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43 “So tortured and bizarre has the evolution of the law of patent eligibility become that it is probably best summarized thusly: Every invention that embodies, uses, reflects, rests upon or applies scientific laws is patent ineligible.”
Last week, the Supreme Court refused certiorari in yet another patent eligibility appeal. I’ve lost count as to how many times the Court has refused to provide clarity to the fundamental question of patent eligibility since it last muddied the waters in Alice back in 2014. I stopped counting several years ago, when the number of petitions—pleas begging for help really—crossed over 50.
But the petition in American Axle was supposed to be different. Yes, the Federal Circuit has been hopelessly, and helplessly, split for years—a division and impotence of their own making. In American Axle the self-castrated Federal Circuit seemed to believe the Supreme Court modern quartet of patent eligibility cases renders nothing of importance or value patent eligible. In fact, the Federal Circuit actually ruled that a drive shaft is not patent eligible because the operation of the drive shaft fundamentally relies on Hooke’s law.
The Future of Eligibility Cases at the Federal Circuit
While the Supreme Court not taking cert. in American Axle does not mean the Court agreed with the Federal Circuit ruling, the failure to overrule the Federal Circuit does leave the Federal Circuit decision as precedent. The value precedent has is difficult to say when opining about the Federal Circuit. As even casual observers understand, Federal Circuit judges do what they want regardless of precedent.
There will be cases where Federal Circuit panels claim they now feel compelled to apply the idiotic ruling in American Axle. We will be told that they simply have no choice but to find invention after invention patent ineligible because that is what the Supreme Court mandated, as if they were not complicit in intentionally misconstruing what the Supreme Court wrote in Bilski, Mayo, Myriad and Alice.
Of course, the Supreme Court has cautioned the Federal Circuit not to let the law of patent eligibility swallow patent law, which it now has to the point that anything and everything regardless of form is ineligible. Even first year law students would be expected in a basic legal writing class to be able to distinguish in Bilski, Mayo, Myriad and Alice so that not everything is patent ineligible since, after all, the Patent Act says the exact opposite.
And good luck to those patent owners before panels of judges who believe the law now renders any invention ineligible if it is premised on a scientific law. Not to put too fine a point on it, but a full, fair and impartial application of American Axle renders everything patent ineligible. You simply cannot invent anything that is not fundamentally based on scientific law. Even the Supreme Court understood that much when the Court tried to warn the Federal Circuit in Alice that “[a]t some level, all inventions embody, use, reflect, rest upon or apply laws of nature, natural phenomena, or abstract ideas.” But here we are where Hooke’s law, which describes the force needed to compress a spring, renders a drive shaft patent ineligible.
The Federal Circuit has ignored the Supreme Court’s warning that every invention embodies, uses, reflects, rests upon or applies scientific laws, as if what the Supreme Court was saying was merely dicta. In fact, so tortured and bizarre has the evolution of the law of patent eligibility become that it is probably best summarized thusly: Every invention that embodies, uses, reflects, rests upon or applies scientific laws is patent ineligible. That all inventions so relate to scientific laws, natural phenomena, or abstract ideas is merely an inconvenient truth.
Consider the Implications
But rather than speak in the abstract, let’s discuss innovation in concrete terms, and consider the ramifications of a Federal Circuit that has intentionally neutered itself and a Supreme Court unwilling to step in despite near judicial incompetence on the issue of patent eligibility over the last dozen years.
For example, Snell’s law is used to describe the relationship between angles of incidence and refraction when referring to light or other waves passing through a boundary between two different media. Snell’s law is absolutely fundamental to innovations ranging from contact lenses to fiber optics, all of which are presumably patent ineligible as the result of American Axle. So too are wide swaths of green technologies, such as those that relate to the collection of solar energy, such as U.S. Patent No. 9,033,525, titled Optimum solar conversion cell configurations, and patented by NASA, which specifically references Snell’s law in the claims. Another example of a patent ineligible claim that is fundamentally reliant on Snell’s law is U.S. Patent No. 10,671,158, titled Three-dimensional (3D) rendering method and apparatus for user’s eyes, patented by Samsung, which includes in the broadest claim the step of calculating a value using Snell’s law. Obviously, these are but two easy, incontestable examples given that the claims specifically and fundamentally rely on a scientific law. The ubiquity of Snell’s law will render hundreds of thousands of optics related patents void if American Axle is actually applied as written.
Also consider Archimedes’ buoyancy principle, which states that the upward buoyant force of a body immersed in fluid, whether fully or partially, is equal to the weight of the fluid that the body displaces. The Archimedes’ principle is absolutely essential for myriad inventions relating to ships, submarines and hydrometers, to name a few. To put it into real patent context, inventions like U.S. Patent No. 11,1242,279, titled Submarine vehicle and control method, would have to be patent ineligible since the very existence of submarine technology is completely and totally reliant on Archimedes’ discovery. So too would inventions relating to floating airplanes, obviously, since the floatation principles observed by Archimedes are entirely responsible for the airplane not sinking. So, say goodbye to U.S. Patent No. 11,104,433, titled Aircraft float, and U.S. Patent No. 11,208,210, titled Float plane technology. Of course, amusement devices such as toys that float would have to be patent ineligible as well, including U.S. Patent No. 11,103,075, titled Infant float.
But then there is also Ohm’s law, which states that the current through a conductor is directly proportional to the voltage across two points, and is represented by I = V/R. So ubiquitous is Ohm’s law in the field of electrical engineering, it would hardly be an exaggeration to say that practically everything with a tangible electrical form would be rendered patent ineligible by a strict adherence to American Axle the way the Federal Circuit has set forth the precedent. Still, an example or two to drive home the point seem worthwhile. See U.S. Patent No. 9,625,517, titled Leakage current detection method and apparatus for detecting leakage of current from a board-mounted component, patented by Huawei Technologies, where the broadest claim literally includes the step of calculating the output voltage of the reference resistor using Ohm’s law. See also U.S. Patent No. 9,442,152, titled Fault location system and method for distribution network, patented by General Electric, where the fault location is calculated with great accuracy using Ohm’s law.
