decoration decoration

When you want to know more...
For layout only
Site Map
About Groklaw
Legal Research
ApplevSamsung p.2
Cast: Lawyers
Comes v. MS
Gordon v MS
IV v. Google
Legal Docs
MS Litigations
News Picks
Novell v. MS
Novell-MS Deal
OOXML Appeals
Quote Database
Red Hat v SCO
Salus Book
SCEA v Hotz
SCO Appeals
SCO Bankruptcy
SCO Financials
SCO Overview
SCO v Novell
Sean Daly
Software Patents
Switch to Linux
Unix Books
Your contributions keep Groklaw going.
To donate to Groklaw 2.0:

Groklaw Gear

Click here to send an email to the editor of this weblog.

Contact PJ

Click here to email PJ. You won't find me on Facebook Donate Paypal

User Functions



Don't have an account yet? Sign up as a New User

No Legal Advice

The information on Groklaw is not intended to constitute legal advice. While Mark is a lawyer and he has asked other lawyers and law students to contribute articles, all of these articles are offered to help educate, not to provide specific legal advice. They are not your lawyers.

Here's Groklaw's comments policy.

What's New

No new stories

COMMENTS last 48 hrs
No new comments


hosted by ibiblio

On servers donated to ibiblio by AMD.

I claim a printing press... | 179 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
My only concern: Software IS Abstract
Authored by: Anonymous on Friday, March 15 2013 @ 01:53 PM EDT

It speaks of Abstract concepts in software.

But not to the fact that software itself is abstract... or at least, at a quick perusal it doesn't seem to touch on that point.

I have a concern that without stating that fact - we are, in effect, allowing the concept that software is somehow physical to be perpetuated. Thereby allowing the illusion of something tangible to continue to exist.

Yet - I'm torn on that because I wonder if introducing the concept that Software itself is nothing but abstract might be too much.

If it were the Supremes, I'd definitely have said to introduce that.

But with it being the USPTO*.... I haven't quite formed the opinion that discussion with the USPTO is about as useful as discussion with Gene Quinn. But I'm certainly leaning in that direction.

* Specifically the management and appeal board at the USPTO. Not necessarily the patent examiners themselves.


[ Reply to This | # ]

corrections thread
Authored by: designerfx on Friday, March 15 2013 @ 02:06 PM EDT
post corrections here

starting with the "it it" in the title.

[ Reply to This | # ]

off topic thread
Authored by: designerfx on Friday, March 15 2013 @ 02:07 PM EDT
post off topic comments here, starting with happy friday, etc.

[ Reply to This | # ]

newspicks thread
Authored by: designerfx on Friday, March 15 2013 @ 02:08 PM EDT
newspicks discussion here.

[ Reply to This | # ]

Groklaw's Response to the USPTO's Request for Suggested Topics for Future Discussion & A Supplement ~pj
Authored by: Anonymous on Friday, March 15 2013 @ 02:23 PM EDT
Wow. While recently having been (re)reading Peirce (Philosophical Writings of
Peirce, ISBN 0-486-20217-8), it had struck me how much of his writings on
Semiotics would pertain to discussing and analyzing patents and their

I'm still reading in detail Groklaw's Response to the USPTO.

Two issues currently:

- The inclusion of Peirce's Semiotics in Groklaw's response has prompted me to
create an account on Groklaw, only to discover that new accounts can't be
created, requiring me to post the anonymously.
- Nowhere in Groklaw's response is Peirce spelled correctly. Groklaw's response
uses Pierce where the spelling should be Peirce. As an aside, the pronunciation
of his name is akin to the word 'purse', not 'pierce'. If your spell checker is
marking Peirce as a misspelling, then add Peirce to your dictionary.

[ Reply to This | # ]

Well Done!
Authored by: OpenSourceFTW on Friday, March 15 2013 @ 02:38 PM EDT
I was able to understand pretty much all of it.

Short, to the point, and makes good points. Hopefully it will make the USPTO
reconsider some things.

I now feel like I understand the basics of semiotics, and it now makes sense why
this is so important for determining whether a patent covers merely abstract

Let me see if I understand:

The sign-vehicle (the computer) is performing an operation and produces output
(the referant). The former is patentable (in parts and as a whole), and the
latter is possibly copyrightable but not patentable (it is symbolic output).
Given this situation, if one merely changes the interpretant (i.e. this output
describes the shape of a golf club), this makes for an unpatentable concept.
That is to say, no matter what I do with the interpretant, the operation does
not suddenly become patentable.

I can either patent the computer hardware itself or use this concept in a
patentable invention (i.e. a new golf club casting machine that uses said
software). However, that still does not make the interpretant patentable as a
stand-alone concept.

Am I understanding the concept?

[ Reply to This | # ]

Something that may help
Authored by: Imaginos1892 on Friday, March 15 2013 @ 06:03 PM EDT
In exploring the nature of computers and programming we've bounced
some analogies around here, such as a movie projector, but have not
explicitly taken them to their logical conclusion:

Just as a movie projector is a machine for playing movies, and a
record player is a machine for playing records, a computer is a
machine for playing computer programs. Each of these actions will
produce certain effects, depending on the specific movie, record
or program; but none of them alter the machine, or its ability to
play other media or repeat the same one.

This concept should be simple enough for even those completely
ignorant about computers to grasp.
I could be arguing in my spare time.

[ Reply to This | # ]

You mean to say that software patents are bogus?
Authored by: Gringo_ on Friday, March 15 2013 @ 06:27 PM EDT
Don't answer that. That question was rhetorical hyperbole. Of course
software patents are bogus, and make me very angry as a software

The proper question is, when is the EFF going to take up the challenge?

I am well aware the EFF does much to help software developers and
fight software patents, but they have never challenged the fundamental
issues as stated here on Groklaw.

I would like to see this taken to the Supreme Court, with testimony from
the foremost computer scientists. At the same time, we need to start a

Sent from my phone, which interacts badly with Groklaws forms.

[ Reply to This | # ]

Groklaw's Response to the USPTO's Request for Suggested Topics for Future Discussion & A Supplement ~pj
Authored by: macliam on Friday, March 15 2013 @ 07:33 PM EDT

Maybe it is too late to encorporate examples. There is a lot of theory. But, to bring home the point to patent lawyers, maybe a few examples of patent claims that confuse hardware with semantics might be useful.

Consider, for example, the following patent claim.

26. A data processing system to enable the exchange of an obligation between parties, the system comprising:

    a communications controller,

    a first party device, coupled to said communications controller,

    a data storage unit having stored therein

        (a) information about a first account for a first party, independent from a second account maintained by a first exchange institution, and

        (b) information about a third account for a second party, independent from a fourth account maintained by a second exchange institution; and

    a computer, coupled to said data storage unit and said communications controller, that is configured to

        (a) receive a transaction from said first party device via said communications controller;

        (b) electronically adjust said first account and said third account in order to effect an exchange obligation arising from said transaction between said first party and said second party after ensuring that said first party and/or said second party have adequate value in said first account and/or said third account, respectively; and

        (c) generate an instruction to said first exchange institution and/or said second exchange institution to adjust said second account and/or said fourth account in accordance with the adjustment of said first account and/or said third account, wherein said instruction being an irrevocable, time invariant obligation placed on said first exchange institution and/or said second exchange institution.

This claim is a claim to a machine. There can be no doubt about that. It has a "data storage unit" that is capable of "electronically adjusting" various "accounts" (whatever they are). The machine operates in the physical world. The claim should clearly determine which machines infringe, and which don't. But this is a machine that capable not only of manufacturing "instructions" but indeed is specifically distinguished from other machines by its remarkable and indeed miraculous capacity to generate "instructions" that are irrevocable time-invariant obligations and to somehow "place" such obligations on financial institutions.

Those of us used to working with more mundane apparatus might suppose that properties of being time-invariant or irrevocable might be properties adhering to "instructions" by virtue of accounting, regulatory or legal conventions, and have reference to the meaning of the instruction.

Maybe this patent claim is rather close to the bone? It is taken from Alice Corporation's 7,725,375 patent. Judge Moore referred to this specific claim at the start of the CLS Bank v. Alice en banc Oral Argument before the Federal Circuit:

"Actually no, we know that's not right because we have the specifications of the patent.. which aaa if you look at columns 7 and 8 span 2 full columns of exasperative detail about how for example .. 'the processing unit 20 comprises 3 interlinked data processers, such as the sun 670mp manufactured by Sun Microsystems, each processing unit runs operational systems software such as sun microsystems os 4.1.2 as well as applications software. The applications software is shown in the flow charts accompanying this patent ie figures 8 through 16 and figures 18 through 40 which contain detailed flow charts that would certainly satisfy anybody's predilections regarding an algorithm disclosure for sofware purposes .... Perry "your honor" .. this is so far from just a computer doing an abstract idea .. I can't even imagine how you can characterize it as such."

