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Rackspace/Red Hat Hand Uniloc A Quick And Significant Defeat ~mw |
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Thursday, March 28 2013 @ 08:40 AM EDT
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Call them non-producing entities or patent trolls, it makes little difference when entities like Uniloc are so quick to run to court to extract their tolls from the high tech community. That's what makes yesterday's major defeat for Uniloc (38 [PDF; Text]) even more satisfying. Not only did Uniloc lose, but it didn't even survive a 12(b)(6) motion in which Rackspace/Red Hat challenged the validity of Uniloc's patent and won.
For those unfamiliar with the U.S. Rules of Civil Procedure, a 12(b)(6) motion is a defense motion to throw out the law suit because the plaintiff has failed "to state a claim upon which relief can be granted." In this case, Red Hat (providing legal counsel on behalf of Rackspace under Red Hat's indemnification) argued that the asserted patent was invalid and, thus, Uniloc failed to state a proper claim. No discovery. No Markman hearing. Nothing but the arguments the defense set forth in its brief (16 [PDF; Text]) and reply brief (25 [PDF; Text]) supporting its motion and oral arguments with respect to the same. Judge Leonard Davis of the Eastern District of Texas agreed that the asserted patent claimed failed as patentable subject matter in contradiction of Section 101 of the Patent Act. GAME. SET. MATCH.
The importance of this case cannot be underscored. It demonstrates that a court that has been favored by patent plaintiffs for years recognizes that there are some really bad patents out there, and the court is not going to hesitate to throw them out at the first opportunity.
The Uniloc patent asserted was U.S. Patent No. 5,892,697. The patent covers a method for processing a floating point number. Uniloc asserted the LInux Kernel infringes Claim 1 of the patent which reads:
A method for processing floating-point numbers, each floating-point number having at least a sign portion, an exponent portion and a mantissa portion, comprising the steps of:
converting a floating-point number memory register representation to a floating-point register representation;
rounding the converted floating-point number;
performing an arithmetic computation upon said rounded number resulting in a new floating-point value; and
converting the resulting new floating-point register value to a floating-point memory register representation.
In other words, Uniloc held a patent on a new, novel, non-obvious method for rounding numbers! And not just in a specific application, but for any possible use of the rounding technique. Now if that is noything more than a mathematical formula with no specific application, then I don't know what is one. What is unbelievable is that the U.S. Patent Office allowed this claim! What were they thinking?
In seeking to have the '697 claim patent declared invalid, the defense focused on three things:
- Claim 1 is nothing more than an abstract idea or mathematical formula that lacks a specific application;
- The remaining claims of the '697 patent do nothing to mitigate this conclusion; and
- Even if Claim 1 is not merely an abstract idea, it fails the machine-or-transformation test.
One case cited by the defense almost perfectly underscored its assertions: Gottschalk v. Benson, 409 U.S. 63 (1972). The Benson patent, like the Uniloc patent, "purported to cover 'the programmed conversion of
numerical information in general-purpose digital computers' from one format to another." This provided a perfect argument for the defense.
Just to make sure this ugly beast didn't raise its head again, the defense also asserted that the '697 patent fails the "machine-or-transformation" test that has been so widely discussed in recent cases, namely In re Bilski. Bilski states that under the "machine-or-transformation" a process may be patentable if “(1) it is tied
to a particular machine or apparatus, or (2) it transforms a particular article into a different state
or thing.” In Dealertrack the court clarified that the “machine” portion of the test requires more than simply performing an
unpatentable process on a general purpose computer. The “particular” machine must impose a
meaningful limit on the scope of the claim, “rather than function solely as an obvious mechanism
for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer
for performing calculations.” In Cybersource the court clarified that the
“transformation” portion of the test cannot be satisfied by the “[m]anipulation or reorganization
of data,” or the transfer of data from one format to another.
In this instance, these arguments struck home. Claim 1 of the Uniloc patent makes no mention of a machine. Further, the claim merely converts a number from one format to another, raw data to raw data in a new format, and the courts have previously held such a conversion does not constitute a transformation. (See, Benson and Cybersource.)
Uniloc was so confident of its position it agreed to the court's resolution of this invalidity question at the 12(b)(6) stage.
How did Uniloc respond to the defense assertions? Oh, no, Claim 1 is not a mathematical formula nor is it abstract! Why? Because it provides a new approach to how a computer actually converts, stores and retrieves floating point numbers. In other words, it goes to how the computer actually works at close to its most fundamental level.
How important is this, Uniloc asks? Important enough for IEEE to promulgate a standard on the processing of floating point numbers in general. According to Uniloc, the '697 patent is an improvement on the IEEE process. (See, plaintiff's response brief (23 [PDF; Text]) and surreply (29 [PDF; Text]))
Incredibly, Uniloc argued that the very specific steps outlined in Claim 1 do not constitute an algorithm despite the fact that they set forth the process a computer (or human being) should follow in order to be more efficient in rounding numbers. Please.
The court was buying none of Uniloc's arguments. While saying the "machine-or-transformation" test alone is not dispositive of invalidity, the court found in favor of the defense on this issue without citing any of plaintiff's arguments to the contrary.
The court then turned to the issue of mathematical formulas and algorithms, concluding:
Claim 1 is, in essence, a formula to “solve mathematical problems of converting one form of numerical representation to another.” Benson, 409 U.S. at 65. Claim 1 recites a four-step method for processing floating-point numbers: (1) convert the floating-point number from a “memory register representation” to a “register representation”; (2) round the result; (3) “perform[] an arithmetic computation” on the rounded result to obtain a new floating-point number; and (4) convert[] the result back to a “memory register representation.” ‘697 Patent, Col. 14:46–56. Plaintiffs argue that the arithmetic operation is not restricted to a specific addition or subtraction. Dkt. No. 23 at 8. Although the type of computation that can fulfill the computing step is not specified, it is limited to an arithmetic operation. The previous step, which involves rounding a number, is also an arithmetic operation. Essentially, Claim 1 uses numeric conversions and arithmetic operations in a prescribed procedure to solve a mathematical problem. Therefore, just as in Benson, Claim 1 discloses a “procedure for solving a given type of mathematical problem.” Benson, 409 U.S. at 65. Consequently, granting a patent on Claim 1 would “pre-empt the mathematical formula and in practical effect . . . be a patent on the algorithm itself.” Id. at 72. Under Benson, Claim 1 is a mathematical formula that is unpatentable under section 101.
And what about Uniloc's argument that this was a new and improved method for rounding numbers? The court said:
“[I]nventions with specific applications or improvements to technologies in the marketplace [may not] be so abstract that they override the statutory language and framework of the Patent Act.” Research Corp., 627 F.3d at 869. However, according to the patent itself, the claims’ novelty and improvement over the standard is the rounding of the floating-point number before, rather than after, the arithmetic computation. ‘697 Patent Col. 4:32–48. So, as in Flook, Claim 1 merely constitutes an improvement on the known method for processing floating-point numbers. Id. at 595 n.18. Claim 1, then, is merely an improvement on a mathematical formula. Even when tied to computing, since floating-point numbers are a computerized numeric format, the conversion of floating-point numbers has applications across fields as diverse as science, math, communications, security, graphics, and games. Thus, a patent on Claim 1 would cover vast end uses, impeding the onward march of science. Benson, 409 U.S. at 68. Under Flook, the improvement over the standard is insufficient to validate Claim 1’s otherwise unpatentable subject matter.
While the result may seem inevitable to many of you, it is especially gratifying that it came from the Eastern District of Texas. Judge Leonard Davis, who rendered this opinion, probably handles as many patent infringement actions as any district court judge in the country. While he didn't enter his judicial career with any particular knowledge of patent law, over the years he has developed a keen sense of the limits of patentability, and this Uniloc patent was over the top. While it is just one more bad patent out of the way, it was disposed of quickly (or at least relatively quickly in light of how long patent litigation often lasts).
Kudos to the esteemed William Lee of Wilmer Cutler and his team who represented Rackspace/Red Hat in this action.
________________________
16
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
UNILOC USA, INC., and UNILOC
LUXEMBOURG S.A.,
Plaintiffs,
v.
RACKSPACE HOSTING, INC., and
RACKSPACE US, INC.,
Defendants.
CIVIL ACTION No. 6:12-cv-375
JURY TRIAL DEMANDED
DEFENDANTS’ BRIEF IN SUPPORT OF THEIR MOTION TO DISMISS
PLAINTIFFS’ COMPLAINT FOR FAILURE TO ALLEGE INFRINGEMENT OF
A PATENTABLE CLAIM UNDER 35 U.S.C. § 101
TABLE OF CONTENTS
I. | INTRODUCTION | | | 2 |
II. | UNILOC’S COMPLAINT | | | 3 |
| A. Uniloc’s Allegation of Infringement | | | 3 |
| B. Asserted Claim 1 | | | 4 |
| C. Claims 2-28 | | | 5 |
III. | UNILOC’S COMPLAINT SHOULD BE DISMISSED UNDER RULE 12(B)(6) | | | 6 |
| A. Section 101 Determinations Can and Should Be Made At the Motion to
Dismiss Stage In Cases Such as This One, Where The Asserted Claims
Are Plainly Not Patentable | | | 6 |
| B. Uniloc has Failed to State a Claim Upon Which Relief May Be Granted
Because the ’697 Patent Claims Are Not Patentable | | | 8 |
| __1. Claim 1 — The Only Claim Identified in the Complaint — Is Not
Patentable, Because it Purports to Claim an Abstract Idea | | | 8 |
| __2. Claims 6-14 and 19-20 Do Not Render the Algorithm Patentable Because
They Purport to Claim the Same Abstract Ideas As Claim 1 | | | 11 |
| __3. Claims 2-5, 15-18, and 21-28 Do Not Render The Algorithm Patentable
Because They Add No More Than Components of A General Purpose
Computer For Making Calculations | | | 12 |
| C. All the Claims Fail the Federal Circuit’s “Machine-or-Transformation”
Test | | | 15 |
IV. | CONCLUSION | | | 17 |
i
TABLE OF AUTHORITIES
Cases | |
Ashcroft et al., v. Iqbal et al.,
556 U.S. 662 (2009) | 2, 6 |
Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada (U.S.),
No. 11-1467, 2012 WL 3037176 (Fed. Cir. July 26, 2012) | passim |
Bell Atlantic Corporation el al. v. Twombly,
550 U.S. 544 (2007) | 2, 6 |
Bilski v. Kappos,
130 S.Ct. 3218 (2010) | 8, 15 |
CyberFone Sys., LLC v. Cellco P'ship,
No. 11-827, 2012 WL 3528115 (D. Del. Aug. 16, 2012) | 7 |
CyberSource Corporation v. Retail Decisions, Inc.,
654 F.3d 1366 (Fed. Cir. 2012) | 2, 12, 15, 16 |
Dealertrack, Inc v. Huber,
674 F.3d 1315 (Fed. Cir. 2012) | 2, 13, 15, 16 |
Glory Licensing LLC v. Toys “R” Us, Inc.,
No. 09-4252, 2011 WL 1870591 (D.N.J. May 16, 2011) | 7, 16 |
Gottschalk v. Benson,
409 U.S. 63 (1972) | passim |
H-W Tech., L.C. v. Apple, Inc.,
No. 3:11-cv-651, 2012 WL 959316 (N.D. Tex. Feb. 23, 2012) | 7 |
In re Bilski,
545 F.3d 943 (Fed. Cir. 2008) | 6, 15, 16 |
Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
132 S.Ct. 1289 (2012) | 1, 2, 8, 13 |
Parallel Networks, LLC v. Abercrombie & Fitch,
No. 6:10-cv-111, 2011 WL 3609292 (E.D. Tex. 2011) | 6 |
Parker v. Flook,
437 U.S. 584 (1978) | 10, 11, 13 |
ii
Prompt Medical Systems, L.P. v. Allscriptsmysis Healthcare,
No. 6:10-cv-71, 2012 WL 678216 (E.D. Tex. Feb. 13, 2012) | 7, 13 |
Tellabs, Inc. v. Makor Issues & Rights, Ltd.,
551 U.S. 308 (2007) | 3 |
Ultramercial, LLC v. Hulu, LLC,
657 F.3d 1323 (Fed. Cir. 2011) | 7 |
WildTangent, Inc. v. Ultramercial, LLC,
132 S.Ct. 2431 (2012) | 7 |
Wilson v. Birnberg,
667 F.3d 591 (5th Cir. 2012) | 3 |
Constitutional Provisions | |
Fed. R. Civ. P. 12(b)(6) | 1 |
iii
MOTION
Defendants Rackspace Hosting, Inc. and Rackspace US, Inc. (collectively “Rackspace”)
respectfully request that the Court dismiss the Complaint filed by Uniloc USA, Inc. and Uniloc
Luxembourg S.A. (collectively, “Uniloc”) under Rule 12(b)(6) of the Federal Rules of Civil
Procedure.
CONCISE STATEMENT OF THE REASONS IN SUPPORT OF THE MOTION
The Court should dismiss Uniloc’s Complaint because it alleges infringement of a patent
directed to abstract ideas and mathematical algorithms. The patent asserted in the Complaint —
U.S. Patent No. 5,892,697 (“’697 patent”) — seeks to establish exclusive rights in the processing
and conversion of numbers. As such, the ’697 patent violates the Supreme Court’s “bright-line
prohibition against patenting . . . mathematical formulas and the like.” Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289, 1303 (2012) (emphasis added).
Indeed, the Supreme Court’s leading decision in Gottschalk v. Benson — addressing
precisely the same issues raised by Uniloc’s claims — compels dismissal of the Complaint. The
patent in Benson, like Uniloc’s ’697 patent, purported to cover “the programmed conversion of
numerical information in general-purpose digital computers” from one format to another.
Gottschalk v. Benson, 409 U.S. 63, 64 (1972) (emphasis added). The Supreme Court held that
the claimed mathematical formulas were not patentable. Id. at 71-72. Moreover, it confirmed in
doing so that the prohibition against patenting abstract ideas and mathematical algorithms applies
regardless of whether the patent claims are drafted as method or apparatus claims, id. at 72, and
regardless of whether they include references to computers or computer components. Id. at 64,
72-74.
Uniloc’s claims also fail the Federal Circuit’s “machine-or-transformation” test. Federal
Circuit case law confirms that the “utilization of a computer for performing calculations” does
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not satisfy the machine prong of this test, Dealertrack, Inc v. Huber, 674 F.3d 1315, 1333 (Fed.
Cir. 2012), and “[m]anipulation or reorganization of data [] does not satisfy the transformation
prong.” CyberSource Corporation v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2012).
As the Supreme Court has emphasized in its recent decisions in Ashcroft v. Iqbal and Bell
Atlantic Corp. v. Twombly, “‘when the allegations in a complaint, however true, could not raise a
claim of entitlement to relief, this basic deficiency should . . . be exposed at the point of
minimum expenditure of time and money by the parties and the court.’” Bell Atlantic
Corporation el al. v. Twombly, 550 U.S. 544, 558 (2007) (quoting 5 Wright & Miller § 1216, at
233-34); see also Ashcroft et al., v. Iqbal et al., 556 U.S. 662, 679 and 85 (2009) (given the
“heavy costs” of litigation, “only a complaint that states a plausible claim for relief survives a
motion to dismiss”). The ’697 Patent plainly violates the Supreme Court’s “bright-line” rules on
patentability. In keeping with the Supreme Court’s decisions in Benson, Iqbal, and Twombly and
this Court’s stated desire to move cases to their proper resolution in a timely and economic
manner, Defendants respectfully request that the Court address this issue now, before the parties
proceed to time consuming and expensive discovery. Uniloc’s Complaint for infringement of the
’697 Patent is fatally flawed, and should be dismissed.
BRIEF IN SUPPORT OF THE MOTION
I. INTRODUCTION
Uniloc’s Complaint should be dismissed because it depends entirely on a claim for patent
infringement that violates the Supreme Court’s “bright-line prohibition against patenting . . .
mathematical formulas and the like.” Prometheus Laboratories, 132 S.Ct. at 1303. Uniloc’s
Complaint alleges infringement of a patent that does nothing more than process numbers — a
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classic unpatentable algorithm. The Complaint fails to state a claim upon which relief can be
granted, and should be dismissed.
II. UNILOC’S COMPLAINT
A. Uniloc’s Allegation of Infringement
Uniloc’s Complaint alleges infringement of “at least claim 1” of U.S. Patent No.
5,892,697. This patent can and should be considered on this motion to dismiss because it is the
basis for Uniloc’s allegations of infringement, and is specifically cited in and attached to the
Complaint. See, e.g., Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308, 322 (2007)
(courts must consider complaint in its entirety, including “in particular documents incorporated
into the complaint by reference,” in ruling on Rule 12(b)(6) motions); Wilson v. Birnberg, 667
F.3d 591, 595 (5th Cir. 2012) (motion to dismiss analysis focuses on “the complaint and its
proper attachments”).
Claim 1, like every other claim in the ’697 patent, is directed to the processing of
numbers that are expressed in a format known as “floating point.” ’697 Patent, Abstract, 1:9-
10.1 The patent describes an alternative method for performing “floating-point arithmetic” that,
in contrast to prior methods, “rounds” the number at a different stage of the algorithm. Id. at
2:66-3:4, 4:33-48. The disclosure asserts that rounding the “operands” rather than the result
increases the efficiency of the “arithmetic operations,” id. at 4:41-45, and allows computers to
more efficiently handle “overflow” and “underflow” situations (where the exponent portion of
________________________________
1 A “floating-point number” is a number in which the decimal point can “float,” moving anywhere relative to the
significant digits, because the change in the decimal point location is compensated for by a corresponding change in
the exponent. For example, the number 12345 x 10-4 can also be written as 1234.5 x 10-3, because when the decimal
“floats” one space to the left, the exponent adjusts accordingly. In this example, the digit 12345 is referred to as the
“mantissa,” and -3 or -4 as the “exponent.” ’697 Patent at 1:28-41. This flexibility in decimal placement allows
floating-point numbers to express a wide range of values, including very large or very small numbers. Id. at 1:54-
58.
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the number is too large or too small to represent) while performing “floating-point arithmetic.”
Id. at 1:54-58; 2:65-3:3.
B. Asserted Claim 1
Uniloc’s Complaint asserts only Claim 1 of the ’697 Patent. Pl.’s Original Complaint For
Patent Infringement (“Complaint”), ¶ 14 (asserting infringement of “at least claim 1”). Claim 1
recites nothing more than a mathematical formula:
1. A method for processing floating-point numbers, each floatingpoint
number having at least a sign portion, an exponent portion
and a mantissa portion, comprising the steps of:
converting a floating-point number memory register representation
to a floating-point register representation;
rounding the converted floating-point number;
performing an arithmetic computation upon said rounded number
resulting in a new floating-point value; and
converting the resulting new floating-point register value to a
floating-point memory register representation.
Id. at 14:46-56 (emphasis added).
The preamble confirms that this is a method claim for processing numbers. The four
claim elements describe how those numbers are processed. The number is first “convert[ed]”
from one format (“floating-point number memory register representation”) to another format
(“floating-point register representation”). Id. at 14:50-51. The converted number is then
“round[ed].” Id. at 14:52. An “arithmetic computation” is then performed on that rounded
number. Id. at 14:53. The resulting value of that arithmetic computation is then “converted”
back into the original format (the “floating-point memory register representation.”). Id. at 14:55-
4
56.2 So the only asserted claim consists entirely of the conversion, rounding, computation, and
reconversion of a number.
C. Claims 2-28
The other ’697 claims do nothing to render patentable the mathematical algorithm
described in Claim 1. Claims 6-14 and 19-20 are dependent on Claim 1, and describe additional
steps that can be taken in the algorithmic process of “converting” the floating-point number from
a “floating-point number memory register representation” to a “floating-point register
representation,” and back again. These steps include, for example, using a “comma code” to
represent the degree of underflow and overflow in the numbers3; “transcribing,” “extending” or
“testing” portions of the numbers; “setting” or “encoding” bits or values; and “add[ing]” or
“subtract[ing]” values from the exponent. Id. at 15:12-59, 16:9-19.
Claims 2-5, 15-18, and 21-28 reference, in addition to these basic algorithms, standard
components of a general computer where these processes might be implemented including, for
example, a “register,” “circuits,” “memory,” and an “arithmetic unit.” Id. at 14:57-15:12, 15:60-
16:8, 16:20-18:18. The patent acknowledges that these structures are not new. Id. at 2:31-32
(prior art used “circuitry to handle overflow and underflow numbers”); id. at 2:36-40 (“[i]n the
current era . . . there are specific floating-point registers and a dedicated floating-point unit. Data
movement, both to and from memory, is handled by floating-point load and store instructions.”).
The specification also makes clear that these structural elements are not integral to the invention.
_______________________
2 The initial “conversion” entails moving data into a format with more placeholders, because the “floating point
register format normally utilizes additional bits beyond those needed for the memory format(s).” Id. at 8:20-22.
The second “conversion” (or reconversion) returns the number to the original memory format with the original
number of placeholders.
3 As the patent specification confirms, the comma code is part of the way the number is expressed in the “memory
representation” format; it appears at the “least significant end” of the mantissa, and indicates the degree to which the
number is too large (overflow) or too small (underflow) to represent. Id. at 7:12-18.
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Id. at 5:57 (“well-known structures and circuits have not been shown in detail in order not to
unnecessarily obscure the present invention.”) (emphasis added).
