Call for Amici: Whatever You Think of In re Killian, Patent Owners Deserve Clarity

“The Killian decision is a precedential opinion that stands for the idea that all software claims, not just business method claims, are patent ineligible [and], if left as is…will increase uncertainty in patent eligibility.”

Editor’s Note: Bud Mathis is counsel for Killian.

https://depositphotos.com/33125311/stock-photo-call-to-action.htmlThe average attorney reading the recent opinion penned by Judge Chen and joined by Judges Taranto and Clevenger in In re Killian (Appeal 21-2113) might agree with Judge Chen’s conclusion that, “[w]hile there are close cases under the Alice/Mayo standard, the ’042 application does not present such a close case[.]” To this statement, I, Killian’s counsel, respond that, every time any claim comes close, the Federal Circuit engages in a predictable fiction in which the court: (1) announces that a claim is directed to “a something” described in such a broad and vague manner that “the something” barely resembles the claim at issue, (2) declares that “the something” that barely resembles the claim at issue is “abstract” based on no evidence or analysis, and then (3) declares that the remaining claim limitations lack an inventive concept.

The Remarkable Resurrection of the Mental Steps Doctrine

As with many Article III courts, the Federal Circuit sometimes refuses to let facts get in the way of a good fiction, and even a cursory reading of every Supreme Court decision since Diehr demonstrates that Benson is no longer a general prohibition on software, but a proscription on a claim that simply recites a mathematical algorithm. One amazing fiction in Killian is where Judge Chen, too busy to actually read Supreme Court case law, remarks (page 17): “At bottom, Diehr did not comment on or overrule the mental steps doctrine.”

Wait! Diehr did not even comment on the mental steps doctrine?

This statement would be funny if it weren’t so incredibly WRONG! A cursory word search of Diehr shows that the term “mental step(s)” occurs 15 times in Diehr while “mental operation(s)” occurs four times, “mental processes” occurs twice, and “mentally” occurs once. Further, Diehr spends copious amounts of text characterizing Benson as merely a bar on claims having a mathematical formula and expressly states (citations omitted), inter alia: (1) “It is said that the [Benson] decision precludes a patent for any program servicing a computer. We do not so hold”; (2) “While a mathematical formula, like a law of nature, cannot be the subject of a patent, cf. Gottschalk v. Benson” (emphasis added); A mathematical formula, as such, is not accorded the protection of our patent laws, Gottschalk v. Benson” (emphasis added); and “In Gottschalk v. Benson, we held that a program for the solution by a digital computer of a mathematical problem was not a patentable process within the meaning of § 101.” (emphasis added). Even Justice Steven’s Dissent saw Diehr as expanding Benson to include software stating that “[t]he broad question whether computer programs should be given patent protection involves policy considerations that this Court is not authorized to address.”

Similar remarks describing Benson as merely a prohibition on math occur in all three of the Bilski, Mayo, and Alice Corp. decisions. While Judge Chen remarks that “Mr. Killian [has not] pointed to any statement in Bilski that undermines a mental process as one of the judicial exceptions,” and “after an independent review, we find nothing in that opinion to that effect,” one wonders exactly what Judge Chen was looking for? The entire reason for the Bilski opinion was to reject the Federal Circuit’s interpretation of Benson. However, does anyone expect the Supreme Court to expressly denounce Benson given an option to quietly harmonize Benson with subsequent case law while using a bit of its own fiction?

If the Federal Circuit is looking for an express statement in Bilski that undermines a mental process as one of the judicial exceptions, the Bilski opinion expressly observes that the Diehr decision “established a limitation on the principles articulated in Benson and Flook” (emphasis added) while also repudiating the Federal Circuit’s machine-or-transformation test.

However, to understand what Bilski represents, one needs to start with a recognition that the claims at issue in Bilski recite a business method untethered from any machine. Lacking a machine or physical transformation, the Federal Circuit en banc rejected the claims under the mental steps doctrine in an opinion written by Chief Judge Michel and joined by eight other judges. This opinion stated, inter alia, “we simply recognized that the Supreme Court has held that mental processes, like fundamental principles, are excluded by § 101’” (emphasis added). Judge Newman criticized the mental steps theory of rejection stating that Bilski’s claimed process “is not a mental process or a law of nature” (emphasis added) but a “process” that was “set out in successive steps, for obtaining and analyzing information and carrying out a series of commercial transactions[.]”