Everyone agrees that the Federal Circuit decision in American Axle is wrong and that the invention in question has always been the type of invention that has historically–for hundreds of years–been patent eligible. Yet, nothing is going to be done and at least half of the judges on the Federal Circuit—perhaps more—will now apply the ruling without thought or consideration. Patent eligibility in America is a train wreck, and those with the power to do something either created the problem and are choosing to ignore it (i.e., the Supreme Court), made the problem worse by applying decisions and statements out of context (i.e., the Federal Circuit), or ignore the problem like a bunch of ostriches with heads firmly planted in the sand because patents are a losing political issue unless everyone agrees on everything (i.e., Congress).
Held Hostage
There is no hope for inventors. If the Supreme Court denied American Axle it is foolish to think they will take any case, particularly after the Solicitor General advised taking this case now. The Federal Circuit has said repeatedly they are not going to fix anything because they want the Supreme Court to take action, which simply won’t happen, so the industry is now held hostage by a bunch of judges and Justices in a turf war. And patents do not drive voters to vote, but as an issue they can and do animate donors who get upset when the wrong thing is done. So, Congress won’t act any time soon.
It is probably time for innovators to give up on the charade of patent protection in America and look elsewhere in the world, where patents matter. File patent applications using the Patent Cooperation Treaty, enter the U.S. national stage as late as you possibly can, and drag prosecution out as slowly as you can. In the meantime, pray that the Supreme Court, Federal Circuit or Congress comes to their senses, but for goodness sakes, don’t hold your breath!
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Join the Discussion
43 comments so far.
Erfinder
July 21, 2022 03:05 pmWhat comes to mind is “if it ain’t broke,don’t fix it”!
The US patent system was fine until greedy corporations with mega bucks, mega influence, and micro creativity, started messing with it, in order to the steal the patented inventions from independent inventors.
concerned
July 11, 2022 07:52 amBelow is a quote from my first article. I think Mr. Quinn says it all. Some people are more concerned about the level of the invention (wow factor) than the fact something new and useful, plus good, was invented that helps society.
The fact of the matter is the patent system is a capricious process that awards patents to whomever they want devoid of any Congressional intent, hardly a legal standard. That is the basis of our CAFC appeal.
“Gene Quinn September 14, 2018 11:35 am
Babak-
I don’t dispute your characterization, but let us pause for a moment and reflect on just how tragic it is that one can write: “although it may solve a long-standing problem and improve quality of life…” it is not patent eligible. That is where we are, and it is utterly disgusting.
Would the Wright Brothers patent on a flying machine be patent eligible today? What they really invented was the idea that when you warp the wings of a flying machine you can control flight. But they observed that was how birds successfully glided and controlled their glide. So what they contributed was really well known, routine and conventional, having been done by birds for millions of years (if not billions of years). And if it would have passed muster under 101, it would certainly be obvious today in light of the observation about birds despite the fact that no one else prior to the Wright Brothers had actually successfully controlled manned flight.
The state of patent law as written and applied is pathetic. If you apply it literally to the greatest inventions of all time those inventions are arguable either not patent eligible or obvious, which is absurd.
Thoughts anyone?”
concerned
July 11, 2022 06:29 amCurious@ “If you knew how case law worked, you wouldn’t ask such a question. Go to law school and after the first semester, you’ll realize why it is a silly point.”
It is a protest against judges legislating from the bench. As a layperson, I would expect case law to reflect express law as written by Congress. Clearly it does not per this article.
Curious@ “I’ve read the claims. It is a fairly simplistic invention: Identify a person receiving treatment. Is the person receiving SSDI adult child benefits? If not receiving SSDI adult child benefits, determine if they are eligible based upon their parents and are not ineligible for other reasons. This isn’t rocket science here.”
You realize, hopefully, how arrogant your statement comes across? Millions since 1956 could not see this invention, to include many with law degrees. These people work day to day in my field. Is your observation called standing on the “heads and shoulders of giants” hind sight?
Ironically, there has been one person who has realized what my invention actually accomplishes upon first take. He was a rocket scientist, who worked for Martin Marietta and had a stroke. Then he co-founded a company that helped people with disabilities.
My partner introduces himself as someone who had to hear an explanation of my invention 5 times before he understood it. I bet he is as smart as you (top 300 minority business owner in country, in 10 states, voted executive of the year, has 181 billable sales agents, etc.)
Your arrogance may explain part of the reason the patent system is in trouble. And “B” alludes to this arrogance in my blue brief. People, who have no experience in the subject field, act like experts (examiners, attorneys, judges, etc.) His point: Evidence matters (as nobody is that smart).
And when people are not “wowed enough” with an invention, they take matters and the law into their own hands and make judicial exceptions. Congress, who are elected to represent us, says any “new and useful” process and the appointed geniuses say “wait a minute.”
Curious
July 10, 2022 08:06 pmI noticed you gave me a case law on mental steps, not anything in U.S. Code 35.
If you knew how case law worked, you wouldn’t ask such a question. Go to law school and after the first semester, you’ll realize why it is a silly point.
Actually my process cannot be done with pen and paper. Most applications are now on-line and any written “open and broad” authorizations to by-pass consent “on paper” could not be trusted as a legitimate source and could be forged. Identity theft would be highly possible. A dedicate network in a secured environment is necessary to ensure integrity.
Not in the claims and it probably wouldn’t help you even if it was.
The two university studies did use pen and paper to no avail. These were experts.
I’ve read the claims. It is a fairly simplistic invention: Identify a person receiving treatment. Is the person receiving SSDI adult child benefits? If not receiving SSDI adult child benefits, determine if they are eligible based upon their parents and are not ineligible for other reasons. This isn’t rocket science here.