III. UNILOC’S COMPLAINT SHOULD BE DISMISSED UNDER RULE 12(B)(6)
A. Section 101 Determinations Can and Should Be Made At the Motion to
Dismiss Stage In Cases Such as This One, Where The Asserted Claims Are
Plainly Not Patentable
The primary issue presented by this motion — invalidity under § 101 — is a question of
law. In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008). As the Supreme Court emphasized in its
recent decisions in Ashcroft v. Iqbal, and Bell Atlantic Corp. v. Twombly, “only a complaint that
states a plausible claim for relief survives a motion to dismiss.” Iqbal, 556 U.S. at 679. The
litigation process “exacts heavy costs in terms of efficiency and expenditure of valuable time and
resources . . . .” Id. at 685. Accordingly, “when the allegations in a complaint, however true,
could not raise a claim of entitled to relief, ‘this basic deficiency should . . . be exposed at the
point of minimum expenditure of time and money by the parties and the court.’” Twombly, 550
U.S. at 558 (quoting 5 Wright & Miller § 1216, at 233-34). “It is no answer to say that a claim
just shy of a plausible entitlement to relief can, if groundless, be weeded out early in the
discovery process” or during summary judgment. Id. at 559. Instead, a deficient complaint
should be dismissed at the Rule 12(b)(6) stage.
This Court has similarly recognized that addressing critical legal issues at the outset of a
case can spare substantial burdens on the courts and save the parties very significant sums of
money in legal fees. In Parallel Networks, LLC v. Abercrombie & Fitch, for example, the Court
was able to resolve the case “in a manner of months – as opposed to years – for the vast majority
of Defendants” by addressing three dispositive legal issues at the outset of the case. Parallel
Networks, No. 6:10-cv-111, 2011 WL 3609292 at *10 (E.D. Tex. 2011).
6
Section 101 issues are properly addressed at the motion to dismiss stage in cases, such as
this one, where the asserted patent claims plainly cover subject matter that is not patentable. See,
e.g., Glory Licensing LLC v. Toys “R” Us, Inc., No. 09-4252, 2011 WL 1870591, *1-4 (D.N.J.
May 16, 2011) (dismissing patent infringement complaint for failure to state a claim because
claims covering a “system for processing information” on a programmed computer were directed
to an “abstract idea” and thus unpatentable under § 101).
As the Federal Circuit and this Court have both confirmed, Section 101 issues can be
determined without claim construction. See, e.g., Bancorp Services, L.L.C. v. Sun Life Assur.
Co. of Canada (U.S.), No. 11-1467, 2012 WL 3037176 at *5 (Fed. Cir. July 26, 2012) (noting
that, in Bilski, “the Supreme Court f[ound] subject matter ineligible for patent protection without
claim construction”); Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323, 1325 (Fed. Cir. 2011)
(“the subject matter at stake and its eligibility does not require claim construction”), vacated on
other grounds, WildTangent, Inc. v. Ultramercial, LLC, 132 S.Ct. 2431 (2012); CyberFone Sys.,
LLC v. Cellco P'ship, No. 11-827, 2012 WL 3528115 at *4 (D. Del. Aug. 16, 2012) (holding
claims to the use of a telephone for capturing, processing, and storing data not patentable under
§ 101 “without the benefit of claim construction”); H-W Tech., L.C. v. Apple, Inc., No. 3:11-cv-
651, 2012 WL 959316, at *5 (N.D. Tex. Feb. 23, 2012) (“claim construction may not always be
necessary for determining subject matter eligibility”), report and recommendation adopted, 2012
WL 923751 (N.D. Tex. Mar. 19, 2012); Prompt Medical Systems, L.P. v. Allscriptsmysis
Healthcare, No. 6:10-cv-71, 2012 WL 678216 at *2 (E.D. Tex. Feb. 13, 2012) (Davis, J.) (claim
construction is “not always necessary”).
The dispositive issue of law is whether Uniloc can state a claim for relief based on the
’697 Patent. The patent itself, which Uniloc attached to its Complaint, answers the question:
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Uniloc cannot state a claim for relief because the patent attempts to cover abstract ideas and
mathematical algorithms. The Court can and should address this threshold issue now, before the
parties engage in expensive and time-consuming discovery and claim construction.
B. Uniloc has Failed to State a Claim Upon Which Relief May Be Granted
As the Supreme Court has repeatedly emphasized, “laws of nature, physical phenomena,
and abstract ideas” are “part of the storehouse of knowledge of all men . . . free to all men and
reserved exclusively to none.” Bilski v. Kappos, 130 S.Ct. 3218, 3225 (2010) (quoting Funk
Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948)). Mathematical algorithms
are a paradigmatic example of “abstract ideas.” Benson, 409 U.S. at 65. The Supreme Court
accordingly has enforced “a bright-line prohibition against patenting . . . mathematical formulas
and the like.” Prometheus, 132 S.Ct. at 1303. Uniloc’s Complaint violates this “bright-line
prohibition” and should be dismissed.
1. Claim 1 — The Only Claim Identified in the Complaint — Is Not
Patentable, Because it Purports to Claim an Abstract Idea.
Under black-letter law, Uniloc cannot state a claim for relief based on Claim 1 of the
’697 patent — the only claim specifically referenced in Uniloc’s Complaint — because it claims
a mathematical formula that is not patentable. Claim 1 is quintessentially abstract. It is directed
to a method for processing numbers through format conversions and arithmetic operations, and it
recites no tangible objects whatsoever, and no “physical transformation” of anything. See ’697
Patent at 14:45-56. Instead, the claim recites nothing more than an algorithm that manipulates
data formats, rounds a number, performs a computation, and converts the data back into the
original format.
The Supreme Court’s decision in Benson, involving highly similar patent claims, compels
dismissal of this case. The patent in Benson — like the ’697 patent — was directed to “the
8
programmed conversion of numerical information [sic] in general-purpose digital computers.”
Benson, 409 U.S. at 64. The purported inventors claimed a method of programming a general
purpose computer to convert signals from binary-coded decimal form (“BCD”) into pure binary
form. Id. at 65. The Court held that the claimed formulas for the conversion from one form of
numerical representation to another were not patentable, because they were “mental processes,
and abstract intellectual concepts.” Id. at 67-68. The general computer system referenced in the
patent was not a “particular machine,” and the mathematical conversion was not a sufficient
“[t]ransformation and reduction of an article ‘to a different state or thing.’” See id. at 70-71.
The Court emphasized that “one may not patent an idea,” and warned that this would have been
the practical result of allowing to stand a patent that covered a mathematical algorithm for
converting numbers that had “no substantial practical application except in connection with a
digital computer.” Id. at 71-72.
Uniloc’s ’697 patent not only purports to cover a comparable technology to Benson, but
the claims are also written in almost the same format. Compare Benson, 409 U.S. at 74
(claiming a “processing method for converting binary coded decimal number representations into
binary number representations”); with ’697 Patent, claim 1, 14:45-51 (claiming “a method for
processing floating point numbers” by “converting memory register representations” into
“floating-point register representations.”). Like the claims in Benson, Claim 1’s formula for
“converting” floating-point numbers could be executed entirely within the human mind, or by a
person using a pencil or paper. For example, an individual would be practicing Claim 1 if she:
- wrote down any number in the memory register representation format;
- rewrote it in the register representation format;
- rounded that number in any direction;
9
- added, subtracted, multiplied, or divided that number by any other number; and
- rewrote the result in the original format.
?ul>
See ’697 Patent at 14:45-56.
In fact, Claim 1 of the ’697 patent is even more abstract than the claim rejected by the
Supreme Court in its subsequent decision in Parker v. Flook, 437 U.S. 584, 585 (1978). The
claim at issue in Flook covered a “new and presumably better method for calculating . . . values”
in order to adjust an alarm limit for a catalytic conversion process. 437 U.S. at 594-95. The
claimed method included three steps: measuring operating conditions such as temperature,
pressure, and flow rates; using an algorithm to calculate an updated alarm-limit value; and
adjusting the alarm limit to the updated value. Id. at 585. The algorithm had a practical and
limited application — it was “primarily useful for computerized calculations producing
automatic adjustments in alarm settings.” Id. at 585-86. The Court nevertheless held that the
claim failed as a matter of law because it was “directed essentially to a method of calculating,
using a mathematical formula,” even though the solution had a specific purpose. Id. at 595
(quoting In re Richman, 663 F.2d 1026, 1030 (CCPA 1977)). Claim 1 — in contrast — has no
such link to the physical world. Nor is it limited to any specific, real-world application.
As the Federal Circuit has similarly confirmed, “mental processes” — such as those in
Benson, Flook, and Claim 1 of the ’697 patent — are not patentable, whether they are completed
manually, or require computer implementation. Bancorp, 2012 WL 3037176 at *1-3, 11
(holding unpatentable both independent method claims for tracking the values of life insurance
policies and dependent claims that required this method be “performed by a computer,” because
a computer’s increased efficiency “does not materially alter . . . patent eligibility”).
10
Even if Claim 1 had disclosed a computer or its components — which it does not — such
a recitation would not rescue the unpatentable mental process. The Supreme Court invalidated
the Benson claims in precisely such circumstances, where “the mathematical formula . . . has no
substantial practical application except in connection with a digital computer.” 409 U.S. at 71-
72. Claim 1 is invalid whether its process can be performed by a person using pen and paper, or
may only be practiced on a computer, and this legal result is no accident. Abstract ideas, mental
processes, and mathematical algorithms are unpatentable in every form because they “are not the
kind of ‘discoveries’ that the [Patent] statute was enacted to protect.” Flook, 437 U.S. at 593.
2. Claims 6-14 and 19-20 Do Not Render the Algorithm Patentable
Because They Purport to Claim the Same Abstract Ideas As Claim 1.
Claims 6-14 and 19-20 are as abstract as Claim 1, and do not make the purported
invention patentable. Instead, they simply describe further steps that can be taken in connection
with the format conversion and calculations, without reference to anything more concrete than
“representations” of numbers.
Several of the ’697 claims recite almost exactly the same steps held unpatentable in
Benson. For example, claims 13 and 19 provide for “testing” portions of the number being
processed, just as the method in Benson called for “testing” the binary digit position. Compare
’697 Patent, 15:51-55; with 409 U.S. at 74. Similarly, claims 12 and 14 recite “setting” bits in
the converted format, which was accomplished in Benson by “shifting the signals to the right,”
and subsequently “shifting the signals to the left.” Compare ’697 Patent, 15:47-50 and 15:56-59;
with Benson, 409 U.S. at 74.
The remaining claims are no more transformative. Claims 7-8 are directed to using a
comma code to represent a set of numerical values. Claim 9 recites “transcribing” a portion of a
number. Claim 10 extends the exponent portion of the number. Claim 11 adds to or subtracts
11
from a portion of a number. Finally, Claim 20 encodes an “accuracy value” for a number. None
of these claims pass muster under Section 101, because the “determination of those values, and
their subsequent manipulation, is a matter of mere mathematical computation.” Bancorp, 2012
WL 3037176 at *11 (invalidating patents for managing investments that required determining,
storing, and adjusting multiple values, because they were directed to abstract ideas).
Like Claim 1, these claims represent precisely what Benson warned against: “a patent on
the algorithm itself.” 409 U.S. at 72.
3. Claims 2-5, 15-18, and 21-28 Do Not Render The Algorithm
Patentable Because They Add No More Than Components of A
General Purpose Computer For Making Calculations.
Claims 2-5, 15-18, and 21-28 reference, in addition to the same basic algorithms, various
well-known structures and circuits to facilitate the processing of floating-point numbers.4 These
references to standard computer components cannot evade the Supreme Court’s categorical bar
against patenting mathematical algorithms. As the Court emphasized in Benson, the rule against
patenting abstract ideas cannot be avoided by drafting the claims as a machine or component, or
by claiming that they are implemented on a computer or computer components. Id. at 72.
Indeed, the claims in Benson failed as a matter of law even though they included limitations, like
those in claims of the ’697 patent, referencing the storing and shifting of signals, the testing of
positions, and the use of a “register.” Id. at 73 (quoting claims).
The Federal Circuit has similarly held that “the use of a computer [for] making
calculations or computations . . . fails to circumvent the prohibition against patenting abstract
__________________________
4 While Claims 22-28 are purportedly apparatus claims, this does not change the analysis, or render them any less
abstract. Benson, 409 U.S. at 67-68, 72 (the “same principle applies” to product and process claims); Bancorp, 2012
WL 3037176 at *9 (Fed. Cir. July 26, 2012) (holding a machine or system “equivalent to an abstract mental process
for purposes of patent ineligibility.”); CyberSource, 654 F.3d at 1374 (Fed. Cir. 2011) (“[r]egardless of what
statutory category . . . A claim’s language is crafted to literally invoke, we look to the underlying invention for
patent-eligibility purposes.”). The form of claiming is particularly a distinction without a difference here, because
the apparatus claims merely paraphrase the method claims, and “appear to be no more than object[s] on which the
method operates.” Bancorp, 2012 WL 3037176 at *8.
12
ideas and mental processes.” Bancorp Services, 2012 WL 3037176 at *1-3, 9, 11 (holding
unpatentable claims that required method be “performed by a computer,” because a computer’s
increased efficiency “does not materially alter . . . patent eligibility”). As the Federal Circuit
recognized in Cybersource, this is “precisely the holding of the Supreme Court in Gottschalk v.
Benson.” Cybersourcesee also
Prometheus Laboratories, 132 S.Ct. at 1301 (“implementing a mathematical principle on a
physical machine, namely a computer, [is] not a patentable application of that principle”);
Dealertrack, 674 F.3d at 1333 (“computer-aided” limitation does not render a claim patentable).5
The ’697 Patent’s only independent apparatus claims merely employ a computer to
perform calculations. Claim 22, for example, recites “means for performing an arithmetic
operation.” ’697 Patent, 16:48-65. Similarly, Claim 25 discloses “an arithmetic logic unit for
performing arithmetic operations.” Id. at 17:7-18:8. The patent nowhere claims that these
hardware elements are anything more than standard elements of a general purpose computer.
________________________
5 Because these claims of the ’697 Patent merely implement a mathematical principle on a computer, they are
fundamentally different from claims that have been held to contain eligible subject matter. The ’697 Patent
produces no tangible product. See, e.g., Research Corp Technologies, Inc. v. Microsoft Corp., 627 F.3d 859, 869
(Fed. Cir. 2010) (patentees did “not seek to patent a mathematical formula,” but claimed a process for rendering
higher quality halftone images). The ’697 Patent is not inextricably linked to a particular machine. See, e.g., SiRF
Technology, Inc. v. Int’l Trade Com’n, 601 F.3d 1319, 1332-1333 (Fed. Cir. 2010) (process for identifying the
location of a particular GPS receiver was unlike the “utilization of a computer for performing calculations,” because
the method would be impossible to execute without the particular GPS, whose position was “the precise goal of the
claims”). And the ’697 Patent adds no practical limitation or application to its mathematical formula. See, e.g., CLS
Bank Int’l v. Alice Corp. Pty. Ltd., 685 F.3d 1341, 1351 (Fed. Cir. 2012) (recognizing that use of a computer to
perform calculations cannot render a claim subject matter eligible, and finding patentability based on the “practical
application of a business concept in a specific way”); see also Prompt Medical Sys., 2012 WL 678216 at *8 (patent
did “not designate[] a mathematical algorithm as its point of novelty,” but rather covered a method for generating
medical treatment codes based on doctor-patient encounters). Far from rescuing the claims of the ’697 Patent, these
decisions confirm the claims’ fatal flaw: they disclose nothing more than the implementation of a mathematical
formula for processing floating point numbers. See, e.g., Flook, 437 U.S. at 585 (no subject matter eligibility exists
where “the only novel feature of the method is a mathematical formula”).
13
Reciting a “computer” to perform calculations cannot rescue the ’697 Patent, and neither
can reciting standard parts of a computer. Benson, 409 U.S. at 72 (warning against “indirect
attempts to obtain patents and avoid the rejection by [claiming] a machine or components
thereof programmed in a given manner”) (quoting The President’s Commission on the Patent
System, emphasis added). In fact, the “register” element that appears in every apparatus claim of
the ’697 patent was also present in the method claim deemed unpatentable in Benson. Compare
409 U.S. at 74; with ’697 Patent at 16:48-18:18, Claims 22-28.6
Disclosing such computer elements is particularly unavailing when the “mathematical
procedures can be carried out in existing computers long in use, no new machinery being
necessary.” Benson, 409 U.S. at 67. The ’697 Patent does not — and could not — assert that the
“memory” referenced in Claims 18 and 22-24, the “arithmetic unit” referenced in Claims 15-17,
21, 25-26, or the “circuit(s)” referenced in Claims 2-5 and 25-28 represent “new machinery.”
Instead, the patent disclaims any purported novelty for these elements, acknowledging that the
invention employs “well known structures and circuits.” ’697 Patent at 5:56-59 (“well-known
structures and circuits have not been shown in detail in order not to unnecessarily obscure the
present invention”); see also id. at 2:31-32 (prior art used “circuitry to handle overflow and
underflow numbers”); id. at 2:38 (prior art microprocessors already contained a “dedicated
floating-point unit”); id. at 5:51-56 (although the patent describes “specific bit lengths, register
contents, block diagrams, etc . . . [i]t will be obvious, however, to one skilled in the art that these
specific details need not be used to practice the present invention”).
________________________
6 This element also appears in method Claim 21. Id. at 16:33.
14
C. All the Claims Fail the Federal Circuit’s “Machine-or-Transformation” Test
Prior to the Supreme Court’s decision in Bilski, the Federal Circuit evaluated Section 101
issues using a “machine-or-transformation” test. In Bilski, the Supreme Court held that, although
this is “not the sole test” for determining whether a patent covers eligible subject matter, it can be
a “useful and important clue.” Bilski, 130 S.Ct. at 3227.
Under the “machine-or-transformation” test, a process may be patentable if “(1) it is tied
to a particular machine or apparatus, or (2) it transforms a particular article into a different state
or thing.” Bilski, 130 S.Ct. at 3225-26 (quoting In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008)
(en banc)). However, the “machine” portion of the test requires more than simply performing an
unpatentable process on a general purpose computer. The “particular” machine must impose a
meaningful limit on the scope of the claim, “rather than function solely as an obvious mechanism
for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer
for performing calculations.” Dealertrack, Inc., 674 F.3d at 1333. Moreover, the
“transformation” portion of the test cannot be satisfied by the “[m]anipulation or reorganization
of data,” or the transfer of data from one format to another. CyberSource, 654 F.3d at 1375
(holding that such manipulation of data was merely “the incidental use of a computer to perform
[a] mental process”).
Claim 1 of the ’697 Patent recites no machine whatsoever. As the patent acknowledges,
the “floating-point number memory register representation” and “floating-point register
representation” referenced in these claims are simply “formats,” ways in which certain numbers
are presented. See, e.g., ’697 Patent at 1:10-13 (the purported invention “is directed to a
technique for representing floating-point numbers in a memory register format and floating point
15
register format”) (emphasis added); see also 5:27-32 (Fig. 2 “illustrates a memory register
format representation,” and Fig. 3 “illustrates a floating-point register format representation”).
As for the transformation portion of the test, as Benson confirms, “conversion” of a
number from one format to another is not a patentable transformation. Benson, 409 U.S. at 70,
74 (conversion of numbers from one representative format to another not patentable). The ’697
patent fails the transformation test, because it does “not transform the raw data into anything
other than more data.” Bancorp, 2012 WL at *5; see also CyberSource, 654 F.3d at 1375
(“[m]anipulation or reorganization of data [ ] does not satisfy the transformation prong”); Glory
Licensing, 2011 WL 1870591 at *5 (where data “is merely transferred from one format . . . to
another . . . a transformation cannot be said to have taken place.”).
The remaining unasserted claims are equally deficient. Claims 6-14, and 19-20, like
Claim 1, are method claims that reference no physical apparatus, and merely disclose steps in the
mathematical algorithm. Claims 2-5, 15-18, and 21-28 fare no better, because they simply recite
standard elements of a general purpose computer, and do not disclose any particular machine
that would pass the “machine-or-transformation” test. See Benson, 409 U.S. at 64 (claim
directed to converting numbers on “general purpose computers,” not limited to “any particular
apparatus,” was not patentable); see also Dealertrack, 674 F.3d at 1333 (subject matter cannot be
made patent-eligible “through the utilization of a computer for performing calculations”).
Moreover, all the claims fail the transformation portion of the test, because they do “not
transform the raw data into anything other than more data.” Bancorp, 2012 WL 3037176 at *5.
Instead, the ’697 Patent merely processes numbers. Such “[p]urported transformations or
manipulations simply of . . . abstractions cannot meet the test because [numbers] are not physical
objects or substances.” In re Bilski, 545 F.3d at 963.
16
IV. CONCLUSION
In summary, all the claims of the ’697 patent are unpatentable because they express no
more than abstract ideas and mathematical algorithms, and fail the “machine-or-transformation”
test. No relief may be granted on Uniloc’s Complaint for patent infringement. Rackspace
accordingly requests that the Court dismiss the Complaint.
Dated: August 27, 2012
Respectfully submitted,
/s/ Michael E. Jones
Michael E. Jones
SBN : 10929400
Potter Minton P.C.
[address telephone email]
OF COUNSEL:
William F. Lee
Cynthia D. Vreeland
Monica Grewal
Adam S. Gershenson
WILMER CUTLER PICKERING
HALE AND DORR LLP
[address telephone]
Corey McCaffrey
WILMER CUTLER PICKERING
HALE AND DORR LLP
[address telephone]
Christine Capuyan
WILMER CUTLER PICKERING
HALE AND DORR LLP
[address telephone email]
Attorneys for Defendants Rackspace Hosting,
Inc. and Rackspace US, Inc.