When Bilski reached the Supreme Court, a majority of justices rejected the Federal Circuit’s mental steps theory, and held that the word “process” includes business methods, stating, “Section 101 similarly precludes the broad contention that the term ‘process’ categorically excludes business methods. . . . The Court is unaware of any argument that the ‘ordinary, contemporary, common meaning,’ . . . of ‘method’ excludes business methods.” Thus, the Supreme Court adopted Judge Newman’s interpretation of “process,” downgraded the machine-or-transformation theory of patent eligibility to a mere “clue,” and expressly rejected the mental steps doctrine in favor of plain, ordinary meaning of “process.”

Inventive Concept is Invention

The Federal Circuit has not and will not clarify step two of Alice-Mayo. The only apparent attempt the Federal Circuit made to define “inventive concept” occurred in the en banc CLS Bank v. Alice Corp decision where Judge Lourie stated:

“An ‘inventive concept’ in the § 101 context refers to a genuine human contribution to the claimed subject matter. . . . Accordingly, an ‘inventive concept’ under § 101—in contrast to whatever fundamental concept is also represented in the claim—must be ‘a product of human ingenuity’” (emphasis added).

The immediate problem with the phrase “a genuine human contribution” is that every business method is 100% man-made. The immediate problem with “human ingenuity” is that ingenuity is a synonym for invention. Judge Rader recognized this fact where Judge Rader (joined by Judges Linn, Moore, and O’Malley) issued a lengthy warning on “invention” and how the capricious nature of “invention” wrought chaos to the patent community before the 1952 Patent Act. Judge Rader expressly criticized the above definition of “inventive concept” as “[injecting] an ‘ingenuity’ requirement into the abstract exception inquiry” and surmised, “[i]t is inconceivable to us that the Supreme Court would choose to undo so much of what Congress tried to accomplish in the 1952 Patent Act, and to do so by the use of one phrase in one opinion.”

Thus, at least four Federal Circuit judges have long recognized the dangers of tying “inventive concept” to some vague and undefined notion of human ingenuity recreates the nightmare of “invention.” Judge Rader’s predictions a decade ago on the chaos that would be sown by “inventive concept” have since proved uncannily accurate.

A Call for Amicus

The Killian decision is a precedential opinion that stands for the idea that all software claims, not just business method claims, are patent ineligible. The Killian opinion muddies step one of the Alice-Mayo test, and fails to clarify step two. If left as is, the holding of this case will increase uncertainty in patent eligibility, thus greatly endangering the viability of an enormous number of patents and patent applications.

Further, the Killian decision is an official blessing for the USPTO to make any capricious rejection under the guise of patent eligibility free from the inconveniences of evidence and due process that so plagues the rest of law. Patents are not just property; patents are the life’s blood of small companies and inventors. A granted patent can mean the difference between prosperity and having an entity of greater financial means steal the fruits of one’s labor.  The Supreme Court recognized this fact of modern life in Diehr stating, “[t]o a financial giant, the economic value of a patent may not loom large; to the small software products companies upon which the future of the development of quality software depends, the value of the patent in financing a small company may spell the difference between life and death.”

It’s past time the Federal Circuit clarify how each step in Alice-Mayo      must be made in a unified manner to create binding law on the lower courts and USPTO. However, this will not happen if the patent community sits idle on its thumbs while the Federal Circuit continues to apply this patent eligibility wrecking ball to your clients’ patent portfolio. I therefore urge you to submit an amicus brief asking the en banc Federal Circuit to revisit this case and provide clarity for the patent community.

 

Image Source: Deposit Photos
Image ID: 33125311
Author: amanalang 

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31 comments so far. Add my comment.

