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Vidal Agrees Eligibility Needs More Clarity in Senate Judiciary Committee Questioning of Two IP Nominees

“I know that there were policies set forth, including on 101, on patent eligibility. I think that’s an area that’s always deserving of attention because the law is not set…so that is something I would certainly always revisit to make sure that any guidelines are consistent with the law—they are right now—and that they’re promoting innovation.” – Kathi Vidal

Today, the full Senate Judiciary Committee held a hearing to question two key IP nominees: Judge Leonard Stark of the of the United States District Court for the District of Delaware, who was nominated to replace Judge Kathleen O’Malley on the U.S. Court of Appeals for the Federal Circuit (CAFC); and Katherine Vidal, the nominee for Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO). IPWatchdog has previously reported on the qualifications of both candidates and what their appointments might mean for IP law and practice going forward.

While neither nominee made any particularly earth shattering statements, as is often the case in such hearings, Senator Thom Tillis (R-NC), a vocal IP advocate, said he was heartened by Vidal’s acknowledgement that it has become “very difficult to understand the contours of [patent eligibility] law.” Vidal also stated that the current USPTO guidelines on eligibility, which were revised by former USPTO Director Andrei Iancu to provide more clarity, are consistent with the law right now.

Vidal: Yes, 101 Needs Clarity

Vidal was part of a panel of five, with the other four nominees being judicial candidates. While much of the questioning was focused on the judges—particularly the nominee for United States District Judge for the Southern District of New York, Dale Ho, who came under fire for some allegedly partisan tweets he made—Vidal was questioned by a number of senators, with Tillis and Senator Chris Coons (D-DE) reserving all of their questions for her.

“I come here prepared for the challenges we face,” Vidal said in her introduction. “We can build more predictability so that inventors, creators and investors will have more confidence.” Vidal added that she will be guided by three principles if confirmed: 1) to work in the best interests of the United States and to advance U.S. innovation; 2) to further strengthen the patent and trademark system by improving patent quality and the integrity of the trademark register; and 3) to maintain the United States as an innovation world leader by engaging with all stakeholders, Congress, the Commerce Departments, other government agencies and international allies.

Senator Chuck Grassley (R-IA) began the questioning of Vidal by asking her what she sees as  the biggest issues with the current patent system, and specifically, which policies of previous patent office administrations she would keep in place and which she would change?

Vidal acknowledged the widely touted reforms implemented by former USPTO Director Andrei Iancu on patent eligibility guidance for examiners and said that she would continue Iancu’s focus in this area. She explained:

In terms of what happened in the prior administration, I know that there were policies set forth, including on 101, on patent eligibility. I think that’s an area that’s always deserving of attention because the law is not set; every single Federal Circuit judge has said it’s very difficult to understand the contours of the law, so that is something I would certainly always revisit to make sure that any guidelines are consistent with the law—they are right now—and that they’re promoting innovation.

Senator Patrick Leahy (D-VT) next asked Vidal about the pharmaceutical industry’s practice of creating “patent thickets” around biologics drugs to delay entry of biosimilars, which Leahy said the Food and Drug and Administration has been “raising the alarm about” recently. President Biden recently wrote to the USPTO raising several areas of concern on this topic, and Leahy argued that such practices cause higher drug prices for U.S. consumers. Asked if she agreed with the FDA that this is a problem, Vidal said she is aware of all of the concerns about patent abuses and that one thing the USPTO can do is to “ensure we’re always issuing the highest quality patents. What I’ve heard about patent thickets is they involve follow on patents that add marginal value – certainly I’d work on strengthening the value of IP.”

Leahy was also the first to raise the specter of Fintiv discretionary denial practice at the Patent Trial and Appeal Board (PTAB), which has become a hot topic. Leahy said that discretionary denial practice is suspect considering that district court trial dates are delayed 94% of the time. “Part of the problem is the PTO’s willingness to defer to a district court’s incorrect trial date,” Leahy said. “Can you think of any other agency that’s basing decisions on data that’s wrong 94% of the time?”

Vidal responded that she has been on both sides of PTAB proceedings and understands the frustration, but noted that “there is a way to get around Fintiv by stipulating that you’re not going to rely on the same art in district court.” (See Sotera Wireless, Inc. v. Masimo Corporation, Paper 12, IPR2020-01019 (December 1, 2020)). This is something IPWatchdog CEO and Founder Gene Quinn pointed out earlier this week and hoped Vidal would mention in today’s hearing. Ultimately, Vidal said that if confirmed she would want to look at Fintiv more closely and work with Leahy and others to see if more can be done.

Tillis focused his questions solely on Vidal, as did Coons. Tillis told Vidal that he liked her answer to Grassley on the contours of current eligibility jurisprudence, which Tillis characterized as being “in a shambles right now.” Given her acknowledgment of the state of the law, Tillis asked if she would support legislative reforms to patent eligibility law to provide greater clarity, and Vidal again said that she agrees we need more clarity “so inventors will be incentivized to invent and investors will be incentivized to invest.” Whether that comes via legislation or whether the Supreme Court takes a case, “I believe that clarity is warranted,” Vidal added. “It’s a complex issue when it comes to defining things like abstract ideas and it’s an issue I’d like to work with you on.”

Tillis also asked Vidal about changes to PTAB proceedings, saying that the past administration’s reforms “have rebalanced the PTAB so it’s no longer a death squad.” Tillis said his support for Vidal’s nomination is going to be contingent in part on her continuing these policies and asked if she would commit to do so. While she essentially skirted the question, restating her understanding of the issue and her desire to engage on potential reforms, Tillis asked her to follow up more definitively in written responses.

Senator Amy Klobuchar (D-MN) asked Vidal how the PTO can strengthen post grant review while “preventing some well-financed companies from abusing the process to impose cost and delay on small innovators?” Vidal said she is aware that there are “some concerns about how the PTAB is being used” and that small entities need as much access to the PTAB as anyone else. She pointed Klobuchar to the current pro bono pilot for the PTAB that she said “will offset a lot of the cost to these smaller entities.”

Coons spoke expressly to Vidal also, and asked whether she would commit to keeping an open mind as to whether any revisions to the Joint USPTO-NIST 2019 Policy Statement on standard essential patents (SEPs) are warranted, noting that there have been recent efforts to weaken the statement, to which Vidal responded simply “Absolutely.” He also asked about her international experience and whether she would continue the previous administration’s engagement with the World Intellectual Property Organization (WIPO) and other international IP committees on protecting U.S. IP owners from state-sponsored IP theft, particularly from China. Vidal said such activities are “part of the reason I’m here today” and that “there’s a lot of progress to be made on the international front,” adding that her industry experience helped to inform her perspective on the issue: “I’ve represented U.S. industry against counterfeit and infringing goods from other countries and have found it very challenging when the laws are not balanced or fair.”

Stark: Understanding the Context

Senator Thomas Carper (D-DE) introduced Judge Stark, who is the first Delawarean to be nominated to the CAFC, recounting Stark’s professional and academic background. Carper noted that Stark has heard 2,400 patent cases, including 63 that went to trial. Patent law is of particular importance to the Federal Circuit and his expertise makes him particularly suited to the role, Carper said. Stark was confirmed by the full Senate with unanimous consent to the district court in 2010 and only 2% of his 2,100 written opinions have been reversed or affirmed with criticism. Senator Coons (D-DE) also made introductory remarks for Stark, assuring his colleagues that Stark will “hit the ground running” as a judge on one of the busiest patent courts in the country who also has sat by designation on the Federal Circuit and the Third Circuit 54 times already.

Both Senator Dick Durbin (D-IL) and Grassley asked Stark about his approach to deciding cases, which Stark, who has written more than 2,000 opinions, explained involves starting with the text to see if it is “unambiguous,” then moving to binding Supreme Court and Court of Appeals precedent if there is ambiguity. If that still doesn’t answer the questions, Stark said he may look to other non-binding circuits, and even persuasive opinions from district court judges. “If all of that doesn’t answer the question, then I will turn to other canons of statutory construction and that could include consideration of legislative history.”

Turning to IP-specific questions, Leahy asked Stark about the Federal Circuit’s recent trend of  raising the bar to prove Article III standing for IPR petitioners whether Stark agrees that judicial review is important, and that both sides should have a chance to seek judicial review before either can be estopped? Leahy also asked about the Western District of Texas hearing ¼ of the nation’s patent cases and whether it raises any issues for him, but Stark mostly evaded both questions, saying he considers cases as they come before him.

Coons noted that Stark will replace Judge O’Malley, who has district court experience as well, and asked Stark how his background will help him on the CAFC. Stark replied that he will bring with him the recognition of how challenging it is to put together a reviewable record in a patent case. “The technology is always complex, the facts are very challenging. Patent litigators often disagree with each other, so I estimate that in a typical patent case that goes to trial I make many hundreds of decisions, or even more than 1,000, and typically only a handful of those issues get appealed to the Federal Circuit, so I’ll bring an understanding of the context in which those issues arise.”

The Federal Circuit Bar Association filed comments in support of both Stark and Vidal.

Four other nominees were also questioned in today’s hearing. They were:

  • Victoria Marie Calvert to be United States District Judge for the Northern District of Georgia
  • Jacqueline Scott Corley to be United States District Judge for the Northern District of California
  • Sarah Elisabeth Geraghty to be United States District Judge for the Northern District of Georgia
  • Dale E. Ho to be United States District Judge for the Southern District of New York

 

 

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78 comments so far. Add my comment.

  • [Avatar for concerned]
    concerned
    December 1, 2021 03:55 pm

    Question #1 to Vidal: Does evidence only matter when denying the patent application?

    Question #2 to Vidal: If rejecting a patent application based on words added to s101, will the USPTO use the everyday, common meaning of those words or use legal definitions that will be kept a big secret from the patent applicant and his attorney?

    Question #3 to Vidal: Will lower court decisions always trump SCOTUS decisions when rejecting the patent applicants?

  • [Avatar for Moocow]
    Moocow
    December 1, 2021 04:13 pm

    Ms. Vidal also testified that drug companies apparently obtain patents on different-colored pills, thereby extending their monopolies. I sure hope the PTO will clamp down on all these pill-color patents under her leadership.

  • [Avatar for mike]
    mike
    December 1, 2021 09:39 pm

    This website says “[Vidal] said the current guidelines [on Section 101] at the USPTO are working, but need constant attention ‘to ensure that guidelines are consistent with the law and promoting innovation.’ Do to the brevity of her comments, she did not reconcile how the guidelines can be working when most of the judges on the Federal Circuit refuse to abide by them.”
    https://usinventor.org/kathi-vidal-uspto-nomination/

    This creates a false narrative and benefits no one. Vidal said no such thing.

    This is what the record shows her comments were:

    In terms of what happened in the prior administration, I know that there were policies set forth, including on 101 — on patent eligibility. I think that is an area that is always deserving of attention because the law is not set. It’s — it’s very it’s — every single federal circuit judge has said that — it’s very difficult to understand the contours of the law. So, that is something I would certainly — always revisit to make sure that any guidelines are consistent with the law — they are right now — and that they’re promoting innovation.

    So,
    – Vidal said the current USPTO guidelines are consistent with the law.
    – Vidal said that the law on patent eligibility is not set.
    – Vidal did not provide any commentary on whether the USPTO guidelines are working if judges at the Federal Circuit refuse to abide by them. And she couldn’t even if she wanted to. The USPTO cannot control what the Federal Circuit decides. (“While we greatly respect the PTO’s expertise on all matters related to patentability, including patent eligibility, we are not bound by this guidance.”) Cleveland Clinic Foundation, Cleveland Heartlab, Inc. v. True Health Diagnostics LLC., No. 18-1218. (2019). What Vidal did say was that every federal judge said that it’s very difficult to understand the contours of the law.
    – Furthermore, her record shows that she was counsel in the Chamberlain case and argued for patent eligibility in this petition for writ of certiorari to the Supreme Court.
    I think her experience demonstrates her awareness of the problem of patent eligibility in the courts.