17
CERTIFICATE OF SERVICE
The undersigned hereby certifies that all counsel of record who are deemed to
have consented to electronic service are being served with a copy of this document via
the Court’s CM/ECF system per Local Rule CV-5(a)(3)(A) on August 27, 2012.
/s/ Michael E. Jones
18
23
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
UNILOC USA, INC. and UNILOC
LUXEMBOURG S.A.,
Plaintiffs,
v.
RACKSPACE HOSTING, INC. and
RACKSPACE US, INC.,
Defendants.
CIVIL ACTION NO. 6:12-cv-00375
JURY TRIAL DEMANDED
PLAINTIFFS’ OPPOSITION TO DEFENDANTS’ DISMISS FOR FAILURE
TO ALLEGE INFRINGEMENT OF A PATENABLE CLAIM UNDER 35 U.S.C. § 101
TABLE OF CONTENTS
I. | INTRODUCTION | 1 |
II. | SUMMARY OF ARGUMENTS IN FAVOR OF CLAIM 1 | 3 |
III. | BACKGROUND OF THE ‘697 PATENT | 3 |
IV. | THE INVENTION DESCRIBED IN CLAIM 1 | 4 |
V. | ARGUMENTS AND AUTHORITIES | 6 |
| A. Claim 1 Does Not Describe a Mathematical Algorithm | 7 |
| B. Claim 1 is Not an Abstract Expression | 9 |
| C. Machine or Transformation Test is Not Dispositive | 11 |
VI. | CLAIMS 2 - 28 | 12 |
VII. | CONCLUSION | 14 |
ii
TABLE OF AUTHORITIES
CASES
Bilski v. Kappos,
130 S. Ct. 3218 (2010) | 7, 11 |
Diamond v. Diehr,
450 U.S. 175 (1981) | 7 |
Doe ex rel. Doe v. Dallas Indep. Sch. Dist.,
153 F.3d 211 (5th Cir. 1998) | 2 |
Gottschalk v. Benson,
409 U.S. 63 (1972) | 7, 8, 9 |
In re Bilski,
545 F.3d 943, 951 (Fed. Cir. 2008) | 2 |
Lormand v. US Unwired, Inc.,
565 F.3d 228, 232 (5th Cir. 1998) | 1 |
Mackay Radio & Tel. Co. v. Radio Corp. of America,
306 U.S. 86, 94 (1939) | 9 |
Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
475 U.S. 574, 587 (1986) | 1 |
Microsoft Corp. v. i4i Ltd. P’ship,
131 S. Ct. 2238, 2242 (2011) | 1 |
Parker v. Flook,
437 U.S. 584, 588 (1978) | 8, 9 |
Prompt Med. Sys., L.P. v. AllscriptsMysis Healthcare Solutions, Inc.,
No. 6:10-CV-71, 2012 U.S. Dist. LEXIS 30694 (E.D. Tex. Feb. 13, 2012) | 11 |
Research Corp. Techs. v. Microsoft Corp.,
627 F.3d 859, 868 (Fed. Cir. 2010) | 9, 10, 11 |
State St. Bank & Trust Co. v. Signature Fin. Group,
149 F.3d 1368, 1370 (Fed. Cir. 1998) | 2 |
Ultramercial, LLC v. Hulu, LLC,
657 F.3d 1323, 1327 (Fed. Cir. 2011) | 11 |
iii
STATUTES & AUTHORITIES
Rule 12(b)(6) | 1-2, 14 |
35 U.S.C. § 101 | 1-3, 6-8, 11-14 |
35 U.S.C. § 112 | 12 |
35 U.S.C. § 282 | 1 |
iv
Plaintiffs, Uniloc USA, Inc. and Uniloc Luxembourg S.A. (together “Uniloc”),
respectfully submit this opposition to Defendants’ Motion to Dismiss Uniloc’s Complaint for
Failure to Allege Infringement of a Patentable Claim under 35 U.S.C. § 101. For the reasons set
forth herein, Defendants’ motion should be denied.
Uniloc alleges that Defendants Rackspace Hosting, Inc. and Rackspace US, Inc.
(collectively, “Rackspace”) have infringed and continue to infringe United States Patent No.
5,892,697 (the “‘697 patent”). In lieu of answering, Rackspace filed a motion to transfer the case
to the Western District of Texas (Dkt. No. 17) and the present motion to dismiss under Rule
12(b)(6).
I. INTRODUCTION
In the Fifth Circuit, a Rule 12(b)(6) motion to dismiss for failure to state a claim “is
viewed with disfavor and rarely granted.” Lormand v. US Unwired, Inc., 565 F.3d 228, 232 (5th
Cir. 2009). Rackspace’s Motion, however, does not argue that Uniloc’s Complaint suffers from
a pleading defect; rather, it seeks summary judgment of invalidly. By using Rule 12(b)(6) to
cloak what is otherwise a request for judgment on the merits, Rackspace seeks to circumvent the
rigorous clear and convincing evidence standard required to invalidate a patent presumed valid
by statute. 35 U.S.C. § 282; see also Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2242
(2011) (“We consider whether § 282 requires an invalidity defense to be proved by clear and
convincing evidence. We hold that it does.”); Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
475 U.S. 574, 587 (1986) (“[on] summary judgment the inferences to be drawn from the
underlying facts . . . must be viewed in the light most favorable to the party opposing the
motion.”).
1
Because of this, Rackspace’s Motion is untimely and not the appropriate vehicle to raise
arguments related to the validity of the asserted patent under 35 U.S.C. § 101, especially given
that infringement contentions have not been served nor has there be a claim construction ruling
in this case. See Doe ex rel. Doe v. Dallas Indep. Sch. Dist., 153 F.3d 211, 220 (5th Cir. 1998)
(“The Rule 12(b)(6) motion . . . must be distinguished from a motion for summary judgment
under Rule 56, which goes to the merits of the claim and is designed to test whether there is a
genuine issue of material fact. The Rule 12(b)(6) motion…only tests whether the claim has been
adequately stated in the complaint.”); see also In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008)
(In analyzing validity under 35 U.S.C. § 101, claim construction “is an important first step.”)
(citing State St. Bank & Trust Co. v. Signature Fin. Group, 149 F.3d 1368, 1370 (Fed. Cir. 1998)
(noting that whether a claim is invalid under § 101 “is a matter of both claim construction and
statutory construction”)). Accordingly, the Motion should be dismissed on these grounds alone.
Despite the foregoing, Uniloc generally agrees with Rackspace that a quick resolution of
this issue on the merits will advance this litigation. Therefore, Uniloc will dedicate most of this
Opposition to addressing the merits of Rackspace’s arguments concerning whether the claims of
United States Patent No. 5,892,697 (the “‘697 Patent”) meet the requirements for patentability
under 35 U.S.C. § 101.
In addition, to further narrow the issues, Uniloc represents to the Court that it will only be
asserting Claim 1 of the ‘697 Patent against Rackspace in this lawsuit. While Uniloc is not
required to make this decision at this time (as no date for the serving of infringement contentions
has been set), Uniloc believes such election will allow the Court to most efficiently focus on the
one claim at issue in this suit instead of the 27 other claims of the ‘697 Patent. Accordingly,
Uniloc’s arguments, found below, primarily involve Claim 1 of the ‘697 Patent.
2
II. SUMMARY OF ARGUMENTS IN FAVOR OF CLAIM 1
This Court should deny Rackspace’s request to dismiss Uniloc’s claims of infringement,
as the claims of the asserted patent meet the requirements for patentability under 35 U.S.C § 101.
Rackspace’s motion, which relies heavily on the Supreme Court’s Benson decision, is based on a
mischaracterization of the inventions described in the ‘697 Patent. As will be shown below, the
‘697 Patent describes and claims an improved way to process certain types of numbers inside a
computer. This process is neither a mathematical formula nor an abstract idea and therefore falls
within the zone of subject matter eligible for patent protection under 35 U.S.C § 101.
III. BACKGROUND OF THE ‘697 PATENT
The ‘697 Patent describes an improved method and apparatus to process floating-point
numbers. ‘697 Patent (Dkt. No. 1-2), Col. 1:8-9. Floating-point numbers are numbers having
digits to the right of the decimal point in a computer (e.g., 12.897). Floating-point numbers
described in the ‘697 Patent have at least three fields: (i) a sign (to indicate whether the number
is positive or negative), (ii) an exponent field (which allows for the representation of very large
or small numbers) and (iii) a mantissa (the “body” of the number). ‘697 Patent, Col. 1:18-32.
Due to their nature, digital computers (both at the time of the invention and today) have to
process floating-point numbers in a significantly different way than integers. Thus, adding 2 and
2 together is, from a computer’s standpoint, very different than adding 2.1 and 2.1.
Not only is the computation of floating-point numbers different, it is more difficult than
processing integers. The adding of 2 and 2 is a trivial operation for a computer, compared to
adding 2.1 and 2.1. This complexity stems, in part, from having to process the various fields that
make up the floating-point number. In many instances, microprocessors have dedicated circuits
3
to process floating-point numbers. ‘697 Patent, Col. 2:36-46.
When a particular floating point number is not being operated on, it may be stored in
memory (i.e., RAM) associated with the microprocessor. But, when the floating-point number is
to be operated on by the microprocessor, it is moved into a special memory unit called a register.
Once in the correct register, the microprocessor can perform arithmetic computations on the
number. Id.
In the early 1980’s, the Institute of Electrical and Electronics Engineers (IEEE)
standardized a method for processing floating-point numbers in a computer. See ‘697 Patent,
Col. 1:18-21. This standard was promulgated as IEEE Standard 754. This Standard ultimately
enjoyed wide adoption, and was implemented in various Intel processors that powered billions of
PCs around the world. See Exh. A, p. 6 (“According to one IEEE 754 revision committee
member, [the Standard] has been the ‘pivotal flagship example of IEEE standards and one of the
most implemented and far-reaching of any IEEE standard.’ Since 1984, more than 1.2 billion
Intel processors alone have confirmed to the [IEEE 754 Standard].”). While this standard was
helpful in presenting a unified process by which computer manufacturers and software
developers could perform arithmetic computations on floating point numbers, it was
computationally time intensive to implement certain portions of the standard. ‘697 Patent, Col.
2:24-35. Thus, efforts were made to improve the standard to cut down on the time it took to
process floating point numbers.
IV.THE INVENTION DESCRIBED IN CLAIM 1
As described in the ‘697 Patent, Claim 1 outlines improvements to the IEEE Standard
and the processing of floating-point numbers in general. First, the inventor of the ‘697 Patent
realized that the format of a floating-point number, as stored in memory (i.e., RAM), may not be
4
the optimal format for the number once it is loaded into a register. ‘697 Patent, Col. 2:36-46.
Given that millions (or perhaps billions) of floating-point numbers can be stored in RAM
associated with a microprocessor, it is important to minimize the amount of memory used to
store each number. But, when a floating-point number is moved to a register, of which there are
relatively few, the format of the number needs to be optimized for speed of processing (i.e., the
amount of memory used to store the number in a register is not as important a consideration as
when the number is stored in memory). Id.
Second, the inventor also realized that computational efficiencies could be realized over
what was present in the IEEE Standard if the operand (i.e., the number on which a computation
is to be performed) is rounded prior to the actual arithmetic operation, as opposed to rounding
the result of the operation itself. As stated in the ‘697 Patent:
Utilizing the value in the floating-point register converted by the load means from
the memory register, the arithmetic logic means performs its computation upon
the operand. However, prior to doing so it first rounds the value. By rounding,
the arithmetic logic means replaces the inaccurate portion of the mantissas of the
arithmetic unit operands by either all zero bits, all one bits, the accuracy section of
the mantissa, or the complement of the accuracy section. Rounding, and thereby
adjusting, the operand is contrary to the IEEE 754 rounding of results. The benefit
of rounding the operand instead of the result is that carry propagation is
eliminated and no exponent adjustment is required. Additionally, due to the lack
of result rounding, arithmetic operations have a more efficient implementation. In
particular, it becomes possible to have fewer pipeline stages or eliminate
conditionally performed pipeline stages thereby shortening the total logic delay of
the arithmetic operation.
‘697 Patent, Col. 4:32-48 (emphasis added). In other words, ‘697 Patent goes against the
teaching of the IEEE 754 standard by rounding a number before a mathematical operation is
performed on the number, thereby allowing for a more efficient processing of the number.
These advancements are captured in the language of Claim 1, presented below. The
middle column recites the actual claim language, while the right hand column describes how the
5
corresponding step achieves the benefits of the invention.
Step
No. |
Claim Element | Description of the Step |
| A method for processing floating-point
numbers, each floating-point number having
at least a sign portion, an exponent portion
and a mantissa portion, comprising the steps
of: |
The preamble sets forth the components
of the floating point number to be
processed. |
1 | converting a floating-point number memory
register representation to a floating-point
register representation; |
The format of the floating-point number
is changed from how it is represented in
memory to how it is represented in a
floating-point register. |
2 | rounding the converted floating-point
number; |
The floating-point number is rounded
prior to being operated upon. |
3 | performing an arithmetic computation upon
said rounded number resulting in a new
floating-point value; |
An arithmetic computation is performed
on the rounded floating-point number. |
4 | converting the resulting new floating-point
register value to a floating-point memory
register representation. |
Finally, the format of the new floatingpoint
number is converted back to the
format used to store the number in
memory. |
V. ARGUMENTS AND AUTHORITIES
Title 35 U.S.C. § 101 states that “[w]hoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
Claim 1, which by its own terms and read in the context of the ‘697 Patent, describes an
improved method for processing floating-point numbers. The Claim itself then lists a number of
process steps by which floating-point numbers are processed. In the absence of any other
authority, this explanation alone should settle any issues about the patentability of Claim 1 under
35 U.S.C. § 101 - the Claim purports to be an improvement of an existing process by which
6
floating-point numbers are processed - which is statutory subject matter by the very words of the
statute.
But, as most recently stated by the Supreme Court, there are “three specific exceptions to
§ 101’s broad patent-eligibility principles: ‘laws of nature, physical phenomena, and abstract
ideas.’ While these exceptions are not required by the statutory text, they are consistent with the
notion that a patentable process must be ‘new and useful.’” Bilski v. Kappos, 130 S. Ct. 3218,
3225 (2010) (internal citations omitted). Rackspace states that Claim 1 falls into two of these
exceptions: (1) the Claim is unpatentable because it is a mathematical formula/algorithm (and
hence a “law of nature’), see Diamond v. Diehr, 450 U.S. 175, 186 (1981) (“We defined
‘algorithm’ as a ‘procedure for solving a given type of mathematical problem,’ and we
concluded that such an algorithm, or mathematical formula, is like a law of nature, which cannot
be the subject of a patent.”), and (2) the Claim is unpatentable because it is an abstract idea.
These are distinct concepts and will be addressed separately below.
A. Claim 1 Does not Describe a Mathematical Algorithm
Rackspace repeatedly states that Claim 1 recites a mathematical formula or an
unpatentable algorithm. This is incorrect, as Claim 1 does not recite any general mathematical
algorithm, let alone a particular mathematical formula of the type found improper in Benson.
See generally Gottschalk v. Benson, 409 U.S. 63 (1972). Instead, Claim 1 covers a method for
generally processing floating-point numbers. Such a determination can be made from a simple
inspection of the “performing” step in Claim 1 (step 3). This step requires an arithmetic
computation to be performed, but is not limited to any particular one. It could be multiplication,
division, a logarithmic operation, etc. Likewise, the conversion steps do not require the
application of any particular mathematical formula, let alone recite a mathematical formula.
7
The lack of a specific mathematical formula in Claim 1 is fatal to Rackspace’s attempt to
apply the holdings of Benson and Flook. In Benson, the Supreme Court found that the claimed
method recited a specific mathematical formula, that this formula was only useful in a digital
computer, and that if patentability of the claim at issue was upheld, it would “wholly pre-empt
the mathematical formula and in practical effect would be a patent on the algorithm itself.”
Benson, 409 U.S. at 72. The specific formula is discussed by the Supreme Court on pp. 66-67 of
the opinion.
In Flook, the Supreme Court rejected a claim under 35 U.S.C. § 101 because it also
recited a specific mathematical formula (and contained no other point of novelty). Parker v.
Flook, 437 U.S. 584, 588 (1978). Claim 1 from Flook is reproduced below:
1. A method for updating the value of at least one alarm limit . . . comprising the
catalytic chemical conversion of hydrocarbons wherein said alarm limit has a
current value of Bo+K wherein Bo is the current alarm base and K is a
predetermined alarm offset which comprises:
(1) Determining the present value of said process variable, said present value
being defined as PVL;
(2) Determining a new alarm base B1, using the following equation:
B1=Bo(1.0-F)+PVL(F), where F is a predetermined number greater than zero and
less than 1.0;
(3) Determining an updated alarm limit which is defined as B1+GK; and
thereafter
(4) Adjusting said alarm limit to said updated alarm limit value.
Id. at 596-597. As can be seen in the preamble of the claim and in steps 1-3, a series of variables
are defined (e.g., Bo+K and PVL), then the variables are used to determine a new base alarm
value in step 2 (value B1). Finally, an updated alarm value is calculated by adding B1+GK.
After reviewing this series of steps, the Supreme Court concluded that the “mathematical
formula” was what one thinks of in terms of formula - it takes a series of definite inputs, applies
8
certain arithmetic operations to them, then generates a definite output. Id. at 586 (“Using the
formula, an operator can calculate an updated alarm limit once he knows the original alarm base,
the appropriate margin of safety, the time interval that should elapse between each updating, the
current temperature (or other process variable), and the appropriate weighting factor to be used
to average the original alarm base and the current temperature.”).
Thus, in both Benson and Flook, the Supreme Court prohibited the naked patenting of a
particular mathematical formula, stating that such formulas were akin to “laws of nature” and
free for anyone to use. Id. at 589. In Flook, the Court hedged its wording to some extent by
signaling that mathematical equations could be part of a valid claim if it contained significant pre
or post processing. Id. at 591 (“While a scientific truth, or the mathematical expression of it, is
not patentable invention, a novel and useful structure created with the aid of knowledge of
scientific truth may be.” (quoting Mackay Radio & Tel. Co. v. Radio Corp. of America, 306 U.S.
86, 94 (1939)).
These holdings, therefore, are not applicable to Claim 1 because it does not purport to
cover any particular mathematical formula or algorithm and certainly does not explicitly recite
one. Unlike the claims at issue in Benson and Flook, one cannot extract an equation from Claim
1 such as E=mc2, Area = length * width, PV=nRT, or the algorithms expressly recited in the
claims at issue in Benson and Flook. Given the lack of a mathematical equation, Claim 1 does
not fall into the exception of being a “law of nature.”
B. Claim 1 is not an Abstract Expression
For an otherwise qualifying claim to be an “abstract expression”, the Federal Circuit has
stated that the “disqualifying [abstract] characteristic should exhibit itself so manifestly as to
override the broad statutory categories of eligible subject matter and the statutory context that
9
directs primary attention on the patentability criteria of the rest of the Patent Act.” Research
Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 868 (Fed. Cir. 2010). The Federal Circuit went
on to state that “this court notes that inventions with specific applications or improvements to
technologies in the marketplace are not likely to be so abstract that they override the statutory
language and framework of the Patent Act.” Id.
And that is the precise case at hand. The ‘697 Patent specifically describes certain
aspects of the IEEE 754 Standard and discusses (and claims) perceived improvements to that
Standard. See ‘697 Patent, Col. 4:32-48 (quoted above). Also as mentioned above, the
processes and algorithms described in this Standard have been implemented in billions of
microprocessors. Given the wide adoption of IEEE 754 and its incorporation to actual products
in the marketplace, it cannot be said that the Standard itself is some abstract expression.
The improvement to this Standard recited by Claim 1 is likewise not abstract and is
exactly the type of invention the Federal Circuit was referring to when it said “specific
applications or improvements to technologies in the marketplace [i.e., IEEE 754 Standard] are
not likely to be so abstract that they override the statutory language and framework of the Patent
Act.” In the ‘697 Patent, the specification explicitly discusses rounding an operand before a
mathematical operation is performed on it, states that this is “contrary to the IEEE 754 rounding
of results” (‘697 Patent, Col. 4:40-1) and then goes on to specifically claim such improvement.
Thus, the “rounding before operating” improvement to the computing arts recited in Claim 1 is a
definite and substantive advancement to a concrete industry standard. It should therefore not be
lightly mischaracterized as some form of useless “abstract expression.”
In addition to the sequence of rounding an operand followed by an arithmetic operation,
the “conversion” steps in Claim 1 (steps 1 & 4) also contribute to the efficiency by which certain
10>
processors can process floating-point numbers. See ‘697 Patent, Col. 2:36-46. These steps
require converting a floating-point number that is composed of three specific fields (a sign,
exponent and mantissa) from one format to another before and after rounding the operand and
performing an arithmetic operation. Uniloc asserts that, when analyzed in the context of the ‘697
Patent, these steps are also definite and not abstract.
Thus, when viewed in its entirety, Claim 1 recites a specific and definite improvement to
a widely recognized international standard for processing floating-point numbers. These types of
improvements have been explicitly recognized by the Federal Circuit as being “not likely” to be
so abstract as to run afoul of 35 U.S.C. § 101, contrary to the arguments set forth by Rackspace.