Do you have any explanation why my colleagues think you make foolish statements when you say you can do my process with mental steps or using pen and paper? They also laugh.
Do your colleagues have 25+ years of patent prosecution experience? Do your colleagues have even 1 year of patent prosecution experience? If not, then what they think is immaterial to me.
Both the assistant examiner and primary examiner did not issue a mental steps rejection.
The Final Office Action issued prior to the 2019 Patent Eligibility Guidelines (2019 PEG). The primary examiner, in the Examiner’s Answer in November of 2019, glommed onto the “method of organizing human behavior” grouping of abstract ideas instead of mental processes, which is discussed in the 2019 PEG. The Board looked at it and decided that the “mental process” grouping was probably better and that’s what they went with. What you’ve completely overlooked is that they designated this a new ground of rejection, which essentially means that they’ve ignored the Examiner’s analysis and substituted their own analysis. This is quite common. I’ve seen it at least a dozen of times in 101 rejections from the Board.
To get back to what the Examiner did, you have to realize that Examiners are generally pretty lazy – particularly those in Tech Center 3600 (business methods). Once they’ve got one tool they understand (e.g., rejecting under 101 for method of organizing human behavior), they’ll continue to use that tool unless told otherwise – even if it isn’t the most appropriate tool. While you say that the assistant examiner told you “3 times in a phone interview that [you] should have a patent,” he never issued a Notice of Allowance, did he? They reason he didn’t was that it wasn’t his call to make. As I also noted elsewhere, this assistant examiner has been one for a very long time, which is very unusual and reflects what the USPTO thinks about his work product.
This is the same Board that suggests I submit evidence to counter mental steps upon remand. Of course, that would be the same evidence already on record that nobody at the PTO wants to address.
Because you evidence is not on point. The “mental steps” refers to the case law discussed in footnote 14 of the 2019 PEG. I suggest you read those cases. A good one to start with is Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314 (Fed. Cir. 2016). That at claim 1 of USP 7366694. The claim has user interfaces. One of them ” allows the lenders to securely upload at least some of the loan package data for their respective loan packages to the database over a computer network.” However, none of that prevented the court from determining that it could be performed by humans without a computer. The important thing to note is that this is a precedential decision, which means it MUST be followed by both the USPTO and the Federal Circuit. They are not free to ignore this precedent. BTW, that case is only one of many mentioned in footnote 14 of the 2019 PEG.
The figures submitted with the application clearly shows a network, which includes State servers and Federal SSDI servers.
I’ve seen dozens and dozens and dozens of applications rejected under 35 USC 101 that includes networks and servers. I’m sorry, that isn’t helping you. Again, look at the cases mentioned in footnote 14. The Federal Circuit and Board have little problem ignoring those kinds of limitations.
That would require every Social Security Office in the nation to accept an official looking paper that waives consent on a general basis from every employee of my company. When that employee gets fired or quits, what happens to the paper the employee still has in his possession or photocopied? Do you really think Social Security Administration would allow such a loose procedure by a stranger (my employee) walking into their Office? I would have to be crazy to expose myself to such liability.
Does your independent claim address that problem? No it doesn’t so that observation isn’t going to help you.
As my attorney argues: Evidence matters.
Only when the Court wants it to matter. The Federal Circuit makes up evidence all the time. The Supreme Court makes up evidence all the time.
My atty “B” had a similar thought that Axle not getting cert may compel the CAFC to take a stand on my software appeal.
Of your more delusional comments, this one really stands out. The Federal Circuit literally passes on dozens of these cases every year. Moreover, it isn’t like Chen, Taranto, and Clevenger are 101 maximalists. In case you forgot, Chen and Taranto were on the wrong side of the denial for Rehearing en banc in American Axle. In other words, they were happy with the American Axle decision. These were NOT the judges you want on your case. Clevenger will be 85 years old next month, and I doubt he’ll disagree with anything Chen and Taranto agree upon.
Curious
July 10, 2022 07:14 pmHello Curious: Assuming that your last comment was directed at me, I’ll clarify some assertions that you’ve made in error.
I have no idea what you are talking about. What “last comment” were you referring to? Nothing you wrote indicates to me that you were someone I was referencing in one of my earlier comments.
concerned
July 9, 2022 10:33 amJohn K @ “Weirdly, software may become more patentable as result.”
My atty “B” had a similar thought that Axle not getting cert may compel the CAFC to take a stand on my software appeal. And why not, what is SCOTUS going to do about, refuse yet another cert?
A lot of people thought I would get a Rule 36. Two months later still standing.
“B” blue brief is a lot deeper than it’s appearance and definitely a different approach (due process violations.)
Gen. Patton: “If everyone thinks the same, someone is not thinking.”
Enter “B”
John K
July 9, 2022 10:08 amBless you Gene. You’re one of the only people with enough … gumption/guts, to tell it like it is. You’re right on the money.
The USPTO has been perverted to basically be anti patent. Weirdly, since physical goods all obey “laws of nature” now the mechanical arts are suffering their own kind of Alice bs. Weirdly, software may become more patentable as result.
Sten Erik Hakanson
July 9, 2022 10:06 amThe Supreme Court and the CAFC have been slowly eroding the value of patent protection starting, I believe, with the Festo case. I have always thought that to be a CAFC judge should require being a registered patent attorney. In any event, why does the patent bar always seem to roll over and try to work with these stupid decisions as opposed to also speaking out and trying to do something to overturn them? After all, it is our livelihood at stake here. In my view, our patent statutes and the way the USPTO examines applications both require a major overhaul. For example, examining should be more of a group effort and protecting patents has become byzantine in its complexity. Of course, pursuing an infringement action in district court may now be futile if, God forbid, an invention is based on scientific principles. What are these jurists smoking?
concerned
July 9, 2022 05:07 amI woke up this morning with the process of an invention that allows law enforcement to know three hours in advance of all future bank robberies.