    The USPTO Director’s job is to execute the law. Iancu did well in trying to clarify patent eligibility consistent with judicial precedent so that patent applicants can see what the courts consider constitutes patent eligible subject matter. Vidal agrees that Iancu’s guidelines are consistent with the law.

    So, let’s be wise here and not blame the USPTO or Vidal for confusion created by the Federal Circuit or the Supreme Court with respect to how patent eligibility is deemed in the courts. Rather than criticize Vidal, the inventor community should work with USPTO policy influencers so that when they speak to Congress (and we should speak to Congress too), Congress can abrogate the judicial exceptions on patent eligibility the courts have created that fly in the face of the People’s Congressional statutes.

    This problem was created by the courts, not the USPTO, and if the Supreme Court won’t touch it (and that is a long shot if they do), then this matter needs to be taken up by Congress.

  • [Avatar for Pro Say]
    Pro Say
    December 1, 2021 09:45 pm

    “Stark, … his approach to deciding cases involves starting with the text to see if it is ‘unambiguous,’”

    Great to hear, Judge Stark.

    Then it sounds like you’ll be one of the CAFC judges who will actually follow the unambiguous 35 U.S.C. 101:

    Inventions Patentable

    “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

    Thank you.

  • [Avatar for mike]
    mike
    December 1, 2021 10:07 pm

    From Vidal’s petition for writ or cert in the Chamberlain case in support for patent eligibility:

    This is a patent emergency. A few years ago, the Federal Circuit adopted a rule that it is now applying with abandon across technologies to strip novel inventions of patent protection right at the threshold. Invoking § 101 of the Patent Act, the Federal Circuit is declaring a wide range of inventions unpatentable, from diagnostic tools to automotive parts, credit cards to microchips. The common denominator in each is a conclusion that some aspect of the claimed invention implicates an abstract idea or law of nature, and that suffices to strip it entirely of patent protection. A patent law issue does not get more foundational than that.

    Rarely has this Court encountered such a widespread clamor to intervene and provide clarity. Multiple Federal Circuit judges (including the author of the opinion below) have begged this Court to step in. The Patent and Trademark Office (PTO) has complained that the uncertainty surrounding § 101 is making it impossible for thousands of examiners to do their jobs. The Solicitor General has lambasted the Federal Circuit’s approach and urged this Court to fix it. Just about every major industry has sought review: Manufacturing. Home appliances. Automotive. Computing. Software. Diagnostics. Medical treatments. Biotech. The root cause of all this ire and uncertainty is the Federal Circuit’s insistence once again on crafting an elaborate test that strays from—and here, contradicts—the plain text of the Act. The statute Congress passed provides that an inventor may seek patent protection for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101.

    This Court has long recognized that § 101’s expansive language contemplates implicit exceptions that prevent inventors from locking up the building blocks of scientific inquiry—natural laws, physical phenomena, and abstract ideas. This Court has crafted a test that ensures that those narrow exceptions defeat patent protection only where necessary to prevent an inventor from using a patent to preempt the basic tools necessary for others to innovate.

    The Federal Circuit has expanded the narrow exceptions to swallow the rule for vast swaths of innovation. Instead of evaluating the preemptive risk of a patent by reading the claim as a whole, as this Court has directed, the Federal Circuit reduces each claim to a single supposed point of novelty and asks only whether that one feature reflects an abstract idea, law of nature, or physical phenomenon. Wielding this test, the Federal Circuit characterizes patents as impermissible regardless of how concrete and specific the claimed invention is, and even where the patent leaves plenty of room for other inventors to devise their own particularized applications of the same underlying ideas. Thus, the Federal Circuit has expanded a narrow, text-bound exception into a barrier to patent protection that is often insurmountable and always unpredictable.

    This case exemplifies the problem. Chamberlain’s patent claims a “smart” garage door opener with features to control and monitor a garage door from afar. There is no disputing that the invention is a “new and useful … machine” within the meaning of § 101. The jury found it novel and nonobvious. Yet, the Federal Circuit declared it ineligible for patent protection. It held that the claims are directed to an abstract idea even though they describe a physical machine with specific hardware and software.

    If this Court has been waiting for the right vehicle for resolving the § 101 morass, this case is it. It satisfies all the criteria the Solicitor General has enumerated for the perfect vehicle. There is no need to wait for another erroneous decision by the Federal Circuit.

    And there is no time. Innovators are adapting their behavior right now to the Federal Circuit’s new patent-hostile regime. Investors are deciding now to withhold investments they would have made before the Federal Circuit changed the law. Waiting any longer to intervene could inflict irreparable harm on U.S. industry.

    The Court should grant this petition.

    Unfortunately, cert was denied.

  • [Avatar for MaxDrei]
    MaxDrei
    December 2, 2021 04:50 am

    On eligibility, and with Vidal’s statement that “the law is not set”, and that every Fed Ct judge admits to difficulty in following the “contours” of the law as it currently stands, it seems to me that here is an opportunity for the USPTO, under Vidal’s leadership, to step up to the plate and “set” the law in such a way that, regardless which panel of the Fed Ct hears the appeal, it will gratefully endorse the USPTO’s setting.

    Is that too much to hope for?

  • [Avatar for Night Writer]
    Night Writer
    December 2, 2021 05:55 am

    Agreeing there is a problem is not saying much about what you are going to do about it.

    Plus, there is a bit of a scary undertone here. Currently the PTO’s guidelines are wider than the CAFC for 101.

    I am not sure how this will play out. She can’t crash the patent system or her budget will dry up. So how can she cripple patents and still keep her budget?

    Probably IPRs or maybe forcing narrower claims. Not sure but at this point I’d bet that she is going to narrow the patent right but have to keep her budget up.

    Still working on what she will do. Going to be ugly.

  • [Avatar for Eileen McDermott]
    Eileen McDermott
    December 2, 2021 07:54 am

    @ mike (3) – Please note that IPWatchdog’s article includes the correct version of Vidal’s comments.

  • [Avatar for concerned]
    concerned
    December 2, 2021 09:05 am

    Mike @3: There is plenty to blame on the USPTO.

    First, the USPTO, Board and Solicitor can evaluate evidence so all parties can make a prima facia case. There is no court ruling that says they cannot evaluate evidence and the MPEP says I have a right to make my case.

    Second, the USPTO, Board and Solicitor can use the everyday and common definitions of words that were engrafted unto the statutory text. There are SCOTUS cases that state as much, unless those everyday and common words are defined elsewhere. The USPTO, Board and Solicitor have provided no such other definitions. therefore, apply the common and everyday meaning and grant the patent. You already conceded I met those everyday and common definitions.

    Third, the USPTO, Board and Solicitor can cherry pick SCOTUS case law to grant my patent over lower court case law that are cherry picked to reject my patent.

    The above points are apparently not in dispute as we keep shoving these points where the sun does not shine and we get no rebuttal, just misdirection, new examiner, change of legal theory, etc.

  • [Avatar for Josh Malone]
    Josh Malone
    December 2, 2021 10:06 am

    @mike, I am the author of the US Inventor post. I’m not clear on what your objection is. I agree with all of your observations, but don’t understand why you perceive the statement blamed Vidal or the USPTO. The Iancu eligibility guidance was the best they can do under the circumstances, and I think Vidal said she will continue that effort.

  • [Avatar for Anon]
    Anon
    December 2, 2021 10:46 am

    MaxDrei,

    Your ‘hope’ of “to step up to the plate and “set” the law in such a way that, regardless which panel of the Fed Ct hears the appeal, it will gratefully endorse the USPTO’s setting.

    Is that too much to hope for?

    is beyond pollyanna.

    We have ALREADY seen what the CAFC has said about dictates from the patent office — even before Iancu’s stewardship (revisit the Cleveland Clinic case).

  • [Avatar for B]
    B
    December 2, 2021 11:18 am

    Vidal has won two Alice-Mayo decisions – one on each side of the fence. She’s either part of the problem or fully aware how capricious CAFC caselaw is.

  • [Avatar for Curious]
    Curious
    December 2, 2021 11:55 am

    it seems to me that here is an opportunity for the USPTO, under Vidal’s leadership, to step up to the plate and “set” the law in such a way that, regardless which panel of the Fed Ct hears the appeal, it will gratefully endorse the USPTO’s setting
    You’ve been commenting for how long on US patent law? At least a decade? Yet you still don’t understand the relationship between the executive branch and the judicial branch with regard to ‘setting’ the law.

  • [Avatar for Curious]
    Curious
    December 2, 2021 12:02 pm

    Vidal has won two Alice-Mayo decisions – one on each side of the fence. She’s either part of the problem or fully aware how capricious CAFC caselaw is.
    Vidal was paid to represent her clients. If my memory serves me correctly, the patent that she argued was patent ineligible probably wouldn’t have held up post-Bilski/pre-Alice. She wasn’t going out on a limb making that argument.

    Of all the branches of government, I’m least worried about the USPTO (i.e., the executive branch). They follow their marching orders from the Federal Circuit/SCOTUS and from Congress. The USPTO could grant a patent on every patent application that crosses their threshold, but that matters little if the Courts deem them to be invalid.

  • [Avatar for concerned]
    concerned
    December 2, 2021 12:46 pm

    Curious@ 14. The USPTO granting the patent regardless of what the courts did later would be helpful to me.

    Patent limbo is holding up the whole show for reasons not apparent to people not initimately involved. Think political environment, etc.

  • [Avatar for B]
    B
    December 2, 2021 02:26 pm

    @ Curious FYI, Vidal represented The Chamberlain Group (loss) and SAP America (win) against InvestPic.

    She was victim to Chen’s outrageous misrepresentations in Chamberlain. I actually talked to her briefly on the case (I was preparing for a story) and she forwarded me to the first-chair litigator. Awesome and freaking brilliant guy. Vidal’s team in Chamberlain did everything PERFECTLY and they still lost – but only because Judge Chen had issues with the actual facts of the case and therefore manufactured new facts inconsistent with the real facts.

    Re Investpic – she benefitted from Taranto’s absolute insane and legally-illiterate trash masquerading as an opinion. A win is a win, certainly, but it was akin to kicking a hog-tied and blindfolded dog given the makeup of the CAFC panel.

    Yes, I had one of my cases mixed up, and being corrected on the issue, I believe she may be better suited for the job than I originally thought given the outrageous favoritism she received one day and outrageous reverse-favoritism the next day

  • [Avatar for B]
    B
    December 2, 2021 02:29 pm

    @ Curious “Of all the branches of government, I’m least worried about the USPTO (i.e., the executive branch). They follow their marching orders from the Federal Circuit/SCOTUS and from Congress.”

    I’m 100% sure TC3600, the PTAB, and the Solicitor have an allergy to SCOTUS opinions.

  • [Avatar for Curious]
    Curious
    December 2, 2021 03:04 pm

    Patent limbo is holding up the whole show
    Let me make a suggestion. Whatever the “whole show” happens to be, find a way to make it work without a patent.

    I don’t know if you are a football fan, but I have higher expectations of the NY Jets hoisting the Lombardi trophy in early 2022 than your patent issuing anytime in the next 5 years.

    Your best bet may be to hope that the Republicans take Congress in 2022 and one of things that they happen to take on is patent reform, which includes “fixing” 35 USC 101. However, absent a handful of members, I foresee little interest in the Republican party as to that issue. It is a niche issue in which the other side is vastly better funded, which typically equals more influence in Congress.

    To get 101 reform through Congress, I would frame the issue as 101 reform being a way to reduce the power/influence of the huge social media companies (e.g., Facebook/Meta, Google/Youtube, etc.). If one can frame 101 reform as being a way to hurt those companies, then you might get some populist-minded support from the GOP (and even some from the other side as well).

    I know the inventor community wants to sell the hurt it is experiencing because of 101 issues. However, remember what sells the best — negativity. Negative ads in politics are more persuasive than positive ads. Selling Congress on helping inventors is only go so far because inventors (while generally admired by the public) are a small constituency. However, there is a huge constituency that doesn’t like the mega-oligopolies like Facebook, Google, etc. If you can sell patent reform as a way to reduce their power, IMHO, you’ll have better traction in Congress.