  • [Avatar for Intervenor]
    Intervenor
    September 9, 2022 10:19 pm

    The Federal Circuit dismissed the Dobbs argument out of hand but only mentioned Dobbs once and did not actually analyze that argument. Saw this argument raised in a prior IPW article, i.e. https://www.ipwatchdog.com/2022/07/05/will-dobbs-cure-plague-patent-eligibility-nonsense/id=150041/. Regardless of whether one agrees with that argument, the lack of any actual analysis of the Dobbs argument in the Killian opinion amounted to a full dodge by the panel – utterly unenlightening.

  • [Avatar for Night Writer]
    Night Writer
    September 9, 2022 04:54 pm

    >>Just FYI, my clients lost a fortune when a SV mogul came in and stole my clients’ idea by spending $70 MILLION, then putting up a website that looked AMAZINGLY like my clients’ own site.

    This is the modus operandi of large SV firms. This is common.

  • [Avatar for concerned]
    concerned
    September 9, 2022 01:15 pm

    Heavyweights in their respective field, not patents.

    Are there any heavyweights in the field of software patents when 84% of the granted patents are invalidated and no CAFC judge understands the full contours of patent law per Commissioner Vidal? There also has been four s101 articles on IPWatchdog in the last two weeks.

    B is excellent in my view.

  • [Avatar for Curious]
    Curious
    September 9, 2022 01:06 pm

    I’m merely going to respond that you’ve never read the case. Taranto killed the patent because the claim somehow preempted Hooke’s Law.
    You dodging the issue is not becoming of you. I asked for a case cite, and you keep deflecting. Just provide me with a particular case cite that supports your position. You cannot because it isn’t there. The Federal Circuit got it wrong, but for a slightly different reason.

    The problem I find with your arguments is that they are hyperbolic and don’t reflect reality. The problem is that hyperbolic arguments are easy for the other side to counter, which serves to bolster their arguments. Just accurately characterize the decision and move on from there — no need for exaggeration. There is plenty of error to identify without making over-the-top arguments.

    Taranto killed the patent because the claim somehow preempted Hooke’s Law.
    This is a good example of what I’m talking about. Taranto never alleged that the claims preempted Hooke’s Law. In fact, in the dissent, Moore wrote “[t]he majority’s concern is not preemption of a natural law (which should be the focus), but rather that the claims do not teach a skilled artisan how to tune a liner without trial and error.” If you made an argument before the Federal Circuit during oral arguments to the effect that “Taranto killed the patent because the claim somehow preempted Hooke’s Law” they would look cross-eyed at you. You are making up something that just isn’t there.

    Even if you followed up that statement with good arguments, they are going to focus on your misrepresentation and use that to dismiss all of your good arguments.

    Let me give you a strategy tip, when the Court/Board/Examiner is not inclined to your position (which you should know beforehand), they are going to attack your weakest argument — not your strongest argument. For that reason, you should avoid making weak arguments or inaccurate characterizations of the law/facts. Hit them with your best arguments and don’t give them anything to ding you on. For example, you arguing that Bilski and Diehr did away with the “mental steps” doctrine was never going to fly, and it gave Chen a perfect opportunity to address those arguments instead of your better arguments.

    Throwing everything in but the kitchen sink rarely works with the Federal Circuit (or the Board).

  • [Avatar for B]
    B
    September 9, 2022 11:39 am

    @ Curious “ Give me the cite that says “Got a law of physics somewhere in your patent claim – American Axle says its patent ineligible.”

    I’m merely going to respond that you’ve never read the case. Taranto killed the patent because the claim somehow preempted Hooke’s Law.

    The opinion is so laughable that I saw an entire room of people laugh at it at the Senate eligibility hearings.

  • [Avatar for Curious]
    Curious
    September 9, 2022 10:59 am

    You’re kidding, right?
    Nope. Give me the cite that says “Got a law of physics somewhere in your patent claim – American Axle says its patent ineligible.” I ask the question because that is not what American Axle says. You may interpret it that way, but that is not what it says.

