction – DENIED

    “Is there controlling precedent to this effect? Please explain.”

    Precedent? Tons of it, but a real patent attorney would already know the major case law.

    # Anon-noyed “Thank you for proving my point.”

    Actually, you prove Anon’s point. You don’t raise substantive questions. Never. You merely make lame attacks.

  24. Anon June 16, 2021 7:35 pm

    You are quite mistaken in the notion that my response proves your point.

    Don’t be an arse.

  25. RTFMPEP June 17, 2021 6:20 pm

    You are an ignorant arse, anon. Tarantula wasn’t Obama’s first choice. Guess who was, ignorant right-tard?

  26. B June 17, 2021 6:43 pm

    @ rtfmpep “You are an ignorant arse, anon. Tarantula wasn’t Obama’s first choice. Guess who was, ignorant right-tard?”

    Wallach and O’Malley, both lily-white, were nominated by Obama b/f Taranto. Judge Reyna, the CAFC’s resident Pinoy, was also nominated b/f Taranto. All were confirmed unanimously.

    But tell us your woke theory about Obama’s first choice for CAFC and white supremacy.

  27. Anon June 18, 2021 7:25 am

    My mindless MPEP sycophant, your assertion targeted the wrong person.

    I have never voiced any opinion about order of judicial selections.

    Not only that, but your label of “right” does not fit. Being aware of – and pointing out – the fallacies of the Far Left does not make one to be politically Right.

    Egads, you are the type to label Joe Rogan as “right,” aren’t you?

  28. TFCFM June 18, 2021 10:02 am

    B@#23: “Precedent? Tons of it

    How odd, then, that you find yourself incapable of citing any. Puff and blow much?

  29. Anon June 18, 2021 10:53 am

    TFCFM,

    Not to intrude into your pleasant dialogue with B, but I had to go back and see what it was that you had wanted precedent for, and your position made me pause and wonder why you are distinguishing items as you appear to do.

    As I do not want to presume why you would be doing such, can you augment your position (precedent would be good, but even just an explanation at this point would suffice).

    To wit: “The mere fact that the patentee’s claim 1 “captures improvements” within its scope is not what is objectionable. What is objectionable is that the patentee’s claim 1 captures any and every improvement, without so much as pretending to describe all such improvements in their specification.

    I get the mantra of “any and every” (and can see the tie to the Morse case), but I am not seeing why there would be a legal distinction between what you do find objectionable and what you do not.

    Why would you be ‘ok’ with any capture of improvements not explicitly provided for? The underlying legal logic applies in both (to use your mantra): items are captured that are not described and enabled.

    Akin to your (possible dawning) realization that picture claims of structure to function are NOT necessary for all types of innovation, I think that here is an opportunity for you to ponder how in the world the patent system even countenances improvement patents (which are by far more numerous than non-improvement patents).

    Currently, I tend to understand your position to be a bit aligned with an examiner’s ardent position (on another blog) that falls apart when it comes to the subject of improvement patents. The parallel appears to be in the stridency of what ‘capture’ entails.

    Looking forward to your (explained) views.

  30. ipguy June 18, 2021 7:29 pm

    @25

    Edward C. DuMont?

  31. B June 18, 2021 8:20 pm

    @ ipguy “Edward C. DuMont?”

    Good answer.

    I honestly can’t think of anyone else it could be. I’m anxiously awaiting the basis of RTFMPEP’s accusations of bigotry.

    Please, RTFMPEP, what bigotry do you speak of?

  32. RTFMPEP June 19, 2021 4:47 pm

    B, you old homophobe, are you suggesting something other than homophobia kept Dumont off the Federal Circuit and gave you Taranto in his place?

  33. B June 19, 2021 6:09 pm

    @RTFMPEP “ B, you old homophobe, are you suggesting something other than homophobia kept Dumont off the Federal Circuit and gave you Taranto in his place?”

    Well, since Judge Hughes is openly gay and was confirmed by the exact same senate unanimously 6-7 months b/f Taranto was confirmed, I would think one would need to be completely uninformed and brain-dead to believe something so vastly stupid.

    Apparently I’m spot on, my woke and obnoxious friend.

  34. George June 19, 2021 11:05 pm

    @concerned #4

    “The whole process should be deemed criminal.”

    It really has now become basically a ‘gotcha racket’, that’s costing 1000’s of inventors & entrepreneurs BILLIONS! But not lawyers, or judges! They never lose! Funny how that works, isn’t it? I wonder what would happen if you got all your money back, when an issued patent was later deemed invalid?

  35. George June 19, 2021 11:19 pm

    And some here say computers couldn’t do better than THIS?! Just look at the comments! At least computers never get ‘nasty’ (except maybe in movies)!

  36. Anon June 20, 2021 9:03 am

    George @ 34-35,

    Your inanity continues to stagger.