    Congress is where your very best hope for getting a patent lies. You are going to get Rule 36’d within two or three days of your oral arguments. An affirmance without an opinion is going to be much, much harder to get an en banc decision or to go to the Federal Circuit. SCOTUS has little interest reviewing a non-opinion. The Federal Circuit hasn’t issued an en banc decision in a very long time.

    Absent Congressional intervention, your hopes of getting a patent are very dim. Even so, it’ll take years before Congress gets around to doing anything — if at all. Once you get sent back to the PTAB, you are going to have to reopen prosecution and keep the application pending until there is a fix from Congress — which has a good chance of not happening over the next decade or so.

  • [Avatar for concerned]
    concerned
    December 2, 2021 05:05 pm

    Curious:

    Broadway Joe should be done with those Medicare commercials on December 7, 2021 so maybe he can quarterback those Jets in 2022?

    Rule 36: We know that is a possibility and the ultimate insult this inventor can get from the patent system.

    Never touch the evidence that destroys their position, never get a legal definition although asked repeatedly, met the statutory text as conceded by USPTO plus the Solicitor never touched our SCOTUS cases while advancing lower court cherry picked decisions. And yet a Rule 36 stating all legal aspects have been already covered. That is rich.

    I know you are stating what the reality may be, not the legal aspects. I have the right attorney, if we go down, we will go down swinging with no lips surgerically planted on their a**

    I would love to be at the oral arguments to tell them to kiss my a**, but the motion would be denied I am sure.

  • [Avatar for Curious]
    Curious
    December 3, 2021 08:15 am

    I’m 100% sure TC3600, the PTAB, and the Solicitor have an allergy to SCOTUS opinions.
    What opinions are they allergic to? I would love to cite SCOTUS opinions against TC3600. What ones am I missing?

    Re Investpic – she benefitted from Taranto’s absolute insane and legally-illiterate trash masquerading as an opinion.
    Investpic involved US Patent 6,349,291. Claim 1 of that patent is below:
    A method for calculating, analyzing and displaying investment data comprising the steps of:
    (a) selecting a sample space, wherein the sample space includes at least one investment data sample;
    (b) generating a distribution function using a re-sampled statistical method and a bias parameter, wherein the bias parameter determines a degree of randomness in a resampling process; and,
    (c) generating a plot of the distribution function.

    I would have had trouble getting that allowed — even pre-Bilski. Again, Vidal wasn’t going out on a limb arguing that that was patent ineligible under 35 USC 101.

    given the outrageous favoritism she received one day
    There was no favoritism. There isn’t a judge at the Federal Circuit who would have deemed claim 1 to be patent eligible.

  • [Avatar for B]
    B
    December 3, 2021 09:23 am

    @ Curious

    All will be explained in Part IV, and you need to re-read Berkheimer as well as the CAFC’s Bilski and Alice decisions.

  • [Avatar for concerned]
    concerned
    December 3, 2021 09:43 am

    Curious @20: The author of the book “Plight of the Patentee” which my story was sought out and put in his book, also used the term allergic reaction in describing how the USPTO treat my claims. The author and B have never met and discussed my situation to my knowledge.

    In my appeal, we pointed out how Alice and Bilski used evidence to determine what was abstract: Routine, customary and well understood. That is why the USPTO, Board and Solicitor have refused to address the evidence, which is from every Medicaid authority in the nation. No authority uses my process, neither does the Administering Agency. which evidence was also presented from them.

    Many years ago I was in Mayor’s court for a seat beat infraction. I made a motion to dismiss stating the law only allows a seat beat violation as a secondary offense. I had no primary violation. The Mayor looked up the law, asked the officer if I had a primary violation (no) and then overruled me without explanation. This ruling was the Mayor’s version of Rule 36.

    On the way out of court my 9 year ago son, who was in attendance that day, stated that he thought court was supposed to be fair. Fast forward to today, he asks if my patent is being prosecuted in the same Mayor’s court.

    Ironically the Mayor is still the Mayor and I vote for him. He is not a trained professional or an attorney, so I overlooked his administration of the law toward me years ago. Now Mayor’s court has an attorney as a magistrate.

    What is the excuse for professional conduct on display in patent prosecution?

  • [Avatar for Night Writer]
    Night Writer
    December 3, 2021 10:40 am

    Most of these comments are about her character or what she has done in the past. The reality is that the Biden team pre-interviewed her and had a set of agenda items that they wanted her to do. She agreed to do them and if she doesn’t she will be fired.

    So the question is what did the Biden team tell her they wanted? Let’s not forget that this is an executive appointment of someone that serves at the pleasure of the President.

    Judging by everything else Biden has done, we can assume that the interests of SV will be tended to and that the interests of the far left (people like Lemley) will be adhered to. We should all be very afraid.

    I haven’t worked it out but she will do some nasty stuff but make sure that the applications continue as I don’t think she will want to cut the budget. But we’ll see.

    You see to my mind this person provides the perfect cover for radical change as she checks all the tick marks of qualifications (except she should be a woman of color).

  • [Avatar for B]
    B
    December 3, 2021 11:22 am

    @ Night Writer

    Well, Biden has appointed some absolutely bizarre and frightening people. Saule Omarova Is a perfect example of a person who shouldn’t be let within 1,000 yards of a government job.

    Vidal, however, I’ll give a chance until it’s clear she’s Team SV. She doesn’t need this gig, and indeed it represents a pay cut and a likely loss of a hard-earned client base.

  • [Avatar for mike]
    mike
    December 3, 2021 01:52 pm

    Josh: Your article said that “Vidal said the guidelines are working” and that “Do [sic] to the brevity of her comments, she did not reconcile how the guidelines can be working…”

    The objection is that your article possesses an expectation for Vidal to reconcile a claim you alleged that she made that the guidelines were working and with the Federal Circuit, but she didn’t say the guidelines were working, nor that they were working with the Federal Circuit. Also, the USPTO guidelines have no bearing on the Federal Circuit.

    What Vidal said was that the USPTO’s guidelines were consistent with the law right now. That is not the same as saying they are working. She in fact said that the law was not set and that the circuit judges said it is difficult to understand the contours of the law. She also said quite a bit in her petition to the Supreme Court in the Chamberlain case quoted above: “The root cause of all this ire and uncertainty is the Federal Circuit’s insistence once again on crafting an elaborate test that strays from—and here, contradicts—the plain text of the Act.” She also said that she would work with Congress to help on patent eligibility. None of these statements by Vidal agree with your statement that Vidal said the guidelines were working or with your expectation for her to reconcile how they are working when the Federal Circuit refuses to abide by them.

    If now you say that you think Vidal said she will continue that effort of Iancu’s eligibility guidance, which is “the best they can do under the circumstances,” then you should have said that. Because what you wrote creates a false narrative.

    Vidal’s experience shows she has a solid understanding of the problem with 101. The problem is the Federal Circuit’s difficulty understanding the contours of the law. Congress can remedy that. Vidal said she is open to working with Congress. So let’s not confuse the story.

  • [Avatar for Josh Malone]
    Josh Malone
    December 3, 2021 06:45 pm

    @mike, are you an inventor? I’m not tracking. Under Kappos/Lee/Iancu/Vidal, it’s not THAT HARD to get a patent. You just have to play to game. But to USE A PATENT, that’s a completely different issue. You need tens of millions of dollars and hordes of lobbyists and lawyers and journalists and academics and bureaucrats. Where are you at in the food chain?

  • [Avatar for MaxDrei]
    MaxDrei
    December 4, 2021 08:47 am

    As Mike observes at #25, “the problem” is that the judges at the Fed Ct do not understand the “contours” given them by the Supreme Ct. These “contours” are of course deliberately vague, through operation of the age-old and unassailable doctrine of judicial economy (as in every jurisdiction, the highest court intentionally delegates to the lower courts the task of putting meat on the bone).

    Mike surmises that Congress can help the Fed Ct with the problem how to do the bidding of the Supreme Court, in real cases, each with a unique fact matrix which the judges struggle to grasp. So, of course can the USPTO. And the PTO has the advantage that, unlike the politicians, it does understand both the facts and the law. If at its head the PTO has a mind that understands the problem and is strongly motivated to help, so muuch the better.

    There is no need for Congress to get involved. Those wishing it would should be careful what they push for. They might well have cause, in the end, deeply to regret having pushed in that particular direction. As far as I can see, when Congress intervenes, it only makes things worse.

  • [Avatar for concerned]
    concerned
    December 4, 2021 10:33 am

    Curious @18:
    “Let me make a suggestion. Whatever the “whole show” happens to be, find a way to make it work without a patent.”

    Way ahead of you and throughly discussed previously among the business partners. I am not much of a business mind, however, my partner was voted CEO of the year and he is also top 300 business enterprise in the nation. He is really smart, yet he freely tells everyone it took 5 presentations to understand the concept. You know, the concept that millions of working professionals and experts, many of which are attorneys, could not figure out for decades, but the USPTO/Solicitor calls mental steps to avoid the evidence. The evidence, claims and all those professionals also prove the steps cannot be performed mentally. There are 2 universities studies submitted into evidence showing this problem has escaped a long sought solution. So what excuse for rejection will be next, another lower court stab?

    Unfortunately, the patent is the only avenue. There are factors not apparent. Patent is the deal or a lot of people with disabilities get the royal shaft thanks to this wonderful patent prosecution process.

    Thank you for the suggestion.

  • [Avatar for Curious]
    Curious
    December 5, 2021 11:10 pm

    All will be explained in Part IV, and you need to re-read Berkheimer as well as the CAFC’s Bilski and Alice decisions.
    I know all about Berkheimer. Berkheimer is about evidence. Also, it is about Summary Judgment and addressing a Rule 12b6 motion, and those are not applicable to your situation.

    Let me remind you what the standard of review is for factual findings — substantial evidence. It is an exceptionally deferential standard of review. Appealing to the Federal Circuit on evidentiary matters is almost always a losing matter. Going to the Federal Circuit 101, Chapter 1: Where possible, frame the issue as a question of law.

    Also, Berkheimer does NOT require evidence. It says “[t]he patent eligibility inquiry may contain underlying issues of fact.” Notice the “may” part. Findings of fact are not necessarily a requirement — even under Berkheimer.

    the CAFC’s Bilski and Alice decisions
    …are superseded by the Supreme Court decisions. How are they going to help you?

    we pointed out how Alice and Bilski used evidence to determine what was abstract: Routine, customary and well understood.
    See above. Evidence is not required. Don’t get me wrong, I’m not advocating for this position. The Federal Circuit has created a regime where they can decide that no evidence is required. In your instance, they’ll probably say that the whole invention is abstract and therefore, there are no additional elements to be considered under Step 2B of the Alice/Mayo test.

  • [Avatar for concerned]
    concerned
    December 6, 2021 08:47 am

    If substantial evidence is not documents from every possible end user, the Administrating Agency, plus 2 university studies, what is the definition of substantial evidence? What is the definition of abstract?

    In a legal environment where no definitions are given, even upon request, the definitions are whatever it takes to get to the desired outcome.

    And forget that SCOTUS said definitions are the normal everyday definitions, unless defined elsewhere. Well defined elsewhere appears to be in their minds only….abstract!

    Now I get it!

  • [Avatar for Curious]
    Curious
    December 6, 2021 10:22 am

    concerned @28:
    Remind me again what your application number is. Its been several years since I looked it up, and I want to make sure my opinions are properly grounded.

  • [Avatar for B]
    B
    December 6, 2021 11:26 am

    @ Curious – You are 100% correct on most everything – any the “may” language is abused horribly – it’s as much a part of the CAFC’s capricious shell-game patent-killing program as anything else.

    “Evidence is not required. Don’t get me wrong, I’m not advocating for this position.”

    Yes and no. Evidence is absolutely required under the well-known/well-understood, routine, and conventional test (R12b6 not withstanding) given the language of Title 5 USC 706 (APA) – not at all required under mental steps.