C. Machine or Transformation Test is Not Dispositive
As has been realized by several Courts, “Information Age” inventions are less suited for
analysis under the so-called Machine or Transformation (MoT) Test than traditional “Industrial
Age” inventions. See Prompt Med. Sys., L.P. v. AllscriptsMysis Healthcare Solutions, Inc., No.,
6:10-CV-71, 2012 U.S. Dist. LEXIS 30694, at *12-13 (E.D. Tex. Feb. 13, 2012) (“The Federal
Circuit and a plurality of the Supreme Court have recognized that the machine-or-transformation
test, though particularly useful for evaluating the patentability of Industrial Age technology, may
be less appropriate for evaluating technologies rooted in the Information Age.”) (citing
Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323, 1327 (Fed. Cir. 2011) (“While machine-ortransformation
logic served well as a tool to evaluate the subject matter of Industrial Age
processes, that test has far less application to the inventions of the Information Age.”)). This
realization coupled with the Supreme Court’s Bilski decision has greatly lessened the importance
of the MoT Test today. Accordingly, no analysis of Claim 1 under the MoT Test is presented
herein. Instead, the analysis above proceeds as described in Research Corp. and in Prompt Med.
11
Sys., where, instead of determining whether the claim under scrutiny passes a particular test, the
focus is on whether a claim that would otherwise be proper under 35 U.S.C. § 101 falls within
one of the three recognized exceptions to patentability (laws of nature, physical phenomena, and
abstract ideas).
VI. CLAIMS 2-28
Given Uniloc’s representation that it will only be asserting Claim1 in this lawsuit, Uniloc
has not focused on the other claims in the ‘697 Patent - claims 2-28. Uniloc notes, however,
these other claims have additional limitations that bear on an analysis under 35 U.S.C. § 101,
despite arguments to the contrary from Rackspace in its Motion.
For example, Rackspace states that the “‘697 Patent does not - and could not - assert that
the . . . ‘circuit(s)’ referenced in [Claim 2] . . . represent ‘new machinery’.” Contrary to
Rackspace’s claim, the ‘697 Patent does exactly that. Claim 2 requires a “load primary control
logic circuit.” Claim 2 requires that this circuit operate in a mode for “load[ing] an exact
number, load[ing] with implied maximal accuracy encoding, load[ing] with accuracy encoding
only for normal numbers and not for underflow or overflow numbers, and load[ing] with
accuracy for all numbers.” Several of these operations are identified with various objects of the
invention. See ‘697 Patent, Col. 4:57 - 5:13. Given the close tie between the language of Claim
2 and the various objects of the invention, Rackspace’s sweeping comment that this language
adds nothing to the § 101 analysis is simply wrong. Instead, Claim 2 adds meaningful
restrictions to Claim 1 by including the use of hardware that performs operations central to the
inventive aspects of the ‘697 Patent.
Another example - independent Claim 22 has five elements written in means-plusfunction
language that would require an analysis under 35 U.S.C. § 112, ¶ 6 to properly analyze
12
its structural elements. Rackspace has attempted no such undertaking. Instead, Rackspace
makes misleading statements such as “Claim 22, for example, recites ‘means for performing an
arithmetic operation.’ . . . The patent nowhere claims that [this] hardware element [is] anything
more than [a] standard [element] of a general purpose computer.” Rackspace Motion, p. 13. The
full element being cited to by Rackspace is a “means for performing an arithmetic operation
upon at least one converted floating-point value based upon said selected accuracy and
rounding.” The ‘697 Patent contrasts the arithmetic unit of the present invention with a unit
operating according to the IEEE Standard:
Once rounded, floating-point addition, subtraction, multiplication and division is
performed in the arithmetic circuit logic block 62 using the two modified
operands. It should be understood that for the present invention, the arithmetic
computations are performed on pairs of operands representing a range of values,
whereas the IEEE 754 floating-point operands represent single binary numbers.
‘697 Patent, Col. 12:17-23 (emphasis added). In light of this disclosure that specifically
differentiates the operation of the arithmetic circuit logic block (referred to in Claim 22 as the
“means for performing an arithmetic operation”) from the operation of a prior art arithmetic logic
unit, Rackspace’s claim that the “means for performing an arithmetic operation” is a “standard
element of a general purpose computer” should be dismissed.
Rackspace’s goes on to make other generalized arguments with respect to the other
elements in Claim 22, as well as the other claims of the ‘697 Patent. These arguments suffer
from similar deficiencies as the ones noted above. Rackspace picks and chooses various claim
elements to focus on and mischaracterizes various portions of the specification, but never
presents a full analysis of any particular claim. Given this lack of scrutiny, Rackspace certainly
has not met its burden of proving that each and every claim of the ‘697 Patent is invalid under 35
U.S.C. § 101 by clear and convincing evidence. But, given Uniloc’s statement that it is willing
13
to stand or fall on Claim 1, a claim by claim analysis, by either party, is not believed to be
necessary for disposition of Rackspace’s Motion.
VII. CONCLUSION
For the foregoing reasons, Claim 1 of the ‘697 Patent does not fall within any of the
Supreme Court’s narrow, specific exceptions to patentability under 35 U.S.C. § 101. Therefore,
Rackspace’s “request[] that the Court dismiss [Uniloc’s] Complaint” under Rule 12(b)(6) should
be denied. Rackspace Motion, p. 17.
Dated: September 13, 2012
Respectfully submitted,
/s/ Barry J. Bumgardner
Barry J. Bumgardner
Lead Attorney
Texas State Bar No. 00793424
Steven W. Hartsell
Texas State Bar No. 24040199
NELSON BUMGARDNER CASTO, P.C.
[address telephone fax]
James L. Etheridge
Texas Bar No. 24059147
ETHERIDGE LAW GROUP, PLLC
[address telephone fax email]
T. John Ward, Jr.
Texas State Bar No. 00794818
J. Wesley Hill
Texas State Bar No. 24032294
WARD & SMITH LAW FIRM
[address telephone email]
14
ATTORNEYS FOR PLAINTIFFS UNILOC
USA, INC. AND UNILOC LUXEMBOURG S.A.
CERTIFICATE OF SERVICE
I hereby certify that on the 13th day of September, 2012, I electronically filed the
foregoing document with the clerk of the court for the U.S. District Court, Eastern District of
Texas, Tyler Division, using the electronic case filing system of the court. The electronic case
filing system sent a “Notice of Electronic Filing” to the attorneys of record who have consented
in writing to accept this Notice as service of this document by electronic means.
/s/ Barry J. Bumgardner
15
25
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
UNILOC USA, INC., and UNILOC
LUXEMBOURG S.A.,
Plaintiffs,
v.
RACKSPACE HOSTING, INC., and
RACKSPACE US, INC.,
Defendants.
CIVIL ACTION No. 6:12-cv-375
JURY TRIAL DEMANDED
DEFENDANTS’ REPLY IN SUPPORT OF THEIR MOTION TO DISMISS
PLAINTIFFS’ COMPLAINT FOR FAILURE TO ALLEGE INFRINGEMENT OF
A PATENTABLE CLAIM UNDER 35 U.S.C. § 101
TABLE OF CONTENTS
I. | INTRODUCTION | | 1 |
II. | UNILOC’S RESPONSES CANNOT PREVENT DISMISSAL UNDER RULE
12(B)(6) | | 1 |
| A. The Court Can and Should Find Claim 1 Unpatentable at the Motion to
Dismiss Stage | | 1 |
| B. The Supreme Court’s Decision in Benson Compels Dismissal of the
Complaint | | 3 |
| __1. Claim 1 is Virtually Indistinguishable from the Claims at Issue in Benson | | 3 |
| __2. Uniloc’s Argument That Claim 1 is Less Specific Than the Benson Claims
Confirms that Claim 1 is Not Patentable | | 6 |
| 3. Claim 1 Is Not Limited to any Specific Applications or Improvements | | 8 |
| C. Uniloc Does Not Dispute That Claim 1 Also Fails The Machine-or-
Transformation Test | | 10 |
III. | CONCLUSION | | 10 |
i
TABLE OF AUTHORITIES
Cases
Ashcroft v. Iqbal,
556 U.S. 662 (2009) | 1 |
Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada (U.S.),
687 F.3d 1266 (Fed. Cir. 2012) | 3, 7, 9, 10 |
Bell Atlantic Corporation v. Twombly,
550 U.S. 544 (2007) | 1, 3 |
Bilski v. Kappos,
130 S. Ct. 3218 (2010) | 2, 10 |
Cybersource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366 (Fed. Cir. 2011) | 4, 9, 10 |
Glory Licensing LLC v. Toys “R” Us, Inc.,
No. 09-4252, 2011 WL 1870591 (D.N.J. May 16, 2011) | 2, 7 |
In re Bilski,
545 F.3d 943 (Fed. Cir. 2008) | 2, 7 |
In re Warmerdam,
33 F.3d 1354 (Fed. Cir. 1994) | 4 |
Microsoft Corp. v. i4i Ltd. P'ship,
131 S. Ct. 2238 (2011) | 3 |
OIP Technologies v. Amazon.com, Inc.,
No. 12-cv-01233 Dkt. No. 50 (N.D. Cal. Sept. 11, 2012) | 2, 7 |
Parallel Networks, LLC v. Abercrombie & Fitch,
No. 6:10-cv-111, 2011 WL 3609292 (E.D. Tex. Aug. 12, 2011) | 3 |
Parker v. Flook,
437 U.S. 584 (1978) | 9 |
Phoenix Licensing, L.L.C. v. Aetna, Inc.,
No. 2:11-cv-285, Dkt. No. 186 (E.D. Tex. Sept. 12, 2012) | 2 |
Research Corp. Techs. v. Microsoft Corp.,
627 F.3d 859 (Fed. Cir. 2010) | 8, 9 |
Vacation Exchange, L.L.C. v. Wyndham Exchange & Rentals, Inc.,
No. 12-cv-04229, Dkt. No. 27 (N.D. Cal. September 18, 2012) | 2, 5 |
ii
Other Authorities
5 Wright & Miller § 1216 | 1, 3 |
iii
I. INTRODUCTION
As Uniloc’s opposition brief confirms, Rackspace’s motion to dismiss presents a narrow
issue of law that can and should be addressed on a motion to dismiss. Uniloc has acknowledged
that it intends to assert only one claim of the ’697 patent—Claim 1—and there is no dispute that,
if this sole asserted claim is not patentable, Uniloc’s Complaint should be dismissed. Indeed,
Uniloc agrees that “a quick resolution on this issue will advance this litigation,” and that the
Complaint will “stand or fall on Claim 1.” Pl. Opp. Br. at 2, 14.
The Complaint cannot stand, because Claim 1 recites no more than a method for
processing and converting numbers—precisely what the Supreme Court declared not patentable
in Gottschalk v. Benson, 409 U.S. 63, 64 (1972). The Court accordingly should dismiss Uniloc’s
Complaint, because it cannot state a plausible claim for relief. See Bell Atlantic Corporation v.
Twombly, 550 U.S. 544, 558 (2007) (quoting 5 Wright & Miller § 1216, at 233-34) (“when the
allegations in a complaint, however true, could not raise a claim of entitlement to relief, ‘this
basic deficiency should . . . be exposed at the point of minimum expenditure of time and money
by the parties and the court.’”); Ashcroft v. Iqbal, 556 U.S. 662, 679 and 685 (2009) (given the
“heavy costs” of litigation, “only a complaint that states a plausible claim for relief survives a
motion to dismiss”).
II. UNILOC’S RESPONSES CANNOT PREVENT DISMISSAL UNDER RULE
12(B)(6)
A. The Court Can and Should Find Claim 1 Unpatentable at the Motion to
Dismiss Stage
Uniloc does not dispute that issues of patentability under 35 U.S.C. § 101 can be properly
addressed on a motion to dismiss as a matter of law, policy, and efficient judicial administration.
See Def. Op. Br. at 6-8; see Pl. Opp. Br. at 2. Indeed, since Uniloc filed its brief, two district
court decisions have granted motions to dismiss for precisely the grounds sought here. Vacation
1
Exchange, L.L.C. v. Wyndham Exchange & Rentals, Inc., Ex. No. 1, No. 12-cv-04229, Dkt. No.
27 at 1-3 (N.D. Cal. September 18, 2012) (dismissing patent infringement complaint for failure
to state a claim under § 101 because claims were abstract, and thus not patentable, finding claim
construction “not necessary” under Federal Circuit precedent); OIP Technologies v.
Amazon.com, Inc., Ex. No. 2, No. 12-cv-01233 Dkt. No. 50 at 1, 7-8 (N.D. Cal. Sept. 11, 2012)
(dismissing patent infringement complaint for failure to state claim under § 101, and rejecting
argument that claim construction would bear on analysis); see also Glory Licensing LLC v. Toys
“R” Us, Inc., No. 09-4252, 2011 WL 1870591, *1-4 (D.N.J. May 16, 2011) (dismissing patent
infringement complaint for failure to state a claim under § 101).
Uniloc references the importance of claim construction generally, but like the plaintiffs in
Vacation Exchange and OIP Technologies, Uniloc’s opposition brief “fails to explain how
claim[] construction would materially impact the § 101 analysis in the instant case.” OIP
Technologies, No. 12-cv-01233 at 7; see also Vacation Exchange, No. 12-cv-04229 at 2-3.1
Moreover, although Uniloc cites the Federal Circuit’s decision in Bilski for the proposition that
claim construction can be “an important first step” in the § 101 analysis, the Federal Circuit and
Supreme Court both held the claims at issue in that case not patentable without claim
construction. See Bilski v. Kappos, 130 S. Ct. 3218, 3231 (2010); In re Bilski, 545 F.3d 943
(Fed. Cir. 2008); see also Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687
________________________
1 Although a few courts have delayed a ruling on patent-eligibility where the claims required construction, both
parties have agreed that a quick resolution is appropriate in this case. Pl. Opp. Br. at 2. Moreover, Uniloc’s sole
asserted claim is not patentable under any reasonable construction, including Uniloc’s own chart, submitted as a
“Description of the Step[s]” recited in Claim 1. See Pl. Opp. Br. at 6; cf. Phoenix Licensing, L.L.C. v. Aetna, Inc.,
Ex. No. 3, No. 2:11-cv-285, Dkt. No. 186 (E.D. Tex. Sept. 12, 2012) (reserving determination under § 101, given
claim construction dispute over claims in four patents).
2
F.3d 1266, 1273 (Fed. Cir. 2012) (emphasis added) (Bilksi “f[ound] subject matter ineligible for
patent protection without claim construction.”).2
Most fundamentally, Uniloc “generally agrees” with Rackspace that a “quick resolution”
of the § 101 issue in this case will advance this litigation. Pl. Opp. Br. at 2. The Court
accordingly should address this single dispositive issue of law now, “‘at the point of minimum
expenditure of time and money by the parties and the court.’” Twombly, 550 U.S. at 558
(quoting 5 Wright & Miller § 1216, at 233-34); see also Parallel Networks, LLC v. Abercrombie
& Fitch, No. 6:10-cv-111, 2011 WL 3609292 at *10 (E.D. Tex. Aug. 12, 2011) (resolving case
“in a manner of months–as opposed to years–for the vast majority of Defendants” by addressing
three dispositive legal issues at outset of case).
B. The Supreme Court’s Decision in Benson Compels Dismissal of the
Complaint
1. Claim 1 is Virtually Indistinguishable from the Claims at Issue in
Benson
Uniloc does not dispute that, under Benson, “the programmed conversion of numerical
information in general-purpose digital computers” is not patentable. Benson, 409 U.S. at 64; see
Pl. Opp. Br. at 7-9. Benson recognized that these processes for converting numbers are
mathematical algorithms that cannot be patented because they disclose no more than “mental
processes, and abstract intellectual concepts.” Benson, 409 U.S. at 67. Indeed, such claims are
manifestly abstract as a matter of law, because “manipulation of basic mathematical constructs
[is] the paradigmatic ‘abstract idea.’” Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d
____________________________
2 Uniloc also suggests that Rackspace’s motion seeks to import a lower standard for invalidating the ’697 Patent, but
the preponderance-of-the-evidence standard governs the invalidity analysis under § 101 regardless of when that
inquiry occurs, because subject matter eligibility is an issue of law. Microsoft Corp. v. i4i Ltd. P'ship, 131 S. Ct.
2238, 2253 (2011) (Breyer, J., concurring) (the clear and convincing evidentiary standard that generally governs
inquiries into patent invalidity “applies to facts and not to questions of law.”); Cybersource, 654 F.3d at 1369
(“[i]ssues of patent-eligible subject matter are questions of law.”).
3
1366, 1372 n.2 (Fed. Cir. 2011), quoting In re Warmerdam, 33 F.3d 1354, 1355, 1360 (Fed. Cir.
1994).
Uniloc attempts to distinguish Claim 1 of the ’697 patent based on the argument that—in
contrast to Benson—it does not recite any “particular mathematical formula.” Pl. Opp. Br. at 7.
But the claims cannot be distinguished. As the chart below demonstrates, both sets of claims
indisputably relate to the same thing, the “programmed conversion of numerical information.”
Benson, 409 U.S. at 64.
’697 Patent, Claim 1 | Benson, Claim 13 | Benson, Claim 8 |
A method for
processing floating-point
numbers, each floating-point
number having at least a sign
portion, an exponent portion
and a mantissa portion,
comprising the steps of:
converting a floatingpoint
number memory
register representation to a
floating-point register
representation; |
A data processing
method for
converting binary
coded decimal number
representations into binary
number representations
comprising the steps of |
The method of
converting signals
from binary coded decimal
form into binary which
comprises the steps of |
rounding the
converted floating-point
number;
performing an
arithmetic computation upon
said rounded number resulting
in a new floating-point value;
converting the
resulting new floating-point
register value to a floatingpoint
memory register
representation. |
(1) testing each binary
digit position ‘1,’ beginning
with the least significant
binary digit position, of the
most significant decimal digit
representation for a binary ‘0’
or a binary ‘1’;
(2) if a binary ‘0’ is
detected, repeating step (1)
for the next least significant
binary digit position of said
most significant decimal digit
representation;
(3) if a binary ‘1’ is |
(1) storing the binary
coded decimal signals in a
reentrant shift register,
(2) shifting the signals
to the right by at least three
places, until there is a binary
‘1’ in the second position of
said register,
(3) masking out said
binary ‘1’ in said second
position of said register,
(4) adding a binary ‘1’
to the first position of said |
4
’697 Patent, Claim 1 | Benson, Claim 13 | Benson, Claim 8 |
|
detected, adding a binary ‘1’
at the (i+1)th and (i+3)th least
significant binary digit
positions of the next lesser
significant decimal digit
representation, and repeating
step (1) for the next least
significant binary digit
position of said most
significant decimal digit
representation;
(4) upon exhausting
the binary digit positions of
said most significant decimal
digit representation, repeating
steps (1) through (3) for the
next lesser significant decimal
digit representation as
modified by the previous
execution of steps (1) through
(3); and
(5) repeating steps (1)
through (4) until the second
least significant decimal digit
representation has been so
processed. |
register,
(5) shifting the signals
to the left by two positions,
(6) adding a ‘1’ to said
first position, and
(7) shifting the signals
to the right by at least three
positions in preparation for a
succeeding binary ‘1’ in the
second position of said
register. |
Claim 1, like the Benson claims, recites no more than a numerical conversion involving
format manipulation, rounding, and computation. Indeed, Uniloc does not even dispute the
dispositive fact that, like the Benson claims, Claim 1 discloses a mental process that could be
performed “as a person would do it by head and hand.” Benson, 409 U.S. at 65; Pl. Opp. Br. at
7-9; see also Vacation Exchange, No. 12-cv-04229 at 1-3 (dismissing complaint where claimed
method was “indistinguishable from the tasks that a human would perform manually.”). A
person could readily perform the format conversions, rounding and arithmetic required by Claim
1. Uniloc’s brief confirms as much by recognizing that the floating point numbers to be
5
processed can be as elementary as “2.1,” and the operation can be as basic as “addition,”
“multiplication,” or “division.” Pl. Opp. Br. at 3, 7; see also id., Ex. A at 9 (describing how a
version of floating-point arithmetic generates “results . . . as people expect them, identical to
what would be obtained using pencil and paper.”).
2. Uniloc’s Argument That Claim 1 is Less Specific Than the Benson
Claims Confirms that Claim 1 is Not Patentable
Uniloc argues that Claim 1 is less abstract than the claims invalidated in Benson because
Claim 1 is less “specific,” does not disclose any “particular” formula, and is “not limited” to any
discrete mathematical operation. Pl. Opp. Br. at 7-8. This argument defies logic and stands
precedent on its head. Arguing that less specificity makes a claim less abstract fails to
distinguish Claim 1 from Benson for at least two reasons.
First, the argument misconstrues Benson. The Benson claims did not recite a particular
mathematical formula. Instead, they disclosed “a generalized formulation for programs . . . of
converting one form of numerical representation to another.” Benson, 409 U.S. at 65. Claim 1
purports to patent precisely the same thing: a program for “generally processing” a type of
number by “converting” it from one form of numerical “representation” to another. Pl. Opp. Br.
at 6-7. With its step-by-step instructions for “rounding” and “performing an arithmetic
computation” to arrive at a new “value,” Claim 1 falls squarely within the Supreme Court’s
definition of a mathematical algorithm, as “ a procedure for solving a given type of mathematical
problem.” Benson, 409 U.S. at 65. Whether or not a specific equation can be extracted from
either the Benson claims or Claim 1 is irrelevant; under the Supreme Court’s definition—which
Uniloc itself cites—both are unpatentable mathematical algorithms. See Pl. Opp. Br. at 7.