    You keep on wanting some ‘future state’ to be immediately available and “be” the resolution of today.

    It just is not so.

    As to “computers get[ting] nasty,” I have provided you nearly a dozen articles (from across a spectrum of sources) that highlight current inabilities of your “soapboxing” – including the fact that “nasty” is exactly what “computers” output in a variety of current situations.

    As to “But not lawyers, or judges! They never lose! Funny how that works, isn’t it? ” – you really should understand that which you would denigrate.

    Maybe talk to an actual attorney and ask them about their ethical constraints.

    As is, the more that you shoot your mouth, the less actual intelligence you display.

    As always, such is your choice (but you do not get to choose the ramifications of your choices).

  37. TFCFM June 21, 2021 12:09 pm

    Anon@#29: “I get the mantra of “any and every” (and can see the tie to the Morse case), but I am not seeing why there would be a legal distinction between what you do find objectionable and what you do not. Why would you be ‘ok’ with any capture of improvements not explicitly provided for?

    The question of what is properly encompassed by a valid claim is not so much about “improvements” as it is about the claimed invention.

    If I invent, disclose, and claim an “improvement” to an article (let’s pick the “Hurry Cane” product, just to make the exampel concrete). This product is essentially a walking cane with a pivoting flat platform on its bottom, the platform having at least three non-skid “feet” on its underside and is apparently spring-loaded (or something) so that the cane ‘rights’ itself after being deflected away from a vertical position.

    Let’s assume (I don’t know or care whether it’s true) that the inventor of the Hurry-Cane described these features thoroughly in a patent application and clearly described their utility for maintaining the cane in an upright position when released from a user’s grip.

    Consider two claims:

    1. A claim that recites the parts clearly disclosed in the application (a cane body, a platform that bears feet, any of a variety of known mechanisms for returning-a-stick-to-a-vertical-position-relative-to-a-horizontal-platform (an “RTV mechanism,” all connected.

    2. A claim that recites a cane that maintains a vertical orientation when released from a user’s grip, the cane comprising a stick
    and a righting mechanism attached to the stick for maintaining verticality of the stick.

    (You’ll surely recognize this claim 2 as an “anything and everything that works” claim, of the type I deride.)

    It doesn’t really matter whether either claim represents an “improvement” to ordinary canes. Let’s assume that each of claims 1 and 2 satisfy all patentability requirements (other than abstractness, to which I return below) — or at least that the patent office allows (wisely or not) each claim.

    Per normal claim construction, it does not matter for infringement-purposes whether an accused-infringing device is an “improvement” over either of these claims or not. Claim 1 is infringed if the recited pieces are present. Ditto for claim 2.

    Let’s race ahead to the future now, where a clever inventor has invented a ring-shaped element that can detect when it’s tipping out of a horizontal plane and fire jets to right itself (don’t ask me how — it’s a new invention). If you install the device at or near the top of a cane, it keeps the cane upright, even if a user releases the cane from the user’s grip.

    Let’s consider that cane+jet-leveling-ring device.

    In our example, the Hurry-Cane inventor can’t possibly have described (and didn’t describe) the jet-leveling-ring element, because we’re assuming that element was invented later.

    Does claim 1 cover this device? We can’t tell until we look at the bottom of the cane. If the cane+jet-leveling-ring device includes the platform, feet, and an RTV mechanism of the types described, then it infringes claim 1, DESPITE the fact that the device also has the jet-leveling-ring element attached to it. If the cane+jet-leveling-ring device is missing any of the platform, feet, and RTV mechanism, it does not infringe claim 1, even though the jet-leveling-ring causes the device to perform the same function.

    Does claim 2 cover this device? Absolutely — because the jet-leveling-device is “a righting mechanism attached to the stick for maintaining verticality of the stick,” despite the fact that the Hurry-Cane inventor did not invent — indeed had not the slightest idea how to mak — a jet-leveling ring. Claim 2 covers the device even if it lacks ALL of the structure (other than the stick) the the Hurry-Cane inventor described and invented (platform, feet, RTV mechanism).

    Because claim 2 recites, effectively, “anything and everything that performs the verticality-returning function” it is abstract in view of a specification that necessarily adequately describes only certain mechanisms for achieving that function.

    (To loop back to the original thread: … and this is so despite the fact that both the adequately-described Hurry-Cane platform/feet/RTV-mechanism device and the cane+jet-leveling-ring device are “improvements” over ordinary canes.)

  38. Anon June 21, 2021 12:54 pm

    TFCFM,

    In your hurry to dismiss the “improvement” aspect, you not only have missed the point, but you have moved the goalposts.

    Please try again – this (long and admittedly detailed) post of yours is not answering the question put to you, but is instead (perhaps) answering a question that you may have wanted to have been put to you.