    Have you even read the case? Hooke’s Law?
    I have long written on this blog that American Axle was terribly decided. You should come around here more often. You would have read the same and not asked such a silly question. Oh wait, I just come across a couple of article on this blog in which I commented extensively on American Axle and you posted there as well. Hmmm, it seems that your memory is just faulty.

    Licensing in the private sector is one thing. Licensing in the public sector is another.
    Please enlighten us all as to how the presence of a patent impacts anything between the two different sectors.

    I am not that bright (5th grade by some assessments). I am smart enough to surround myself with heavyweights who have won some impressive awards in their respective fields.
    Heavyweights? Really? I judge by work product and results. If your patent application was the result of a so-called heavyweight, perhaps you need to reevaluate how you judge your cohorts.

  • [Avatar for concerned]
    concerned
    September 9, 2022 08:06 am

    “Concerned already said that a prototype has been done for 4 years now. Get it done. Help some people. Make some money.”

    Licensing in the private sector is one thing. Licensing in the public sector is another.

    One attorney, who wanted to join our project, already was paying $10,000 per month to a lobbyist in exchange for contracts totaling $1.2 million per year. The preceding statement was by his own admission to me. Said fact also was in the hometown newspaper regarding articles about contract steering.

    Our group is very well informed and the group could easily pay the $10,000 per month. Not happening under my watch as “play to pay” appears to be an illegal act.

    Many in our group are already successful and do not need to do compromising acts. B’s approach is ethical, whether a person agrees with his arguments, and reminds me of my younger days when many people called me crazy on matters that turned out to be successful.

    The group may get to the desired objective, with or without the patent. If the project is successful, B would be considered by me as a vital piece in that success.

    I am not that bright (5th grade by some assessments). I am smart enough to surround myself with heavyweights who have won some impressive awards in their respective fields.

    Time will tell.

  • [Avatar for B]
    B
    September 9, 2022 12:42 am

    @ Curious “No. Give me the cite”

    You’re kidding, right?

    Have you even read the case? Hooke’s Law?

  • [Avatar for Curious]
    Curious
    September 9, 2022 12:22 am

    Got a law of physics somewhere in your patent claim – American Axle says its patent ineligible.
    No. Give me the cite.

    Got some math somewhere in your patent claim – Electric Power Group and Investpic say its patent ineligible.
    No. Give me the cite.

    Got a business method claim with no laws of physics or math – not technical enough.
    No.

    One of the reason you lose is because you have a poor grasp of the law. If you cannot honestly characterize the law, you have no business being before the Federal Circuit.

    Seriously, when three CAFC judges declare that Diehr doesn’t “touch upon” mental steps, those three judges are incompetent or not motivated to do their jobs.
    The majority opinion in Diehr doesn’t mention mental steps. I already told you that. Why do you persist in making in making inaccurate characterizations of the law?

    And if you’ve ever rejected a business method claim under mental steps … you’ve violated Supreme Court precedent.”
    No. See Mayo. Again, why do you continually misrepresent the law?

    BTW, there is no rejection under Alice-Mayo that you could possibly make, no matter how idiotic and lacking, that the PTAB and Federal Circuit won’t take Herculean efforts to affirm.
    It didn’t take Herculean efforts to affirm Killean – it wasn’t ever close. It wasn’t even close the day it was filed. You got a decision from the Federal Circuit because of all the oddball arguments you made.

    The prototype was developed by my partner at least 4 years ago per the operating agreement.
    So license it then. Make some money and move on.

    Just FYI, my clients lost a fortune when a SV mogul came in and stole my clients’ idea by spending $70 MILLION, then putting up a website that looked AMAZINGLY like my clients’ own site.
    Apparently you didn’t do a good job protecting their intellectual property then.

    Annnnd . . . you know this how? Your extensive business experience? Ever had to raise capital in a competitive market??
    Annnnd people have raised capital without patents. It happens. Have a good enough idea and the money will come. What’s the problem? Also, this application doesn’t require some slick user-facing interface. Concerned already said that a prototype has been done for 4 years now. Get it done. Help some people. Make some money.