Second, Uniloc can cite no support for its claim that a lack of specificity somehow
renders a claim less abstract. The Benson claims were not held abstract because they were too
6
“specific” or “particular.” To the contrary, the Court expressed concern that the claims would
unduly preempt further progress in the field because they were “so abstract and sweeping.”
Benson, 409 U.S. at 68 (emphasis added). This risk of broad preemption requires “meaningful
limits on the claim’s scope.” In re Bilski, 545 F.3d at 961; see Dealertrack, Inc. v. Huber, 674
F.3d 1315, 1333 (Fed. Cir. 2012) (patent lacked “meaningful limits” to survive § 101 analysis
because the claim failed to “specify how the computer hardware and database are specially
programmed to perform the steps claimed in the patent”); Bancorp, 687 F.3d at 1278 (computer
employed for “repetitive calculations . . . does not impose meaningful limits on the scope of [the]
claims.”); Glory Licensing, 2011 WL 1870591 at *4-5 (granting motion to dismiss under § 101
where the patentee failed to show that the patent held “meaningful claim limitations.”); OIP
Technologies, No. 12-cv-01233 at 26-27 (granting motion to dismiss because claims allowing for
quicker, more efficient calculations in a general purpose computer did not impose “meaningful
limits” on the claim). As this Court has similarly recognized, “it is important . . . to determine
whether the scope of claims are sufficiently limited so that they do not exclude others from what
is rightfully available to all of mankind.” Prompt Medical Systems, L.P. v. Allscriptsmysis
Healthcare, No. 6:10-cv-71, 2012 WL 678216 at *6 (E.D. Tex. Feb. 13, 2012) (Davis, J.).
In the face of this black-letter law, Uniloc asserts that Claim 1 “is not limited to any
particular” formula, program, or mathematical operation. Pl. Opp. Br. at 7. To uphold such a
claim because it lacks meaningful limits would turn Benson on its head. This Court is charged
with protecting the “onward march of science” and “confin[ing] the patent monopoly within
rather definite bounds” by refusing to enforce a monopoly on what Claim 1 presents: a
generalized formulation for converting numbers. 409 U.S. at 68-69.
7
3. Claim 1 Is Not Limited to any Specific Applications or Improvements
After arguing for three pages that Claim 1 should be deemed patentable because it lacks a
“specific” mathematical formula, Uniloc reverses direction and argues that Claim 1 is not
“abstract” because it offers “specific applications or improvements to technologies in the
marketplace.” Pl. Opp. Br. at 10 (quoting Research Corp. Techs. v. Microsoft Corp. 627 F.3d
859, 869 (Fed. Cir. 2010)). But as Benson confirms, the programmed conversion of numerical
information is, by its nature, not limited to “specific applications.” Instead, such claims disclose
only a “generic formulation,” which could form the basis for a broad array of “specific
applications.” Benson, 409 U.S. at 65. This potential for the future development of myriad
applications is yet another reason to hold such claims unpatentable, because the exclusionary
rights that would result from such a patent would reach into vast arenas. As Benson recognized,
the “end use may . . . vary from the operation of a train to verification of drivers’ licenses to
researching the law books for precedents.” Id. at 68.
Indeed, the article Uniloc attaches to its opposition brief in Exhibit A explicitly confirms
that a method for converting floating point numbers would operate not in a specific application,
but across broad realms. Pl. Opp. Br., Ex. A at 2 (floating point operations are not restricted to
“scientific, CAD, and other math-intensive applications. It’s also communications, security,
graphics, and games.”). Claim 1, like the Benson claims, is not restricted to “specific”
applications that could set meaningful limits on an otherwise abstract claim. Instead, it reflects
the drafter’s efforts to secure a monopoly of impermissible breadth.
Benson similarly forecloses Uniloc’s related argument that its method for processing
floating-point numbers is a patentable “improvement[] to technologies in the marketplace.” Pl.
Opp. Br. at 10. The Benson claims, too, offered a potential improvement to marketplace
8>
technology—they had a “practical application” in digital computers. Benson, 409 U.S. at 71.
The Supreme Court nonetheless found that the programmed conversion of numerical information
in a general purpose computer is not a patentable improvement to technology because it is “not
limited to any particular art or technology.” Benson, 409 U.S. at 64. Such claims are not
confined “to any particular apparatus or machinery, or to any particular end use.” Id.
Claim 1, like the Benson claims, is not limited to any particular technology, machinery,
or end use. The end uses are vast, from NASA’s control of satellite rockets to Silicon Valley’s
creation of a video “game character throwing an axe.” Pl. Opp. Br., Ex. A at 1-3. Uniloc’s
argument that the claim covers a purported technological improvement to the “algorithms
described in [the IEEE] Standard” serves only to confirm what Uniloc elsewhere denies—that it
seeks to patent a mathematical algorithm. Pl. Opp. Br. at 10.3
Finally, Uniloc suggests that the Federal Circuit’s decision in Research Corp. rescues
Claim 1 from abstraction. But the Research Corp. claims were held patentable because they
disclosed a tangible technological improvement (a higher-quality halftone image) that was
dependent upon specific, disclosed computer components, such as a blue noise mask. See, e.g.,
Bancorp, 687 F.3d at 1279 (distinguishing Research Corp.); Cybersource, 654 F.3d at 1376
(same). Claim 1, in contrast, is a pure abstraction. It recites nothing more than mathematical
steps for a numerical conversion. Even if a general purpose computer were read into Claim 1,
the claim would nonetheless disclose at most “the use of a computer for . . . making calculations
or computations.” Bancorp, 687 F.3d at 1278. Under black letter law established by Benson,
________________________
3 Uniloc’s speculation that “rounding before operating” could one day be implemented in a product does not make
that algorithm patentable. Parker v. Flook, 437 U.S. 584, 590 (1978) (“the Pythagorean theorem would not have
been patentable . . . because a patent application contained a final step indicating that the formula . . . could be
usefully applied to existing surveying techniques.”).
9
this use of a general purpose computer “fails to circumvent the prohibition against patenting
abstract ideas and mental processes.” Bancorp, 687 F.3d at 1279 (citing Benson).
C. Uniloc Does Not Dispute That Claim 1 Also Fails The Machine-or-
Transformation Test
Uniloc does not even attempt to argue that Claim 1 meets the Federal Circuit’s “machineor-
transformation” test, which the Supreme Court has described as a “useful and important clue”
for determining patent-eligible subject matter and the Federal Circuit has applied in cases, like
this one, involving “Information Age” technologies. Bilski, 130 S.Ct. at 3227; see also Bancorp,
687 F.3d at 1278 (affirming application of the test for claims reciting the use of computers);
Cybersource, 654 F.3d at 1375 (holding the machine prong unsatisfied by the “software
implementation of a purely mental process”).4
Although this test is by no means exclusive, the fact that Claim 1 does not even arguably
involve a machine or transformation further confirms that the claim is not patentable under
§ 101.
III. CONCLUSION
Uniloc’s efforts to distinguish Claim 1 from Benson are not factually accurate, logically
coherent, or legally sound. Claim 1 recites a mathematical algorithm and abstract idea that is not
patentable as a matter of law. The Court accordingly should dismiss the Complaint for failure to
state a claim upon which relief can be granted.
________________________
4 The Supreme Court in Bilski further warned that where “Information Age” technologies are directed toward more
efficient “mathematical calculations . . . [i]f a high enough bar is not set . . . patent examiners and courts could be
flooded with claims that would put a chill on creative endeavor and dynamic change.” 130 S.Ct. at 3229.
10
September 24, 2012
Respectfully submitted,
/s/ William F. Lee, with permission by
Michael E. Jones
Michael E. Jones
SBN : 10929400
Potter Minton P.C.
[address telephone email]
OF COUNSEL:
William F. Lee
Cynthia D. Vreeland
Monica Grewal
Adam S. Gershenson
WILMER CUTLER PICKERING
HALE AND DORR LLP
[address telephone]
Corey McCaffrey
WILMER CUTLER PICKERING
HALE AND DORR LLP
[address telephone]
Christine Capuyan
WILMER CUTLER PICKERING
HALE AND DORR LLP
[address telephone]
Attorneys for Defendants Rackspace Hosting,
Inc. and Rackspace US, Inc.
CERTIFICATE OF SERVICE
The undersigned hereby certifies that all counsel of record who are deemed to
have consented to electronic service are being served with a copy of this document via
the Court’s CM/ECF system per Local Rule CV-5(a)(3)(A).
/s/ Michael E. Jones
11
29
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
UNILOC USA, INC. and UNILOC
LUXEMBOURG S.A.,
Plaintiffs,
v.
RACKSPACE HOSTING, INC. and
RACKSPACE US, INC.,
Defendants.
CIVIL ACTION NO. 6:12-cv-00375
JURY TRIAL DEMANDED
PLAINTIFFS’ SURREPLY TO DEFENDANTS’ MOTION TO DISMISS FOR FAILURE
TO ALLEGE INFRINGEMENT OF A PATENABLE CLAIM UNDER 35 U.S.C. § 101
TABLE OF CONTENTS
I. INTRODUCTION | 1 |
II. CLEAR AND CONVINCING EVIDENCE IS REQUIRED TO INVALIDATE A PATENT | 1 |
III. THE HOLDING IN BENSON RELATES TO MATHEMATICAL FORMULAS AND ALGORITHMS | 2 |
IV. CLAIM 1 DOES NOT RECITE A MATHEMATICAL FORMULA | 3 |
V. BREADTH VS. ABSTRACTNESS | 4 |
VI. PROCESSES CAPABLE OF BEING CARRIED OUT INSIDE A PERSON’S HEAD ARE PATENTABLE | 5 |
VII. CONCLUSION | 6 |
ii
TABLE OF AUTHORITIES
CASES
Am. Hoist & Derrick Co. v. Sowa & Sons,
725 F.2d 1350 (Fed. Cir. 1984) | 1 |
Bilski v. Kappos,
130 S. Ct. 3218 (2010) | 4, 5 |
Diamond v. Chakrabarty,
447 U.S. 303 (1980) | 3 |
Diamond v. Diehr,
450 U.S. 175 (1981) | 2, 3 |
Gottschalk v. Benson,
409 U.S. 63 (1981) | 2, 3, 4 |
Innova Patent Licensing, LLC v. Alcatel-Lucent Holdings,
No. 2:10-CV-251, 2012 U.S. Dist. LEXIS 100453 (E.D. Tex. July 19, 2012) | 4 |
Island Intellectual Prop. LLC v. Deutsche Bank AG,
No. 09 Civ. 2675, 2012 U.S. Dist. LEXIS 16413 (S.D.N.Y. Feb. 6, 2012) | 5 |
Microsoft Corp. v. i4i Ltd. P’ship,
131 S. Ct. 2238 (2011) | 1 |
Parker v. Flook,
437 U.S. 584 (1978) | 2, 3 |
Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348 (Fed. Cir. 2007) | 2 |
Progressive Cas. Ins. Co. v. Safeco Ins. Co.,
No. 1:10-CV-1370, 2010 U.S. Dist. LEXIS 120225 (N.D. Ohio Nov. 12, 2010) | 2 |
Sciele Pharma, Inc. v. Lupin Ltd.,
684 F.3d 1253 (Fed. Cir. 2012) | 1 |
iii
I. INTRODUCTION
Rackspace’s Reply [Dkt. No. 25] addresses the same issues Rackspace raised in its original Motion. Accordingly, Uniloc will not rehash the same arguments it presented in Response, but will briefly address certain points to ensure the Court has a full understanding of the various arguments made by Rackspace.
II. CLEAR AND CONVINCING EVIDENCE IS REQUIRED TO INVALIDATE A PATENT
As an initial matter, Uniloc disagrees with Rackspace’s assertion that the preponderance-of-the-evidence standard governs Rackspace’s motion. See Reply, p. 3, n.2. The Supreme Court has considered “whether § 282 requires an invalidity defense to be proved by clear and convincing evidence. We hold that it does.” Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2242 (2011). In i4i, the Supreme Court noted that “[u]nder the Federal Circuit’s reading of § 282, a defendant seeking to overcome this presumption must persuade the factfinder of its invalidity defense by clear and convincing evidence.” Id. at 2243. Furthermore, for close to thirty years the Federal Circuit has held “[Section] 282 creates a presumption that a patent is valid and imposes the burden of proving invalidity on the attacker. That burden is constant and never changes and is to convince the court of invalidity by clear evidence.” Id. (citing Am. Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350, 1360 (Fed. Cir. 1984)) (emphasis added). The Federal Circuit has affirmed this view as recently as this past July when it said “[t]he presumption of validity attaches to all issued patents and the clear and convincing evidence burden applies to all issued patents…The presumption of validity found in § 282 is reflected in the standard of proof required to prove invalidity, clear and convincing evidence.” Sciele Pharma, Inc. v. Lupin Ltd., 684 F.3d 1253, 1260 (Fed. Cir. 2012) (citing i4i, 131 S. Ct. 2245-46).
1
Furthermore, district courts considering the issue of whether or not a patent claims ineligible subject matter in the context of Rule 12(b)(6) have applied the clear and convincing evidence standard. See Progressive Cas. Ins. Co. v. Safeco Ins. Co., No. 1:10 CV 1370, 2010 U.S. Dist. LEXIS 120225 (N.D. Ohio Nov. 12, 2010). In Progressive, the defendants argued that “the presumption of validity does not apply to this case, as the presumption of validity applies only to issues of fact.” Id. at *11. The Court rejected that argument stating “[t]he patent is presumed to be valid by statute, which means that a party who challenges the validity of a patent must always prove that the patent is invalid by clear and convincing evidence.” Id. (emphasis in original) (citing Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1359-60 (Fed. Cir. 2007)).
III. THE HOLDING IN BENSON RELATES TO MATHEMATICAL FORMULAS AND ALGORITHMS
Try as it might, Rackspace cannot escape the fact that Benson’s holding is limited to mathematical formulas and algorithms (as the term “algorithm” was defined by the Supreme Court). As the Court stated:
What we come down to in a nutshell is the following. It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.
Gottschalk v. Benson, 409 U.S. 63, 71-72 (1981) (emphasis added). This holding was restated by the Supreme Court in its Diehr decision:
[A] new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity. Such discoveries are “manifestations of..nature, free to all men and reserved exclusively to none.” Our recent holdings in Gottschalk v. Benson, supra, and Parker v. Flook, supra, both of which are computer-related, stand for no more than these long-established principles. In Benson, we held unpatentable claims for an algorithm used to convert binary code decimal numbers to
8
equivalent pure binary numbers. The sole practical application of the algorithm was in connection with the programming of a general purpose digital computer. We defined “algorithm” as a “procedure for solving a given type of mathematical problem,” and we concluded that such an algorithm, or mathematical formula, is like a law of nature, which cannot be the subject of a patent.
Diamond v. Diehr, 450 U.S. 175, 185 (1981) (citing Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)) (emphasis added).
Significantly, in Diehr, the Supreme Court defined the term “algorithm” as “a procedure for solving a given type of mathematical problem.” Diehr at 186. In adopting this definition, the Supreme Court rejected a definition of “algorithm” as “[a] fixed step-by-step procedure for accomplishing a given result; usually a simplified procedure for solving a complex problem, also a full statement of a finite number of steps”:
This definition is significantly broader than the definition this Court employed in Benson and Flook. Our previous decisions regarding the patentability of “algorithms” are necessarily limited to the more narrow definition employed by the Court, and we do not pass judgment on whether processes falling outside the definition previously used by this Court, but within the definition offered by the petitioner, would be patentable subject matter.
Id. at 186, n.9. It is this later, rejected, definition that Rackspace seems to advocate in attempting to enlarge the actual holding of Benson.
IV. CLAIM 1 DOES NOT RECITE A MATHEMATICAL FORMULA
As pointed out in Uniloc’s Response, Rackspace cannot identify the mathematical formula in Claim 1 of the ‘697 Patent because there is none. Rackspace’s chart on pp. 4-5 of its Reply illustrates this well and shows that Claim 1 stands in contrast to the claims that were rejected in Benson. In this chart, the very specific mathematical steps recited in the claims at issue in Benson are listed - Claims 8 and 13 of Benson required specific shifting and adding steps. On the other hand, the steps recited in Claim 1 of the ‘697 Patent contemplate rounding a number before a mathematical operation (of any type) is performed on it. Thus, Claim 1 is not
3
directed to a specific series of mathematical operations and is distinguishable from the claims at issue in Benson.
In addition, the public policy concerns stated by the Supreme Court in the quotes above are not implicated by Claim 1 of the ‘697 Patent. As discussed in Uniloc’s Response, Claim 1 of the ‘697 Patent is an improvement on a widely accepted industry standard. As stated in the Intel article cited in Uniloc’s Response [Exh. A (Dkt. No. 23-1)], hundreds of millions of processors have been manufactured based on the IEEE standard - a standard upon which Claim 1 improves. See Innova Patent Licensing, LLC v. Alcatel-Lucent Holdings, No. 2:10-CV-251, 2012 U.S. Dist. LEXIS 100453, at *13 (E.D. Tex. July 19, 2012) (“Inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.”). Given the fact that all of these processors embody a way to process floating-point numbers in a non-infringing manner, there is no threat of Uniloc having exclusive rights to some “manifestation of nature” and impermissibly foreclosing the processing of floating point numbers. Rather, Claim 1 describes a specific, limited improvement, which does not implicate the policy concerns expressed by the Supreme Court.
V. BREADTH VS. ABSTRACTNESS
Rackspace complains in its Reply that Claim 1 is not limited to a specific application. First, setting aside that Claim 1 is limited to processing floating-point numbers that have a specific format, the breadth of a claim is a separate issue from whether the claim is impermissibly abstract. Section 101 is “only a threshold test.” Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010). Other sections of the Patent Act provide better means for addressing claims that may be overly broad. For example, there are sections that require the patentee to provide a full
4
written description of a patented invention and requirements that the specification enable artisans in the field to make and use the claimed invention. 35 U.S.C. § 112. In addition, a patent claim must be a novel and non-obvious improvement over the technology that came before it. 35 U.S.C. §§ 102 and 103; see also Bilski, 130 S. Ct. at 3225 (“Even if an invention qualifies as a process, machine, manufacture, or composition of matter, in order to receive the Patent Act’s protection the claimed invention must also satisfy ‘the conditions and requirements of this title.’ § 101. Those requirements include that the invention be novel, see § 102, nonobvious, see § 103, and fully and particularly described, see § 112.”). Thus, Rackspace has several other avenues to challenge the breadth of Claim 1 other than arguing “abstractness” under 35 U.S.C. § 101.
VI. PROCESSES CAPABLE OF BEING CARRIED OUT INSIDE A PERSON’S HEAD ARE PATENTABLE
District courts have concluded that methods capable of being completed inside a person’s head are not an absolute bar to patentability. See Island Intellectual Prop. LLC v. Deutsche Bank AG, No. 09 Civ. 2675, 2012 U.S. Dist. LEXIS 16413, at *25-26 (S.D.N.Y. Feb. 6, 2012). In fact, any computer program is theoretically capable of being carried out by a person, as computer programs are nothing more than a series of simple logic operations. Given the de facto patentability of computer programs, however, the fact that a claimed series of steps can be carried out by a person is not fatal to the claim, as stated by Rackspace. Instead, Claim 1 should be reviewed using the analysis set forth in Bilski, 130 S. Ct. 3218, which seeks to determine whether otherwise patentable subject matter falls within one of the exceptions to patentability set forth by the Supreme Court.
5
VII. CONCLUSION
Rackspace has failed to show by clear and convincing evidence that Claim 1 of the ‘697 Patent falls into any of the narrow exceptions to patentability. Accordingly, its Motion to Dismiss should be denied.
Dated: October 4, 2012
Respectfully submitted,
/s/ Barry J. Bumgardner
Barry J. Bumgardner
Lead Attorney
Texas State Bar No. 00793424
Steven W. Hartsell
Texas State Bar No. 24040199
NELSON BUMGARDNER CASTO, P.C.
[address telephone fax]
James L. Etheridge
Texas Bar No. 24059147
ETHERIDGE LAW GROUP, PLLC
[address telephone fax email]
T. John Ward, Jr.
Texas State Bar No. 00794818
J. Wesley Hill
Texas State Bar No. 24032294
WARD & SMITH LAW FIRM
[address telephone fax email]
ATTORNEYS FOR PLAINTIFFS UNILOC
USA, INC. AND UNILOC LUXEMBOURG S.A.
6
CERTIFICATE OF SERVICE
I hereby certify that on the 4th day of October, 2012, I electronically filed the foregoing document with the clerk of the court for the U.S. District Court, Eastern District of Texas, Tyler Division, using the electronic case filing system of the court. The electronic case filing system sent a “Notice of Electronic Filing” to the attorneys of record who have consented in writing to accept this Notice as service of this document by electronic means.
/s/ Barry J. Bumgardner
7
38
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
UNILOC USA, INC., AND UNILOC
LUXEMBOURG S.A.,
Plaintiffs,
v.
RACKSPACE HOSTING, INC., AND
RACKSPACE US, INC.,
Defendants.
CASE NO. 6:12-CV-375
MEMORANDUM OPINION AND ORDER
Before the Court is Defendants’ Motion to Dismiss Plaintiffs’ Complaint for Failure to Allege Infringement of a Patentable Claim Under 35 U.S.C. § 101 (Dkt. No. 16). After considering the parties’ briefing and arguments, the Court GRANTS the motion and ORDERS that the above-styled and numbered cause is hereby dismissed.