  39. RTFMPEP June 21, 2021 3:19 pm

    B, you old homophobe, you’re spot on like a piece of feces stuck on the side of the toilet bowl.

    DuMont’s nomination was in 2010 and withdrawn in 2011. Taranto was nominated in 2011. It languished due to inaction and he got renominated in 2013 when Hughes got nominated, which was almost 2 years after DuMont’s nomination was withdrawn, you ignorant ignoramus.

  40. B June 21, 2021 3:55 pm

    @ RTFMPEP “It languished due to inaction and he got
    renominated in 2013 when Hughes got nominated . . ”

    In 2010 the Democrats were the majority in the Senate, and the Democrat-run judiciary committee couldn’t get the DuMont nomination to the floor. Later, when the Republicans controlled the Senate, Judge Hughes was confirmed 98-0.

    Apparently, the increase in Senate Republicans resulted in a less homophobic and bigoted Senate.

    Or maybe DuMont had issues not related to his sexuality that made his appointment untenable.

    That said, I have no idea how many paint chips you consumed as a child, and while the extensive damage to your prefrontal cortex does explain your lack of critical thinking, it doesn’t explain why you’re such an obnoxious git.

    Civil discussion works fine for most people.

    Try it

  41. TFCFM June 22, 2021 12:41 pm

    Anon@#38: “Please try again – this (long and admittedly detailed) post of yours is not answering the question put to you…

    You asked that I explain, and I explained.

    That you do not like the conclusion exposed by that explanation does not require that I put it out of my mind as you choose to do.

  42. Anon June 22, 2021 1:59 pm

    TFCFM,

    I asked you MY question – NOT for you to ‘explain’ a question that I did not ask.

    This has nothing at all to do with whether or not I liked your conclusion.

    Try again – this time without moving the goalposts.

  43. George June 22, 2021 2:16 pm

    See THIS (all of the above) is what I mean! Computers would never ‘debate’ like this!

    This is how IP SHOULD WORK: A ‘valid’ patent (issued by a government) is infringed when ‘experts in each field’ SAY that another product infringes it (i.e. that ‘technically’ & ‘scientifically’ it is determined, with the help of a computer, that two technologies or products are effectively one and the same). Lawyers and courts shouldn’t even be making these decisions, anymore than they decide on who should get a Nobel Prize, or any other ‘prize’ based on ‘intellectual merit’ and ‘true contributions to society’! We have enough duplicative ‘stuff’ in this world. And as far as ‘improvements’ to the prior art goes, that too should be decided by experts having no vested interest in outcome of that decision. Our present ‘system’ is INFESTED with conflicts of interests (not to mention greed and large egos that can’t accept defeat). We need to start over with a clean slate, otherwise there is no hope of every getting this right and making it (once again) a ‘fair system’ (open to all classes of Americans, not just the rich).

    The Founders didn’t intend for IP rights to evolve into an endless slug-fest that ONLY the ‘already rich’ & powerful could benefit from and only lawyers would really prosper from. Lost in all this endless ‘bickering’ is where an actual ‘inventor’ fits into all of this and where their incentive & motivation to invent anything is anymore? I just don’t see it! I don’t see where the rewards justify all the ‘grief’ and tricks being played. There weren’t ‘tricks’ played on inventors 150 years ago! In the past if an inventor came up with something considered really new & useful, they got a ‘broad’ patent on it – period! Bell didn’t have to apply for 200 patents on the ‘telephone’! If it looked like telephone, was described like a telephone and worked like a telephone – it WAS a TELEPHONE!

    And, how many ‘corporate inventors’ do you know that have ever gotten wealthy or risen to a high position in their company, as a result of their inventions? Have they ever gotten big raises or bonuses (like their ‘overlords regularly give themselves even when their company LOSES money)? Yeah, that’s WHY I never became a ‘corporate inventor’! Even the intent of Article I, Section 8 has now become ‘totally corrupted’.

    Also, don’t hear much about the ‘needs’ of inventors here – just about who can win these ‘arcane debates’ (that can go on for year), which no ordinary person (or even scientists and technical experts) can ever understand.

    Inventors don’t have YEARS to wait around for ‘their share’ of the benefits new inventions bring to the world. In the 21st century, it shouldn’t take more than a month to settle any dispute involving IP or more than a week to issue a patent (if merited). I think that would be much more in line with what the Founders envisioned (especially BY the 21st century). When it comes to IP, we’re still stuck in the (inefficient) 20th century!

  44. George June 22, 2021 2:23 pm

    Most patent law is now just a messy and confusing ‘bore’ that also winds up just being a ‘bloody waste of time and money’!

    Maybe we’ll steer clear of them and move more towards trade secrets that are at least INSTANTLY beneficial, quite powerful and financially much more lucrative too (often requiring no lawyers).