    The questions you need to ask are:

    Did the Supreme Court reject Alice and Bilski under mental steps?

    What CAFC theories of rejection were overturned by the Supreme Court in the SCOTUS’ Bilski and Alice holdings?

    Is it possible the SCOTUS actually broadened patent eligibility under Bilski and Alice in some respects?

    When should Investpic apply and when should Berkheimer apply?

    When is it proper to address a claim under the mental steps doctrine and when under the well-known/well-understood, routine, and conventional test?

    What of Benson survives?

    “Findings of fact are not necessarily a requirement — even under Berkheimer.” Well, under the Berkheimer opinion, Judges Moore, Stoll, and Taranto held differently – but I’m not sure if you’re speaking to Berkheimer alone – or to Alice-Mayo cases broadly

    “In your instance, they’ll probably say that the whole invention is abstract and therefore, there are no additional elements to be considered under Step 2B of the Alice/Mayo test.”

    FYI, here you have it 100% backwards. If a claim fails 2A, then you are required to do a 2B analysis.

    But you’re also 100% correct – the CAFC’s step 2B analysis is as capricious as the step 2A analysis. A claim is abstract just because – there’s no inventive concept just because.

  • [Avatar for Anon]
    Anon
    December 6, 2021 12:32 pm

    I find it exceptionally peculiar that the TRUE (as in traditional) Mental Steps doctrine has NOT been adhered to by the Supreme Court (or the other courts).

    (where’s my sarcasm sign — as those who do know that doctrine can understand why the courts do not go there)

  • [Avatar for Curious]
    Curious
    December 6, 2021 02:41 pm

    FYI, here you have it 100% backwards. If a claim fails 2A, then you are required to do a 2B analysis.
    You didn’t read my hypothetical closely enough. I wrote “they’ll probably say that the whole invention is abstract.” If the “whole invention” is abstract, there are no additional elements to be analyzed under 2B.

    Evidence is absolutely required under the well-known/well-understood, routine, and conventional test
    This applies to additional elements. If you have no additional elements, then there is no evidence needed.

    Did the Supreme Court reject Alice and Bilski under mental steps?
    Forget the Supreme Court. Federal Circuit law applies to you and your client. If the Federal Circuit determines that your claims cover mental processes, then your claims are sunk — based upon precedential Federal Circuit case law.

    When should Investpic apply and when should Berkheimer apply?
    Berkheimer regards Summary Judgment/12b6. You need to have an answer when someone on the bench asks: why does Berkheimer apply to the USPTO’s findings? and how does it apply?

    What of Benson survives?
    If you are citing/relying upon Benson, you are going down the wrong path.

    Well, under the Berkheimer opinion, Judges Moore, Stoll, and Taranto held differently
    They did not hold differently. They held that in this particular instance in which factual allegations were made, under SJ/12b6, those factual allegations are assumed to be true. You don’t have that same fact pattern at the Board. Regardless, if the Federal Circuit deems there are no additional elements to be considered under Step 2B, they need no facts.

    Read the case law that has come out since Berkheimer. There are plenty of 12b6 cases that have come out, in which the patent owner made factual allegations, but the patent owner still lost. A 12b6 motion occurs before evidence is submitted. As such, anytime a patent owner loses on a 12b6 motion, it was without evidence being presented (beyond that which was already contained in the complaint, e.g., the patent specification).

  • [Avatar for Curious]
    Curious
    December 6, 2021 02:47 pm

    I find it exceptionally peculiar that the TRUE (as in traditional) Mental Steps doctrine has NOT been adhered to by the Supreme Court (or the other courts).
    In re Comiskey, 554 F.3d 967 (Fed. Cir. 2007) is probably what sinks a claim under some kind of a “mental process” test. If a nominal computer is claimed, then that brings in Alice.

  • [Avatar for B]
    B
    December 6, 2021 06:27 pm

    @ Curious “I wrote “they’ll probably say that the whole invention is abstract.” If the “whole invention” is abstract, there are no additional elements to be analyzed under 2B.”

    One always goes on to the 2B analysis even when the courts proclaim “there is nothing.” The Investpic decision was a perfect example.

    “This applies to additional elements. If you have no additional elements, then there is no evidence needed.”

    NO – it goes on to what is considered “abstract”

    “Forget the Supreme Court. Federal Circuit law applies to you and your client.”

    So CAFC precedent overturns SCOTUS precedent?

    “If the Federal Circuit determines that your claims cover mental processes, then your claims are sunk — based upon precedential Federal Circuit case law.”

    Why didn’t the SCOTUS reject Bilski and Alice under mental steps?

    “Berkheimer regards Summary Judgment/12b6.”

    Whether there is a dismissal under R12b6 or R57 is immaterial

    “You need to have an answer when someone on the bench asks: why does Berkheimer apply to the USPTO’s findings? and how does it apply?”

    Been there – done that – CAFC totally ignored the issue after 5 months of pondering how to best prevaricate

    “If you are citing/relying upon Benson, you are going down the wrong path.”

    Quite the opposite, actually. Benson was all about mental steps, Flook relied on Benson, and the Diehr majority rejected the mental steps doctrine Stevens so loved.

    “They did not hold differently. They held that in this particular instance in which factual allegations were made, under SJ/12b6, those factual allegations are assumed to be true.”

    You’re conflating substantive law with procedure. You can’t tell me that evidence is a material issue under R12b6 (Berkheimer) and not material under R57 (Investpic).

    “Regardless, if the Federal Circuit deems there are no additional elements to be considered under Step 2B, they need no facts.”

    They need evidence to get to 2A, and 2B is trash

    “Read the case law that has come out since Berkheimer. There are plenty of 12b6 cases that have come out, in which the patent owner made factual allegations, but the patent owner still lost. A 12b6 motion occurs before evidence is submitted.”

    And yet (lack of) evidence was still considered under Berkheimer, right?

    “. . . it was without evidence being presented (beyond that which was already contained in the complaint, e.g., the patent specification).”

    Guess who told Judge Stoll (to her utter amazement) during oral argument about Mayo’s intrinsic evidence a few months before the Berkheimer en banc decision came out – an issue not raised in the initial Berkheimer decision?

    Look – I’m not saying concerned will win – especially given that Alice-Mayo rejections issues from the PTAB have a 100% affirmation rate from the CAFC. Even when you pass every metric the CAFC has ever announced and then some, the CAFC will create another yet unforeseen test, ignore the issues entirely, or outright LIE about the factual record and procedural posture.

    I’m merely saying that, in light that there’s a 0.000% chance of winning by arguing substance, law, lack of evidence, etc. in a sea of CAFC contradictions – another approach is needed.

  • [Avatar for B]
    B
    December 6, 2021 06:39 pm

    @ Curious “In re Comiskey, 554 F.3d 967 (Fed. Cir. 2007) is probably what sinks a claim under some kind of a “mental process” test. If a nominal computer is claimed, then that brings in Alice.”

    Where in Alice or Bilski is “mental steps” mentioned?

  • [Avatar for Curious]
    Curious
    December 7, 2021 11:47 am

    Where in Alice or Bilski is “mental steps” mentioned?
    In re Comiskey is BINDING Federal Circuit precedent. Regardless, Gottschalk v. Benson talked about mental processes –> “Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”

    So CAFC precedent overturns SCOTUS precedent?
    What SCOTUS precedent is being overturned?

    Whether there is a dismissal under R12b6 or R57 is immaterial
    You don’t fall under either. So why is Berkheimer relevant to you?

    Diehr majority rejected the mental steps doctrine Stevens so loved
    Where precisely did they do that?

    You can’t tell me that evidence is a material issue under R12b6 (Berkheimer) and not material under R57 (Investpic).
    Again, you don’t fall under either. You are coming from the Board.

    I’m merely saying that, in light that there’s a 0.000% chance of winning by arguing substance, law, lack of evidence, etc. in a sea of CAFC contradictions – another approach is needed.
    I agree. But it won’t be at the CAFC. To get things to work at the CAFC, you’ll need a stellar appellant. You’ll need stellar facts. You’ll probably need Chief Judge Moore to hand select the particular case to decide en banc and you’ll need Judge Cunningham to flip to the side of reigning in the CAFC’s botching of 35 USC 101. Other than that, you are left with SCOTUS, which is unlikely to touch anything except an en banc decision by the Federal Circuit and (useless) Congress. There are no easy paths to follow — otherwise, they would have been followed a long time ago.

  • [Avatar for B]
    B
    December 7, 2021 04:07 pm

    @ Curious “In re Comiskey is BINDING Federal Circuit precedent. Regardless, Gottschalk v. Benson talked about mental processes – . . . .”

    In other words, there’s NOTHING in Bilski and Alice about mental steps.

    Now if Benson is good law, explain Enfish and McRO.

    The rest of what the state of the law is we can agree to disagree.

    .
    .
    .

    “I agree. But it won’t be at the CAFC. To get things to work at the CAFC, you’ll need a stellar appellant. You’ll need stellar facts.”

    Believe it or not, I THINK I HAVE EXACTLY THAT.

    However, I already know, without a single doubt, that the CAFC has a war on facts.

    I think we both agree the CAFC is running a dishonest game, and that there’s less than a handful of worthwhile judges left on the bench capable of realizing how stupid their collective Alice-Mayo jurisprudence is.

    My job: Politely remind them that they’re bound by SCOTUS precedent as well as due process. Remind them that Congress already wrote out “invention” (now rebranded as “inventive concept”) out of the patent law, and if they’re so invested in their collective retardation called “abstract,” “inventive concept,” and “significantly more,” they owe it to the public to provide a definition or two.

    The last person on the CAFC who tried some meaningful definitions on this was Judge Rader – good common sense approach so of course it was rejected by the majority of the CAFC.

  • [Avatar for Model 101]
    Model 101
    December 7, 2021 04:49 pm

    Crooks…they can’t be trusted.

  • [Avatar for Curious]
    Curious
    December 8, 2021 10:12 am

    Now if Benson is good law, explain Enfish and McRO.
    Enfish — not an algorithm as in Benson — also describes an improvement
    McRO — no preemption.

    Regardless, one wonders if Enfish/McRO/DDR Holdings is good law these days. If similar sets of facts showed up at a different panel, I wouldn’t be surprised by a different result. As you said, “the CAFC is running a dishonest game.”

    My job: Politely remind them that they’re bound by SCOTUS precedent as well as due process.
    What precedent are you relying upon? Diehr? How are you going to fit within the four squares of that decision?
    Your due process argument isn’t going to get you anywhere. You got due process. You got to go to the Board. You are going to the Federal Circuit. You are going to waste your precious time before the panel going down that road.

    I THINK I HAVE EXACTLY THAT.
    I found the application number. Concerned gave me a hint above that I was able to leverage to identify the application. Had I written the Request for Rehearing, I would have attacked the Board’ Prong Two analysis (it was a new grounds) — they don’t get to ignore limitations in Prong Two (which they did). Being a new grounds, Concerned could have taken the application back down below and used this opportunity to get rid of the non-essential claim language (frankly, way too much) and focus on some technical aspect. As it turns out, I was able to file an appeal on a case with Examiner Kazimi a couple of years ago on a 101 rejection and got the application allowed (we didn’t go to the Board). However, I think I had more to work with in the specification regarding the technical aspects of the claim.

    This invention has a strong ‘business method’ flavor to it. These are NOT ideal facts. To get this overturned, you’ll need to go to the Supreme Court. Past history suggests you’ll need an en banc decision … or at the very least a written decision by the Federal Circuit. God himself couldn’t get an en banc decision and I suspect you’ll get Rule 36’d.

    If Concerned goes back down, there is some hope he can work with the Examiner to get the application allowed. However, as a practical matter, what do you think his chances of the Examiner ever allowing the application if the Federal Circuit also tanks these claims under 101? Does Concerned want to make a (futile) statement or does he want these claims allowed?

    if they’re so invested in their collective retardation called “abstract,” “inventive concept,” and “significantly more,” they owe it to the public to provide a definition or two.
    You think you are the only one who has asked that question since Alice came out in 2014? They’ve left the question unanswered for how many years now. Do you really think they are going to give you the answer?