BACKGROUND
Plaintiffs, Uniloc USA, Inc. and Uniloc Luxembourg S.A. (collectively, “Uniloc”), filed suit against Defendants Rackspace Hosting, Inc., and Rackspace US, Inc. (collectively, “Rackspace”), alleging infringement of U.S. Patent No. 5,892,697 (“the ‘697 patent”). The ‘697 patent is directed to a method for processing floating-point numbers. ‘697 Patent, Col. 1:8–9. Floating-point numbers are numbers in a computer that have digits to the right of the decimal point. The floating-point numbers described in the ‘697 patent have at least three fields: (i) a sign to indicate positive or negative; (ii) an exponent; and (iii) a mantissa, which is the body of the number. Id. at 1:28–32. For a computer, processing floating-point numbers is more complex than
processing integers, which do not require computation of these additional fields. To unify the methods for computing floating-point numbers, the Institute of Electrical and Electronics Engineers (“IEEE”) implemented the IEEE Standard 754. This standard has since been broadly implemented and is now found in PCs around the world.
The ‘697 Patent purports to increase computational efficiencies compared to the IEEE Standard 754. Under the standard, the floating-point number to be processed is loaded into a memory register and undergoes the necessary arithmetic operation with all its fields. At the end of the process, the result is rounded. The invention, in contrast, optimizes the floating-point number for processing by rounding it before the arithmetic operation.
Rackspace argues that the invention is not patentable subjet matter and asks the Court to dismiss Uniloc’s complaint under Federal Rule of Civil Procedure 12(b)(6). Although the ‘697 patent in suit has twenty-seven claims, Uniloc only asserts Claim 1 against Rackspace. Dkt. No. 23 at 2. Therefore, only Claim 1 is at issue for the instant motion. Claim 1 reads as follows:
Claim 1. A method for processing floating-point numbers, each floating-point number having at least a sign portion, an exponent portion and a mantissa portion, comprising the steps of:
converting a floating-point number memory register representation to a floating-point register representation;
rounding the converted floating-point number;
performing an arithmetic computation upon said rounded number resulting in a new floating-point value;
converting the resulting new floating-point register value to a floating-point memory register representation.
‘697 Patent, Col. 14:46–56.
APPLICABLE LAW
A complaint must “state a plausible claim for relief” to survive a motion to dismiss. Ashcroft v. Iqbal, 556 U.S. 662, 679 (2009). “When the allegation in a complaint, however true, could not raise an entitlement to relief, ‘this basic deficiency should . . . be exposed at the point of minimum expenditure of time and money by the parties and the court.’” Bell Atlantic Corp. v Twombly, 550 U.S. 544, 558 (2007) (quoting 5 WRIGHT & MILLER § 1216, at 233–34). Section 101 questions of patentability may be resolved before claim construction. See Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1273–74 (Fed. Cir. 2012) (affirming invalidation of a patent under 35 U.S.C. § 101 without claim construction). Invalidity under section 101 is a question of law. In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008). In determining whether a claim is drawn to patentable subject matter, the court considers the claim as a whole rather than dissecting and evaluating some elements separately from the rest. Diamond v. Diehr, 450 U.S. 175, 188 (1981).
Section 101 of the Patent Act defines the four broad categories of patentable subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof . . . .” 35 U.S.C. § 101 (2006). “In choosing such expansive terms . . . modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope.” Bilski v. Kappos, 561 U.S. __, 130 S. Ct. 3218, 3225 (2010) (“Bilski II”) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)).
Although section 101 encompasses a broad domain of patentable subject matter, the Supreme Court has recognized three exceptions: “laws of nature, physical phenomena, and abstract ideas.” Chakrabarty, 447 U.S. at 309. Laws of nature and physical phenomena are not patentable subject matter “because those categories embrace ‘the basic tools of scientific and technological work.’” Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 868 (Fed.
3
Cir. 2010) (quoting Gottschalk v. Benson, 409 U.S. 63, 67, 93 S. Ct. 253 (1972)). The application of such laws and formulae, however, may fall within the bounds of patentability marked by section 101. Diehr, 450 U.S. at 187. Furthermore, while abstractness places subject matter outside the statutory categories, “inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.” Research Corp., 627 F.3d at 868–69.
ANALYSIS
Defendants argue that Claim 1 is unpatentable subject matter because it fails the Federal Circuit’s “machine-or-transformation” test and violates the Supreme Court’s bright-line prohibition against patenting mathematical formulas and abstract ideas. Although Uniloc originally questioned the timing of Defendants’ section 101 validity arguments, Uniloc agrees to resolution of this issue on the merits at this stage to advance the litigation. Dkt. No. 23 at 1–2.
Machine-or-Transformation Test
The machine-or-transformation test is “a useful and important clue” for determining patent eligibility of inventions. Bilski II, 130 S. Ct. at 3227. According to the machine-or-transformation test, a process may be patentable if it “(1) is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” Id. at 3225–26. However, The Supreme Court has clarified that it “is not the sole test” of patent eligibility. Id. Thus, Claim 1 is analyzed under the machine-or-transformation test, as a useful clue to determine patentability, but that does not end the inquiry.
Defendants argue that Claim 1 fails the machine prong because it recites no machine whatsoever. Dkt. No. 16 at 15. They also argue that, under Benson, the transformation portion of the test is not satisfied by the conversion of a number from one format to another. Id. (citing Benson, 409 U.S. at 70). Defendants contend that the floating-point-register representations in
4
Claim 1 are simply formats in which certain numbers are presented, thus there is no meaningful transformation. Id. Plaintiffs cursorily respond that Information Age inventions are less suited than Industrial Age inventions for analysis under the machine-or-transformation test, but do not present further argument on this point. Dkt. No. 23 at 11.
Claim 1 of the ’697 patent does not recite a machine. It only recites steps to manipulate a floating-point number, to perform an arithmetic computation with it, and to produce another representation of a number. Therefore, the claim fails the machine prong of the test.
Claim 1 also fails the transformation prong of the test. Mere manipulation of data does not result in a meaningful transformation. See Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2012) (“mere manipulation or reorganization of data . . . does not satisfy the transformation prong”); see also Bancorp, 687 F. 3d at 1273 (affirming invalidity of patent that failed the transformation test because it did “not transform the raw data into anything other than more data”). Claim 1 involves converting the floating-point number into a different format, performing an arithmetic operation, and converting the result back to the original floating-point number format. This is merely manipulating data. Thus, Claim 1 does not satisfy the transformation prong either.
However, the fact that Claim 1 does not pass the machine-or-transformation test does not, alone, render it patent-ineligible. See Bilski II, 130 S. Ct. at 3227.
Exceptions to Patentability
The pertinent question to determine patent eligibility is whether the claim at issue is drawn to one of “three specific exceptions to section 101’s broad patent-eligibility principles: laws of nature, physical phenomena, and abstract ideas.” Bilski II, 130 S. Ct. 3218, 3225 (2010) (internal quotations omitted). Specifically, the question is whether Claim 1 recites a mathematical formula and therefore falls under the “law of nature” exception to patentability.
5
Patentability of mathematical formula
Defendants argue that Claim 1 covers unpatentable subject matter under Benson because it recites nothing more than mathematical steps for a numerical conversion. Dkt. No. 16 at 8–9. Defendants note that in Benson, the claims recited a general method for converting numbers between different representations, and the Supreme Court found them unpatentable as a mathematical formula. Id. (citing Benson, 409 U.S. at 64, 67–68). Defendants contend that Claim 1 likewise processes a type of number by converting it from one numerical representation to another, then subjects it to an arithmetic operation to arrive to a new value, which is then converted back to the original numerical representation. Id. Thus, Defendants argue that Claim 1, similar to the Benson claims, is drawn to an unpatentable process to convert a number from one numerical representation to another. Id. at 9.
Plaintiffs argue that, unlike the claims in Benson, Claim 1 is not a mathematical formula. Dkt. No. 23 at 8. Plaintiffs argue that in Benson, the method claim recited specific steps of mathematical operations, such as shifting and adding. Dkt. No. 27 at 3 (citing Benson, 409 U.S. at 64). Plaintiffs contend that Claim 1, by contrast, recites no identifiable mathematical formula. Id. Instead, Plaintiffs note that Claim 1 merely contemplates rounding a number, followed by any type of mathematical operation. Id., at 3–4. Thus, Plaintiffs contend that Claim 1 is not directed to a specific mathematical operation, and is not barred by the Supreme Court’s Benson decision. Id.
In Benson, the Supreme Court determined the patent claims were directed to a “generalized formulation for programs to solve mathematical problems of converting one form of numerical representation to another.” Benson, 409 U.S. at 65. Specifically, the claims involved a method for converting binary-coded-decimal numerals into pure binary numerals for
6
use with a computer, through a series of shifting and adding steps. Id. at 64. This method differed from “ordinary arithmetic steps” only by “changing the order of the steps, changing the symbolism or writing the multiplier used in some steps, and by taking subtotals after each successive operation.” Id. at 67. The Court held that granting a patent on such claims would “wholly pre-empt the mathematical formula and in practical effect . . . be a patent on the algorithm itself.” Id. at 72. Therefore, the Court held that the claimed process was unpatentable. Id. at 65.
Claim 1 is, in essence, a formula to “solve mathematical problems of converting one form of numerical representation to another.” Benson, 409 U.S. at 65. Claim 1 recites a four-step method for processing floating-point numbers: (1) convert the floating-point number from a “memory register representation” to a “register representation”; (2) round the result; (3) “perform[] an arithmetic computation” on the rounded result to obtain a new floating-point number; and (4) convert[] the result back to a “memory register representation.” ‘697 Patent, Col. 14:46–56. Plaintiffs argue that the arithmetic operation is not restricted to a specific addition or subtraction. Dkt. No. 23 at 8. Although the type of computation that can fulfill the computing step is not specified, it is limited to an arithmetic operation. The previous step, which involves rounding a number, is also an arithmetic operation. Essentially, Claim 1 uses numeric conversions and arithmetic operations in a prescribed procedure to solve a mathematical problem. Therefore, just as in Benson, Claim 1 discloses a “procedure for solving a given type of mathematical problem.” Benson, 409 U.S. at 65. Consequently, granting a patent on Claim 1 would “pre-empt the mathematical formula and in practical effect . . . be a patent on the algorithm itself.” Id. at 72. Under Benson, Claim 1 is a mathematical formula that is unpatentable under section 101.
7
Patentability of improvement on a mathematical formula
Defendants further argue that Claim 1 is unpatentable even if it is an improvement of the IEEE Standard 754. Dkt. No. 25 at 8. In Flook, the Supreme Court found unpatentable claims directed to an improved method for calculating, using a generalized formulation for converting numbers. Id. at 10 (citing Parker v. Flook, 437 U.S. 584, 585 (1978)). Defendants argue that Claim 1 is similar to the Flook claims because it is only an improvement to a known method for processing floating-point numbers. Id. Further, because Claim 1 is not drawn to a specific type of arithmetic computation or specific applications, Defendants contend that the exclusionary rights from such a patent would reach across broad realms. Id. at 8. Thus, Defendants argue that Claim 1 is unpatentable under section 101. Id. at 10.
Plaintiffs contend that Claim 1 differs from the claims found unpatentable in Flook, because those claims disclosed a mathematical formula and defined a specific set of variables. Dkt. No. 23 at 8–9. Plaintiffs reiterate that Claim 1 recites no particular mathematical formula. Id. Further, Plaintiffs argue that the ‘697 Patent claims improvements to the IEEE 754 standard, which has already been implemented in many processors. Id. Thus, Plaintiffs contend that Claim 1 is patentable as “a definite and substantive advancement to a concrete industry standard.” Id. at 10.
The Flook claims involved a process for updating alarm limits during a catalytic-conversion process. Flook, 437 U.S. at 585. The process entailed gathering current temperature values, using an algorithm to calculate an updated alarm limit value based on these temperatures, and adjusting the alarm limit to the newly calculated value. Id. The respondent conceded that the algorithm for computing the alarm limit was the only novel feature of the claimed method. Id. at 588. Thus, the process of gathering temperature data, calculating an alarm limit, and updating the
8
alarm limit was already known in the art. Id. The Flook claimants had merely devised a better algorithm for calculating the alarm limit. Id. The Court noted that the algorithm had a practical and limited application—“computerized calculations producing automatic adjustments in alarm settings”—but determined that this specific purpose was insufficient to validate an otherwise unpatentable claim. Id. at 595. Thus, the Court determined that “a claim for an improved method of calculation . . . is unpatentable subject matter under § 101.” Id. at 595 n.18.
“[I]nventions with specific applications or improvements to technologies in the marketplace [may not] be so abstract that they override the statutory language and framework of the Patent Act.” Research Corp., 627 F.3d at 869. However, according to the patent itself, the claims’ novelty and improvement over the standard is the rounding of the floating-point number before, rather than after, the arithmetic computation. ‘697 Patent Col. 4:32–48. So, as in Flook, Claim 1 merely constitutes an improvement on the known method for processing floating-point numbers. Id. at 595 n.18. Claim 1, then, is merely an improvement on a mathematical formula. Even when tied to computing, since floating-point numbers are a computerized numeric format, the conversion of floating-point numbers has applications across fields as diverse as science, math, communications, security, graphics, and games. Thus, a patent on Claim 1 would cover vast end uses, impeding the onward march of science. Benson, 409 U.S. at 68. Under Flook, the improvement over the standard is insufficient to validate Claim 1’s otherwise unpatentable subject matter.
CONCLUSION
For the reasons stated herein, the Court GRANTS Defendants’ Motion to Dismiss Plaintiffs’ Complaint for Failure to Allege Infringement of A Patentable Claim Under 35 U.S.C. § 101.
9
So ORDERED and SIGNED this 27th day of March, 2013.
/s/ Leonard Davis
LEONARD DAVIS
UNITED STATES DISTRICT JUDGE
10
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Authored by: nsomos on Thursday, March 28 2013 @ 09:04 AM EDT |
Please place any needed corrections here in this thread.
It may please the readers to have a summary in the
posts title where possible and appropriate.
LInux -> Linux
Thanks[ Reply to This | # ]
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Authored by: Anonymous on Thursday, March 28 2013 @ 09:08 AM EDT |
The USPTO should be shut down completly for granting a patent
for that. Somebody needs to be punished for any financial
harm the that patent caused.
[ Reply to This | # ]
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Authored by: Anonymous on Thursday, March 28 2013 @ 09:21 AM EDT |
The funniest part in this is the fact that the Linux kernel does not use
floating point formats. Floating-point registers are saved and restored by the
kernel when scheduling, for example, and there are facilities to allow
floating-point computation within the kernel, but the kernel.org kernels do not
use floating point math. Wherever real numbers are used, fixed-point
calculations, often with 64-bit intermediate results, are used.
Thing is, "floating point" refers to a very specific format of numeric
values: one where there is a mantissa, and an exponent (of a base value, radix).
In the Linux kernel, non-integer numbers are either fixed point (i.e. integers
multiplied by e.g. 1/1000 or a negative power of two), or rational
(numerator-denominator pairs).[ Reply to This | # ]
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Authored by: Anonymous on Thursday, March 28 2013 @ 09:22 AM EDT |
The patent may fail for technical legal reasons but what is actually described
is in fact detail on the design of hardware to perform floating point
operations efficently. The fact this is not understood shows the inability of
those deciding these sort of things to understand the language and context of
the subject matter. The whole point is a trade off in efficency of hardware
design versus numerical accuracy in certain cases with very small numbers.
On the other hand what is described is obvious to someone who knows floating
point representations and is interested in the limitations of it and practical
hardware implementations. It is quite common that hardware does not implement
IEE 754 sub-normals for reasons of efficency and cost benefit of high hardware
implementation cost versus low benefit. I am not even sure what they describe
makes any sense from a cost benefit point of view. Numerically you are in a bad
place if any of this makes a difference and in practical applications you make
sure you avoid it.
Just because the decision has for once gone in a direction we agree with does
not mean anyone should be happy with a continued demonstration that courts do
not understand the subject matter, the language that describes the subject
matter and the practicality of product developers and can therefore make
decisions that appear capricous or irrational. The big problem remains issung
patents that are obvious (and quite possibly not novel).[ Reply to This | # ]
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- "big problem remains issuing patents that are obvious" - Authored by: Anonymous on Thursday, March 28 2013 @ 09:43 AM EDT
- But then... - Authored by: Anonymous on Thursday, March 28 2013 @ 10:10 AM EDT
- No, the court got it right - Authored by: Anonymous on Thursday, March 28 2013 @ 10:10 AM EDT
- Further - Authored by: Anonymous on Thursday, March 28 2013 @ 12:15 PM EDT
- Further - Authored by: Anonymous on Thursday, March 28 2013 @ 01:19 PM EDT
- Further - Authored by: Anonymous on Friday, March 29 2013 @ 11:11 AM EDT
- Rackspace/Red Hat Hand Uniloc A Quick And Significant Defeat ~mw - Authored by: Anonymous on Thursday, March 28 2013 @ 10:11 AM EDT
- Look to the claim! - Authored by: macliam on Thursday, March 28 2013 @ 02:44 PM EDT
- But it produces a poorer quality result... - Authored by: mtew on Thursday, March 28 2013 @ 10:03 PM EDT
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Authored by: kuroshima on Thursday, March 28 2013 @ 09:55 AM EDT |
I assume that this will be appealed, if possible, so for those
who grok legal, how bullet proof is this? [ Reply to This | # ]
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Authored by: raiford on Thursday, March 28 2013 @ 10:01 AM EDT |
Discussions about the news picks go here [ Reply to This | # ]
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- Entire library journal editorial board resigns, - Authored by: Anonymous on Thursday, March 28 2013 @ 12:46 PM EDT
- U.S. Defense Agency Feeds Python - Authored by: Anonymous on Thursday, March 28 2013 @ 02:49 PM EDT
- "Taking a stand on open source and patents" - Authored by: Anonymous on Thursday, March 28 2013 @ 03:40 PM EDT
- The Internet is not a surveillance state - Authored by: Anonymous on Thursday, March 28 2013 @ 10:01 PM EDT
- Microsoft publishes list of its entire patent portfolio - Authored by: Gringo_ on Thursday, March 28 2013 @ 10:28 PM EDT
- War on the Wires - Is Spamhaus Spamming? Cloudflare Fibbing? - Authored by: Anonymous on Friday, March 29 2013 @ 03:13 AM EDT
- Sprint, Softbank to shun Chinese - Authored by: Anonymous on Friday, March 29 2013 @ 05:44 PM EDT
- Forbes article on CFAA gets conversion wrong - Authored by: Tolerance on Saturday, March 30 2013 @ 01:18 AM EDT
- Tweet, tweet, tweet ... - Authored by: Anonymous on Saturday, March 30 2013 @ 04:11 PM EDT
- uh oh... the natives are getting restless - Authored by: dacii on Saturday, March 30 2013 @ 04:17 PM EDT
- Report: US Patent And Trademark Office Denies Apple’s iPad Mini Trademark Application, Deemed “M - Authored by: Anonymous on Saturday, March 30 2013 @ 07:06 PM EDT
- Matthew Garrett presentation video - Authored by: Nick_UK on Sunday, March 31 2013 @ 07:57 AM EDT
- Developer Freedom At Stake As Oracle Clings To Java API Copyrights In Google Fight - Authored by: JamesK on Sunday, March 31 2013 @ 03:55 PM EDT
- Being Google - Authored by: Anonymous on Sunday, March 31 2013 @ 04:20 PM EDT
- US to release Aaron Swartz papers - Authored by: Anonymous on Monday, April 01 2013 @ 05:15 PM EDT
- US to release Aaron Swartz papers - Authored by: Anonymous on Monday, April 01 2013 @ 05:18 PM EDT
- US to release Aaron Swartz papers - Authored by: 351-4V on Monday, April 01 2013 @ 06:04 PM EDT
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Authored by: raiford on Thursday, March 28 2013 @ 10:02 AM EDT |
Off topic discussions here [ Reply to This | # ]
|
- International Space Station migrating to Linux - Authored by: Anonymous on Thursday, March 28 2013 @ 10:05 AM EDT
- Friend of the Court: How Anthony Lewis Influenced the Justices He Covered - Authored by: Anonymous on Thursday, March 28 2013 @ 10:16 AM EDT
- FBI Pursuing Real-Time Gmail Spying Powers as “Top Priority” for 2013 - Authored by: Anonymous on Thursday, March 28 2013 @ 10:39 AM EDT
- Why so many Judges recuse from SCO case? - Authored by: Anonymous on Thursday, March 28 2013 @ 11:29 AM EDT
- Difficulty loading Groklaw pages - Authored by: artp on Thursday, March 28 2013 @ 12:07 PM EDT
- OT-Groklaw Physics Geeks - The Primer Fields? Q: Anything at all to this? Fiction or Fact? - Authored by: Anonymous on Thursday, March 28 2013 @ 12:19 PM EDT
- Lindt loses German case over Easter bunny trademark - Authored by: Anonymous on Thursday, March 28 2013 @ 12:29 PM EDT
- Open Patent Non-Assertion Pledge - Authored by: Anonymous on Thursday, March 28 2013 @ 12:33 PM EDT
- MS? Apple? - Authored by: Anonymous on Thursday, March 28 2013 @ 01:03 PM EDT
- I really like it - Authored by: Anonymous on Thursday, March 28 2013 @ 01:03 PM EDT
- Welcome back, MW - Authored by: fredex on Thursday, March 28 2013 @ 01:52 PM EDT
- Piracy will kill the gread undustry [comic] - Authored by: Anonymous on Thursday, March 28 2013 @ 01:56 PM EDT
- Does first to file hurt people that don't file? Or make it harder to get a patent? - Authored by: Anonymous on Thursday, March 28 2013 @ 02:10 PM EDT
- Linux Switching Week!! - Authored by: OpenSourceFTW on Thursday, March 28 2013 @ 03:56 PM EDT
- Are top VC Firms good investments? - Authored by: Anonymous on Thursday, March 28 2013 @ 04:00 PM EDT
- New CFAA Draft to Expand, Not Reform - Authored by: Anonymous on Thursday, March 28 2013 @ 04:37 PM EDT
- Monsanto Protection Act .. - Authored by: Anonymous on Thursday, March 28 2013 @ 05:48 PM EDT
- Rackspace vs. PersonalWeb Technologies - Authored by: hardmath on Thursday, March 28 2013 @ 07:02 PM EDT
- Media ignore the way new laws and regulations are enriching business at the expense of consumers - Authored by: Anonymous on Thursday, March 28 2013 @ 07:30 PM EDT
- Creeping Privatization of Justice - Authored by: Anonymous on Thursday, March 28 2013 @ 09:12 PM EDT
- Unique in the Crowd - Authored by: Anonymous on Thursday, March 28 2013 @ 09:44 PM EDT
- The largest computer ever built - Authored by: Gringo_ on Friday, March 29 2013 @ 07:23 AM EDT
- Three reasons Microsoft wants to kill the Windows Desktop - Authored by: Gringo_ on Friday, March 29 2013 @ 07:29 AM EDT
- Three reasons Microsoft wants to kill the Windows Desktop - Authored by: JamesK on Friday, March 29 2013 @ 11:09 AM EDT
- Got to remember something - Authored by: Anonymous on Friday, March 29 2013 @ 11:20 AM EDT
- Three reasons Microsoft wants to kill the Windows Desktop - Authored by: Anonymous on Friday, March 29 2013 @ 03:10 PM EDT
- Correct destination, but wrong direction to get there - Authored by: ailuromancy on Saturday, March 30 2013 @ 12:44 AM EDT
- And? - Authored by: Anonymous on Saturday, March 30 2013 @ 05:48 AM EDT
- I love LXDE (fast, simple, stable), and would use it on portable device... - Authored by: Anonymous on Saturday, March 30 2013 @ 08:18 AM EDT
- camera + phone in your pockets? - Authored by: Anonymous on Monday, April 01 2013 @ 05:34 PM EDT
- The problem with that theory - Authored by: Anonymous on Friday, March 29 2013 @ 03:55 PM EDT
- my impression is... - Authored by: sumzero on Saturday, March 30 2013 @ 11:05 AM EDT
- Computing - Authored by: Ian Al on Saturday, March 30 2013 @ 12:09 PM EDT
- Computing - Authored by: Anonymous on Saturday, March 30 2013 @ 04:43 PM EDT
- your not alone.... - Authored by: dacii on Saturday, March 30 2013 @ 04:48 PM EDT
- Computing - Authored by: Anonymous on Monday, April 01 2013 @ 12:05 PM EDT
- Computing - Authored by: Anonymous on Monday, April 01 2013 @ 05:14 PM EDT
- Legal decision with literary flourish and dry wit making the rounds in Toronto legal circles - Authored by: JamesK on Friday, March 29 2013 @ 10:05 AM EDT
- Winnipeg judge jails juror for being late to sexual assault trial - Authored by: JamesK on Friday, March 29 2013 @ 10:17 AM EDT
- The Darwin-Hooker Letters - Authored by: Anonymous on Friday, March 29 2013 @ 10:31 PM EDT
- w o r d s - Authored by: Anonymous on Friday, March 29 2013 @ 10:53 PM EDT
- Judge Denise Cote being sued by bankers lawers. Or, One Judge to rule on them all ! - Authored by: Anonymous on Saturday, March 30 2013 @ 03:11 PM EDT
- 10,000 times faster than light - Authored by: Anonymous on Saturday, March 30 2013 @ 06:35 PM EDT
- Todays APOD (31/03/2013) is a must see - Authored by: Nick_UK on Sunday, March 31 2013 @ 04:27 AM EDT
- USPTO denies Apple's iPad Mini trademark - Authored by: Anonymous on Sunday, March 31 2013 @ 05:12 AM EDT
- The new SCO ?? - Authored by: Anonymous on Monday, April 01 2013 @ 03:45 AM EDT
- The Janet and John USPTO Guide to How Computers Work - Authored by: Ian Al on Monday, April 01 2013 @ 06:37 AM EDT
- India's top court rejects Novartis cancer drug patent "evergreening" bid - Authored by: Anonymous on Monday, April 01 2013 @ 07:40 AM EDT
- Apple patents - Authored by: Anonymous on Monday, April 01 2013 @ 07:45 AM EDT
- Dell admits being a PC maker is a dead end in new SEC filing - Authored by: JamesK on Monday, April 01 2013 @ 11:46 AM EDT
- Dell outlines the death of the PC in SEC filing - Authored by: Anonymous on Monday, April 01 2013 @ 11:52 AM EDT
- Notebooks continue to shape the virtual word - Authored by: Anonymous on Monday, April 01 2013 @ 04:18 PM EDT
- The game of Monopoly has a long and checkered history - Authored by: Anonymous on Monday, April 01 2013 @ 05:53 PM EDT
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Authored by: artp on Thursday, March 28 2013 @ 10:17 AM EDT |
For posting in text mode those html-coded transcriptions of
the "Comes v. MS" case contained in the link above.