  • [Avatar for B]
    B
    September 8, 2022 10:51 pm

    @ Curious ““Let me give you a hint. NOTHING is preventing you from creating software that goes out and does exactly what you describe in your application.”

    Annnnd . . . you know this how? Your extensive business experience? Ever had to raise capital in a competitive market??

    Just FYI, my clients lost a fortune when a SV mogul came in and stole my clients’ idea by spending $70 MILLION, then putting up a website that looked AMAZINGLY like my clients’ own site.

    Ergo, you speak of things you do not know.

  • [Avatar for concerned]
    concerned
    September 8, 2022 09:50 pm

    “Let me give you a hint. NOTHING is preventing you from creating software that goes out and does exactly what you describe in your application. In fact, if you develop the software, you might even come up with some ideas that you could throw in a CIP off your original application and actually get an allowed patent. That would be the SMART thing to do. The LAZY thing to do would be to have your attorney fight a hopeless battle while not paying him a dime to do so.”

    The prototype was developed by my partner at least 4 years ago per the operating agreement. My partner has own a IT company since 1990.

    However, thank you for your hint.

  • [Avatar for B]
    B
    September 8, 2022 04:17 pm

    @ Primary examiner

    BTW, there is no rejection under Alice-Mayo that you could possibly make, no matter how idiotic and lacking, that the PTAB and Federal Circuit won’t take Herculean efforts to affirm.

    Why the USPTO doesn’t just put an Alice-Mayo checkbox on their Summary page, and allow Examiners to forgo all comment astounds me

  • [Avatar for B]
    B
    September 8, 2022 03:18 pm

    @ Primary examiner “I’ve granted patents to applications with both math and bus.method claim with no physics/math.”

    You’re missing my point, respectfully. The point is that the Federal Circuit has held physics and math, or a lack thereof, as grounds to kill a patent claim.

    And if you’ve ever rejected a business method claim under mental steps, rejected a business method claim w/o knowing what an “inventive concept” is, or rejected a business method claim without addressing each and every claim limitation as well-known, routine, and convention, you’ve violated Supreme Court precedent

    “What is being claimed and how it is claimed actually matters.”

    Of course

    “Your statement may apply to some cases, but certainly not all.”

    Respectfully, my statement applies to every business method claim ever rejected by the USPTO, because there is not a single person at the USPTO has the slightest idea what an inventive concept is.

  • [Avatar for Primary examiner]
    Primary examiner
    September 8, 2022 02:34 pm

    “Got some math somewhere in your patent claim – Electric Power Group and Investpic say its patent ineligible.Got a business method claim with no laws of physics or math – not technical enough.”
    I’ve granted patents to applications with both math and bus.method claim with no physics/math.
    What is being claimed and how it is claimed actually matters. Your statement may apply to some cases, but certainly not all.

  • [Avatar for B]
    B
    September 8, 2022 12:40 pm

    @ Curious “Which is a shame. His talents could be better used elsewhere.”

    I respectfully disagree.

    Patent eligibility is the most screwed up area of law in the U.S. because: (1) the SCOTUS doesn’t realize that 102, 103, and 112 are specifically designed to address the issues all these exceptions are created for, and (2) the CAFC is incompetent organization too stupid to read SCOTUS case law and their own case law – not every judge – just a lot of them. Seriously, when three CAFC judges declare that Diehr doesn’t “touch upon” mental steps, those three judges are incompetent or not motivated to do their jobs.

    As to the mess that the courts have created – let me summarize:

    Got a law of physics somewhere in your patent claim – American Axle says its patent ineligible.

    Got some math somewhere in your patent claim – Electric Power Group and Investpic say its patent ineligible.

    Got a business method claim with no laws of physics or math – not technical enough.

    Damned if you do; damned if you don’t

  • [Avatar for concerned]
    concerned
    September 8, 2022 11:19 am

    B is a very talented and compassionate person who may not be wasting his time on this matter, win or lose on the patent. I am very glad to know him.

    And B may not be the only attorney, or group of attorneys, involved in this situation.

    Should things work out, I would personally want to see B rewarded even though I do not think it is about the money to him.