  • [Avatar for B]
    B
    December 8, 2021 12:16 pm

    @ Curious

    “Enfish — not an algorithm as in Benson — also describes an improvement”

    You’re kidding, right? Not an algorithm? EVERYTHING IN SOFTWARE IS AN ALGORITHM.

    As to “improvement,” Benson was absolutely an improvement, but we both know “improvement” is not a requirement under 101.

    “McRO — no preemption.”

    There’s just as much preemption in McRO as in Benson. Less considering I could produce a half-dozen algorithms to convert BCD to binary given a long weekend.

    “Regardless, one wonders if Enfish/McRO/DDR Holdings is good law these days. If similar sets of facts showed up at a different panel, I wouldn’t be surprised by a different result. As you said, “the CAFC is running a dishonest game.”

    On this we 100000% agree. That said, there’s no difference between McRO and RecogniCorp – both written by Reyna with Stoll on the panel – and both decisions about a month or two apart.

    No – I take that back – the RecogniCorp claims actually REQUIRE the production of an image.

    “You think you are the only one who has asked that question since Alice came out in 2014? They’ve left the question unanswered for how many years now. Do you really think they are going to give you the answer?”

    To my knowledge, I’m the only one that has openly DEMANDED it in a brief. I will give credit to James Hanrath (Berkheimer’s attorney) who mocked the CAFC’s “abstract” approach in this SCOTUS Cert. Response. That man is brilliant.

    I am also the only one who has openly mocked the PTAB and Solicitor in their inability to produce a single definition or limiting principle.

    Take my word, attorneys in big firms have great reservations in questioning the CAFC’s garbage holdings. The only attorneys so far that I’ve seen that have openly mocked certain CAFC decisions on Alice-Mayo are certain CAFC judges – Moore, Newman, Plager, Rader

    Every patent holder before the CAFC is busy asserting “my claims are more like Berkheimer and less like Investpic,” while every defendant is claiming “those claims are exactly like Investpic, and not at all similar to Berkheimer.” Meanwhile, there’s not a meaningful iota of difference between the claims while observing that Taranto was on the Berkheimer panel, wrote Investpic, and the two decisions came out two weeks apart.

    Arguing CAFC caselaw is a waste of time. It’s total trash. You might as well spend your afternoon urinating into the wind and pretending that it’s raining than pretend the CAFC knows what it’ doing.

    Our friend Profesor Sarnoff touched on the underlying issue. “Inventive concept” is a measure of creativity. So is nonobviousness. So what is the difference that makes nonobviousness the standard of patentability used around the planet and “Inventive concept” total trash – besides inept CAFC judges?

    “Inventive concept,” like its predecessor “invention,” has no grounding in reality. A claim directed to *name a technology* is abstract b/c some liberal arts major with a JD and a political appointment says it is.

    “This invention has a strong ‘business method’ flavor to it. These are NOT ideal facts.”

    Concerned’s claims look a heck of a lot like the claims in Bilski and Alice Corp, don’t they? The difference being not a single shred of evidence said claims were “well-known, routine, and conventional.” Also remember that the SCOTUS rejected the “mental steps” theory of rejection set forth by the CAFC en banc majority in both Alice and Bilski.

    Ergo, IDEAL.

    The CAFC will need some special mental gymnastics to assert that Invertpic applies but not Alice and Bilski. No doubt the CAFC will argue longer among themselves on how to avoid answering key questions than devising actual answers.

    “If Concerned goes back down, there is some hope he can work with the Examiner to get the application allowed”

    Concerned DID have an examiner who was willing to work with him. Said Examiner was REPLACED. Get it?

  • [Avatar for Curious]
    Curious
    December 9, 2021 02:08 pm

    You’re kidding, right? Not an algorithm? EVERYTHING IN SOFTWARE IS AN ALGORITHM.
    Generally, I would agree with you based upon a ‘broad’ meaning of algorithm (e.g., “a step-by-step procedure for solving a problem or accomplishing some end”). However, this is from Diehr:
    We defined “algorithm” as a “procedure for solving a given type of mathematical problem,” and we concluded that such an algorithm, or mathematical formula, is like a law of nature, which cannot be the subject of a patent.
    As such, the Supreme Court has cabined the term “algorithm” to mathematical problems. As to what qualifies as a “mathematical problem” is probably up for a debate, but I can argue that not ‘everything in software’ is a mathematical problem.

    There’s just as much preemption in McRO as in Benson. Less considering I could produce a half-dozen algorithms to convert BCD to binary given a long weekend.
    I don’t disagree. Benson was a terrible decision drafted by a wacky justice who probably had a 3rd-grader’s understanding of the facts.

    no difference between McRO and RecogniCorp
    Sometimes the difference lies in who is arguing the case and the arguments they make. I listened to some recorded 101-related oral arguments at the CAFC. I have no recollection of what cases, but some of them were BAD — like OMG, I cannot believe how badly prepared they were.

    What I recognized then, and I’ll offer it up as a suggestion is don’t let them lead you on some wild goose chase.

    Concerned’s claims look a heck of a lot like the claims in Bilski and Alice Corp, don’t they? The difference being not a single shred of evidence said claims were “well-known, routine, and conventional.”
    What evidence was there in Bilski and Alice? But before I get there, I must correct you. The issue isn’t whether the “claims were ‘well-known, routine, and conventional.” Rather, the issue pertains to whether the additional elements, alone or in combination, represent well-understood, routine, conventional activity. The Board found your additional elements to be “computer processor,” “computer readable media,” “computer network,” “display system,” and “electronic data record.” Those elements, either alone or in combination, don’t help you.

    Getting back to Bilski/Alice, they didn’t address the issue in Bilski. As to Alice, they didn’t cite to evidence. They just declared everything to be generic computer functions. Alice does not help your cause.

    Also remember that the SCOTUS rejected the “mental steps” theory of rejection set forth by the CAFC en banc majority in both Alice and Bilski.
    Where did they do that? I need a pinpoint cite. Don’t overlook this question. I really want to know where SCOTUS rejected the mental steps theory.

    To my knowledge, I’m the only one that has openly DEMANDED it in a brief.
    Walk up to them at oral arguments and throw down your gauntlet (or gloves) and it still won’t matter. They’ll say they don’t need to define the metes and bounds because your claims are very similar to Alice/Bilski (right?). If you go down that path, they’ll ask you why X, Y, and Z precedential Federal Circuit decisions don’t apply to your claims. As you attempt to distinguish these cases, your 15 minutes will fly by in what seems to be a heartbeat (this is just one example of a ‘wild goose chase’ I alluded to above).

    Every patent holder before the CAFC is busy asserting “my claims are more like Berkheimer and less like Investpic,”
    No. If one is arguing Berkheimer, they are (or should be) arguing about the complaint. A 12b6 motion is about the sufficiency of the complaint. It is about the factual allegations made therein that can overcome a 101 rejection.

    Arguing CAFC caselaw is a waste of time.
    Then expect to lose. The CAFC cares about CAFC caselaw — even though some at the CAFC recognize it is an irreconcilable mess. What you are asking for likely requires an en banc decision. I don’t see that happening.

    The CAFC will need some special mental gymnastics to assert that Invertpic applies but not Alice and Bilski.
    You lost me here. If Alice/Bilski applies, you’ve lost. Moreover, these so-called “special mental gymnastics” are a specialty of the CAFC. And they always have Rule 36 to fall back on if things get too difficult.

    Concerned DID have an examiner who was willing to work with him. Said Examiner was REPLACED. Get it?
    Meh. As best I can tell, the Primary Examiner (Kazimi) wrote the Examiner’s Answer instead of the initial examiner. It is unusual, but I wouldn’t put much stock into it.

  • [Avatar for B]
    B
    December 9, 2021 11:47 pm

    @ Curious “Generally, I would agree with you based upon a ‘broad’ meaning of algorithm”

    Everything in software is an algorithm based on any meaning of algorithm that actually means algorithm. NO EXCEPTIONS.

    “Rather, the issue pertains to whether the additional elements, alone or in combination, represent well-understood, routine, conventional activity.”

    We are going to need to disagree. The statement is something like “all these computer functions are well-understood, routine, conventional activities previously known to the industry.” This doesn’t speak only to the “additional elements” but ALSO to the individual business-related functions that are part of the underlying business method.

    However, I think that you’re missing the point. When you’re faced with “mental steps” everything is abstract even if the algorithm is new and non-obviousness. Don’t believe me? Read Investpic.

    “Where did they do that? I need a pinpoint cite.”

    The CAFC decisions below were rejections on mental steps. The SCOTUS decisions are not mental steps, and indeed the SCOTUS needed only deny cert. if mental steps was their goal. You need to follow the procedural posture, rather than look to a “pinpoint citation” in a single case.

    “They’ll say they don’t need to define the metes and bounds because your claims are very similar to Alice/Bilski (right?).”

    concerned’s claims are very much like Bilski or Alice EXCEPT there no evidence they’re “abstract” w/i the meaning that they’ve ever been done before. In fact, concerned had 55 documents in his favor, which is why the PTAB went “mental steps” on him.

    That said, an abstract idea is anything they say it is. An inventive concept is anything they say it is. Unlike nonobviousness, which has its roots in objective reality, the current Alice-Mayo regime is an exercise in capriciousness.

    “You lost me here. If Alice/Bilski applies, you’ve lost.”

    Just the opposite. There’s actually an objective basis to step one of Alice and Bilski. This doesn’t mean the CAFC will actually apply Alice/Bilski.

    “And they always have Rule 36 to fall back on if things get too difficult.”

    I expect (40%-60% chance) the CAFC will apply R36 unless one or two key judges are on concern’s panel. So much easier than thinking.

    BTW, In re Villena was the FIRST Alice-Mayo appeal from the PTO that wasn’t struck down under R36.

    “As you attempt to distinguish these cases, your 15 minutes will fly by in what seems to be a heartbeat (this is just one example of a ‘wild goose chase’ I alluded to above).”

    Been there – done that. The first time I argued the need for evidence and was LITERALLY shouted down by three judges – even though two of said judges recently penned opinions (McRO and Enfish) that were evidence based and too stupid to realize it.

    The second time, the CAFC just lied about everything in the opinion – but I felt I handled myself well during oral – with the exceptions of a couple of questions/remarks from Judge
    Prost that were so stupid I didn’t know how to respond. Like, yes, there’s an improvement, but its not the right sort of improvement.

    Arguing caselaw and merits is a losing proposition – even if you have a case that can’t be lost based on every iota of law and fact.

    One more time – I’m not saying I’ll win this case. To concerned, this is very important from a business perspective. To me this is important not just b/c I’m an egocentric attorney, but because

  • [Avatar for B]
    B
    December 9, 2021 11:48 pm

    One more time – I’m not saying I’ll win this case. To concerned, this is very important from a business perspective. To me this is important not just b/c I’m an egocentric attorney, but because I hate with a passion the dishonesty heaped upon honest people by dishonest jurists

  • [Avatar for concerned]
    concerned
    December 10, 2021 12:40 pm

    And let me state that this patent is not about me. Any of my friends and family members will readily tell you that fact.

    This patent is about getting people with disabilities their rightful benefits while saving the States some monies.

    These people were denied their benefits without due process because a third party made application that contain errors and the authorities never caught the error or notified the person of the error. No hearing and no correction even though the law requires it.

    As for going back down to the USPTO, forget it. I think the playing field is not level. We stand and fight right here.

  • [Avatar for Curious]
    Curious
    December 10, 2021 12:48 pm

    Everything in software is an algorithm based on any meaning of algorithm that actually means algorithm. NO EXCEPTIONS.
    The Supreme Court determined what qualifies as an “algorithm.” Personally, I’m going with their definition — BECAUSE IT IS NARROWER. I prefer not having my invention being described as an algorithm just because it is being performed on software.