This ability has never been available to any police officer in the history of law enforcement, just like the results of my SSDI invention were never able to be performed by any professional in my field.
I contemplated filing a patent application, however, rejections like routine, well understood and conventional, or mental steps crossed my mind as rejections I have have to argue against from the PTO, just like my SSDI patent application. Inevitably, I would also have attorneys would never worked in this field tell me the invention is trivial and not worthy of patent protection based on case law on other subject matters, not s101.
Then I was reminded by my wife that this new bank robbery technology was all just a dream, the nightmare of trying to help society with a new and useful process by filing a patent application was not necessary.
Money and time are not wasted. Marriage survives another day. Bank robberies continue.
Patent Gamer
July 8, 2022 10:56 pm@CBC – points taken on the broadness of the claim. But that’s not a 101 matter ineligibility argument. Those are claims issues or enablement issues – as noted by other commenters. The problem is the FedCirc judges who had a judicial clue on patents have basically, or literally, died off and the shift in focus due to Alice from S.Ct. to 101 to narrow patents didn’t help.
The claim shouldn’t have been allowed in the first place, as you noted, its overly broad and has 112(2nd/b) issues because of that. It is in fact impossibly borked under 112. But I’ve been seeing a lot more of this on claims that clearly shouldn’t have been allowed by USPTO.
Hopefully this anomaly is an anomaly and not a decision to be recited wrote by – as Gene put it – half the Fed Cir.
placid_dude
July 8, 2022 10:44 pmSo finally it came to this point…
And what did I tell everyone on this blog back in early 2000s ?
Stop throwing good money after bad and find something else to do.
Inventing and patenting in today’s America is a foolish and self-destructing activity
Suggesting that regular folks go PCT route and wait until things improve domestically is just wrong
Who is John Galt ?
concerned
July 8, 2022 08:28 pmBoth the assistant examiner and primary examiner did not issue a mental steps rejection. Both examiners were intimately aware of my file wrapper via the prosecution. Both examiners had to realize such a mental steps rejection is absurd, thus both never issued one.
As stated before, the now known assistant examiner (which I called the first examiner) told me 3 times in a phone interview that I should have a patent. Apparently, he gets moved aside, and the primary examiner takes over, but he still never suggests mental steps.
Then the PTAB issues the mental step rejection (as if they actually read the complete file.) This is the same Board that suggests I submit evidence to counter mental steps upon remand. Of course, that would be the same evidence already on record that nobody at the PTO wants to address.
Why would the Board make such a stupid statement to resubmit the same evidence already on record if they actually read the entire file wrapper?
The figures submitted with the application clearly shows a network, which includes State servers and Federal SSDI servers. This network would be the first time that my process was ever used in commence (no s103 rejection) and naturally would be dedicated and highly secured.
Some people claim my process could be done with pen and paper. That would require every Social Security Office in the nation to accept an official looking paper that waives consent on a general basis from every employee of my company. When that employee gets fired or quits, what happens to the paper the employee still has in his possession or photocopied? Do you really think Social Security Administration would allow such a loose procedure by a stranger (my employee) walking into their Office? I would have to be crazy to expose myself to such liability.
What really strikes me is some people do not want to know the truth about whether my steps could really be done by mental steps or my challenge would be accepted. Those people just want to make statements about a process they more than likely have never performed (developed a Social Security benefit.)
As my attorney argues: Evidence matters.
Examiner with chip on shoulder
July 8, 2022 05:33 pmI’m pro Alice, but I have to admit, for a Court that’s so obsessed with “the text” (especially Thomas) it’s pretty remarkable how many levels and steps of framework are built on doctrine that isn’t mentioned in the text.
concerned
July 8, 2022 04:33 pmCurious:
Actually my process cannot be done with pen and paper. Most applications are now on-line and any written “open and broad” authorizations to by-pass consent “on paper” could not be trusted as a legitimate source and could be forged. Identity theft would be highly possible. A dedicate network in a secured environment is necessary to ensure integrity.
The two university studies did use pen and paper to no avail. These were experts. Are you more of a Social Security expert than those authors? Do you have any explanation why my colleagues think you make foolish statements when you say you can do my process with mental steps or using pen and paper? They also laugh.
I noticed you gave me a case law on mental steps, not anything in U.S. Code 35.
I am upset because I look to be cheated. Period.
Nick Brestoff
July 8, 2022 04:33 pmHello Curious: Assuming that your last comment was directed at me, I’ll clarify some assertions that you’ve made in error. I was a California attorney from 1975 to 2014, Bar No. 65291, when I retired from the Bar (with no charges pending). I was also AV rated then, after a 38 year career, and I was a litigation specialist, but never a patent attorney. However, before law school at USC (where I was a member of the Law Review and my Note was published), I earned a B.S. in Engineering from UCLA and an M.S. in Engineering from Caltech, and so I was able to understand and apply AI in the form of “deep learning” as a filter for “threats or risks of interest,” as stated in claim 1 of my first patent. Interestingly enough, my first patent led to a total of eight, the last of which was issued in 2018. Also, having checked the File Wrapper for my first patent, it confirms my recollection that the First Office Action was dated December 12, 2016, and was a Notice of Allowance. Please allow me to suggest that you access MPEP 2106.04(a)(2), which I cited, because it references Bascom Global v. AT&T Mobility, a published CAFC decision that was filed on June 27, 2016. Please notice that my response avoids personal attacks. That said, I wish you the best of luck.
Curious
July 8, 2022 04:00 pmThe asst examiner was the first examiner. I do not remember him signing the letters as a “no authority no name.”
I’ve got your file history right in front of me. Page 15 of the NFOA dated 7-27-16 (i.e., the first office action you received from the USPTO). HMA signed his name (as the non-primary or assistant examiner) and HMK signed his name as the primary. Your attorney should have made you aware of the difference between the two.