[ Reply to This | # ]

Logging some related thoughts:
Authored by: macliam on Friday, March 15 2013 @ 08:11 PM EDT

I thought I might add here some paragraphs that I put together last Monday. When I saw that Groklaw was putting together a submission to the PTO, I wrote out some of my thoughts, then looked at the Groklaw article, and the comments, but then thought that these might not fit in. Certainly some here might think that they would not go far enough in categorically excluding software patents, but I based the first part of it on the basis of Justice Breyer's Supreme Court opinion in Mayo v. Prometheus. The second part contains some ideas that have been revolving around my mind regarding the nature of software that, so far as I can tell, correspond fairly closely with the analysis using semiotics. (After all, whatever analytical framework you use, the basic underlying ideas must surely be well-understood by the Groklaw community.)

So, for the record, this is what I drafted last Monday

Patent-Eligibility: The Flook-Mayo Framework

Where a claimed invention substantially implicates judicially-excepted subject matter, which includes laws of nature, natural phenomena and abstract ideas, it should be analyzed for patent-eligibility under Section 101 of Title 35 of the United States Code in accordance with the holdings of the Supreme Court that relate to patent-eligibility of subject matter under Section 101 of the Statute. Of particular relevance are the holdings of the Supreme Court in O'Reilly v. Morse, Gottschalk v. Benson, Parker v. Flook, Diamond v. Diehr, Bilski v. Kappos and Mayo Collaborative Services v. Prometheus Laboratories Inc.. In particular, the unanimous per curiam opinion in Mayo sets out the principles that should be followed when assessing claimed inventions for patent-eligibility under Section 101 of Title 35 of the United States Code. Given that the analysis of Mayo explains and develops basic principles set out in Flook, it seems appropriate to refer to the resultant analytical framework as the Flook-Mayo framework for analysis of claimed inventions for patent-eligibility under Section 101, where such claimed inventions substantially implicate laws of nature, natural phenomena, abstract ideas and the like.

  • Laws of nature, natural phenomena and abstract ideas are not in themselves patent-eligible subject matter
  • Nevertheless, useful applications of laws of nature, natural phenomena and abstract ideas may be patent-eligible under Section 101 of Title 35 of the United States Code, provided that such an application also contains an inventive concept that is sufficient to ensure that the claimed subject matter is indeed a new and useful invention within the meaning of the statute.
  • A claim is unlikely to be patent-eligible under Section 101 if it effectively preempts most if not all useful applications of a law of nature, natural phenomenon or abstract idea, either generally or within a particular field of application (e.g., catalytic conversion of hydrocarbons, medical diagnosis and treatment, financial information systems, communication over computer networks, online commerce). In such cases, the claim would in effect be drawn to the judicially-excluded subject matter itself.
  • Where a claim substantially implicates judicially-excepted subject matter, comprising laws of nature, natural phenomena or abstract ideas, the remaining elements of the claim should involve more than just well-understood, routine, conventional activity within the appropriate art. Inventions that would be obvious to the skilled artisan (or person having ordinary skill in the art) informed of the judicially-excepted subject matter would be unlikely to achieve the threshold for invention required to justify the award of monopolies with "metes and bounds" determined in accordance with Sections 102 and 103 of Title 35 of the United States Code. Examples of such routine conventional activity would include routine data-gathering steps, "insignificant post-solution activity", prescription of approved medications by medical professionals, routine blood tests, use of standard statistical methods for analysis of time-series data, and conventional computer-implementation of well-understood business methods such as hedging, escrow, and financial book-keeping. Moreover the teaching that results from a bare statement or description of a law of nature, natural phenomenon, abstract idea, mathematical formula or algorithm may well be sufficient in itself to suggest to the skilled artisan useful applications involving no more than such conventional and routine activity (e.g., surveying techniques suggested by theorems in geometry and trigonometry, automated conversions between data representations, computer-automation of methods for structuring financial transactions, indications to adjust dosage of prescribed medications in accordance with the results of blood tests).

On the Nature of Computer-Implemented Processes

A process operating on a computing device to manipulate data and information proceeds in general at three distinct levels: the physical, logical and semantic levels.

Such a process operates at the physical level in accordance with the laws of physics, and typically involves the transmission of electrical and/or optical signals in electical circuits and other media.

At the logical level the data is represented either in numerical form, or else by means of words (or strings) of letters or characters taken from some alphabet. The alphabet is a finite set whose elements are signs that inherently carry no specific meaning. The appropriate alphabet might be represented by the ASCII or EBCDIC codings, or the Unicode standard, or specific encodings of Unicode, such as UTF-8 and UTF-16, that represent unicode characters in terms of single bytes or short sequences of bytes. The "letters" of the chosen alphabet might be words in some ancient indecipherable language. In some areas of application, the appropriate alphabet might be chosen for the purpose of representing elements of some logical or mathematical structure (e.g., the vertices and edges of a graph). There are standard data structures, well-known in the arts of computer programming and data processing, which include linear arrays, multidimensional arrays and associative arrays. There are also standard methods for serializing data in multidimensional and associative arrays that can represent such data in terms of character strings: one such is the JSON standard, implemented in many computer languages. A computer-implemented process for manipulating information will typically transform such strings that in themselves carry no inherent meaning. Such data structures and processes are the subject matter of the information sciences, which include the disciplines of formal logic, complexity theory, information theory (which includes the study of algorithmic entropy and data compression), coding theory (which includes the study of error-correcting codes), cryptology, graph theory and mathematical linguistics. In addition, mathematical fields such as Fourier analysis and wavelet theory have relevance for computer-implemented processes involving video, graphical and audio data in numerical form. It should be noted that these disciplines within the information sciences are recognized disciplines within mathematics and theoretical computer science.

The operation of the computer-implemented process at the semantic level will in general be determined by the nature and significance of the information to be processed.

In some processes, such as the processing of graphical images and visual and audio data, there may be a close correlation between the unfoldings of the process at all three levels.

Semantically, a data idem might for example represent the brightness of a specific pixel on a visual display at a given time, and it may be stored within a data structure in computer memory that maps in a straightforward fashion to the relevant pixel. Innovation with regard to such processes, implemented by microprocessors and similar devices, would be expected to result, for example, in technological advances in the design of digital cameras and mobile communication devices.

However, in the case of other computer-implemented processes, the nature of the ingredients of the process may not correlate between the various levels. A machine can no more create and modify irrevocable time-invariant obligations or collateralized credit default swaps than it can manufacture injunctions, justice or committee procedure. In particular, in the case of financial information systems, the significance of the ingredients of the process is determined by how they are regarded and interpreted by individuals, creditors, debtors, banks, courts, statutes, regulatory bodies, international treaties, and the like, and may well depend on choice of jurisdiction. In such instances, there is unlikely to be any genuine correlation between the physical process that unfolds at the physical level on the computing device and the business method that unfolds at the semantic within the relevant business or financial institution.

Implications for Claim Construction

According to Section 101 of the Statute, a patent-eligible invention must be a "new and useful process, machine, manufacture, or composition of matter" or "any new and useful improvement thereof". It would surely follow from this that a claim to a computer-implemented invention should place the claimed invention within one of the statutory categories, and, moreover, the claim limitations should be appropriate to the relevant category. A machine is characterized through its construction as a physical device and its operation in the physical world. It surely follows that, where a computer-implemented "system" is claimed as a machine, then claim limitations ought to be limitations on the nature of the machine, considered as a physical machine.

Now, limitations that concern the enfolding, at the logical level of processes running within a machine may be relevant to the physical design and operation of the machine, considered purely as a machine. Improvements in software may result in faster and more energy-efficient algorithms, better file and signal compression, sharper images, better sound and video, improved searching capabilities, etc. However the same could not always be said of claim limitations that restrict the enfolding of processes running on the machine at the semantic level, especially in cases where the purported machine is a programmed computer implementing a business method. Does the fact that a particular value stored in a storage unit and manipulated by a computer is required to be a irrevocable time-invariant obligation truly limit the operation of the machine, considered purely as a physical device operating within the physical world? Such limitations surely limit only the manner in which the machine is used, and surely ought either to be rejected on the grounds of being indefinite, or else should be ignored as vacuous for the purposes of construing a machine claim.

Processes and machines of the sort that were traditionally regarded as patent eligible may incorporate computers or microprocessors for the purposes of information processing. Moreover the use of computers to automate tasks involving the maintenance of financial information, recording inventories, keeping personal records etc. is commonplace in the 21st century. The programming necessary for computer-automation of routine book-keeping and data maintenance using standard software tools would surely represent well-understood, routine, conventional activity within the art of computer programming and automation of business processes. This would in particular be the case where the program implements a logic flow that corresponds to a flow of financial information depicted in flow diagrames such as are to be found in patent applications drawn to systems for doing business. Where such a process can be specified at the semantic level, through the description of of sequences of routine financial transactions, or by means of flow charts indicating the basic steps of a business process, the computer-implementation of such a process should neither add to nor detract from the patent-eligibility of the process in question.