    This doesn’t speak only to the “additional elements” but ALSO to the individual business-related functions that are part of the underlying business method
    Step 2B applies to the additional elements, which they listed on page 14 of the Decision on Appeal. None of these included your individual business-related functions because the Board determined that they are part of the abstract ideas.

    However, I think that you’re missing the point. When you’re faced with “mental steps” everything is abstract even if the algorithm is new and non-obviousness.
    I haven’t missed the point — “everything is abstract” is the point. Berkheimer doesn’t save you when the Board/CAFC declares everything to be abstract except for “computer processor,” “computer readable media,” “computer network,” “display system” and a data record on a computer. This is how they are going to screw you over. They are going to say that most of your 14 steps are abstract ideas and what isn’t abstract is conventional.

    The CAFC decisions below were rejections on mental steps. The SCOTUS decisions are not mental steps
    Wrong. Read Benson 409 US 67: “Phenomena of nature, though just discovered, MENTAL PROCESSES, and abstract intellectual concepts are not patentable.” Benson gives the CAFC cover for anything they want to do with regard to mental processes.

    concerned’s claims are very much like Bilski or Alice EXCEPT there no evidence they’re “abstract” w/i the meaning that they’ve ever been done before
    Whether they’ve been done before is immaterial as to whether they are directed to abstract ideas. Being “new” doesn’t save something that has been deemed to be an abstract idea.

    In fact, concerned had 55 documents in his favor
    Newness does not negate abstractness.

    That said, an abstract idea is anything they say it is. An inventive concept is anything they say it is. Unlike nonobviousness, which has its roots in objective reality, the current Alice-Mayo regime is an exercise in capriciousness.
    And to quote Yoda, “that is why you [will] fail.” If the CAFC said that the invention in Yu v. Apple is an abstract idea, them saying that your invention is directed to an abstract idea is a piece o’ cake.

    There’s actually an objective basis to step one of Alice and Bilski.
    No. To repeat what you just wrote — “an abstract idea is anything they say it is.” Also, Alice and Bilski have not be cabined by the Federal Circuit. The CAFC could have cabined them to a “fundamental economic practice long prevalent in our system of commerce.” They didn’t. Once that genie has been let out of the bottle, you’ll need an en banc decision to get it back in.

    I expect (40%-60% chance) the CAFC will apply R36 unless one or two key judges are on concern’s panel. So much easier than thinking.
    I think you’ll get R36’d even if you have a great panel. Reversing the 101 rejection on these claims would reset the entirety of 101 jurisprudence at the CAFC. That isn’t happening. Period. Full-stop.

    In re Villena was the FIRST Alice-Mayo appeal from the PTO that wasn’t struck down under R36.
    Villena involved better claims. In those, there was at least some substantial interaction with a computer-generated display. Ultimately, however, it was 5 page decision with 2 pages of so-called analysis. At best, you can expect the same from this case. It would take a motivated clerk 60-90 minutes to drafting a new decision in this case using Villena as a template (and 60-90 minutes is very generous).

    Arguing caselaw and merits is a losing proposition
    If you are going in with that mindset, you are guaranteed to lose.

    To concerned, this is very important from a business perspective.
    If Concerned is serious about his business, then why does he want to save these claims? File a CIP. Add in some technological aspects to the specification — at least enough to get around 101. Find a way to get it classified into another art unit. Find someone who can write halfway decent claims. What single entity performs all of these steps? Could a competitor design around these claims? BTW — the answer to that last question is: easily.

    There are other/better paths to go down than symbolically immolating oneself before the CAFC.

  • [Avatar for concerned]
    concerned
    December 10, 2021 06:16 pm

    Curious are you suggesting that something new does not save the claims even if those claims solve a problem that no one on earth has solved beforehand?

    If that is what you are saying, why solve any problems or have a patent system?

    It is funny that you state someone can easily design around my claims. I have been in my field for 45 years. I would love to see how that person does it and solves the problem. In fact, the person everyone goes to see his seminars could not solve this problem, he is one of the 2 university studies we submitted, and you make the statement the work around is easy. You are in the wrong profession.

  • [Avatar for concerned]
    concerned
    December 11, 2021 05:18 am

    I certainly learned a lot between the exchanges of B and Curious. It reaffirmed the opinion that there is no rule of law.

    Congress writes a statute. The Supreme Court adds undefined words and calls “abstract” routine, conventional and well understood in Alice. The CAFC adds their own version of the law and the USPTO does whatever to include switching examiners and theories. Who is the authority?

    Sure, I could do everything Curious suggests and possibility overcome those current rejections. Then I would meet “new and improved” rejections and be right back where I started from. Then overcome those “new and improved” rejections just to get “newer and more improved” rejections. In retrospect, my claims were dead on arrival no matter what the law really says, what arguments are advanced and what problem was solved. Repeating, no matter what problem was solved. A patent system that does not care what problem was solved.

    This patent prosecution reminds me of the M*A*S*H* episode “Death takes a Holiday.” A solider is hit by a sniper bullet and the solider is basically dead on arrival to the MASH unit at 9:30pm on Christmas Day. However, Hunnicutt, Pierce and Houlihan feel no solider, with a wife and small children, should be remembered as dying on Christmas Day. Despite the doctors best efforts, the solider dies at 11:25pm on Christmas Day.

    Hunnicutt wanted to make one final effort to keep the solider alive at 11:25pm in an attempt to get another 35 minutes. Hunnicutt was talked out of it by Pierce as the solider had been through enough.

    I have been pursuing this patent for 7 years. Evidence does not seem to matter, words to the law can be added and not defined, anything and everything goes to reject this patent. It was dead on arrival because it was told to be dead on arrival.

    We make our stand here and now with CAFC and possibly the Supreme Court. We either get the patent and make it to Dec 26th (mission accomplished), or the efforts die at 11:25pm, enough is enough. No more going back to the USPTO and resuscitating this effort for another 7 years in an environment with no rule of law and anything goes.

  • [Avatar for Pro Say]
    Pro Say
    December 11, 2021 12:34 pm

    Curious: “I think you’ll get R36’d even if you have a great panel. Reversing the 101 rejection on these claims would reset the entirety of 101 jurisprudence at the CAFC. That isn’t happening. Period. Full-stop.”

    Sadly for my fellow inventor, this is more likely than not.

    But — if anyone can return the CAFC to the eligibility jurisprudence that SCOTUS intended with Alice / Mayo — B can.

    concerned: “We stand and fight right here.”

    As. Would. I.

    “File a CIP. Add in some technological aspects to the specification — at least enough to get around 101. Find a way to get it classified into another art unit.”

    This is excellent advice concerned. I’d take it . . . while continuing the fight at the CAFC.

    Why not do both my friend?

  • [Avatar for B]
    B
    December 12, 2021 10:21 am

    @ concerned “Curious are you suggesting that something new does not save the claims even if those claims solve a problem that no one on earth has solved beforehand?”

    Actually, that is the case under the “inventive concept” standard. Further, claims can actually have an inventive concept so long as its the ‘right sort’ of inventive concept.

    That’s CAFC logic – not SCOTUS logic. Absolutely IDIOTIC, but it’s the reason you can’t argue CAFC caselaw.

  • [Avatar for concerned]
    concerned
    December 12, 2021 04:12 pm

    Pro Say:

    Thank you for chiming in and for your ongoing support.

    Not going back down to the USPTO for the same reason I did not go to Common Pleas Court to overrule the seat belt ticket when the Mayor tossed the law in Mayor’s Court that favored my case.

    Absolutely no confidence in the process, rule of law, and I will not dignify their actions by trying to go around their questionable actions.

    The CAFC cannot Rule 36 me, I really do not need them and those who embrace their kind of justice. The CAFC can Rule 36 those people with disabilities who never received a hearing because a third party filled out their application wrong and who may be now getting screwed a second time over.

    We stand and fight right here, win or lose.

  • [Avatar for B]
    B
    December 12, 2021 07:01 pm

    @ Curious “If you are going in with that mindset, you are guaranteed to lose.”

    Funny – you’re the one telling me I’m going to lose anyway.

    I’m using different arguments from the arguments that have failed 100% of the time in the past. I mean, I could try to argue Berkheimer over Investpic, but that hasn’t worked any time for anyone in the last three years.

    “Villena involved better claims. In those, there was at least some substantial interaction with a computer-generated display.”

    Villena passed every single metric to date spewed by the CAFC to get passed Alice-Mayo and still lost. So did Chamberlain and a number of other cases. The majority of the CAFC is a dishonest and incompetent lot bent on using a standard that relies on words with non-existent meanings.

    It’s a rigged game.

    @ Pro Say “But — if anyone can return the CAFC to the eligibility jurisprudence that SCOTUS intended with Alice / Mayo — B can.”

    I appreciate the confidence, but it’s not a fair test. There are no right and wrong answers.

  • [Avatar for Anon]
    Anon
    December 13, 2021 10:47 am

    I value B’s real world efforts that continue to shine a bright spotlight on the problem that the court is itself creating.

    It’s one thing for those of us in the blogosphere to keep the ‘torch burning,’ but I wanted to applaud B (and concerned) for doing that and actively fighting in the courts (even if it does appear to be a losing effort).

  • [Avatar for concerned]
    concerned
    December 13, 2021 01:31 pm

    Anon: Thank you for your comments.

    Sad thing: If the USPTO, Solicitor or the courts had the guts to give us a definition of significantly more, inventive concept or non-abstract, I am sure we would meet those definitions in the affirmative. The PTAB already said we met the common words of the statutory text and we would meet any new definitions too.

    It is also upsetting that the USPTO, PTAB and Solicitor make statements that are just not true.

    For example: My process is allegedly mental steps among several misstatements.

    You are an attorney and fully understand client/ attorney privilege. I as a third party cannot “mentally” waive your client’s privilege. Neither can anyone “mentally” waive a father/mother or disabled adult child’s consent in my field.

    One of my inventive steps, if I may, is how I get around consent via a physical network with a “new” approach spelled out in the specifications.

    Both examiners never mentioned mental steps because they actually read the official record and knew the details.

    B argues that my steps cannot be done mentally but does truth, facts and evidence really matter?

  • [Avatar for Curious]
    Curious
    December 13, 2021 02:32 pm

    Curious are you suggesting that something new does not save the claims even if those claims solve a problem that no one on earth has solved beforehand?
    Under the current case law, newness does not save something from being deemed directed to an abstract idea — particular when the newness is part of the abstract idea.

    It is funny that you state someone can easily design around my claims. I have been in my field for 45 years. I would love to see how that person does it and solves the problem.
    All one has to do is eliminate just one step — forget a step, just one word. Actually, eliminating is a over doing it — just do it differently than than the manner claimed. Any claim as long as your claim 1 can be designed around.

    Evidence does not seem to matter
    Evidence is of little import in today’s 101 regime. This is why 12b6 motions (which are prior to the evidentiary stage of a trial) get granted at the district court level.

    Why not do both my friend?
    I wouldn’t want to get stuck with a precedential CAFC decision with my name on it (on the wrong end) as I tried prosecuting before the USPTO on the same (or similar) application. Like it or not, it is easier to prevail in Tech Center 3600 than it is at the Federal Circuit.

    Funny – you’re the one telling me I’m going to lose anyway.
    You are, but if you want even a sliver of a hope of prevailing, you need to play by their rules and argue their case law. Don’t get me wrong, it would be my fondest wish to have you prevail. That would make my life so much easier.

    It’s a rigged game.
    No disagreement, but its their game and their rules. Even rigged games can be won.

    We stand and fight right here, win or lose.
    Then you are in it for the fight — not the win.

  • [Avatar for concerned]
    concerned
    December 13, 2021 05:59 pm

    Curious: I am in this fight because it is the right thing to do: Stand up to them, like the Boston Tea Party. Did anyone really think we would beat the British?

    Actually I would not mind having a CAFC or SCOTUS decision with my name on it, even if the decision is a losing one. It would be an honor and privilege going to the mat for people with disabilities.

    It also seems to me the abstract idea is the routine processing of SSDI benefits, not the actual correction of errors by professionals.

    Airplanes crashing is not the abstract idea, the routine and safe flight of airplanes would be routine, conventional and well understood.