The law? Where exactly does Title 35 define mental steps? Where?
This is the type of question asked by a non-lawyer. Anyone who has been to law school in the US knows why this is a silly question.
You are part of the problem for not standing up for the constitution and trying to put a stop to judges legislating from the bench. You did swore to uphold the law to become an attorney?
And you are delusional. You don’t understand how the law is made or what I (as an attorney) can or cannot do. Many of your comments would be cringe-worthy to a 2nd year law student.
My attorney “B” stands up to this nonsense. And “B” sought me out and he is doing this appeal at no charge.
And if “B” wins, I will stand on the highest mountain praising his abilities as an attorney. However, I have zero expectations of that happening. The Federal Circuit already told you that your arguments wouldn’t be persuasive to the CAFC — the CAFC defers to SCOTUS, and SCOTUS isn’t going to touch your case.
You hide behind legal B.S. that cannot stand up to reality. We need more “Bs” and less “go with the flow” people who allow this perversion to continue.
You have zero clue as to what I have done. You are angry because you didn’t get a patent and you are lashing out against everybody because of that.
My challenge may not win an appeal but it would show that the term “mental steps” is B.S. and that truth (and evidence) are not factors in THIS legal setting.
This is from Gottschalk v. Benson:
Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work. As we stated in Funk Bros. Seed Co. v. Kalo Co., 333 U. S. 127, 333 U. S. 130.
The Supreme Court laid down the law and Congress has chosen not to fix it in the 50 years since that decision. Mental processes are not patentable. The relevant portion of your invention does not require technology. Your invention could have been performed 100 years ago (had Medicare eligibility been a thing back then) without the use of a computer — just merely paper records.
While I think Benson is poor law (and I have written the same on this blog even before you even filed your application), my opinion does not change that Benson is still the law of the land. Congress isn’t fixing it. The Supreme Court has little interest in fixing it. You are stuck with it, and if you want a patent, you better learn how to deal with it.
Nick Brestoff
July 8, 2022 12:08 pmGene, I’m on your side (on behalf of inventors) but I’ve noticed that “inventive concept” was not discussed. In Bascom Global v. AT&T Mobility (filed on June 27, 2016, and cited below), the CAFC asserted that an “inventive concept” was a second pathway to satisfying Alice. So, based on Bascom, I filed a Provisional on July 1, 2016, which led to my first “deep learning” patent, and I mentioned “inventive concept” twice in the Detailed Description. After the Provisional was filed on July 1, the Application was filed on September 27, and the patent issued on January 24, 2017, which is a few days short of only four months! As quickly as some patents are shot down by Alice, mine was seemingly issued in record time. At MPEP 2106.04(a)(2) Abstract Idea Groupings [R-10.2019], you’ll find this (I checked: it’s still there): “Other examples of managing personal behavior recited in a claim include: “i. filtering content, BASCOM Global Internet v. AT&T Mobility, LLC, 827 F.3d 1341, 1345-46, 119 USPQ2d 1236, 1239 (Fed. Cir. 2016) (finding that filtering content was an abstract idea under step 2A, but reversing an invalidity judgment of ineligibility due to an inadequate step 2B analysis)….” So there’s still some hope!
concerned
July 8, 2022 09:32 amCurious: You were the one that gave me the 1% chance. Now it appears lower.
The asst examiner was the first examiner. I do not remember him signing the letters as a “no authority no name.”
The law? Where exactly does Title 35 define mental steps? Where?
You are part of the problem for not standing up for the constitution and trying to put a stop to judges legislating from the bench. You did swore to uphold the law to become an attorney?
My attorney “B” stands up to this nonsense. And “B” sought me out and he is doing this appeal at no charge.
You hide behind legal B.S. that cannot stand up to reality. We need more “Bs” and less “go with the flow” people who allow this perversion to continue.
My challenge may not win an appeal but it would show that the term “mental steps” is B.S. and that truth (and evidence) are not factors in THIS legal setting.
Curious
July 8, 2022 08:44 amMy first examiner told me I should get the patent in a telephone interview. Then I get a second examiner not by my request.
Why do you continue to misrepresent the facts? Your “first examiner” was not a primary. He had no authority to allow the application. The second examiner was the primary examiner — the primary examiner’s name would have been on the patent had it been issued. Look at USP 8036972 (issued 10/11/11) and USP 11367073 (issued 06/21/22). Same primary examiner and assistant examiner as your application. The primary examiner was listed in your first Office Action dated July 27, 2016. You did NOT get a new examiner. I’ve made this point to you before yet you continue to misrepresent the facts. Why are you incapable of being truthful as to this matter?
As an aside, the assistant examiner has been an assistant examiner going back to at least 2009 (see USP 7587361). This indicates (to me) that the USPTO likely doesn’t trust his work. It takes about 4 years to become a primary examiner. That he isn’t a primary examiner now raises a lot of flags about his work product and was probably one of the reasons why he was pulled of writing the Examiner’s Answer.
I have a mental steps rejection, which my colleagues laugh at, and a solution that a million plus working professionals and experts since 1956 could not see with their mental steps, brains or law degrees. I also offered a $500,000 challenge to anyone who thinks they can prove mental steps, no takers.
Since you don’t understand the law, you don’t understand what “mental steps” means as it is being applied by the USPTO. As such, your challenge is meaningless.
Which legal standards do I need to fully comply to get my patent? From what I see, there is no legal standard.
There is a legal standard — you just refuse to understand it. Since you filed your application in 2014, I’ve ushered approximately 700 patent applications through to issuance — a great many of those facing 101 rejections. The USPTO has issued over 1 million utility patents over the last 4 years. A good specification and claims can make a world of difference.
At least I have been given a 1% chance by another poster on this forum, who has not accepted the challenge or offers any definitions.