---
Userfriendly on WGA server outage:
When you're chained to an oar you don't think you should go down when the galley
sinks ?[ Reply to This | # ]
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Authored by: OpenSourceFTW on Thursday, March 28 2013 @ 10:22 AM EDT |
Didn't they have GPL claims against Uniloc? [ Reply to This | # ]
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Authored by: lnuss on Thursday, March 28 2013 @ 10:24 AM EDT |
"Now if that anything more than a mathematical formula with no specific
application, then I don't know what is one."
In any case, the description provided describes a known operation that's been
around at least 30 years, from personal knowledge (probably a lot longer).
---
Larry N.[ Reply to This | # ]
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Authored by: artp on Thursday, March 28 2013 @ 10:27 AM EDT |
I note that the judge, in the second blockquote of the
article, uses both mathematics and arithmetic as terms to
describe the operations.
I worry that courts can understand arithmetic, but not
mathematics. (Despite the fact that some judges are skilled
programmers, cf. the Oracle case re Android.) Our poor
educational system is catching up to us.
---
Userfriendly on WGA server outage:
When you're chained to an oar you don't think you should go down when the galley
sinks ?[ Reply to This | # ]
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Authored by: Anonymous on Thursday, March 28 2013 @ 10:29 AM EDT |
For example Johnson Matthey wa issued a patent for a Diesel Particulate
Filter where the caim was that this filter produced NO2 for reduction of the
C6. It did, but so did every other catalyzed particulate filter before
it.
Needless to say the USPTO issued the Patent, causing huge
problems in
the emissions control industry.
The entire Patent Office
is incapable of performing its functions. Part of the
problem is it isn't a
crime to lie on an application, nor does lying invalidate a
patent. Nor are
damages assessed when a patent is invalidated, nor are
the patent holders
required to pay back license fees plus interest that they
had revived before
the patent invalidation
occurred.
Waynehttp://madhatter.ca
[ Reply to This | # ]
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Authored by: Anonymous on Thursday, March 28 2013 @ 11:23 AM EDT |
Any chance that this lawsuit can be held as frivolous?
If so, would it gain Red Hat anything?[ Reply to This | # ]
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- Frivolous lawsuit? No Chance. - Authored by: webster on Thursday, March 28 2013 @ 12:04 PM EDT
- semi-OT... not just me - Authored by: mcinsand on Thursday, March 28 2013 @ 12:05 PM EDT
- Me, too - Authored by: Anonymous on Thursday, March 28 2013 @ 12:19 PM EDT
- Me, too - Authored by: PJ on Thursday, March 28 2013 @ 01:45 PM EDT
- Patent Office, not lawsuit, is frivolous - Authored by: Anonymous on Thursday, March 28 2013 @ 12:16 PM EDT
- Frivolous lawsuit? - Authored by: Anonymous on Friday, March 29 2013 @ 06:16 PM EDT
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Authored by: inode_buddha on Thursday, March 28 2013 @ 11:54 AM EDT |
Isn't this the same thing that Poir and a few other users were developing as an
argument here? that software is math?
I seem to recall that first article of his some time ago. Either way,
Congratulations on making a big point!
---
-inode_buddha
"When we speak of free software,
we are referring to freedom, not price"
-- Richard M. Stallman[ Reply to This | # ]
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Authored by: Anonymous on Thursday, March 28 2013 @ 12:59 PM EDT |
These clearly imply the involvement of hardware, i.e., a machine, including
memory and a register. Therefore, the claim passes the machine or
transformation test. Passing the machine or transformation test goes a long way
toward proving 101 eligibility. Moreover, the recited method is not abstract.
Accordingly, this is apparently not one of those cases where claim construction
was not necessary....
This will be appealed.[ Reply to This | # ]
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Authored by: rnturn on Thursday, March 28 2013 @ 01:32 PM EDT |
Holy cats... I was doing stuff like that back in the early '80s while
simulating the effects of different number representations (different # bits for
exponents and mantissas, different sized integers, etc.) on the weightings used
in agile SAW filters. I think doing that kind of thing back then would have been
sufficient prior art to kill any such patent application dead dead dead. (The
fact that FORTRAN was the preferred language for that work should indicate just
how prior that art was.) Unfortunately, it was done under a contract (to
USAF/WPAFB) and I'm pretty sure it wasn't was published in widely read journals.
Even without publication, I do highly doubt that I, alone, was doing anything
that was beyond what others practiced in the art would not have come up with or
hadn't already come up with.
Of course the legal departments at some of
these NPE companies would probably decide to patent the process of hammering on
a piece of heated iron to fashion an item useful as a protective device for
horses' hooves only because they hadn't done it before themselves.
[ Reply to This | # ]
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Authored by: Anonymous on Thursday, March 28 2013 @ 01:34 PM EDT |
...that the patent was thrown out, and the discussion above written, *without
even mentioning the vast quantities of prior art* on the subject.
This patent appears to cover material that can be found in any textbook on
numerical analysis...
[ Reply to This | # ]
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Authored by: Anonymous on Thursday, March 28 2013 @ 02:07 PM EDT |
The ruling concludes:
"Even when tied to computing, since floating-point numbers are a
computerized numeric format, the conversion of floating-point numbers has
applications across fields as diverse as science, math, communications,
security, graphics, and games. Thus, a patent on Claim 1 would cover vast end
uses, impeding the onward march of science. Benson, 409 U.S. at 68. Under Flook,
the improvement over the standard is insufficient to validate Claim 1’s
otherwise unpatentable subject matter."
"a patent on Claim 1 would cover vast end uses, impeding the onward march
of science. "
NO! It wouldn't. Everyone can still use the old technique of rounding the
result instead of the operands.
If blocking the world from using this very particular technique is valid grounds
for declaring the method ineligible for patenting under 35 USC 101, then all
things claimed by all patents are ineligible because all patents block everyone
from using the claimed invention!
This ruling is based on nonsense and will fall.
[ Reply to This | # ]
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Authored by: Anonymous on Thursday, March 28 2013 @ 02:25 PM EDT |
Trying to do the same thing to the health IT community on a patent that should
never have been issued. Should be next up for a 12(b)(6).[ Reply to This | # ]
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- MMR Global - Authored by: Anonymous on Tuesday, April 02 2013 @ 10:59 AM EDT
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Authored by: Anonymous on Thursday, March 28 2013 @ 02:51 PM EDT |
Stupid question time.
How did lawyers ever get involved with patent applications
in the first place?
It seems to me that the aplication process should be handled
by those who are demonstratedly competent in the particular
field of the proposed patent. Professional engineers,
doctors, establshed people who have PhD's, etc. Somehow
just because one has a JD doesn't make them anymore
competent to construct a patent application than my
neighbor's dog. They may know the law, but unless they
have an equivelent degree and professional experience in
the applicable subject matter, they should not be involved
at all.
[ Reply to This | # ]
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- Rackspace/Red Hat Hand Uniloc A Quick And Significant Defeat ~mw - Authored by: Anonymous on Thursday, March 28 2013 @ 03:02 PM EDT
- Patent Layers Have Engineering or Science degrees - Authored by: Anonymous on Thursday, March 28 2013 @ 03:32 PM EDT
- Evidence? - Authored by: Anonymous on Thursday, March 28 2013 @ 05:13 PM EDT
- Evidence? - Authored by: Anonymous on Thursday, March 28 2013 @ 05:44 PM EDT
- Evidence? - Authored by: Anonymous on Thursday, March 28 2013 @ 07:03 PM EDT
- Evidence? - Authored by: Anonymous on Thursday, March 28 2013 @ 07:05 PM EDT
- Patent Layers Have Engineering or Science degrees - Authored by: Anonymous on Thursday, March 28 2013 @ 05:14 PM EDT
- Not quite all - Authored by: Anonymous on Friday, March 29 2013 @ 10:29 AM EDT
- A caveat - Authored by: Anonymous on Friday, March 29 2013 @ 11:27 AM EDT
- Rackspace/Red Hat Hand Uniloc A Quick And Significant Defeat ~mw - Authored by: Anonymous on Thursday, March 28 2013 @ 07:02 PM EDT
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Authored by: Anonymous on Thursday, March 28 2013 @ 06:05 PM EDT |
I'm reminded of Tom Lehrer's New Math.
"It is more important to understand what
you are doing rather than to get the right answer".
:)[ Reply to This | # ]
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Authored by: Ian Al on Friday, March 29 2013 @ 05:34 AM EDT |
There is great doubt in my mind whether it is technically likely that any OS or
application would infringe on this patent.
My Amiga uses a Motorola
68040 processor accelerator card which integrates a hardware floating point
unit. The Intel and AMD processors have had such integrated FPU hardware for
many generations.
Most of the Amiga computers were supplied with 68000
or 68010 processors which did not have a built-in FPU. Here is what Wikipedia
says about the 68000 series of processors.The Motorola 68881 and
Motorola 68882 were floating-point coprocessor (FPU) chips that were used in
some computer systems in conjunction with the 68020 or 68030 CPUs. The addition
of one of these chips added substantial cost to the computer, but added a
floating point unit that could rapidly perform floating point maths
calculations. At the time, this was useful mostly for scientific and
mathematical software.
Some Amigas came with a 68020 or 68030, but
without the FPU coprocessor. Amiga provided software maths libraries for those
systems. Here is a description of the Amiga RKM math libraries.This
chapter describes the structure and calling sequences required to access the
Motorola Fast Floating Point (FFP), the IEEE single-precision math libraries and
the IEEE double-precision math libraries via the Amiga-supplied
interfaces.
In its present state, the FFP library consists of three
separate entities:
the basic math library,
the
transcendental math library, and, C and
assembly-language interfaces to
the basic math library plus FFP conversion
functions.
The IEEE
single-precision, introduced in Release 2, and the double-precision libraries
each presently consists of two entities: the basic math library and the
transcendental math library.
So, my question is; which computer
systems in wide use today would choose to not use the hardware FPU unit built
into the processor, and which uses the standard Motorola/IEEE floating point
algorithms, either for the OS or for the applications?
I seem to
remember that the math errors in Pentium and later Intel processors were to do
with the built-in hardware coprocessors and not some sort of software
glitch.
Here is some info from ARM:Home > The Cortex-M4
Instruction Set > Floating-point instructions
3.11. Floating-point
instructions
Even if this fabulous math was statutory matter, I
think there is a vanishingly small chance that there was any widespread use of
the math algorithm. Perhaps there is some specialist scientific programs that
might use it. IIRC financial programs
use double precision math and the advice
is to not use floating point for any financial spreadsheets.
Since the
court case was fought by RedHat under its indemnity scheme, it can only be the
RedHat provided software that was at issue and not some specialist scientific
software running on RedHat Linux. So, what could Uniloc point to in any part of
the RedHat distributions that might infringe?
Uniloc say this about
themselves:We have focused on technology that is incredibly complex
to develop, but elegantly simple to execute. And it fits our straightforward
development model. Look at many ideas. Pick an outstanding one. Patent it.
Commercialize it. Reap the rewards...
Uniloc is not a huge company in
the number of people we employ. But we hope to make a huge impact on the way
people live and the way companies operate. Innovation doesn’t need a big team to
thrive, just the right team. And we think we have it here at
Uniloc.
One wonders how this small team has time to develop many
ideas that are incredibly complex to develop. They sound just like a Non
Practising Entity with a patent extortion plan.
--- Regards
Ian Al
Software Patents: It's the disclosed functions in the patent, stupid! [ Reply to This | # ]
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Authored by: rsteinmetz70112 on Friday, March 29 2013 @ 09:26 AM EDT |
Unlike the Federal District, someone in the Eastern District of Texas seems to
be listening to the Supreme Court and taking their opinions seriously. But
perhaps they are also reacting to the widespread criticism of their court.
---
Rsteinmetz - IANAL therefore my opinions are illegal.
"I could be wrong now, but I don't think so."
Randy Newman - The Title Theme from Monk
[ Reply to This | # ]
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Authored by: macliam on Friday, March 29 2013 @ 09:56 AM EDT |
I checked the date of patent 5,892,697 asserted
against Rackspace. The patent application was filed on December 19, 1995, and
the patent issued on April 6, 1999.
The issue date is almost a year
after the notorious decision of the Federal Circuit in State Street Bank & Trust Co.
v. Signature Financial Group, 149 F. 3d 1368 (1988)
I would
suggest that any patent examiner who was holding back on these claims had no
choice but to pass the claims following the State Street
ruling.
The sins against accepted principles of statutory interpretation
in Judge Rich's opinion in State Street seem so numerous, and so gross,
that one might expect that they would cause Justice Scalia's hair to stand up on
end on reading the opinion. Justice Scalia is a Textualist when it comes to
statutory interpretation, and the approach of the Supreme Court to statutory
interpretation is set out in Statutory Interpretation:
General Principles and Recent Trends.
First, for context, the
nature of the ‘invention’ in State
Street:
“Signature is the assignee of the '056
patent which is entitled ‘Data Processing System for Hub and Spoke
Financial Services Configuration.’ The '056 patent issued to
Signature on 9 March 1993, naming R. Todd Boes as the inventor. The '056 patent
is generally directed to a data processing system (the system) for implementing
an investment structure which was developed for use in Signature's business
as an administrator and accounting agent for mutual funds. In essence, the
system, identified by the proprietary name Hub and Spoke®, facilitates a
structure whereby mutual funds (Spokes) pool their assets in an investment
portfolio (Hub) organized as a partnership. This investment configuration
provides the administrator of a mutual fund with the advantageous combination of
economies of scale in administering investments coupled with the tax advantages
of a partnership.”
State Street Bank & Trust Co. v.
Signature Financial Group,
149 F.3d. 1370
(1998)
Apparently the patent ‘preemted’
computer-implemented systems implementing provisions of the U.S. Tax Code. The
specification discloses much movement of money, and a number of flowcharts
depicting ‘software routines’ and ‘the flow of information
through modules of software’ (specified in terms of the business
transactions involved, with no coding details). CLS v. Alice really is
State Street redux.
The holding of the Federal Circuit in
State Street:
“We reverse and remand because we
conclude that the patent claims are directed to statutory subject matter.”
(Ibid.)
Of course it is essential to show that a computer is
needed for this useful invention:
“It is
essential that these calculations are quickly and accurately performed. In large
part this is required because each Spoke sells shares to the public and the
price of those shares is substantially based on the Spoke's percentage interest
in the portfolio. In some instances, a mutual fund administrator is required to
calculate the value of the shares to the nearest penny within as little as an
hour and a half after the market closes. Given the complexity of the
calculations, a computer or equivalent device is a virtual necessity to perform
the task.”
State Street Bank & Trust Co. v.
Signature Financial Group,
149 F.3d. 1371 (1998)
An
accountant with an account book or a spreadsheet program, or an army of clerks
in a counting house, could not achieve what this invention can
achieve.
“Each claim component, recited as a
‘means’ plus its function, is to be read, of course, pursuant to
§ 112, ¶ 6, as inclusive of the ‘equivalents’ of the
structures disclosed in the written description portion of the specification.
Thus, claim 1, properly construed, claims a machine, namely, a data processing
system for managing a financial services configuration of a portfolio
established as a partnership, which machine is made up of, at the very least,
the specific structures disclosed in the written description and corresponding
to the means-plus-function elements (a)-(g) recited in the claim. A
‘machine’ is proper statutory subject matter under § 101. We note
that, for the purposes of a § 101 analysis, it is of little relevance
whether claim 1 is directed to a ‘machine’ or a
‘process,’ as long as it falls within at least one of the four
enumerated categories of patentable subject matter, ‘machine’ and
‘process’ being such categories.”
State Street Bank & Trust Co. v.
Signature Financial Group,
149 F.3d. 1372 (1998)
The
claims are expressed in ‘means plus function’ language, so Judge
Rich needs to
find ‘structure’ in the specification
to meet the
requirements of § 112 ¶ 6.