If the claims are to be considered to be definite, and capable of reading on a statutory invention, one would surely expect that a claim to a computer-implemented "system" would either be drawn to a machine or apparatus, with claim limitations representing specific limitations on the physical construction or operation of the machine or apparatus, or else would be drawn to a computer-implemented process, with claim limitations appropriate for processes.

Beauregard Claims

A Beauregard claim is a claim to a computer-readable medium storing computer code which, when run on a computer, will cause the computer to execute some process. It would not normally be possible to insert the medium into a computer without the intervention of an operating system and appropriate software, unless the computer can be booted directly from the computer-readable medium in question. If the medium contains software written for a PC running under some version of Microsoft Windows, it may not cause an Apple computer or a computer running Linux or Solaris to execute the stored computer code. Where programs a written to run on .NET Framework, they would not run on earlier Windows operating system that do not provide a .NET framework. A program implementing a graphical user interface built using Qt widgets may not run computer with a desktop environment built around GTK widgets. It is the interaction between of the computer program product on the computer-readable medium and the programs running on the general-purpose computer that convert the computer into a device for carrying out the process specified in the patent. Claiming the computer-readable medium alone using a Beauregard claim is akin to claiming a key for opening a door, where the corresponding lock is not specified or determined. It is the combination of the key and the lock which opens the door.

A Pragmatic Consideration

Suppose that alleged patent infringement of some allegedly innovative application of monads in the functional programming language Haskell were to give rise to a lawsuit. Or suppose that the alleged infringement concerned subtle issues centering on the implementation of iterators, coroutines, closures or reflection in a modern computer language. Is it reasonable to expect that the lawyers and judges would be able to master the briefs, construe the patent claims, present the arguments and instruct a jury, so that the jury is in a position to deliver a fair verdict as to whether or not infringement occurred?

[ Reply to This | # ]

Are Patents a USS Montana?
Authored by: IMANAL_TOO on Saturday, March 16 2013 @ 04:45 AM EDT
Are Patents a USS Montana, heading but not heeding? 91HAlo

Your call.



[ Reply to This | # ]

  • good one. - Authored by: jesse on Saturday, March 16 2013 @ 01:40 PM EDT
Perhaps a final comment on Diehr (EP 1534494 A1)
Authored by: albert on Saturday, March 16 2013 @ 04:11 PM EDT
I reviewed the background on the rubber curing process which helped me
understand the patent a little better.

The patent application lists the inventors. They are employed by Signature
Control Systems, Inc. Denver,CO.

Signature Control Systems, Inc. manufactures a product called SmartTrac, which
is rubber vulcanizing machine controller. You install it on your machine, along
with the required sensors. See

There's no question that the process parameters are the subject of prior art,
it's cited in the application. Also cited are various algorithms included in
the software.

I listed the claims, then eliminated the computer and software ones. What's
left is a general explanation of the process, and some very specific details of
the impedance sensor. (I assumed the impedance sensor is patented separately).

Here are my conclusions(limited by lack of research time):

1. Curing rubber using impedance (dielectric) sensors is not unique.
2. The process control system uses standard algorithms. Statistical process
control methods, feedback loops, and evaluation of historical process data are
not new.
3. The system is probably an improvement over existing ones, but is that
4. Removing software from the claims results in one sensor which may be

I believe the patent examiner had it right in rejecting the application, but for
the wrong reason. This is a software patent for a process that is simply an
improvement over existing ones. (We used to call this 'competition') The flow
charts could be applied to many processes, by changing only the names of the
parameters. It may be a fantastic improvement, maybe only marginal. Does it

Should we allow s/w patents? This patent hardly affects anyone, in the larger
scheme of things. How much better would the world be if we had slightly
cheaper, more consistent rubber products? Not much better.

Now we can get patents on all software that controls all machines and processes
that make all products. EP 1534494 A1 lays out exactly what needs to be done.

[ Reply to This | # ]

'In Re Bergy/Chakrabarty', Judge Rich's account of the 'Three Doors'
Authored by: macliam on Sunday, March 17 2013 @ 08:56 AM EDT

Quoted below is a substantial extract from the opinion of Judge Rich in the case In Re Bergy/Chakrabarty at the Court of Customs and Patent Appeals (CCPA). That court was one of those that came together to form the Federal Circuit. Judge Rich's opinion sets out the Doctrine of the Three Doors that guides the statutory interpretation of sections 101, 102 and 103 of the Patent Statute (Title 35 of the USC) by the Federal Circuit to the present day. The Doctrine of the Three Doors set out by Giles Sutherland Rich (who together with Pasquale Federico drafted the 1952 Patent Act) is alive and kicking today, and is the basis on which certain Federal Circuit Judges including Rader, Newman and Linn affirm the patent-eligibility of 'inventions' represented by troll patents on delivery of advertisements over the internet, on computer-assisted business methods, and on diagnostic procedures etc. This doctrine has been repudiated, to a significant extent, by the Supreme Court in Mayo v. Prometheus, but it remains to be seen whether or not the Federal Circuit will come to grips with the implications of Mayo in the case CLS v. Alice currently being considered en banc by the Federal Circuit. I suggest that the Three Doors framework underlies Judge Moore's interjections at the oral arguments in CLS v. Alice, and represent the basis on which she finds the display of hardware and the flow charts to be persuasive evidence of patent-eligibility.

The opinion is difficult to find on the Web. Google do not yet seem to have made it available. I found the excerpt below here in a collection of cases and materials for a university course, Computer Law 484, delivered by Professor Richard H. Stern at the George Washington University Law School. I have added HTML markup.


Rich, Judge.


These appeals are from decisions of the Board of Appeals (board) of the PTO by dissatisfied applicants for patents. We reverse.

These two cases come before us for the second time under the circumstances hereinafter detailed. Since our first decisions, they have been to the United States Supreme Court and back without any decision by that Court. The question before us is a limited one of statutory construction, not whether appellants have made and disclosed patentable inventions. The real question before us is whether appellants are to be allowed to define their inventions in a certain way in claims pursuant to 35 U.S.C. § 112. This question, which is the same in each case, involves the construction and application of 35 U.S.C. § 101, more particularly the meaning to be given to the word “manufacture” in that section. The sole issue, as the PTO chooses to view it, is whether an invention [of bacteria], otherwise patentable under the statute, is excluded from the categories of subject matter which may be patented, set forth in § 101, because it is “alive.” First, however, we review the history of this litigation to show the posture of the cases as they are now before us again.

Procedural Background

In re Bergy, 563 F.2d 1031 (CCPA 1977), vacated sub nom. Parker v. Bergy, 438 U.S. 932 (1978), was decided by us Oct. 6, 1977. We reversed a decision of the board, which affirmed the final rejection by the PTO examiner of claim 5 of Bergy's application for patent. A petition for a writ of certiorari in Bergy was filed in the Supreme Court by the Solicitor General on behalf of the Acting Commissioner of Patents and Trademarks. The Court granted the petition June 26, 1978, and on the same day issued the following order:

It is ordered and adjudged by this Court that the judgment of the CCPA in this cause is vacated; and that this cause is remanded to the CCPA for further consideration in light of Parker v. Flook, 437 U.S. 584 (1978).

Flook was a case from this court involving a computerized method of updating alarm limits by application of a mathematical formula. It was decided by the Supreme Court, four days before the date of the foregoing order in Bergy. The Court gave no intimation of what bearing it thought Flook has on the single issue in these appeals, except as it may be gleaned from the Flook opinion.

Clearly, our assigned task is first to determine the bearing of Flook, if any, on these two appeals. This requires, as we see it, consideration not only of what was decided in Flook but examination of everything that was said in the opinion. Preliminary to that consideration, however, and laying the groundwork therefor, we will examine the Constitutional basis for the patent system and the anatomy of the statutes Congress has enacted insofar as they are relevant to the problem before us.

The Constitution

The grant of power to Congress to establish a patent system is in these familiar words of Art. I, § 8, cl. 8 and cl. 18:

The Congress shall have Power… [8] To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;… And [18] To make all Laws which shall be necessary and proper for carrying into Execution the foregoing Powers….

Scholars who have studied this provision, its origins, and its subsequent history, have, from time to time, pointed out that it [cl. 8] is really two grants of power rolled into one; first, to establish a copyright system and, second, to establish a patent system. Their conclusions have been that the constitutionally stated purpose of granting patent rights to inventors for their discoveries is the promotion of progress in the “useful Arts,” rather than in “Science.” In enacting the 1952 Patent Act, both houses of Congress adopted in their reports this construction of the Constitution in identical words, as follows:

The background, the balanced construction, and the usage current then and later, indicate that the constitutional provision is really two provisions merged into one. The purpose of the first provision is to promote the progress of science by securing for limited times to authors the exclusive right to their writings, the word “science” in this connection hav ing the meaning of knowledge in general, which is one of its meanings today. The other provision is that Congress has the power to promote the progress of useful arts by securing for limited times to inventors the exclusive right to their discoveries. The first patent law and all patent laws up to a much later period were entitled “Acts to promote the progress of useful arts.”