    Professionals do not go to work with the abstract idea of crashing airplanes or making benefit errors.

    New twists to solving a problem already solved may be abstract, but not a new solution to a problem that never had a solution. Is that not what Alice stated?

  • [Avatar for Curious]
    Curious
    December 14, 2021 11:17 am

    Curious: I am in this fight because it is the right thing to do: Stand up to them, like the Boston Tea Party. Did anyone really think we would beat the British?
    You aren’t the only one who has taken this fight to the CAFC — and you are both outgunned and outmanned as compared to those who have already failed to breach the ramparts of the CAFC.

    If you think you need just two members of the CAFC to agree with you, you would be wrong. You need 9 members of the CAFC to agree with you. As I have written above, a decision in your favor would be contrary to much of prior Federal Circuit precedential decisions since Alice. This CANNOT be accomplished absent an en banc decision. With that in mind, you have to ask yourself: Is my invention that kind of invention that 9 members of the CAFC want to hold up as the kind of invention that they need to reverse 8 years of post-Alice CAFC decisions over? Every inventor loves their own ideas — I get that. However, in the grand scheme of things, your invention isn’t going to engender the kind of “OMG, I cannot believe they invalidated that” reaction that will justify the CAFC in overturning that case law. Remember, an en banc CAFC decision will almost assuredly get appealed to SCOTUS. Do you think you can find 5 Supreme Court justices that would fall in love with your invention so as to retool their own jurisprudence?

    So, the end result is that you don’t need 2 CAFC judges. You need 9 plus 5 at SCOTUS to win. Moreover, you need to prevail where everybody has failed. With this in mind, if you play by the CAFC’s rules (i.e., their own precedence), you only need 2 CAFC judges. However, B has already indicated that this isn’t his approach.

    As I also mentioned above, you could get a perfect panel and still get Rule 36’d. You could have the panel buy everything that B is selling, but since they know that they cannot get the 9 (for an en banc decision), then they are just going to punt and wait for a better case/better makeup at the CAFC.

    the routine and safe flight of airplanes would be routine, conventional and well understood
    The correction of errors during flight is routine, conventional, and well understood. Regardless, the terms “routine, conventional, and well understood” refer to the additional elements. Your error correction has been deemed to be the abstract idea. This is why this error correction being non-routine and unconventional (i.e., the evidence you cling to) doesn’t matter.

    New twists to solving a problem already solved may be abstract, but not a new solution to a problem that never had a solution. Is that not what Alice stated?
    No. In Alice, they cited Diehr as involving “[an abstract] equation in a process designed to solve a technological problem in ‘conventional practice.'” You aren’t solving a technological problem.

  • [Avatar for B]
    B
    December 14, 2021 11:54 am

    @ Curious “If you think you need just two members of the CAFC to agree with you, you would be wrong. You need 9 members of the CAFC to agree with you.”

    FYI, if we win on case law – only two of three. The PTO will not likely go en banc. If we win on due process, six. Bilski was determined based on six.

    The point is to force judges to provide definitions and limiting principles. Granted – most of the CAFC will argue among one another HOW they will avoid answering the questions far longer than they will argue how they will answer the questions.

    If goes to the SCOTUS, oh joy, but that’s a long, long shot.

    However, let me predict: The SCOTUS will blame the CAFC for it’s lack of sanity and say “inventive concept” is nonobviousness or a prima facie showing of nonobviousness

    With that stated, your input is valued even if we disagree on a few issues. I don’t need people to agree with my every word. I need people like you to make thoughtful and challenging statements. I don’t learn otherwise

  • [Avatar for concerned]
    concerned
    December 14, 2021 12:23 pm

    Curious: You make a lot of sense. Really.

    What is difficult to understand: If the CAFC, USPTO, and Solicitor have all this jazz going for them, why not give us a definition and look at the evidence to see if the process really is abstract.

    If a casino makes money guaranteed by math, why deal off the bottom, palm cards, short the shoe of high cards, etc.?

    The patent authorities actions look so suspicious for a position that is allegedly so ground in law. And no doubt, bigger guns have failed.

    I will not go back down to the USPTO, play their game and compromise myself. I was taught that I can only lose my name and intregity if I voluntarily give them away.

    If I lose, so be it. It now is on them. I really do not need to win at any cost, I will enjoy my retirement knowing I discovered the solution and a group of people blocked my efforts for reasons not clear.

  • [Avatar for Curious]
    Curious
    December 14, 2021 02:33 pm

    BTW — the number is not 9 — it is 7. 12 CAFC judges so 7 is needed for a majority.

    FYI, if we win on case law – only two of three.
    CAFC precedent counts as case law. You’ll need to overrule that case law to prevail. That requires an en banc decision.

    If we win on due process
    Due process isn’t going get you there. Also, the Federal Circuit is likely going to come down hard on you for not making any of these due process arguments down below. You don’t get to make new arguments at the Federal Circuit. Successful appeals to the Federal Circuit need to be set up properly before the appeal even takes place. The Board’s new ground of rejection could have saved you, but the Request for Rehearing (based upon my quick scan) didn’t address due process issues. As such, they Federal Circuit may dismiss those arguments as being waived.

    The point is to force judges to provide definitions and limiting principles.
    That is what Rule 36 is there for — so they don’t have to. Even when they’ve provided a written decision, they haven’t provided definitions. Maybe sometimes they’ve provided limiting principles, but those get ignored the next time (see Electric Power Group).

    Granted – most of the CAFC will argue among one another HOW they will avoid answering the questions far longer than they will argue how they will answer the questions.
    Alice has been around since 2016. They are well accustomed to avoiding answering questions they don’t want to answer.

    I don’t need people to agree with my every word. I need people like you to make thoughtful and challenging statements. I don’t learn otherwise
    That’s what I’m here for. I want you to win. I just don’t see it happening. You need both the numbers and a compelling story to justify getting the numbers (and the decision). No offense to Concerned, but the story isn’t compelling.

    I will not go back down to the USPTO, play their game and compromise myself. I was taught that I can only lose my name and intregity if I voluntarily give them away.
    Everybody wants to hit the home run to win the game. Although it isn’t as pretty, sometimes you have to play ‘small ball’ to win. When the odds are this stacked against you, attacking their strength isn’t the solution. You need to look for the cracks in the system to exploit. In this instance, the cracks are in the art units of the USPTO — not the CAFC.

    If I lose, so be it. It now is on them.
    It’ll be on them and you. I proposed an alternative above. It is an approach that could still be taken — even if you lose (although losing is going to make it tougher). Think of your invention not as solving a business problem but as solving a technical problem. How would your invention be implemented in actuality? Think of the technical aspects that would make this work. Add that into your specification (with a CIP) and try again. Look at Examples 37 to 42 that accompanied the 2019 Patent Eligibility Guidelines. In particular, look at claim 42. Think about how your specification could be amended support something that looks more like that claim 42.

    I’ll be perfectly honest and say that if I encountered your claims during prosecution (e.g., the application was transferred to me), I would write to the client: we need to rewrite these claims to address 101 — also, the independent claims are far too long.

  • [Avatar for concerned]
    concerned
    December 14, 2021 04:12 pm

    Curious: Are you so sure your approach would work? I see nothing from the USPTO behavior to suggest it would work.

    Remember I had an examiner in my corner and the USPTO switched him out. I could of had the patent already.

  • [Avatar for Curious]
    Curious
    December 14, 2021 11:45 pm

    Curious: Are you so sure your approach would work? I see nothing from the USPTO behavior to suggest it would work.
    I never make any guarantees. My clients know that. However, you’ll have a heck of a lot better chances in the art unit than the CAFC.

    Look at patentbots dot com and look up your art unit. The grant rate in 3691 isn’t that bad (for Tech Center 3600). Ron Katznelson once described that there is a way to get a new Examiner (probably with a CIP application). Reach out to him as to how to make it happen. If you could get your application classified in 2100, you would be MUCH BETTER off.

    No offense to your original patent attorney, but when this application was drafted (2014), it wasn’t drafted in anticipation of Alice (2016) changing how the USPTO/CAFC analyzed claims under 35 USC 101. As a patent attorney, you cannot draft a specification today in the software space like you could 10 years ago. I cannot write claims today like I could 10 years ago either. The stuff I used to strip out I now have to put back in.

    Remember I had an examiner in my corner and the USPTO switched him out. I could of had the patent already.
    No. The junior examiner issued the 101 rejection. You appealed. The primary (senior) examiner (whose name was already on the file well before the appeal) wrote the Examiner’s Answer. Your prior examiner didn’t get switched out. Rather, you had the senior examiner already on your application (as opposed to the junior examiner) write the Examiner’s Answer. It is quite possible that if you took this back down, the original examiner would still be handling the application.

  • [Avatar for B]
    B
    December 15, 2021 12:06 am

    @ Curious “CAFC precedent counts as case law.”

    I need two CAFC judges to say Alice Corp is not overruled by Investpic. Two judges only are needed.

    “Also, the Federal Circuit is likely going to come down hard on you for not making any of these due process arguments down below.”

    FYI, the PTAB Panel HANDED the issue to concerned.

    “You don’t get to make new arguments at the Federal Circuit.”

    I’m arguing exactly what the PTAB did

    “The Board’s new ground of rejection could have saved you, but the Request for Rehearing (based upon my quick scan) didn’t address due process issues. As such, they Federal Circuit may dismiss those arguments as being waived.”

    Respectfully, we will have to disagree on this.

    “That is what Rule 36 is there for — so they don’t have to. Even when they’ve provided a written decision, they haven’t provided definitions.”

    On this we agree.

    “Maybe sometimes they’ve provided limiting principles, but those get ignored the next time (see Electric Power Group).”

    Unfortunately, Taranto can’t be bothered with reading Supreme Court case law, statutes, menus, etc. Worst, most incompetent judge on the CAFC ever.

    “Alice has been around since 2016. They are well accustomed to avoiding answering questions they don’t want to answer.”

    And yet there are 2-3 CAFC judges that constantly raise the issue.

    “You need both the numbers and a compelling story to justify getting the numbers (and the decision). No offense to Concerned, but the story isn’t compelling.”

    See, here is where you’re wrong. I’ve had the best, most compelling story and lost b/c the CAFC was too dishonest to address the serial violations of due process, the violations of Supreme Court Law (claims as a whole anyone?), and the lack of evidence issue PLUS the PTAB admitting there were 4 separate limitations in the independent claims not found in the prior art PLUS a distinct advantage.

    Judge Prost on the panel seemed “lost” the entire hearing, but Judge Stoll “got it,” and even Judge Hughes took time out of his usual screaming session to ask serious questions – including the Electric Power Group question while forgetting that he penned Enfish.

    Concerned’s claims are on-par with Bilski – with the exception that the underlying business method is novel and nonobvious. The PTAB rejected the claims based on mental steps, a majority of the CAFC en banc (6 of 11 – 1 not participating) affirmed mental steps, and the SCOTUS rejected mental steps in favor of an evidence-based analysis.

    Funny thing – something similar happened in Alice Corp. with CAFC knuckleheads repeating “mental steps” and the SCOTUS again rejecting mental steps in favor of an evidence-based analysis.

  • [Avatar for B]
    B
    December 15, 2021 12:25 am

    @ Curious “I’ll be perfectly honest and say that if I encountered your claims during prosecution (e.g., the application was transferred to me), I would write to the client: we need to rewrite these claims to address 101 — also, the independent claims are far too long.”

    And how does one do that exactly? Everything is abstract. There’s no “significantly more” that is significantly more enough, and “inventive concept” is gibberish spewed by incompetent jurists.

  • [Avatar for concerned]
    concerned
    December 15, 2021 03:55 am

    And the two examiners never said mental steps because they actually read my official file and was intimated with the details.

    Any attorney will surely tell me, attorney/client privilege cannot be waived mentally by a third party. Consent in my field cannot be mentally waived either. Without getting around consent with a physical network and other physical aspects, the Administering Agency would be helpless to apply my claimed process to solve the problem.