    There are a lot of people involved at this point, all of us giving of our time and money. I am thankful to be a part of the effort.

  • [Avatar for concerned]
    concerned
    September 8, 2022 10:09 am

    I am taking my software/licensing direction from people who have been in this space for decades, especially in the political arena.

    However, thank you for the advice.

  • [Avatar for Curious]
    Curious
    September 8, 2022 09:29 am

    Hopefully, a different view may be what it takes.
    Delusions of grandeur rarely get anyone anyplace in this world.

    B has worked incredibly hard on my case. B works days, nights, weekends and holidays on my appeal and he is doing it at no cost. B is also working the phones.
    Which is a shame. His talents could be better used elsewhere.

    It is easy to be passionate about this case as the people who would gain from my claimed process were born with a disability. The only reason the individuals are not getting their rightful benefit and medical coverage is because a third party made an application mistake, which the person harmed by the error has no idea even occurred due to their diminished mental capacity.
    Let me give you a hint. NOTHING is preventing you from creating software that goes out and does exactly what you describe in your application. In fact, if you develop the software, you might even come up with some ideas that you could throw in a CIP off your original application and actually get an allowed patent. That would be the SMART thing to do. The LAZY thing to do would be to have your attorney fight a hopeless battle while not paying him a dime to do so.

    Why don’t you invest some of your own coin and actually produce a product that you can license? Until you do so, these people with disabilities (i.e., the people you want us to care so very much for) aren’t getting helped in the manner your imagine. Am I right?

    Humans were not doing these (novel/non-obvious) steps or the benefit would not be overlooked, a self evident statement.
    How do you know humans haven’t been doing this before? Obviously, some people are getting benefits from spouses/parents.

  • [Avatar for concerned]
    concerned
    September 8, 2022 06:46 am

    “So says you. However, you have a very odd take on the law that isn’t consistent with how most people are interpreting the law.”

    Hopefully, a different view may be what it takes.

    B has worked incredibly hard on my case. B works days, nights, weekends and holidays on my appeal and he is doing it at no cost. B is also working the phones.

    It is easy to be passionate about this case as the people who would gain from my claimed process were born with a disability. The only reason the individuals are not getting their rightful benefit and medical coverage is because a third party made an application mistake, which the person harmed by the error has no idea even occurred due to their diminished mental capacity.

    Judge Chen stated in the CAFC opinion that my claimed process “is the same process that humans seeking to determine benefit eligibility must follow either with or without a computer.” Of course, the preceding statement is after the world is enlighten by my discovery. Humans were not doing these (novel/non-obvious) steps or the benefit would not be overlooked, a self evident statement. And what discovery cannot be repeated after the world is enlightened?

    Mr. Quinn on my first article said it is shameful that a (novel/non-obvious) process that helps society may be not patentable. The courts are so focused on being right (highly questionable), the courts fail to do right.

  • [Avatar for Curious]
    Curious
    September 7, 2022 11:16 pm

    And I’ll bet that you, like 100% of USPTO examiners, have no idea what an inventive concept is.
    Which is why I rarely focus my arguments on that. Easier to argue Prong Two of Step 2A than Step 2B.

    I’ve seen Electric Power Group cited four times in the last two months.
    There were times when I saw Electric Power Group cited four times in two days. Again, I don’t see Electric Power Group cited much these days.

    Also, if the mental steps doctrine applies, Enfish, DDR Holdings, Trading Technologies, McRO, and a dozen other CAFC cases were wrongly decided, including Berkheimer.
    So says you. However, you have a very odd take on the law that isn’t consistent with how most people are interpreting the law.

  • [Avatar for B]
    B
    September 7, 2022 06:51 pm

    @ Curious

    I’ve seen Electric Power Group cited four times in the last two months.

    Also, if the mental steps doctrine applies, Enfish, DDR Holdings, Trading Technologies, McRO, and a dozen other CAFC cases were wrongly decided, including Berkheimer.

    This I assure you: Investpic and Berkheimer cannot be resolved even by Judge Taranto

    “I’m fighting dozens. I’ve fought dozens in the past – won some, lost some.”