Judge Rich duly finds the structure:
“a
personal computer including a CPU”;
“a data
disk”;“an arithmetic logic circuit configured to prepare the data
disk to magnetically store selected data”;“an arithmetic logic
circuit configured to retrieve information from a specific file, calculate
incremental increases or decreases based on specific input, allocate the results
on a percentage basis, and store the output in a separate file”;“an
arithmetic logic circuit configured to…” etc. (At this point, a
disciple of Judge Rich would retort that proving that the specification provides
sufficient information to enable the skilled artisan to make and use the
invention is a question of enablement under § 112, not
subject-matter eligibility under § 101.)
Note that it doesn't
matter whether the claim is drawn to a machine or to a process (according to
Judge Rich). Provided that the claim is drawn to some sort of product/process
chimaera, that is sufficient for meeting the ‘subject matter’
requirement.
This does not end our analysis, however, because
the court concluded that the claimed subject matter fell into one of two
alternative judicially-created exceptions to statutory subject matter. The
court refers to the first exception as the ‘mathematical algorithm’
exception and the second exception as the ‘business method’
exception. Section 101 reads:
Whoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.
The plain and
unambiguous meaning of § 101 is that any invention falling within one of
the four stated categories of statutory subject matter may be patented, provided
it meets the other requirements for patentability set forth in Title 35, i.e.,
those found in §§ 102, 103, and 112, ¶ 2.
State Street Bank & Trust Co. v.
Signature Financial Group,
149 F.3d. 1372 (1998)
Thus
Title 35 has shrunk down to sections 102, 103 and 112. What happened to all the
other sections of the statute?
Also what happened to the requirement
that the purported inventor must ‘invent or discover‘ something
‘new and useful’?
The principles of statutory interpretation
(or ‘canons of construction’) that guide the Supreme Court (see
above), include the following:
Statutory Language Not to be
Construed as ‘Mere Surplusage’: “A basic principle of statutory
interpretation is that courts should ‘give effect, if possible, to every clause
and word of a statute, avoiding, if it may be, any construction which implies
that the legislature was ignorant of the meaning of the language it employed.’
The modern variant is that statutes should be construed ‘so as to avoid
rendering superfluous’ any statutory language. A related principle applies to
statutory amendments: there is a ‘general presumption’ that, ‘when Congress
alters the words of a statute, it must intend to change the statute's
meaning.’
It would appear to me that, under Judge Rich's
interpretation of the section 101, it would be possible to paraphrase that
section as follows:
Whoever devises something useful falling
within one of the four stated categories shall receive a patent, subject only to
the requirements of §102, §103 and §112 ¶
2.
Well that cuts out a lot of ‘surplusage’! Can
we cut out a bit more? Time for some legislative
intent:
The repetitive use of the expansive term
‘any’ in § 101 shows Congress's intent not to place any
restrictions on the subject matter for which a patent may be obtained beyond
those specifically recited in § 101. Indeed, the Supreme Court has
acknowledged that Congress intended § 101 to extend to ‘anything
under the sun that is made by man.’ Diamond v. Chakrabarty, 447
U.S. 303, 309, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980); see also Diamond v.
Diehr, 450 U.S. 175, 182, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981). Thus, it
is improper to read limitations into § 101 on the subject matter that may
be patented where the legislative history indicates that Congress clearly did
not intend such limitations. See Chakrabarty, 447 U.S. at 308, 100 S.Ct.
2204 (‘We have also cautioned that courts should not read into the patent
laws limitations and conditions which the legislature has not
expressed.’).
State Street Bank & Trust Co. v.
Signature Financial Group,
149 F.3d. 1373 (1998)
Well the
wording essentially dates back to the patent acts of 1790 and 1790, the latter
of which was apparently drafted by Thomas Jefferson. “The Act embodied
Jefferson's philosophy that ‘ingenuity should receive a liberal
encouragement.’ 5 Writings of Thomas Jefferson 75-76 (Washington ed.
1871).”
Diamond v. Chakrabarty,
308-309. We can
then move forward to legislative intent, as evidenced in the deliberations of
Congress in 1952. What was said in the debates?
In accepting
the Jefferson Medal, Judge Rich explained how the Patent Act, which he and Pat
Federico had drafted in 1952, came into being. The Codification Counsel to the
Coordination Subcommittee of the Judiciary Committee of the House, Charlie Zinn,
“had worked on several codifications for the Judiciary Committee.”
As Judge Rich said of the Committee: “When it got a law all written up and
approved, it liked to see it enacted, and Charlie knew how you got it done. You
got it on a Consent Calendar at the appropriate moment, and that meant no floor
debate. It was because of this little technique that you got a new patent
statute when you did.”
As Judge Rich put it: “And that is
the way you got a lot of your laws. It is a great way of conserving hot air. Can
you imagine what debates on the floor of the House or Senate about most of the
cardinal points of patent law would sound like?”
Judge Rich
continued, “[t]he New Patent Act went through both houses on consent
calendars, and those houses relied on the unanimous recommendations of their
respective committees, and when Truman signed the bill, we got the new
law.”
Legislative intent was supplied later, as Judge Rich
explained, in the form of the Reviser's Notes, included with the Bill, which
were written by Pat Federico in consultation with Giles Rich. Years later Judge
Rich wrote a memorial article to Pat Federico after his death in 1982, just as I
write this memorial today.
Rememberances and Memorial: Judge Giles S. Rich, 1904-1999, by
Neil A. Smith, Berkeley Technology Law Journal
So where did
the “everything under the sun” cite bite
originate?
The University of New Hampshire School of Law
maintains a History
Archive which includes the reports of the Senate and the House recommending the 1952 Act.
Part II relates to patentability of inventions and the grant of
patents.
Referring first to section 101, this section specifies the
type of material which can be the subject matter of a patent. The present law
states that any person who has invented or discovered any 'new and useful art,
machine, manufacture, or composition of matter, or any new or useful improvement
thereof: may obtain a patent. That language has been preserved except that the
word 'art' which appears in the present statute has been changed to the word
'process.' 'Art' in this place in the present statute has a different meaning
than the words 'useful art' in the Constitution, and a different meaning than
the use of the word 'art' in other places in the statutes, and it is interpreted
by the courts to be practically synonymous with process or method. The word
'process' has been used to avoid the necessity of explanation that the word
'art' as used in this place means 'process or method,' and that it does not mean
the same thing as the word 'art ' in other places.
The definition of
'process' has been added in section 100 to make it clear that 'process or
method' is meant, and also to clarify the present law as to the patentability of
certain types of processes or methods as to which some insubstantial doubts have
been expressed.
Section 101 sets forth the subject matter that can be
patented, 'subject to the conditions and requirements of this title.' The
conditions under which a patent may be obtained follow, and section 102 covers
the conditions relating to novelty.
A person may have 'invented' a
machine or a manufacture, which may include anything under the sun that is made
by man, but it is not necessarily patentable under section 101 unless the
conditions of the title are fulfilled.
The final words were
quoted to validate ‘legislative intent’ in the Supreme Court case
Diamond v. Chakrabarty. The case
concerned whether a living organism, namely a genetically-engineered bacterium
useful for cleaning up oil spills, was a manufacture eligible for
protection under the patent laws. In such a context, the “everything
under the sun that is made by man” is obviously relevant to those who find
legislative history useful.
Nevertheless Justice Rehnquist parroted the
cite bite in Diehr:
“Not until the patent laws were
recodified in 1952 did Congress replace the word ‘art’ with the word
‘process.’ It is that latter word which we confront today, and in
order to determine its meaning we may not be unmindful of the Committee Reports
accompanying the 1952 Act which inform us that Congress intended statutory
subject matter to ‘include anything under the sun that is made by
man.’ S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H. R. Rep. No.
1923, 82d Cong., 2d Sess., 6 (1952).”
Diamond v. Diehr,
450 U.S. 182
(1981)
Note the sleight of hand! The original quote pointed
out that someone who has ‘invented’ a machine or a manufacture
cannot get a patent for it unless they satisfy the conditions of the statute.
This was applied to Justice Rehnquist to justify the broad patentability of
processes.
The quotation is in fact a slight paraphrase of a remark
(transposing the words ‘under section 101’) that was made in the
Statement of P. J. Federico, Examiner in Chief, United States Patent Office,
Washington D. C. on 1
3th June 1951 to the Subcommittee of the Committee on the Judiciary House of
Representatives, (page 37).
Hardly convincing evidence of legislative
intent on the part of members of Congress. The ‘intent’
appears to be that of P.J. Federico and Giles S. Rich.
Back to State Street Bank & Trust Co. v.
Signature Financial Group. It is first necessary to put mathematical
algorithms in their place:
The Supreme Court has
identified three categories of subject matter that are unpatentable, namely
‘laws of nature, natural phenomena, and abstract ideas.’
Diehr, 450 U.S. at 185, 101 S.Ct. 1048. Of particular relevance to this
case, the Court has held that mathematical algorithms are not patentable subject
matter to the extent that they are merely abstract ideas. See Diehr, 450 U.S.
175, 101 S.Ct. 1048, passim; Parker v. Flook, 437 U.S. 584, 98 S.Ct.
2522, 57 L.Ed.2d 451 (1978); Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct.
253, 34 L.Ed.2d 273 (1972). In Diehr, the Court explained that certain types of
mathematical subject matter, standing alone, represent nothing more than
abstract ideas until reduced to some type of practical application, i.e.,
‘a useful, concrete and tangible result.’ Alappat, 33 F.3d at
1544, 31 USPQ2d at 1557.
Note that even Judge Rich in State
Street acknowledges that “laws of nature, natural phenomena, and
abstract ideas.” are not patentable. But he surreptitiously transitions
to home ground in the form of his own opinion for the Federal Circuit Court in
In Re Alappat
33 F.3d 152. 1544 (1994).
The unwary reader might
well suppose that the requirement for ‘a useful,
concrete and tangible result.’ derives from one of the Supreme Court
cases.
So now Judge Rich is in position to launch one of his poisoned
darts at the dreaded mathematical algorithms. He claims that
abstract equals useless:
“Unpatentable
mathematical algorithms are identifiable by showing they are merely abstract
ideas constituting disembodied concepts or truths that are not
‘useful.’ From a practical standpoint, this means that to be
patentable an algorithm must be applied in a ‘useful’ way. In
Alappat, we held that data, transformed by a machine through a series of
mathematical calculations to produce a smooth waveform display on a rasterizer
monitor, constituted a practical application of an abstract idea (a mathematical
algorithm, formula, or calculation), because it produced ‘a useful,
concrete and tangible result’—the smooth waveform.”
State Street Bank & Trust Co. v.
Signature Financial Group,
149 F.3d. 1373 (1998)
Time to
proclaim the new charter for the patentability of information and information
processing for the foreseeable future:
Today, we hold that the
transformation of data, representing discrete dollar amounts, by a machine
through a series of mathematical calculations into a final share price,
constitutes a practical application of a mathematical algorithm, formula, or
calculation, because it produces ‘a useful, concrete and tangible
result’—a final share price momentarily fixed for recording and
reporting purposes and even accepted and relied upon by regulatory authorities
and in subsequent trades.
But hang on! Not so fast! What
about Benson and Flook, not to mention the
Freeman-Walker-Abele test, hitherto the test used by the Federal Circuit
to isolate those unfortunate ‘inventions’ that might fall prey to
the ravening jaws of Benson and Flook?
The
district court erred by applying the Freeman-Walter-Abele test to determine
whether the claimed subject matter was an unpatentable abstract idea. The
Freeman-Walter-Abele test was designed by the Court of Customs and Patent
Appeals, and subsequently adopted by this court, to extract and identify
unpatentable mathematical algorithms in the aftermath of Benson and
Flook. See In re Freeman, 573 F.2d 1237, 197 USPQ 464 (CCPA 1978)
as modified by In re Walter, 618 F.2d 758, 205 USPQ 397 (CCPA 1980)
State Street Bank & Trust Co. v.
Signature Financial Group,
149 F.3d. 1373-1374 (1998)
But
that is all past history now, thank goodness! Thank you, Justice
Rehnquist:
After Diehr and Chakrabarty, the
Freeman-Walter-Abele test has little, if any, applicability to determining the
presence of statutory subject matter. As we pointed out in Alappat, 33
F.3d at 1543, 31 USPQ2d at 1557, application of the test could be misleading,
because a process, machine, manufacture, or composition of matter employing a
law of nature, natural phenomenon, or abstract idea is patentable subject matter
even though a law of nature, natural phenomenon, or abstract idea would not, by
itself, be entitled to such protection. The test determines the presence of, for
example, an algorithm. Under Benson, this may have been a sufficient indicium of
nonstatutory subject matter. However, after Diehr and Alappat, the mere fact
that a claimed invention involves inputting numbers, calculating numbers,
outputting numbers, and storing numbers, in and of itself, would not render it
nonstatutory subject matter, unless, of course, its operation does not produce a
‘useful, concrete and tangible result.’” (citation omitted)
State Street Bank & Trust Co. v.
Signature Financial Group,
149 F.3d. 1374 (1998)
And
“in one bound, Jack was free!”.
So, Diehr and
Chakrabarty changed the
law established by the Supreme Court in
Benson
and Flook, so that the latter case were no longer
to be
considered as good law?
What was so significant about
Chakrabarty? The case concerned patentability of a
genetically-engineered bacterium. Justice Douglas, who delivered the Opinion of
the Court in Flook was one of the majority in Chakrabarty. Chief
Justice Burger mentioned Flook several times in his Opinion of the Court
in Chakrabarty, and said that he found nothing there to contradict
Chakrabarty.
What about Diehr? The real issue in Diehr,
it seems to me, is whether there was any inventive concept of any
description that would merit the award of a patent. The computer in Diehr
repeatedly recomputed the curing time using the Arrhenius Equation
that was prior art almost a century old at the time of Diehr, and a Law
of Nature to boot! The numerical procedure for calculating the curing time
simply involved calculating the value of the exponential function using the
usual Taylor Series that goes back to the era of Newton and
Leibniz three centuries ago. To suggest that performing this calculation
on a computer in 1981, or in 1975 when the patent was filed, was
innovative is ludicrous. At that time there would have been three
decades or so of prior art on computing such functions with a digital computer.
Thus, if there was any inventive concept at all, must have been the
concept of constantly monitoring the activation energy constant with a rheometer
and the temperature with some sort of thermostat and feeding the information
into the computer to calculate an updated curing time. Thus, if there were
enough to merit a patent, the subject matter would fall well within the
scope of Section 101.
By contrast, Flook was about as
‘abstract’ as ‘abstract ideas’ can be. There is a
process. (Improvements to processes are patentable inventions, subject
to the conditions and requirements of the Patent Statute.) The state of the
process is measured using certain process variables (such a temperature,
pressure, concentration of chemicals, neutron density, etc.). Such a process
variable has a normal value B0 and a critical value B0 + K
at which the process may become unstable and dangerous. There is an alarm
system. But rather than waiting till the critical level is reached before
setting off the alarm, one measures the value of the process variable at some
given time, and sets an alarm limit (say) 40% of the way to the critical value.
Thus one gauges the process variable at regular intervals and resets alarm
limits accordingly. If the alarm limit has been reached, steps would be taken
to damp down the process. This is surely a useful idea, since, if
implemented, the process will run more smoothly, with fewer serious alarms. The
method is abstract, because is concerned with the safe operation of an
abstract process whose state is gauged using process variables,
and, in this context, the ideas of process and process variables
are clearly abstract ideas that have been abstracted from
reflection on a variety of industrial processes and physical and chemical
quantities.
And the method for updating the alarm limit barely qualifies to be
described as mathematical, though it is certainly itself abstract.
Flook claimed this method of updating alarm limits, but in the field of
catalytic conversion of hydrocarbons. Thus if you employed this method of
updating alarm limits in a nuclear reacture you would not infringe the
patent, but if you employed it in the oil or gas industry for a
process of catalytic conversion, you would infringe the
patents.
Both Benson and Flook reaffirmed the
long-standing prohibition in the common law against patenting basic principles
and the “handiwork of nature”, and warned against the very real
dangers of ‘preemption’ that would result if this prohibition were
ignored. There was nothing in either Chakrabarty or Diehr to
contradict the principles laid down in Benson or
Flook.
To return again to State
Street:
“The question of whether a claim encompasses
statutory subject matter should not focus on which of the four categories of
subject matter a claim is directed to—process, machine, manufacture, or
composition of matter—but rather on the essential characteristics of the
subject matter, in particular, its practical utility. Section 101 specifies that
statutory subject matter must also satisfy the other ‘conditions and
requirements’ of Title 35, including novelty, nonobviousness, and adequacy
of disclosure and notice.”
State Street Bank & Trust Co. v.
Signature Financial Group,
149 F.3d. 1374 (1998)
Is the
above consistent with the principle that statutory language is not to be
construed as ‘mere surplusage’?
Judge Rich moves on to
discuss whether business methods are exempt:
As an alternative
ground for invalidating the '056 patent under § 101, the court relied on
the judicially-created, so-called ‘business method’ exception to
statutory subject matter. We take this opportunity to lay this ill-conceived
exception to rest. Since its inception, the ‘business method’
exception has merely represented the application of some general, but no longer
applicable legal principle, perhaps arising out of the ‘requirement for
invention’—which was eliminated by § 103. Since the 1952 Patent
Act, business methods have been, and should have been, subject to the same legal
requirements for patentability as applied to any other process or
method.
In what way was the requirement for invention
eliminated in § 103?
Back to the Senate committee report from 1952:
Although the
principal purpose of the bill is the codification of title 35, United States
Code, and involves simplification and clarification of language and arrangement,
and elimination of obsolete and redundant provisions, there are a number of
changes in substantive statutory law. These will be explained in some detail in
the revision notes keyed to each section which appear in the appendix of this
report. The major changes or innovations in the title consist of incorporating a
requirement for invention in sec. 103 and the judicial doctrine of contributory
infringement in sec. 271.
Section 103, for the first
time in our statute, provides a condition which exists in the law and has
existed for more than 100 years, but only by reason of decisions of the courts.
An invention which has been made, and which is new in the sense that the same
thing has not been made before, may still not be patentable if the difference
between the new thing and what was known before is not considered sufficiently
great to warrant a patent. That has been expressed in a large variety of ways in
decisions of the courts and in writings. Section 103 states this requirement in
the title. If refers to the difference between the subject matter sought to be
patented and the prior art, meaning what was known before as described in
section 102. If this difference is such that the subject matter as a whole would
have been obvious at the time to a person skilled in the art, then the subject
matter cannot be patented.
To those who find legislative
history useful, the above only shows that “a requirement for
invention” has been incorporated into section 103. It constitutes scant
evidence to prove that the Act 1952 eliminated any necessity for an inventive
concept in a purported invention for which patent protection was
sought.
That is enough for now! I had intended this to be a relevant
short post on how the PTO had no option but to approve these seemingly trival
patents following State Street. I had not intended a massively long
posting. I shall leave the final word with Justices Breyer and
Scalia:
“Fourth, although the machine-or-transformation
test is not the only test for patentability, this by no means indicates that
anything which produces a ‘useful, concrete, and tangible result,’
State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d
1368, 1373 (C.A.Fed.1998), is patentable. ‘[T]his Court has never made
such a statement and, if taken literally, the statement would cover instances
where this Court has held the contrary.” Laboratory Corp. of America
Holdings v. Metabolite Laboratories, Inc., 548 U.S. 124, 136, 126 S.Ct. 2921,
165 L.Ed.2d 399 (2006) (BREYER, J., dissenting from dismissal of certiorari as
improvidently granted); see also, e.g., O'Reilly v. Morse, 15 How. 62, 117, 14
L.Ed. 601 (1854); Flook, supra, at 590, 98 S.Ct. 2522. Indeed, the introduction
of the ‘useful, concrete, and tangible result’ approach to
patentability, associated with the Federal Circuit's State Street decision,
preceded the granting of patents that ‘ranged from the somewhat ridiculous
to the truly absurd.’ In re Bilski, 545 F.3d 943, 1004 (C.A.Fed.2008)
(Mayer, J., dissenting) (citing patents on, inter alia, a ‘method of
training janitors to dust and vacuum using video displays,’ a
‘system for toilet reservations,’ and a ‘method of using
color-coded bracelets to designate dating status in order to limit the
embarrassment of rejection’); see also Brief for Respondent 40-41, and n.
20 (listing dubious patents). To the extent that the Federal Circuit's decision
in this case rejected that approach, nothing in today's decision should be taken
as disapproving of that determination. See ante, at 3231; ante, at 3232, n. 1
(STEVENS, J., concurring in judgment).’
Bilski v. Kappos,
130
S.Ct. 3259 (2010)
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Authored by: rnturn on Friday, March 29 2013 @ 10:02 AM EDT |
... how they selected Rackspace as the target of this patent suit?
Was it
their plan to sue everybody who used a computer and Rackspace -- with all those
systems and, probably, multiprocessor motherboards -- looked like they would be
a nice target: N processors that might be doing FP calculations =
N patent violations = triple damages (or something)?
-- Rick [ Reply to This | # ]
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Authored by: Anonymous on Monday, April 01 2013 @ 02:45 PM EDT |
... [ Reply to This | # ]
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- See here:- - Authored by: Anonymous on Monday, April 01 2013 @ 05:00 PM EDT
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Authored by: Anonymous on Monday, April 01 2013 @ 05:16 PM EDT |
Plaintiffs reiterate that Claim 1 recites no particular
mathematical formula.
My facetious (oh I hope it's facetious and
not real) interpretation:
2+2=4 isn't math because I say it isn't!
How
about the old "english math":
Sally had two apples, John gave Sally two
more... figuring out how many apples Sally now has is not math!
RAS[ Reply to This | # ]
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