The average appellant might have a 1% chance, but you don’t have a 1% chance.
concerned
July 8, 2022 05:22 amLab Jedor:
My first examiner told me I should get the patent in a telephone interview. Then I get a second examiner not by my request.
The USPTO and its Board say I meet the law as written by Congress, not the legal version.
I have no s102, s103 or s112 rejections, just a rejection on added words to s101 with no definitions given to us.
My attorney repeatedly asks for definitions of significantly more and inventive concept. Nobody will give us such definitions.
I have a mental steps rejection, which my colleagues laugh at, and a solution that a million plus working professionals and experts since 1956 could not see with their mental steps, brains or law degrees. I also offered a $500,000 challenge to anyone who thinks they can prove mental steps, no takers. Of course not, mental steps is just a capricious “Hail Mary” to invalidate applications with no reality attached to it unless someone wants to man up and take the challenge. No takers, people just want to hide behind their legal B.S.
I have 55 separate documents of evidence on the record, the USPTO offered zero evidence.
Which legal standards do I need to fully comply to get my patent? From what I see, there is no legal standard.
American Axle now has no chance. At least I have been given a 1% chance by another poster on this forum, who has not accepted the challenge or offers any definitions.
Lab Jedor
July 7, 2022 10:57 pmAA may be indefinite or fail in enablement, but abstract it is not. In a working machine nothing is abstract, until one describes what it does before a Court.
I apologize “concerned”, it is really none of my business why you want a patent. If and when your invention complies with all legal conditions you should have a patent and be able to enforce is or put it in a sock drawer. My disappointment is that the sock drawer seems to be the only option left.
Cbc
July 7, 2022 09:04 pmIf the author of this rant had bothered to READ the case, and especially the claims in question, he might not have gotten so hot under the collar. The claims are drawn to the method of tuning a shaft using a liner. There is nothing more than that. The claims do not specify HOW any of this is done. No one could even pretend that the claims were drawn to anything more concrete. Take a shaft and slap a liner on it, pretty much sums up the claims. Yes, the liner is tuned, but there is nothing in the claims to tell how that is done.
Surely, the author does think people should be able to patent an entire field of endeavor by writing unbelievably broad claims. Had the patentee written claims that actually described the way in which the liners were tuned, then they would not have been ineligible.
Moral of the story—patent practitioners will have to do their freaking jobs and actually claim the invention. They can no longer write insanely broad claims.
Silicon Valley Sanguinite
July 7, 2022 08:51 pm@Curious, I definitely agree with your point about Yu v. Apple. That case is about a claim, that in my mind, has all the proper elements of a patent claim to serve the public requirements for patenting, and that case truly hinges on the Alice BS that the court concocted in 2014.
To your point about AA itself, I get that the shaft is a common mechanical device. But for me, that does not make AA an easy case. From my understanding, patent claims are supposed to provide structural limitations that describe the parts, system, or method of an embodiment.
The claim in AA says “positioning the at least one liner within the shaft member such that the at least one liner is configured to [blah blah blah].” It does not say in any unambiguous terms how the shaft should be positioned. While I know this is not my expertise, I would ask someone who’s it is what that actually means structurally.
Does the functional goal in AA to “damp shell mode vibrations” by XX % imply to a POSA, in unambiguous terms, where the shaft should be positioned? I’m not foreclosing that possibility.
But from my perspective, it is a very wishy-washy claim that doesn’t really provide any of the required public notice of the patent laws. And I would probably not present that claim to a client that has in-house IP counsel, because I feel they would ask the same question.
C. W.
July 7, 2022 08:39 pmYou can’t give up, EVER !! So many times against insurmountable odds, many prevailed, haha look at Hannibal and the Roman army. That’s not even in the vocabulary…. this thing about “give up.” Just learn, get creative and double down. Quit holding back already, double-down, let ’em have it, more more more and never stop until they relent !!
Curious
July 7, 2022 08:35 pmI find it frustrating that people get so hung up on American Axle when courts have been so much more callous about software patents. At the end of the day, the main limitation in the ‘911 is a description of a functional goal that imbues NO structure on the claims.
People got hung up on American Axle because it got farther than most. The Supreme Court asked for the Solicitor’s input. The Solicitor said that the Court’s take on 35 USC 101 needs to be clarified. It was a best chance in a long time to SCOTUS to do something. Personally, I thought the invention in Yu v. Apple would have been a much better case to take to the Supreme Court. The invention was easier to understand and it involved software. However, it was a terrible mix of Appellant and Appellee (and who the parties are does make a difference). Regardless, people are upset because now we have to get everybody behind another case (not that there aren’t plenty of candidates), but it just delays things for another year or two.
I would need to refer to the specification to have any idea what structure is associated with the claims.
It involved a shaft — you know, a mechanical thing that has been around for centuries. What is so complicated about that? This is why many were hoping that cert would be granted for American Axle. It is an easy argument to make — how could modifying (i.e., tuning) a shaft be an abstract idea?
But either way, people need to stop making such a big deal out of this case, IMO, given that we don’t even have an indication from the CAFC whether encryption-directed software claims are patentable subject matter at all.
The whole point of American Axle was to get clarification on a mechanical device that could then be used to get computer-implemented inventions past 101.
Little baby Alice
July 7, 2022 08:32 pmIf you spent more time addressing the crimes surrounding my IP, maybe things would have been different.
Silicon Valley Sanguinite
July 7, 2022 08:18 pmI find it frustrating that people get so hung up on American Axle when courts have been so much more callous about software patents. At the end of the day, the main limitation in the ‘911 is a description of a functional goal that imbues NO structure on the claims.
positioning the at least one liner within the shaft member such that the at least one liner is configured to damp shell mode vibrations in the shaft member by an amount that is greater than or equal to about 2%
the at least one liner is also configured to damp bending mode vibrations in the shaft member, the at least one liner being tuned to within about ±20% of a bending mode natural frequency of the shaft assembly as installed in the driveline system
These terms recite functional operational goals, but I would need to refer to the specification to have any idea what structure is associated with the claims. So at the end of the day, they don’t really comply with pre-Alice jurisprudence any way.