  45. B June 22, 2021 5:11 pm

    @ George “Maybe we’ll steer clear of [patents] and move more towards trade secrets that are at least INSTANTLY beneficial, quite powerful and financially much more lucrative too (often requiring no lawyers).”

    As a patent attorney struggling with Alice issues on behalf of small inventors, I don’t blame you.

    Best of luck

  46. TFCFM June 23, 2021 10:21 am

    Anon@#42: “I asked you MY question – NOT for you to ‘explain’ a question that I did not ask.

    The only question mark in your entire post @#29 is at the end of the question that I quoted at the beginning of my reply @#37.

    But please digress and distract further if you don’t like the explanation or my conclusion.

  47. Anon June 23, 2021 11:41 am

    Your reply is simply not to my question, as you moved the goal posts in your reply (as I have already pointed out).

    I am not the one digressing, and — yet again — your game being called out has nothing at all to do with my “liking” or not your answering of a different question.

    These ‘cheap tricks’ of yours may impress your non-attorney friends. They do squat here.

  48. Anon-noyed June 23, 2021 1:03 pm

    @40

    ‘Later, when the Republicans controlled the Senate, Judge Hughes was confirmed 98-0.’

    Once again, you have been caught in a lie.

    On February 7, 2013, President Barack Obama nominated Hughes to the Federal Circuit on January 7, 2013. He received a hearing before the Senate Judiciary Committee on June 19, 2013, and was reported to the floor of the Senate on July 18, 2013, by voice vote. The Senate confirmed his nomination on September 24, 2013, by a vote of 98–0. He received his commission on September 24, 2013. He assumed office on September 30, 2013.

    Republicans did not regain the majority of the Senate until the 114th Congress, which started in January 2015.

    So Republicans did not control the Senate when Judge Hughes was confirmed 98-0, liar.

  49. RTFMPEP June 23, 2021 7:31 pm

    @48

    You metaphorically grabbed the back of B’s head and slammed his face over and over into the cinder block wall of truth until his face was an unrecognizable mess of bloody pulp, shattered teeth and pulverized bone.

  50. RTFMPEP June 25, 2021 6:53 pm

    @48

    The coward and liar B ran away.

  51. B June 26, 2021 9:14 pm

    @ RTFMPEP “ The coward and liar B ran away.”

    You’re just too much troll, too dishonest, and too little substance to bother with

    @ anon-noyed “ Republicans did not regain the majority of the Senate until the 114th Congress, which started in January 2015.”

    Oh, I clearly made a mistake on who controlled the senate in 2013.

    That said, since the Dens controlled the Senate at the time at issue, then the Dems were either homophobic or DuMont was unacceptable to the Dems for reasons having nothing to do with DuMont’s sexuality.

    So, were the Senate Democrats homophobic in 2010-2013?

  52. Anon June 27, 2021 7:30 am

    … and to close the circle:

    https://www.ipwatchdog.com/2021/06/23/la-cour-dappel-de-labsurde-court-appeals-absurd/id=134880/

    Let’s see the Liberal Left sycophants actually engage on point…

  53. RTFMPEP June 27, 2021 2:02 pm

    @Beeyotch

    “You’re just too much troll, too dishonest, and too little substance to bother with”

    Yet you responded to my post.

    I am living rent free in your head and ejaculating all over the worthless lump that passes for your brain.

  54. Anon June 27, 2021 5:45 pm

    I suppose that you thought that to be a clever response there, my MPEP sycophant, but had you bothered at all to read the contents (and the contents at the link), you would not be so “jubilant.”

    You have come out on the short end of the stick here.

    Yet again.

  55. RTFMPEP June 29, 2021 3:15 pm

    @54
    You forgot to post as B.
    You have had your face slammed into the cinder block wall of truth yet again.

  56. Anon June 29, 2021 4:02 pm

    LOL,

    You make an assumption that is simply unwarranted.

    I am not “B” – so there is no “forgetting.”

    Also, it is clear that you have not yet read (or if read, have not understood) the cross linked items – as if you had read them, you would not be responding so.

    As it is, I merely agree with B – and particularly so on the points here in which you are just not as clever as you may want to think of yourself.

  57. RTFMPEP July 3, 2021 3:00 pm

    ‘I am not “B”’

    You doth protest too much.

  58. Anon July 5, 2021 10:19 am

    RTFMPEP,

    Not at all – I merely correct an error that you seem intent on making.

    By the way, “B’s real identity” is known (I am not sure if you are aware of that).

  59. The Ghost July 23, 2021 7:49 pm

    In the end no one will hear the screams.

  60. Mark Tornetta September 2, 2021 6:40 pm

    Anon –
    you asked for this file in another post.

    Please share it. Please let me know if you can read the file.

    https://drive.google.com/file/d/1EIJ-6PhP8JW0kb6tawqx1rp_GXsDTT8N/view?usp=sharing