It is to be observed that the Constitutional clause under consideration neither gave to nor preserved in inventors (or authors) any rights and set no standards for the patentability of individual inventions; it merely empowered Congress, if it elected to do so, to secure to inventors an “exclusive right” for an unstated “limited” time for the stated purpose of promoting useful arts. We have previously pointed out that the present day equivalent of the term “useful arts” employed by the Founding Fathers is “technological arts.” The only restraints placed on Congress pertained to the means by which it could promote useful arts, namely, through the device of securing “exclusive rights” which were required to be limited in time, a device known to governments for centuries. The conditions to be imposed on the granting of such rights, which have varied through the years, were left to Congress to devise.

Confusion persisted, however. We turn now to a consideration of how Congress has implemented the power delegated to it.

Anatomy of the Patent Statute

The reason for our consideration of the statutory scheme in relation to its Constitutional purpose is that we have been directed to review our prior decisions in the light of Flook and we find in Flook an unfortunate and apparently unconscious, though clear, commingling of distinct statutory provisions which are conceptually unrelated, namely, those pertaining to the categories of inventions in § 101 which may be patentable and to the conditions for patentability demanded by the statute for inventions within the statutory categories, particularly the nonobviousness condition of § 103. The confusion creeps in through such phrases as “eligible for patent protection,” “patentable process,” “new and useful,” “inventive application,” “inventive concept,” and “patentable invention.” The last mentioned term is perhaps one of the most difficult to deal with unless it is used exclusively with reference to an invention which complies with every condition of the patent statutes so that a valid patent may be issued on it.

The problem of accurate, unambiguous expression is exacerbated by the fact that prior to the Patent Act of 1952 the words “invention,” “inventive,” and “invent” had distinct legal implications related to the concept of patentability which they have not had for the past quarter century. Prior to 1952, and for sometime thereafter, they were used by courts as imputing patentability. Statements in the older cases must be handled with care lest the terms used in their reasoning clash with the reformed terminology of the present statute; lack of meticulous care may lead to distorted legal conclusions.

The transition made in 1952 was with respect to the old term “invention,” imputing patentability, which term was replaced by a new statutory provision, § 103, requiring nonobviousness, as is well explained and approved in Graham v. John Deere Co. Graham states that there are three explicit conditions, novelty, utility, and nonobviousness, which is true, but there is a fourth requirement, which, alone, is involved here. This was also the sole requirement involved in Flook.

The Revised Statutes of 1874, which contained the primary patent statutes revised and codified in 1952, lumped most of the conditions for patentability in a single section, § 4886, as did all of the prior statutes back to the first one of 1790. The 1952 Act divided that statute up into its logical components and added the nonobviousness requirement, which until then had been imposed only by court decisions. This attempt at a clear-cut statement to replace what had been a hodgepodge of separate enactments resulted in a new and official Title 35 in the United States Code with three main divisions. Part II, here involved, covers patentability of inventions and the grant of patents.

These cases involve only § 101, as did Flook. Achieving the ultimate goal of a patent under those statutory provisions involves, to use an analogy, having the separate keys to open in succession the three doors of sections 101, 102, and 103, the last two guarding the public interest by assuring that patents are not granted which would take from the public that which it already enjoys (matters already within its knowledge whether in actual use or not) or potentially enjoys by reason of obviousness from knowledge which it already has.

Inventors of patentable inventions, as a class, are those who bridge the chasm between the known and the obvious on the one side and that which promotes progress in useful arts or technology on the other.

The first door which must be opened on the difficult path to patentability is § 101 (augmented by the § 100 definitions). The person approaching that door is an inventor, whether his invention is patentable or not. There is always an inventor; being an inventor might be regarded as a preliminary legal requirement, for if he has not invented something, if he comes with something he knows was invented by someone else, he has no right even to approach the door. Thus, section 101 begins with the words “Whoever invents or discovers,” and since 1790 the patent statutes have always said substantially that. Being an inventor or having an invention, however, is no guarantee of opening even the first door. What kind of an invention or discovery is it? In dealing with the question of kind, as distinguished from the qualitative conditions which make the invention patentable, § 101 is broad and general; its language is: “any… process, machine, manufacture, or composition of matter, or any… improvement thereof.” Section 100(b) further expands “process” to include “art or method, and… a new use of a known process, machine, manufacture, composition of matter, or material.” If the invention, as the inventor defines it in his claims (pursuant to § 112, second paragraph), falls into any one of the named categories, he is allowed to pass through to the second door, which is § 102; “novelty and loss of right to patent” is the sign on it. Notwithstanding the words “new and useful” in § 101, the invention is not examined under that statute for novelty because that is not the statutory scheme of things or the long-established administrative practice.

Section 101 states three requirements: novelty, utility, and statutory subject matter. The understanding that these three requirements are separate and distinct is long-standing and has been universally accepted. The text writers are all in accord and treat these requirements under separate chapters and headings. Thus, the questions of whether a particular invention is novel or useful are questions wholly apart from whether the invention falls into a category of statutory subject matter. Of the three requirements stated in § 101, only two, utility and statutory subject matter, are applied under § 101. As we shall show, in 1952 Congress voiced its intent to consider the novelty of an invention under § 102 where it is first made clear what the statute means by “new”, notwithstanding the fact that this requirement is first named in § 101.

The PTO, in administering the patent laws, has, for the most part, consistently applied § 102 in making rejections for lack of novelty. To provide the option of making such a rejection under either § 101 or § 102 is confusing and therefore bad law. Our research has disclosed only two instances in which rejections for lack of novelty were made by the PTO under § 101, In re Bergstrom, 427 F.2d 1394 (CCPA 1970); In re Seaborg, 328 F.2d 996 (CCPA 1964). In In re Bergstrom we in effect treated the rejection as if it had been made under § 102, observing in the process that “the word 'new' in § 101 is to be construed in accordance with the provisions of § 102.”

The second door then, as we have already seen, is § 102 pursuant to which the inventor's claims are examined for novelty, requiring, for the first time in the examination process, comparison with the prior art which, up to this point, has therefore been irrelevant.

An invention may be in a statutory category and not patentable for want of novelty, or it may be novel and still not be patentable because it must meet yet another condition existing in the law since 1850 when Hotchkiss v. Greenwood, 11 How. 248, was decided. This condition developed in the ensuing century into the “requirement for invention.” See Graham v. John Deere Co. The third door, under the 1952 Act, is § 103 which was enacted to take the place of the requirement for “invention.” We need not examine this requirement in detail for it is not involved in the present appeals, and was not involved in Flook.

If the inventor holds the three different keys to the three doors, his invention (here assumed to be “useful”) qualifies for a patent, otherwise ot; but he, as inventor, must meet still other statutory requirements in the preparation and prosecution of his patent application. We need not here consider the latter because appellants have not been faulted by the PTO in their paperwork or behavior. The point not to be forgotten is that being an inventor and having made an invention is not changed by the fact that one or more or all of the conditions for patentability cannot be met. Year in and year out this court turns away the majority of the inventors who appeal here because their inventions do not qualify for patents. They remain inventions nevertheless. It is time to settle the point that the terms invent, inventor, inventive, and the like are unrelated to deciding whether the statutory requirements for patentability under the 1952 Act have been met. There is always an invention; the issue is its patentability. Terms like “inventive application” and “inventive concept” no longer have any useful place in deciding questions under the 1952 Act, notwithstanding their universal use in cases from the last century and the first half of this one. As Mr. Justice Holmes said in Towne v. Eisner, 245 U.S. 418, 425 (1918), “A word… may vary greatly in color and content according to the circumstances and the time in which it is used.” And Mr. Justice Frankfurter said in Shapiro v. United States, 335 U.S. 1, 56 (1948), “It is the part of wisdom, particularly for judges, not to be victimized by words.”

We have observed with regret that the briefs filed by the Solicitor General for Acting Commissioner Parker in Parker v. Flook, a case which, as the Court noted, “turns entirely on the proper construction of § 101,” badly, and with a seeming sense of purpose, confuse the statutory-categories requirement of § 101 with a requirement for the existence of “invention.” This they do by basing argument on the opening words of § 101, “Whoever invents or discovers,” thereby importing into the discussion of compliance with § 101 a requirement for “invention” in a patentability sense. But there has not been a requirement for “invention” in the patentability sense in the laws since 1952 the requirement was replaced by the § 103 requirement for nonobviousness. Graham v. John Deere Co.