At most, (and really in any event) they should be given 112(f) treatment and get coverage for how such features are taught in the specification. But either way, people need to stop making such a big deal out of this case, IMO, given that we don’t even have an indication from the CAFC whether encryption-directed software claims are patentable subject matter at all. And yet we wonder why this country is falling behind in cybersecurity.
concerned
July 7, 2022 07:57 pmCurious @ “Limit Alice’s reach to what the Supreme Court explicitly stated was the similarity: “a fundamental economic practice long prevalent in our system of commerce,” and set up some new regime and then dare to the Supreme Court to change it. If the Federal Circuit wants the Supreme Court’s input, this is how they are going to get it.”
Exactly what “B” is trying to accomplish.
Lab Jedor @ “(sorry “concerned”, but what do you hope to achieve with a patent that the system is not willing to give?)”
I have my reasons. Perhaps not what you would normally think.
An0n
July 7, 2022 05:34 pmSelf castrated ?
Well said
B
July 7, 2022 05:00 pm“Most Patents are Now Officially Invalid under American Axle”
Naaaw, only the ones that involve software, math, or laws of physics.
Bemused
July 7, 2022 04:59 pmIf I had the time (or inclination) I would write an article entitled “Its Time to Give Up on the Charade if US Patent Protection Because Gene Quinn Has Lost Hope”. Those of us who are long-time readers of IPW have marveled at Gene’s multi-decade relentless fight to fix the US patent system and his unwavering support of American inventors. When a warrior like Gene loses hope it’s time for innovators to seriously reconsider spending the money and effort to file US patents.
F22strike
July 7, 2022 03:23 pmGene is right on with his opinion that US patent protection is a charade.
The SCOTUS decisions in eBay, Mayo, Alice, and Oil States, coupled with big-tech’s successful lobbying for the inclusion of IPR proceedings in the AIA, have decimated the US patent system. Large entities should seriously consider early defensive, non-patent publication of the bulk of the results of their R &D not deemed to be essential trade secrets, as a far less expensive alternative to filing US patent applications. Micro-entities and small entities should not file US patent applications at all. Spend the money in Las Vegas instead. At least you will enjoy yourself.
It is now extremely rare for the exclusive rights supposedly afforded by a US patent to be successfully enforced, especially against big-tech. Congress, the SCOTUS, and the CAFC have sanctioned the efficient infringer model of doing business in the US. As a result, innovation and job creation in the US have been severely dis-incentivized. The big-tech monopoly rules in the US and much of what they don’t want to capitalize on is made by Chinese companies.
The IPR process has been weaponized. Very few entities have the money to withstand a seemingly never-ending series of IPR petitions and years of litigation even with regard to inventions that truly changed the world. See Caltech v. Broadcom, Avago and Apple et al. as an example. You are likely using Caltech’s ground-breaking error correction inventions if you are using WiFi right now. After Caltech’s patents survived at least ten IPR petitions the defendants still tried to wiggle out of estoppel. That legal battle drags on, courtesy of the widespread adoption of the efficient infringer theory of doing business in the US. Under that theory it is better to pay tens of millions of dollars in legal fees rather than one cent for patent royalties. Even if you lose, the next patent owner will be deterred from ever attempting to enforce its patents.
Some day the word will get back to foreign companies that US patents are worthless. New filings at the USPTO will inevitably decline. However, to avoid budget cuts the USPTO will simply increase its fees. So you will pay even more to seek a US patent, and even if you get one, it will won’t be worth the paper it is written on. It is an odd coincidence that a patent on an invention with high commercial value is most likely to have its claims canceled as it will have little chance of surviving a seemingly endless stream of IPRs filed by big-tech.
Under the current trajectory patent practitioner in the US is a dying profession. However, few people care about the survival of what is viewed as an arcane livelihood. The real shame is that the powers that be have taken away the incentive to innovate in the US. Not many individuals and companies will want to invest in that which another can legally appropriate. The US economy and the standard of living of its citizens has already begun to decline and will continue on this path unless Congress corrects the situation. Don’t hold your breath for that.
Lab Jedor
July 7, 2022 01:45 pmAnyone doing an invention based on the conviction that a now “strengthened US patent system” will protect their IP and help them become rich is delusional. (sorry “concerned”, but what do you hope to achieve with a patent that the system is not willing to give?)
Even the most bald-faced lying politician is unable to explain how the current owner of a miserable piece of paper called a US Patent is better off than a patent owner 15 years ago.
The US patent system is an industry/bureaucracy with estimated $ 15 Billion annual expenditures. Lots of people have a good to excellent income from that. Large corporations and political interest groups continue to support and participate in this bureaucracy under the condition that it is largely ineffectual. Actually, they keep demanding that it becomes even more ineffectual. And the politicians oblige. In fact, it is to my enormous disappointment how easy it has been to undermine our patent system based on some simple, unproven and most likely, made-up, talking points. Can you imagine a real-estate industry wherein each property deed is re-examined, litigated and invalidated? Well, that is our current patent system.
We need more independent thinkers and inventors, not fewer. We need more inventions (be it abstract or not) that solve our problems. We need engaged citizen inventors that come up with clever new solutions. We need inventors that can start new economic activities based on their inventions. Any politician or Court out there who can assure me that is what the US Patent System does or even promotes as per “intent” of the Constitution about which they like to talk so much? Or how their proposed legislation will achieve that?
Our patent system starts to look like a gypsy moth infestation ( or an LDD moth infestation, to be politically correct) that only ends when all resources have been consumed and nothing is left. Or, to be more specific, like a Kodak. We had all the resources, innovation , technologies and patents, but the main goal was to protect existing interests, using a litany of talking points and seemingly rational decisions to defend a failed strategy and cannibalize resources for continued existence. Gone, all gone!