    This situation has been reject at all costs.

    What I have not shared with anybody is a working theory given to me by a former State legislator, who was knowledgeable with my situation. He told me that it was very possible that someone high up in State government called their connections to get this patent killed.

    This working theory would be consistent with the patent prosecution to date and consistent with my field of SSDI, Medicare and Medicaid. There have been some interesting Medicaid PERM findings with my State, real interesting PERM audit findings reported in the press.

    We fight and stand right here. Go get them B!

  • [Avatar for Pro Say]
    Pro Say
    December 15, 2021 11:17 am

    “He told me that it was very possible that someone high up in State government called their connections to get this patent killed.”

    Makes perfect sense.

    Perfect.

    And I’m sure I speak for many in expressing a big thanks to B., Curious, and concerned for taking so much of their valuable time on these critically important matters.

  • [Avatar for Curious]
    Curious
    December 15, 2021 02:37 pm

    I need two CAFC judges to say Alice Corp is not overruled by Investpic. Two judges only are needed.
    Investpic did not overrule Alice. Investpic relied upon Benson. Regardless, why are you relying upon Alice? What is it about Alice that is going to save your claims?

    Respectfully, we will have to disagree on this.
    Good luck with that. Good luck with all of your newly-made arguments regarding due process, evidence, etc. Don’t be surprised if the USPTO’s brief leads off by pointing out these new arguments.

    Worst, most incompetent judge on the CAFC ever.
    “Hold my beer” says Judge Prost. Judges Mayer and Dyk are leaning back on their rocking chairs laughing — bemused over the “amateurs.”

    the SCOTUS rejected mental steps
    Where did they do that? This isn’t the first time I’ve raised this point. Benson referred to mental processes.

    Concerned’s claims are on-par with Bilski
    Hello? Bilski lost. Not a good comparison for you.

    And how does one do that exactly?
    If you had 20 years or so, I could teach you. However, what I can say is that good claims (that can overcome 101) require a good specification. Your specification wasn’t written with 101 in mind.

    He told me that it was very possible that someone high up in State government called their connections to get this patent killed.
    [Sigh] Your claims were going to get tanked regardless once Alice came out. I have an extremely well-connected client. Their claims get tanked under 101 all the time. It doesn’t matter. Tech Center 3600 tanks all comers. You weren’t give special treatment.

    I suggest you and B consider the Monument Peak Ventures v. Toshiba “decision” that just came out. It was a Rule 36 so there isn’t much of a decision. Their claims were MUCH BETTER than your claims with regard to 101, and they still got tanked. This observation underlies much of why I’m commenting here. Those are claims that I could easily have gotten out of the USPTO today. In fact, I would be surprised if I had gotten a 101 rejection on those claims had I been prosecuting them today. As for your claims, had they not been examined, I would have told the client that I would have a 100% expectations that these claims would both be rejected under 101 and the PTAB would affirm such claims. I am no stranger to the PTAB, and I have had many decisions — affirming 101 rejections — on claims much stronger than the ones you are presenting.

    And yet there are 2-3 CAFC judges that constantly raise the issue.
    On claims involving technology. I know of no judges that have pounded on the table for claims that can be best described as a business method. There is no path to having the 101 rejection of these claims reversed without stepping on the toes of many prior CAFC decisions.

    Any attorney will surely tell me, attorney/client privilege cannot be waived mentally by a third party. Consent in my field cannot be mentally waived either. Without getting around consent with a physical network and other physical aspects, the Administering Agency would be helpless to apply my claimed process to solve the problem.
    I have no idea what this means. However, what I can say is that this has zero importance in a 101 context.

  • [Avatar for concerned]
    concerned
    December 15, 2021 04:17 pm

    Curious: “Tech Center 3600 tanks all comers. You weren’t given special treatment.”

    That statement tells me I was rejected once assigned to TC 3600. Where is the due process in rejected upon submission and classified? Why even have TC 3600, just to take people’s money?

    PTAB gave mental steps 101 importance. It just another statement the other side makes that has not been proven to be possible.

  • [Avatar for Curious]
    Curious
    December 15, 2021 07:35 pm

    That statement tells me I was rejected once assigned to TC 3600. Where is the due process in rejected upon submission and classified? Why even have TC 3600, just to take people’s money?
    This is why smart attorneys write specifications and draft claims that keep them out of TC3600. For example, words/phrases that I would have avoided at all costs in your claims:
    social security
    insurance
    computer processing means (not a 101 issue, but seriously, who writes “means” in claim language anymore?)
    benefit eligibility
    developmental disabilities
    mental illness
    parental/marital information
    deceased, disabled, retired
    spouse
    State licensed care facility

    With that in your claims, you were destined to go to 3600.

    PTAB gave mental steps 101 importance. It just another statement the other side makes that has not been proven to be possible.
    The courts have never required proof that it isn’t possible. Just look at Benson. Although never articulated as such, the courts merely rely upon “can I abstract away enough of the claim language that I can conceive it to be performed mentally.”

  • [Avatar for B]
    B
    December 15, 2021 07:50 pm

    @ Curious “This is why smart attorneys write specifications and draft claims that keep them out of TC3600. For example, words/phrases that I would have avoided at all costs in your claims: social security insurance”

    Dude – sometimes that is impossible.

    When I first wrote the Villena applications (there were three), one got assigned to TC 2100, one to TC 1700 (i kid you not), and the third was just TOTALLY LOST. When I complained to the USPTO about their incompetence of losing an entire application, the three were bundled and sent to TC 3600 where I had a Primary tell me “I will never allow a single claim in these applications” The guy totally lied about it when I complained to his Director.

  • [Avatar for concerned]
    concerned
    December 16, 2021 01:42 am

    Curious:

    Smart attorneys do not practice intellectual property and deal with the USPTO.

    The words we used in the patent application were truthful and also met the statutory text as stated by Congress per PTAB. The claimed process also solved a big problem, PTAB admitted that fact also.

    It is hard for you to convince me, plus 100 people selected at random in my field and 100 common folks that my attorneys did things wrong when the other side tossed evidence, add words to the law, refuse to define said words, make statements that my colleagues know are false, etc.

    Initially, my friends thought I had to be making things up about the conduct within my patent prosecution. Now my friends know the truth about patents. I had no idea that these kind of things happen openly in court in this country and neither did my friends.

    I have no problem losing if my integrity remains intact and the other side had to resort to the above tactics to beat me. I imagine I could easily beat Johnny Chan at Texas Holdem if I am allowed to palm cards, deal from the bottom, steal his chips, etc.

    Televising patent prosecutions would be a great idea. Let the people see how great things are in the world of patents.

  • [Avatar for concerned]
    concerned
    December 16, 2021 08:02 am

    My patent prosecution experience has reveled to me that this whole affair comes down to who can out lawyer who or who can out game who.

    Instead of focusing on what the law actually says and concentrating on the spirit of the law to encourage innovation, to solve problems, to make people’s lives better, the focus has become was the innovation “wow” enough, “technical” enough, words “clever” enough, attorney “smart” enough?

    To a common person, once the PTAB said I met the law as stated and that my solution solved a problem never solved before, I should get the patent. What is the problem?

    And then comes the educated at all levels to tell the common folks the solution is not “good” enough. That it does not matter that $300-$400 per month extra, a lump sum retroactive payment, plus expanded health care, are irrelevant to a person with a disability who would find these additions to their life are like hitting the lottery. All these benefits would have been available per operation of law if the third party correctly submitted the benefit application.

    Could everyone stop trying to be right and just do right? Or are we just too numb by the experience to notice the difference?

  • [Avatar for B]
    B
    December 16, 2021 01:21 pm

    @ concerned “I have no problem losing if my integrity remains intact and the other side had to resort to the above tactics to beat me.”

    The PTO isn’t the problem. The Federal Circuit is.

  • [Avatar for Curious]
    Curious
    December 16, 2021 01:28 pm

    Dude – sometimes that is impossible.
    No its not. A patentee can act as their own lexicographer. If I’m drafting an important patent application (i.e., for something more than a ‘vanity’ or ‘numbers’ patent) that involves something arguably when the “business method” realm, my first goal is to get it classified into a better art unit. To do that, I need to avoid having certain words.

    For example, instead of saying “child” or “spouse” perhaps you can say “entity having a predefined relationship with the user.” In the specification you can include a single statement that “examples of such entities are a child and spouse.” The key is that when the application gets classified by whatever program the USPTO uses, it will catch more technical sounding keywords than non-technical and hopefully classify it into a better art unit.

    As for the claims themselves, think about how a computer system could be designed that implements such an invention. What are the databases it connects to? What kind of comparisons does it make? Concerned’s claims do that somewhat there is far too much of the ‘red flag’ language in it. It isn’t easy to do, but it can be done. I’ve been forced to do it many times on applications I inherited that were written during a time (pre-Alice) in which what was being claimed wasn’t problematic so long as it was done on a computer.

    When I complained to the USPTO about their incompetence of losing an entire application, the three were bundled and sent to TC 3600 where I had a Primary tell me “I will never allow a single claim in these applications”
    This is why I have said (for many, many long years) that the best way to get an application allowed is to keep it out of TC3600. They are the worst of the worst. Their ability to misstate the claims, the prior art, and the law knows no bounds. My advise to anyone stuck in 3600 is ‘get your claims right and then appeal.’ You’ll still lose a good portion of those appeals (because the 3600 APJs aren’t that much better than the 3600 examiners) but you’ll get some wins as well.

    Smart attorneys do not practice intellectual property and deal with the USPTO.
    Then I’m not a smart attorney. However, I am a successful attorney that gets applications allowed. I got 4 applications allowed out of TC3600 this year. I went to the Board on each. Lost 3 of them at the Board but still managed to figure out how to get something allowed.

    It is hard for you to convince me, plus 100 people selected at random in my field and 100 common folks that my attorneys did things wrong when the other side tossed evidence, add words to the law, refuse to define said words, make statements that my colleagues know are false, etc.
    That’s nice. Those “100 people selected at random in my field and 100 common folks” known nothing about the USPTO/PTAB and how it works. None of them have been to the Federal Circuit. I’ve prosecuted thousands of applications, been to the Board untold times, and also been to the Federal Circuit multiple times. Once Alice came out, your claims had ZERO chance of making it past 101. I’ve taken, at a bare minimum, at least 50 applications to the PTAB that involved a 101 issue. Out of all the applications I have taken to the PTAB, I cannot think of one that was more poorly positioned (regarding 101) than your claims.

    I imagine I could easily beat Johnny Chan at Texas Holdem if I am allowed to …
    Right now, you are playing Johnny Chan with an unsuited 2, 7 and he is going to the river no matter what you bet. Anyone can beat Johnny Chan if they are dealt good cards. In this instance, “good cards” is the claims/specification. My 101 criticisms have nothing to do with the inventiveness or value of your invention.

    To a common person, once the PTAB said I met the law as stated and that my solution solved a problem never solved before, I should get the patent. What is the problem?
    You continuing to point out that “the PTAB said I met the law as stated” evidences your inability to appreciate that meeting “the law as stated” is trivial (99.9999% of claims pass Step 1 of the Alice/Mayo test). As such, don’t pin your hopes on that admission. Also, solving any problem is not the standard. The Federal Circuit is going to be looking for a technical solution to a technological problem. To me, that should not be a requirement for patentability but that is what they are looking for. Lawyers/judges (by their nature) are rule followers. Sure, some fudge the rules but regardless, ALL will avow that they are following the rule to the letter. With this in mind, if you don’t follow THEIR rules, your arguments will not be well received.

  • [Avatar for concerned]
    concerned
    December 16, 2021 02:45 pm

    Curious: It seems to me that we are at an interesting junction.

    B is handling the appeal pro bono and only charging filing fees.

    Do you want to make the same offer on the CIP? Can both actions go forth simultaneously? Not much in it for you other than demonstrating your abilities.

    However, if we get the patent, the compensation can be very lucrative on the actual business plan for both B and you. And you would be helping a lot of people.

    Deal or no deal?

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