Furthermore, when one has only compliance with § 101 to consider, the sole question, aside from utility, is whether the invention falls into a named category, not whether it is patentable. Falling into a category does not involve considerations of novelty or nonobviousness and only those two considerations involve comparison with prior art or inquiry as to whether all or any part of the invention is or is not in, or assumed to be in, the prior art or the public domain. Prior art is irrelevant to the determination of statutory subject matter under § 101. An invention can be statutory subject matter and be 100% old, devoid of any utility, or entirely obvious. This is our understanding of the statute and the basis on which we proceed to the further consideration of these appeals.

The error of the line of argument pursued in the Solicitor General's briefs in Flook is sufficiently illustrated by quoting from the summation of that argument in the opening paragraphs of the Reply Brief for the Petitioner:

1. Respondent errs in asserting that our argument confuses the standard of nonobviousness prescribed in 35 U.S.C. § 103 and the requirement of statutory subject matter under 35 U.S.C. § 101. As respondent recognizes, the patent examiner's sole ground for rejection of the claims at issue was that they did not cover statutory subject matter under 35 U.S.C. § 101. We do not contend that respondent's particular algorithm for computing updated alarm-limits is not novel or is obvious within the meaning of 35 U.S.C. §§ 102 or 103. We simply contend that the subject matter he seeks to patent is unpatentable under 35 U.S.C. § 101, because it is not an “[invention] or [discovery]” within the meaning of that Section.

The plain language of § 101 requires that the application of a mathematical algorithm involve invention or discovery for it to be patentable. It states that patents may issue only to one who “invents or discovers any… process, machine, manufacture, or composition of matter” (emphasis supplied). This language dates from the original Patent Act of 1790. In none of the subsequent amendments to the patent statute has Congress altered this basic requirement.

Yet respondent would have the courts ignore this explicit language and adopt a new rule that would allow patents to issue to anyone who “[applies for a patent on] any… process, machine, manufacture, or composition of matter,… subject to the conditions and requirements of this title.” Congress could have changed the language of § 101 to broaden the statutory standards of patentability, but it did not; indeed, respondent agrees that in the 1952 Patent Act revision, Congress intended to codify the existing judicial precedents regarding the standard of patentability.

It is transparently clear that the above argument makes the opening words of § 101, “Whoever invents or discovers,” into a requirement for compliance with § 103, the 1952 replacement for the old requirement for “invention”; one must get through the third door in order to get past the first one! That is not the statutory scheme.

The statement that respondent Flook was asking for a rule under which “anyone who [applies for a patent on] any… ”of the § 101 named categories should have a patent “issue” to him is subversive nonsense. There is no issuance without examination for novelty and nonobviousness.

The statement that “Congress could have changed the language of § 101 to broaden the statutory standards of patentability, but it did not” is wholly beside the point because §101 was never intended to be a “standard of patentability”; the standards, or conditions as the statute calls them, are in § 102 and § 103. The naming of the categories of inventions that may be patented, in whatever statute appearing, has never supplied a standard. The question here, as it always has been, is: are the inventions claimed of a kind contemplated by Congress as possibly patentable if they turn out to be new, useful, and unobvious within the meaning of those terms as used in the statute.

Before explaining the Bergy and Chakrabarty inventions, we shall state our understanding of the views expressed by the Supreme Court in the Flook opinion and the light shed thereby on the problems before us. We are redeciding these appeals, as directed, “in light of Parker v. Flook.” The parties were given the opportunity in briefs and oral argument to tell us what bearing Flook has on these appeals. As might have been foreseen, the results are not helpful.

The PTO says the fact of remand should mandate affirmance and be “taken to buttress the positions taken by the dissenting judges.” The only specific thing seized upon, as a launching pad for argument, is a rhetorical passage quoted from Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 512 (1972), about looking for a signal from Congress before changing well-established law, a situation in no way involved here as will be discussed later. As everyone has conceded, we are dealing with appeals raising an issue of first impression in the courts, the effect on compliance with § 101 of the fact of being “alive.”

The only thing we see in common in these appeals and in Flook is that they all involve § 101. Flook was a review of one of the many appeals we have heard involving the general theme of the patentability of computer programs. The only way to claim a program is as a programmed “machine” or as a “process” or “method.” The Flook invention was claimed as a “process” under § 101. That was the second case of its kind from this court reviewed by the Supreme Court, the first being Gottschalk v. Benson, 409 U.S. 63 (1972), which involved two method claims. Method and process claims are equivalents. Flook appears to have been decided on the authority of Benson. No method or process claim is here involved. In fact, the PTO has allowed (all three doors, §§ 101-102-103, passed) Bergy's method claims 1 through 4 and Chakrabarty's process claims 27 through 29, thereby holding that the process aspects of their inventions are not only subject matter within § 101 but also new and unobvious under § 102 and § 103, therefore patentable. Flook was concerned only with the question of what is a “process” under § 101, in the context of computer program protection. No such issue is presented in either of these appeals.

There is no better authority on what the Supreme Court has decided in a case than the Court itself and we are fortunate to have its own summary of what it decided in Flook. It appears at the end of footnote 18, 437 U.S. at 595, as follows: “Very simply, our holding today is that a claim for an improved method of calculation, even when tied to a specific end use, is unpatentable subject matter under § 101.”

We do not venture to elaborate. The appeals here involve no method of calculation, and the Flook holding appears to have no bearing.

As indicated earlier, we deem it our duty to seek whatever additional light there may be in the Court's opinion on the meaning of § 101, without restricting ourselves to the holding. It is stated to be well established in patent law that the following are not within the statutory categories of subject matter enumerated in § 101 and its predecessor statutes as interpreted through the years: principles, laws of nature, mental processes, intellectual concepts, ideas, natural phenomena, mathematical formulae, methods of calculation, fundamental truths, original causes, motives, the Pythagorean theorem, and the computer-implementable method claims of Benson. The present appeals do not involve an attempt to patent any of these things and the Court's review of this hornbook law is, therefore, inapplicable to the issue before us, which involves only the construction of the terms “manufacture, or composition of matter.”

Another principle stated in Flook is that a “mathematical algorithm” or formula is like a law of nature in that it is one of the “basic tools of scientific and technological work” and as such must be deemed to be “a familiar part of the prior art,” even when it was not familiar, was not prior, was discovered by the applicant for patent, was novel at the time he discovered it, and was useful. This gives to the term “prior art,” which is a very important term of art in patent law, particularly in the application of § 103, an entirely new dimension with consequences of unforeseeable magnitude.

Insofar as the present appeals are concerned, the foregoing novel principle has no applicability whatever since, as we have said, no formula, algorithm, or law of nature is involved, and there has been no rejection on prior art of any kind in either application. In each, both the examiner and the Board of Appeals expressly stated that no references evidencing prior art have been relied on or applied.

Insofar as the general patent law is concerned, however, the above-stated novel Flook doctrine may have an unintended impact in putting an untimely and unjustifiable end to the long-standing proposition of law that patentability may be predicated on discovering the cause of a problem even though, once that cause is known, the solution is brought about by obvious means. Such causes may often be classed as laws of nature or their effects. For example, see Eibel Process Co. v. Minnesota " Ontario Paper Co., 261U.S. 45, 67-69 (1922). The potential for great harm to the incentives of the patent system is apparent.

It is one thing to say that a principle, natural cause, or formula, per se, is not within the categories of § 101, but quite another to say it is “prior art” in determining the nonobviousness of an invention predicated on it even though the inventor discovered it.

One final matter with respect to Flook remains. In the PTO supplemental brief on remand, the solicitor places great emphasis on part of a passage which Flook quoted from the opinion of Mr. Justice White for the majority in Deepsouth Packing Co. v. Laitram Corp.:

We would require a clear and certain signal from Congress before approving the position of a litigant who, as respondent here, argues that the beachhead of privilege is wider, and the area of public use narrower, than the courts had previously thought. No such signal legitimizes respondent's position in this litigation.

While the PTO solicitor believes that the entire opinion in Flook is relevant to the issue here, he says “the above quotation from Deepsouth reaches the heart of the matter.” We disagree. We cannot find in this passage any clear direction signal unless we wrench it out of the context in which it belongs and use it in a manner unwarranted by the situaion which spawned it.

When we examine the portion of the paragraph in Deepsouth (also quoted in Flook) just preceding the solicitor-quoted passage, its meaning becomes clear. The Court stated: “It follows that we should not expand patent rights by overruling or modifying our prior cases construing the patent statutes, unless the argument for expansion of privilege is based on more than mere inference from ambiguous statutory language.” The issue in Deepsouth was whether petitioner infringed by selling the unassembled parts of machines embodying patented combinations to foreign buyers who assembled and used them abroad. The relevant statutory provision, 35 U.S.C. § 271, defines infringement by defining the infringer as anyone who “without authority makes, uses or sells any patented invention, within the United States during the term of the patent therefor.” In deciding the case, the Court pointed out that a long line of judicial authority had established the meaning of the term “makes” contrary to the meaning urged by the respondent, with the result that the petitioner's sales of the parts to foreign buyers were not sales of “any patented invention” which was “made” in the United States, and, thus, were not acts of infringement.