Curious
July 7, 2022 11:32 amIt’s Time to Give Up on the Charade of U.S. Patent Protection: Most Patents are Now Officially Invalid under American Axle
I would rather say unofficially invalid — at least until the Federal Circuit gets a hold of them. However, as I have written in the past, it isn’t hard to take the logic employed by American Axle, and apply it to just about any invention — no matter the field (chemical, mechanical, electrical, biotech, computer-related). All it takes is a district judge who isn’t interested in trying a patent case and 2 members of the Federal Circuit willing to buy what the judge/defense counsel is selling, and your patent is invalid.
As even casual observers understand, Federal Circuit judges do what they want regardless of precedent.
That’s the truth. However, I think a more accurate telling would be that the precedent is so inconsistent that a Federal Circuit judge need merely pick and choose which one(s) of the myriad of decision(s) they want to follow (and ignore) to get the result they want — regardless of the result.
The Federal Circuit has said repeatedly they are not going to fix anything because they want the Supreme Court to take action, which simply won’t happen, so the industry is now held hostage by a bunch of judges and Justices in a turf war.
Aside from Congress acting on the issue, which is harder than herding 535 cats, probably the only realistic chance of meaningful change would be for the Federal Circuit to do something that hasn’t done in quite some time — actually issue an en banc decision that sweeps away all of the inconsistent case law developed over the past 8 years and replaces it with something less onerous/more consistent.
If the Federal Circuit really wants to the Supreme Court to fix things, that is the best way for them to do it. Create a regime and dare the Supreme Court to affirm it or fix it. It is no secret that former Chief Judge Prost had little interest in fixing things on her watch. However, with Judge Moore at the helm and 2 new members on the Court, perhaps now is the time for the Federal Circuit to fix the problem that they helped create.
Moore need only herd 7 cats (including herself) to get a majority with an en banc decision. In Alice, the Court wrote:
In any event, we need not labor to delimit the precise contours of the “abstract ideas” category in this case. It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here. Both are squarely within the realm of “abstract ideas” as we have used that term.
And this is how the Court made the comparison to Bilski:
On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk. Like the risk hedging in Bilski, the concept of intermediated settlement is “ ‘a fundamental economic practice long prevalent in our system of commerce.’”
Limit Alice’s reach to what the Supreme Court explicitly stated was the similarity: “a fundamental economic practice long prevalent in our system of commerce,” and set up some new regime and then dare to the Supreme Court to change it. If the Federal Circuit wants the Supreme Court’s input, this is how they are going to get it.
The biggest question is: can Moore get 6 more votes to do this?
Greg DeLassus
July 7, 2022 11:21 amIndeed, not surprised at all, Max. One of my previous clients ran the same strategy to good effect.
bill hulsey
July 7, 2022 10:46 amGene,
I don’t disagree with your concern. However, patent jurisprudence is a cyclical and varying over time. However, those who are as respected and acknowledge as are you, need not write such without considering the entire audience they affect. Over the years I have repeatedly point clients to your site. The post affects my consideration in doing so.
The worst we can do is give up. Sometimes, all that we can hold on to is the faith that things with work themselves out in their own time, not ours. Our task is to keep the faith in the principles that guide us in our profession.
Ours is a great Constitution and Art 1, Section 1, clause 8 has added so much to our nation and the world. Without it, entrepreneurs have no hope. Judicial decision will change over time. If we give up, our inventor and entrepreneur clients give up and we all are lost.
I have no interest in our devolving to only seeking John Galt!
S. in-house
July 7, 2022 10:16 amGene’s tone of despair reminded me of a pertinent song (from a Broadway musical) called “A Little Friendly Advice”:
https://youtu.be/8RYsS6ZiREs
MaxDrei
July 7, 2022 10:01 amGreg, you will not be surprised if I tell you that at least one big US corporate client of my firm is currently implementing exactly that strategy. I start to wonder how widely it will now spread, amongst other “folks” resident in the USA.
C. W.
July 7, 2022 08:07 am“the operation of the drive shaft fundamentally relies on Hooke’s law”
haha, Hooke’s law is irrelevant. The vast majority of truck drivers have never heard of Hooke’s Law, and I guarantee none of them ever study it before they start their truck.
It is not needed any more than the law of gravity, which also is fundamentally relied on.
How many pry-bars does it take to unwedge these people’s heads out of their assses ??
Greg DeLassus
July 6, 2022 07:35 pm[I]s perhaps your strategy that other PCT-designated Patent Offices will reveal to the USPTO the eligibility/patentability of the subject matter of the PCT application?
If that is Mr. Q’s suggestion, it is a good one. The U.S. patent system would function a deal better if folks entered the EP stage early and then based their U.S. claim scope around that which was found to be patentable in the EPO.
MaxDrei
July 6, 2022 05:48 pmGene, you write emotionally that it is “probably” now time for innovators to “give up on” patent protection in America, but is this the advice you are going to give any inventors who find their way to your office seeking help to patent their technology-based contributions to the useful arts, their inventive solutions to real problems in technology? Somehow, I doubt it because I see that you still contemplate entering their PCT patent applications into the US national phase.
Or is perhaps your strategy that other PCT-designated Patent Offices will reveal to the USPTO the eligibility/patentability of the subject matter of the PCT application?
Pro Say
July 6, 2022 05:32 pmAmerica: An innovation banana republic.
Time to learn Mandarin.
concerned
July 6, 2022 05:22 pmI did write an IPWatchdog article entitled “Can I hold on long enough until the madness stops?” I have been holding on for 8 years, but not holding my breath. I agree 100% with Mr. Quinn.
If Federal judges can do whatever they want, then use my CAFC appeal to poke SCOTUS in the eye using SCOTUS’ own language in Dobbs.
Why not? What is SCOTUS going to do about it?