    And I’ll bet that you, like 100% of USPTO examiners, have no idea what an inventive concept is.

  • [Avatar for Curious]
    Curious
    September 7, 2022 02:42 pm

    Yes – Diehr and Alice Corp. being two of them. Unfortunately, the CAFC and USPTO think Electric Power Group overturns these cases
    Electric Power is fairly limited in its scope. I infrequently see it cited these days.

    Either mental steps applies or it does not. Pick one
    They did. It applies. No case says it doesn’t apply.

    at this exact time, I’m fighting two Alice/Mayo software cases at the USPTO
    I’m fighting dozens. I’ve fought dozens in the past – won some, lost some.

    Unfortunately, Chen never read Diehr or Bilski as is evidenced by his opinion
    Unfortunately, I don’t think you read Bilski if you think it helps you. You, of course, are welcome to prove me wrong regarding Bilski. Please feel free to cite some passages from Bilski that you think help your case.

  • [Avatar for Model 101]
    Model 101
    September 7, 2022 11:30 am

    Crazy

  • [Avatar for B]
    B
    September 7, 2022 11:29 am

    @ Mark Summerfield

    I want to apologize for my quick reaction. You are absolutely correct in that the “life or death” statement made in Diehr is quoted from another source. That said, the definition of “state” (“express something definitely or clearly in speech or writing”) fully applies and is not deceptive in the slightest.

    Have a good day

  • [Avatar for B]
    B
    September 7, 2022 11:18 am

    Correction: “That said, your follow-on about the industry growing in leaps and bounds . . . . . not from the majority decision, which starts are 450 U.S. 193

    Steven’s dissent begins on 450 U.S. 193

    Apologies

  • [Avatar for B]
    B
    September 7, 2022 11:16 am

    @ Mark Summerfield “Saying that the Supreme Court ‘stated’ something, where it was merely citing one source, alongside opposing opinions, is dishonest.”

    I see you quoted the word “stated”

    I never said the Supreme Court, “stated” the line at issue. I said, “The Supreme Court recognized this fact of modern life . . . ”

    Dishonestly is to fabricate a quote – even a short one – and then attribute it to me. Seriously, Mark, consider debating on the issues – real issues. The fact you had to fabricate a “quote” says much about you.

  • [Avatar for B]
    B
    September 7, 2022 11:06 am

    @ Curious “No it doesn’t — not even close. There are plenty of precedential decisions that preceded Killian that involved software yet software patents can still be obtained at the patent office.”

    Yes – Diehr and Alice Corp. being two of them. Unfortunately, the CAFC and USPTO think Electric Power Group overturns these cases

    Either mental steps applies or it does not. Pick one. It is capriciously applied, and at this exact time, I’m fighting two Alice/Mayo software cases at the USPTO.

    “As Chen wrote, ‘the ‘042 application does not present such a close case.'”

    I agree. Not even close. Unfortunately, Chen never read Diehr or Bilski as is evidenced by his opinion

  • [Avatar for B]
    B
    September 7, 2022 10:59 am

    @ Mark Summerfield “I was going to be diplomatic, and describe this statement as disingenuous, but that is too kind. This statement is a lie.”

    Dear Mark, So the statement is a lie, and yet it absolutely does appear in Diehr.

    Got it.

    That said, your follow-on about the industry growing in leaps and bounds COMES FROM JUSTICE STEVEN’S DISSENT (450 U.S. 217), not from the majority decision, which starts are 450 U.S. 193

    You do realize that a dissenting opinion is not the same thing as a majority opinion?

    How do dissenting opinions work in Australia?

  • [Avatar for Curious]
    Curious
    September 7, 2022 10:47 am

    “The Killian decision is a precedential opinion that stands for the idea that all software claims, not just business method claims, are patent ineligible [and], if left as is…will increase uncertainty in patent eligibility.”
    No it doesn’t — not even close. There are plenty of precedential decisions that preceded Killian that involved software yet software patents can still be obtained at the patent office. As Chen wrote, “the ‘042 application does not present such a close case.”