It is in this context that the Court made the quoted statement. The respondent in Deepsouth was asking the Court to expand established patent rights territorially, or to treat making parts of a machine as making the machine, by modifying prior cases construing the patent statutes. The Court refused, producing the quoted passage in the process.

We do not find the quoted passage to have any bearing on our problem. We are not faced with a litigant urging upon us a construction of § 101 which is at odds with established precedent. Rather, we deal with a case of first impression. Not having been asked to make a change in existing law or to overrule or modify any case or to expand any right given by Congress, we need in this case no signal from that body.

To conclude on the light Flook sheds on these cases, very simply, for the reasons we have stated, we find none.

[The opinion continues to affirm the patent-eligibility of the bacteria of Bergy and Chakrabarty. The case of Bergy became moot, and therefore the Supreme Court did not rule on that case. The Supreme Court did consider Chakrabarty's bacteria in Diamond v. Chakrabarty. The judgement of the Supreme Court affirms the decision of the CCPA with regard to Chakrabarty, but also reaffirms Flook and distinuishes Chakrabarty from Flook.]

[ Reply to This | # ]

I claim a printing press...
Authored by: macliam on Monday, March 18 2013 @ 05:18 AM EDT

I claim:

  1. a printing press configured to print a text wherein at least 8 of the strings 'Minas Tirith', 'Frodo', 'Elrond', 'Moria', 'Lothlorien', 'Galadriel', 'Samwise', 'Meriadoc', 'Theoden', 'Dunharrow', 'Bombadil' and 'Elessar' occur as substrings within said text;
  2. 2. the printing press of claim 1 further configured to print a text wherein the strings 'Boromir', 'Faramir' and 'Denethor' occur as substrings in said text;
  3. a method of printing texts wherein a text containing at least 20,000 characters is printed on paper or rendered on an electronic display device and at least 8 of the strings 'Minas Tirith', 'Frodo', 'Elrond', 'Moria', 'Lothlorien', 'Galadriel', 'Samwise', 'Meriadoc', 'Theoden', 'Dunharrow', 'Bombadil' and 'Elessar' occur as substrings within said text;
  4. the method of claim 3 wherein the strings 'Boromir', 'Faramir' and 'Denethor' occur as substrings in said text.

If you can convince the PTO that this machine is useful, novel (in accordance with the requirements of Section 102) and non-obvious (in accordance with sections 103), you are surely entitled to a patent on this machine. The patent will cover all printing presses configured to print a text satisfying the claim limitations, as and when they are configured to do so. If the device is deemed to be useful then the requirements of section 101 are satisfied because the printing press is a machine. And in order to verify whether the conditions of sections 102 and 103 are satisfied, it will be necessary to conduct a prior art search of previous patent applications and publications.

Of course the claims are not only to printing presses configured to print specifically The Lord of the Rings. The scope of the claims will also cover a printing press configured to print a text containing sufficiently many of the words listed in the claim. But the patent owner is not going to object to the entitlement to collect royalties from the printing of such derivative works.

There might be issues nevertheless with novelty. But if you were on the point of publishing a book that you believed would be a bestseller, an analogous patent might be worth the cost of obtaining it.

[ Reply to This | # ]

The Three Doors - Ultramercial v. Hulu (Federal Circuit 2011: Rader, Lourie, O'Malley)
Authored by: macliam on Monday, March 18 2013 @ 09:22 AM EDT

The patent at issue is 7,346,545. As the issued patent states:

The present invention is directed to a method and system for disrtributing or obtaining products covered by intellectual property over a telecommunications network whereby a consumer may, rather paying for the products, choose to receive such products after viewing and/or interacting with an interposed sponsor's or advertiser's message, wherein the interposed sponsor or advertiser may pay the owner or assignee of the underlying intellectual property associated with the product through an intermediary such as a facilitator.

There are two independent claims. The first, claim 8, is to a method for distribution of products, involving steps of receiving, selecting, providing, restricting, offering, facilitating, allowing, presenting, recording and updating and receiving payment. The other independent claim, claim 8, has similar steps. All claims are method claims, and superficial examination of them would suggest the steps of a business process, with no technical details.

Litigation initiated by Ultramercial against Hulu, YouTube and Wildtangent in the district court resulted in dismissal “for failure to claim statutory subject matter”. The Federal Circuit reversed, in 2011, in the case Ultramercial v. Hulu. Randall R. Rader, Chief Judge of the Federal Circuit wrote the per curiam opinion, which was unanimous. The other circuit judges on the panel were Alan D. Lourie and Kathleen M. O'Malley.

The opinion demonstrates the lengths that Rader and his colleagues will go to avoid finding a patent claim ineligible under Section 101 for failure to claim statutory subject matter.

First, some remarks about the patent specification. There are four diagrams. The first shows four computers (typical PCs), with people standing on top of each computer, plus icons representing folders, files, floppy disks and dollar bills, and various arrows connecting them. The second figure is a flow chart of a business method, with descriptions of the steps in plain English (with nothing whatsoever resembling any sort of computer code): ‘Consumer enters Facilitator's URL’, ‘Consumer requests…’, ‘Facilitator responds…’ etc.. Figures 3 and 4 are of a similar nature. The standard parts of a patent specification follow. The detailed description of the preferred embodiment follows, rresponding to Figures 2, 3 and 4, and describing the steps performed by customers, facilitators, sponsors, etc., with no disclosure of any sort of computer code. There is a modicum of technical disclosure at the beginning of the description of the preferred embodiment: “All of the principals preferably communicate over a telecommunications network, such as the Internet, using their respective computers.”. Then follow the claims.

“Nice work if you can get it! And you can get it—if you try.”

So now let us see how Rader and his colleagues address this meritorious advance over the prior art.

First they comment on (lack of) claim construction:

The district court dismissed Ultramercial's claims for failure to claim statutory subject matter without formally construing the claims.… In this case, the subject matter at stake and its eligibility does not require claim construction.

Thus Rader and his colleagues have no issue with the fact that the district court failed to construe the claims before dismissing the suit.

Then some remarks on legislative intent.

In Bilski, the Supreme Court explained that "[i]n choosing such expansive terms modified by the comprehensive `any,' Congress plainly contemplated that the patent laws would be given wide scope." 130 S.Ct. at 3225 (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980)). After all, the purpose of the Patent Act is to encourage innovation, and the use of broadly inclusive categories of statutory subject matter ensures that "ingenuity . . . receive[s] a liberal encouragement." Chakrabarty, 447 U.S. at 308, 100 S.Ct. 2204.

At least we are spared the usual “everything under the sun” cite bite!

It is now time to move on to the Three Doors:

More importantly, as § 101 itself expresses, subject matter eligibility is merely a threshold check; claim patentability ultimately depends on "the conditions and requirements of this title," such as novelty, nonobviousness, and adequate disclosure. 35 U.S.C. § 101; see Classen Immunotherapies, Inc. v. Biogen IDEC, ___ F.3d ___, ___ (Fed.Cir.2011) (pointing out the difference between "the threshold inquiry of patent-eligibility, and the substantive conditions of patentability"). By directing attention to these substantive criteria for patentability, the language of § 101 makes clear that the categories of patent-eligible subject matter are no more than a "coarse eligibility filter." Research Corp., 627 F.3d at 869. In other words, the expansive categoriesprocess, machine, article of manufacture, and composition of matterare certainly not substitutes for the substantive patentability requirements set forth in § 102, § 103, and § 112 and invoked expressly by § 101 itself. Moreover, title 35 does not list a single ineligible category, suggesting that any new, nonobvious, and fully disclosed technical advance is eligible for protection, subject to the following limited judicially created exceptions.

Of course sections 102, 103 and 112 of the statute have nothing whatsoever to say about laws of nature, natural phenomena and abstract ideas. So our task today is to pilot the ship past the treacherous shoals represented by those pesky “judicially-created exceptions”. Indeed the “novelty” section (section 102) is concerned with filing dates of patent applications, printed publications and the like. This suits our friends in the Intellectual Property community, who go up the wall at any suggestion that plants and bacteria found in the wild, human DNA, computer assisted business methods and the like might fail the demands of a more rigorous Section 101 jurisprudence.

Clearly the claims are not drawn to laws of nature, nor to natural phenomena. So we have to finess the abstract idea exception. Hmm!

Aha! The Supreme Court did not categorically exclude business methods.

In line with the broadly permissive nature of § 101's subject matter eligibility principles, judicial case law has created only three categories of subject matter outside the eligibility bounds of § 101 laws of nature, physical phenomena, and abstract ideas. Bilski, 130 S.Ct. at 3225. Indeed, laws of nature and physical phenomena cannot be invented. Abstractness, however, has presented a different set of interpretive problems, particularly for the § 101 “process” category. Actually, the term “process” has a statutory definition that, again, admits of no express subject matter limitation: a title 35 “process” is a “process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.” 35 U.S.C. § 100(b). Indeed, the Supreme Court recently examined this definition and found that the ordinary, contemporary, common meaning of “method” may include even methods of doing business. See Bilski, 130 S.Ct. at 3228. Accordingly, the Court refused to deem business methods ineligible for patent potection and cautioned against “read[ing] into the patent laws limitations and conditions which the legislature has not expressed.” Id. at 3226 (quoting Diamond v. Diehr, 450 U.S. 175, 182, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981)). And this court detects no limitations or conditions on subject matter eligibility expressed in statutory language. See, e.g., Ass'n for Molecular Pathology v. U.S. Patent & Trademark Office, 653 F.3d 1329, 1348 (Fed.Cir.2011) (patent-ineligible categories of subject matter are “judicially created exceptions”); Prometheus Labs., Inc. v. Mayo Collaborative Servs., 628 F.3d 1347, 1353 (Fed.Cir.2010), cert. granted, ___ U.S. ___, 130 S.Ct. 3543, 177 L.Ed.2d 1120 (2010) (patent-ineligible categories are “not compelled by the statutory text”); see also Bilski, 130 S.Ct. at 3225 (Supreme Court acknowledging that judge-created “exceptions are not required by the statutory text”).

We will ignore the fact that, in Bilski, four justices favoured the categorical exclusion of business methods, and that a fifth, Justice Scalia, joined Justice Breyer in a concurrence that damned State Street and opined that not many business methods would merit the protection of the patent laws. And maybe, if we keep hammering on about it, the Supreme Court will finally get the message and drop all that stupid nonsense concerning laws of nature, natural phenomena, abstract ideas and the like.

The trouble is, this stuff does all look rather abstract, and we cannot really point to much in the way of technical detail. The best we can do is to sound off generally about the difficulty of defining precisely what is meant by an “abstract idea”, proffer dicta on the inapplicability of tests formulated during the “Industrial Age” to the inventions of the “Information Age”. Then we can cite Research Corp:

With this in mind, this court does “not presume to define `abstract' beyond the recognition that this disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter and the statutory context that directs primary attention on the patentability criteria of the rest of the Patent Act.” Research Corp., 627 F.3d at 868.

Such generalities are all very well, but what about the ‘invention’ before us?

Turning to the '545 patent, the claimed invention is a method for monetizing and distributing copyrighted products over the Internet. As a method, it satisfies § 100's definition of “process” and thus falls within a § 101 category of patent-eligible subject matter. Thus, this court focuses its inquiry on the abstractness of the subject matter claimed by the '545 patent.

“[I]nventions 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 869. The '545 patent seeks to remedy problems with prior art banner advertising, such as declining clickthrough rates, by introducing a method of product distribution that forces consumers to view and possibly even interact with advertisements before permitting access to the desired media product. '545 patent col.2 11.14-18. By its terms, the claimed invention purports to improve existing technology in the marketplace. By its terms, the claimed invention invokes computers and applications of computer technology. Of course, the patentability of the '545 patent, though acknowledged by the U.S. Patent Office, would still need to withstand challenges that the claimed invention does not advance technology (novelty), does not advance technology sufficiently to warrant patent protection (obviousness), or does not sufficiently enable, describe, and disclose the limits of the invention (adequate disclosure).

Returning to the subject matter of the '545 patent, the mere idea that advertising can be used as a form of currency is abstract, just as the vague, unapplied concept of hedging proved patent-ineligible in Bilski. However, the '545 patent does not simply claim the age-old idea that advertising can serve as currency. Instead the '545 patent discloses a practical application of this idea. The '545 patent claims a particular method for monetizing copyrighted products, consisting of the following steps: (1) receiving media products from a copyright holder, (2) selecting an advertisement to be associated with each media product, (3) providing said media products for sale on an Internet website, (4) restricting general public access to the media products, (5) offering free access to said media products on the condition that the consumer view the advertising, (6) receiving a request from a consumer to view the advertising, (7) facilitating the display of advertising and any required interaction with the advertising, (8) allowing the consumer access to the associated media product after such display and interaction, if any, (9) recording this transaction in an activity log, and (10) receiving payment from the advertiser. '545 patent col.8 11.5-48. Many of these steps are likely to require intricate and complex computer programming. In addition, certain of these steps clearly require specific application to the Internet and a cyber-market environment. One clear example is the third step, “providing said media products for sale on an Internet website.” Id. col.8 11.20-21. And, of course, if the products are offered for sale on the Internet, they must be “restricted”step fourby complex computer programming as well. Viewing the subject matter as a whole, the invention involves an extensive computer interface. This court does not define the level of programming complexity required before a computer-implemented method can be patent-eligible. Nor does this court hold that use of an Internet website to practice such a method is either necessary or sufficient in every case to satisfy § 101. This court simply find the claims here to be patent-eligible, in part because of these factors.

“Many of these steps are likely to require intricate and complex computer programming.” Indeed!

And, just in case you did not get the message, we will repeat it!

Finally, the '545 patent does not claim a mathematical algorithm, a series of purely mental steps, or any similarly abstract concept. It claims a particular method for collecting revenue from the distribution of media products over the Internet. In a recent case, this court discerned that an invention claimed an “unpatentable mental process.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed.Cir. 2011). The eligibility exclusion for purely mental steps is particularly narrow. See Prometheus Labs., 628 F.3d at 1358 (noting that claims must be considered as a whole and that “the presence of mental steps [in a claim] does not detract from the patentability of [other] steps”). Unlike the claims in CyberSource, the claims here require, among other things, controlled interaction with a consumer via an Internet website, something far removed from purely mental steps.

In sum, as a practical application of the general concept of advertising as currency and an improvement to prior art technology, the claimed invention is not “so manifestly abstract as to override the statutory language of section 101.” Research Corp., 627 F.3d at 869. Accordingly, this court reverses the district court's dismissal of Ultramercial's patent claims for lack of subject matter eligibility and remands for further proceedings. This decision does not opine at all on the patentability of the claimed invention under the substantive criteria set forth in § 102, § 103, and § 112.


The remaining defendant in suit, Wildtangent, appealed to the Supreme Court who GVR'ed (‘grant, vacate, remand’) for reconsideration in the light of the Supreme Court judgement in Mayo


Will the Federal Circuit manage to find some pretext to avoid affirming the district court, given the precedent and dicta set out in Mayo? The idea of monetizing advertising over the internet must surely be, in itself, an abstract idea. If the minimal disclosure in the patent specification suffices to prove enablement, then surely the showing of enablement must surely rest on the observation that the computer-implementation is routine, conventional activity long practised by those skilled in the art. Thus any veneer of computer-implementation surely cannot supply patent-eligibility to an otherwise patent-ineligible abstract idea

[ Reply to This | # ]

Groklaw's Response to the USPTO's Request for Suggested Topics for Future Discussion & A Supplement ~pj
Authored by: Anonymous on Tuesday, March 19 2013 @ 03:49 AM EDT
Every firm with an internal IT department writes software. Every firm which maintains its own website writes software. There are roughly 634,000 firms in the United States with 20 or more employees and 1.7 million firms with 5 to 19 employees. A very large fraction of these firms write software. In an ideal world, all firms should verify all patents as they are issued to avoid infringement. This need to verify the relevance of all patents would necessarily be a constant, on-going activity. For one thing, corporate software must frequently be adapted to new needs and any new version may potentially infringe a patent not previously infringed. A study has concluded the task is practically impossible to accomplish.
While this argument might meet less opposition from skeptics it is not quite accurate. You don't need an IT department to be a potential infringer. Anyone who recorded a macro in a wordprocessor or wrote a formula in a spreadsheet is a potential infringer.

[ Reply to This | # ]

Planet Technology
Authored by: macliam on Tuesday, March 19 2013 @ 08:26 PM EDT

Geographical and Biological Description of Planet Technology

Planet Technology contains two large landmasses surrounded by ocean. One landmass is regarded as a single continent, called Processland. The indigeneous lifeforms of Processland are called Statutory Processes (though some might also be referred to as Methods or as Arts). The other landmass is (like Eurasia/Africa) regarded as consisting of three continents, Machineland, Manufactureland and Compositionland, whose indigeneous lifeforms are referred to as Machines, Manufactures and Compositions respectively. The Compositions (more formally known as Compositions of Matter) resemble plants in that each is rooted to a single spot. One can therefore usually identify a composition by specifying its location. Many manufactures (e.g., plates and lawnmowers) resemble sloths, in that they move around their places of habitation very slowly as they age and die. Machines tend to be more active. Indeed some machines, though they may move regularly around their home areas, tend to stay put within those areas. However the indigenous lifeforms known as computers and cellphones seem to be constantly on the move around the adjacent regions of Computerland and Cellphoneland. Indeed the computers are probably the most active lifeforms on the planet. But printing presses, word processors, player pianos, Jacquard looms and some other ancient lifeforms are also fairly active. The printing presses and Jacquard looms are migratory, spending periods of time at particular locations, then suddenly moving on to other locations some distance away. A machine configuration identifies a location within Machineland. The lifecycle of a machine (from manufacture to the dismantling and possible recycling of its constituent parts) is representable as a trajectory through Machineland.