    The Remarkable Resurrection of the Mental Steps Doctrine
    This statement would be funny if it weren’t so incredibly WRONG! A cursory word search of Diehr shows that the term “mental step(s)” occurs 15 times in Diehr while “mental operation(s)” occurs four times, “mental processes” occurs twice, and “mentally” occurs once.
    [Sigh] Chen is correct, Diehr does not mention mental steps. The caveat there is that when Chen (or any other judge) speaks about a decision, they speak to the majority opinion unless otherwise indicated. The majority opinion does not refer to mental steps. It is only the dissenting opinion that refers to mental steps.

    “Mr. Killian [has not] pointed to any statement in Bilski that undermines a mental process as one of the judicial exceptions,” and “after an independent review, we find nothing in that opinion to that effect,” one wonders exactly what Judge Chen was looking for?
    Something — anything. If there was something there in Bilski that undermined “a mental process as one of the judicial exceptions,” I would have been citing it for years now.

    Regardless, even if there was something in Bilski that undermined a mental process as a judicial exception, Mayo resurrected it. Specifically, the Supreme Court in Mayo wrote “[p]henomena 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” (citing Benson). Jump up and down about Bilski all you want, but Mayo (and its language pulled from Benson) is still there. The Federal Circuit can, en banc, reverse its own precedent — it cannot reverse the precedent of the Supreme Court. Going down this path is futile.

    Inventive Concept is Invention
    Thus, at least four Federal Circuit judges have long recognized the dangers of tying “inventive concept” to some vague and undefined notion of human ingenuity recreates the nightmare of “invention.”
    You need 7 — 4 Federal Circuit judges isn’t enough. I wish we had 7. However, until there is 7 Federal Circuit judges who want to breath some sanity until 101 jurisprudence your Request for Rehearing at the Federal Circuit is going nowhere. Unless you think both Cunningham and Stark are going to flip, we are left with the status quo.

    However, this will not happen if the patent community sits idle on its thumbs while the Federal Circuit continues to apply this patent eligibility wrecking ball to your clients’ patent portfolio.
    The patent community has not sat idly on its thumbs. Many cases have come to the Federal Circuit asking for the same clarity you ask for. Many Requests for Rehearing have been filed before the Federal Circuit and Petitions for Cert filed before the Supreme Court asking for clarity. Both the Federal Circuit and SCOTUS are uninterested.

    Moreover, even if the Federal Circuit/SCOTUS decided to clarify the law and make software more clearly patent eligible, I suspect that such a clarification would still leave Killian on the outside looking in. Again, Killian’s application was not a close case. The sooner he realizes it, the better off he’ll be. He has a better chance of getting better results with new claims than he will of changing the law.

    You are fighting a battle that has already been lost many times before, and you aren’t bringing anything new to the table that will help turn the tide.

  • [Avatar for Pro Say]
    Pro Say
    September 6, 2022 04:52 pm

    “The paths to a known destination (ineligibility) are many.”

    — The CAFC

  • [Avatar for Mark Summerfield]
    Mark Summerfield
    September 6, 2022 07:14 am

    The Supreme Court recognized this fact of modern life in Diehr stating, “[t]o a financial giant, the economic value of a patent may not loom large; to the small software products companies upon which the future of the development of quality software depends, the value of the patent in financing a small company may spell the difference between life and death.”

    I was going to be diplomatic, and describe this statement as disingenuous, but that is too kind. This statement is a lie.

    The quote appears in a footnote to the Diehr decision, citing the Association of Data Processing Service Organizations, appearing as amicus curiae in Flook. The text referring to this footnote characterises it as “fervent argument that patent protection is essential for the growth of the software industry”, but goes on to observe (citing other sources) that ‘commentators have noted that “this industry is growing by leaps and bounds without it.” In addition, even some commentators who believe that legal protection for computer programs is desirable have expressed doubts that the present patent system can provide the needed protection.’

    Saying that the Supreme Court ‘stated’ something, where it was merely citing one source, alongside opposing opinions, is dishonest. There may be persuasive reasons for people to submit amicus briefs in this case, but this is not one of them.

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