Some of the lifeforms can participate in long-distance symbiotic relationships that induce the spontaneous creation of entities that one might describe as composite machines which, for legal purposes, are treated as machines on the same basis as their constituent parts. In particular, the computer lifeforms can enter into long-distance symbiotic relationships with one another and with optical media, network cables, modems, dongles, wireless antennae, landlines, telephones and cellphones to form composite machines such as computer networks and client/server systems that are miraculously conjured into existence as living entities in parts of Machineland far removed from the habitations of the symbiotes.

The shores of the landmasses are washed by three oceans, the Ocean of Abstract Ideas, the Ocean of Laws of Nature, and the Ocean of Natural Phenomena (also known as the Ocean of Physical Phenomena). The Ocean of Natural Phenomena separates the two landmasses, and includes the Sea of Products of Nature washing the shores of Compositionland. The Ocean of Abstract Ideas includes the Sea of Mathematical Ideas, and the Sea of Business Strategies.

The Ocean of Abstract Ideas is inhabited by lifeforms belonging to the order of abstract ideas. Most of the members of this order dwell in the open ocean far from land, but some dwell in the coastal seas, and some may indeed swim up rivers discharging into the ocean. Now the shoreline of Processland is not well-charted, and geographers, surveyors and navigators regularly engage in acrimonious disputes concerning the size and general shape of this continent. Indeed the coastline of Processland is a bewildering maze of marshes, swamps, creeks, lagoons, small islands, shoals and sandbanks, to the extent that nobody can agree on any well-defined frontier between the sea and the dry land. There is an extensive area of wetland between the firm ground of Processland and the Ocean of Abstract Ideas, which is populated by lifeforms known as business methods. Some people argue that these wetlands should be regarded as part of the territory of Processland. Others consider that these areas should more properly be regarded as part of the surrounding ocean. Moreover zoologists have been unable to establish the taxonomic status of the business methods. Some argue that these lifeforms are abstract ideas. Others dispute this, claiming that the business methods should be classified with the statutory processes. Others claim that the business method lifeforms in fact belong to a plurality of species, arguing that most appear to be abstract ideas, though some may in fact be statutory processes. A similar dispute concerns another area of wetland inhabited by lifeforms known as software processes. Ichthyologists have observed numerous species belonging to the genus of mathematical algorithms. Many members of these species are to be found swimming far out in the open ocean. But some are to be found swimming in the coastal seas, creeks, lagoons and river estuaries that form the coastline of Processland. Some people argue passionately that the software processes all belong to the genus of mathematical algorithms. Others argue that there are indeed mathematical algorithms dwelling amongst the software processes, but that most species of software process are homologous to the land-dwelling statutory processes.

Some believe, or at least suspect, that the entirety of the flora and fauna of Planet Technology can all be classified so that every lifeform falls either within one of the land-dwelling orders of statutory process, machine, manufacture and composition, or else within one of the ocean-dwelling orders of laws of nature, natural phenomena, and abstract ideas. But there is no general agreement as to the appropriate classification for the business methods and the software processes.

Colonization, Commercial Exploitation and the Patent System

The Human Race has been colonizing and exploiting Planet Technology and, a few centuries ago, set up a land lease system, called the Patent System, to promote the objectives of colonizing the landmass and exploiting the indigenous lifeforms.

The landmasses contain settled areas and wilderness areas. Any colonist who builds a homestead out in the wilderness and starts cultivating or domesticating the native lifeforms is entitled to stake a claim to a tract of wilderness land surrounding the homestead, and apply for a twenty-year lease granting a monopoly over the exploitation of indigenous lifeforms over that tract of land. There are rules governing the allowable claims. The tract of land claimed must be contained in the wilderness area and must not encroach on settled areas. Moreover no homestead or exploited terrain belonging to another colonist should lie within the meets and bounds determined by the claims at the time that the claim is made. Moreover the homestead must lie within the claimed tract. Failure to respect these rules results in invalidation of the claim and the resultant monopoly. Those homestead owners with issued claims are known as inventors, and the title deeds that specify both the location of the homestead and the meets and bounds of the claim are known as patents. A portion of the patent known as the specification must specify the location of the homestead with sufficient precision to enable strangers to locate the homestead from the written description (enablement). Moreover the boundaries of the claim must be specified, in relation to local landmarks, using a numbered sequence of patent claims so that the boundaries of the claimed territory can be determined as accurately as could reasonably be expected, given the nature of the terrain.

There is however an oddity in the property law that results from these rules. The terrain newly claimed must avoid areas already settled and exploited, but overlap with the wilderness areas of earlier claims. When this happens, some tracts of land may fall within the meets and bounds of a number of distinct and independent domains leased by distinct and independent inventors. Each of these inventors has an independent right to demand tolls (royalties or license fees) or to seek to eject trespassers. It follows that the exploitation of such tracts requires the active cooperation or indifference of all the tenants who are leasing the tract.

Now this patent system seems to have worked in accordance with the intentions of the founders of the system in certain large areas of the landmasses. In particular, the continent of Compositionland contains regions known as Chemicalland and Alloyland that in their pristine state were stony ground difficult to clear. However, once cleared, much of this land proved fertile ground for the cultivation of the plant-like lifeforms such as chemicals (including pharmaceuticals) and alloys. There is a long history or settlement, and the terrain is well-mapped, but, in the more remote areas, there remain areas of virgin territory available for exploitation. The situation in much of Manufactureland is similar: the patent system encourages the effective exploitation of lawnmowers, windscreen wipers, dog collars and mousetraps.

However the situation in some regions of Machineland is very different. The regions of Computerland and Cellphoneland are vast featureless prairies. There are numerous homesteads, and some are well-established. But many so-called homesteads are dilapidated shacks that were only thrown together to provide a pretext for staking a claim. Some shacks have already collapsed to the point of being invisible beneath the surrounding undergrowth. Now each homestead has its associated tract of leased land. But the terrain is so featureless and lacking in landmarks that the meets and bounds of the domains are difficult to determine. Some of the domains have visible boundary fences, but many do not.

Now the indigenous lifeforms, namely the computers and cellphones, are unruly beasts that wander continually all over the prairie. Some may group together in herds, but others break free and wander here, there and everywhere. In their journeys, these beasts trespass on domains leased to thousands of inventors. Indeed it has been claimed that some regularly wander over a quarter of a million distinct leased domains in a single day. In theory, whenever one of these beasts trespasses on a leased domain, the owner of the beast is expected to pay a toll to the tenant (or patent owner) to compensate for the trespass. But, if it were desirable to create a system to compensate tenants for trespass with appropriate license fees, it would be impractical to come up with a fair system, given the enormous number of overlapping patents issued, and the difficulties of determining the scope of the claims.

Moreover some of the apparent uninhabited dilapidated shacks are in fact inhabited by sinister humanoid creatures known as trolls. These trolls are capable of assuming the form of human beings, and will pose as inventors to obtain leases on ill-mapped domains within the prairie, on the pretence of having established homesteads there. They then kidnap large numbers of computers and cellphones that stray near their shacks, and demand hefty ransoms from the owners of the impounded livestock, on the pretext that the beasts have trespassed on their domains. But, because the boundaries of their domain are often vague and ill-defined, expensive legal proceedings are required to determine where the boundaries actually run, and whether or not the livestock has actually trespassed on the domain. Thus those seeking to make a living in Computerland or Cellphoneland live under constant threat.

Recent Developments

A case decided a couple of years ago by the Supreme Court of Planet Technology appears to have established the principle that the beaches and clifftops around the landmasses do in fact lie within the public domain. Indeed the Supreme Court established that an area claimed as private land in the district of Diagnostictestshire in Medicalprocedureland, on the continent of Processland, was in fact a public beach. Future decisions of the Supreme Court should help establish the scope of the legal principles underlying the recent decision. Does the principle apply to beaches around all continents, or only to those around Processland? A forthcoming court case should determine which if any parts of a soggy region known as Nucleicacidland on the coastline of Compositionland are legally to be considered part of the Ocean of Products of Nature. The results of such cases are eagerly awaited. Indeed the recent decision seems to suggest that parts of the disputed swamps where the software processes and business methods congregate might in fact be public land that cannot be included in any patent claim.

[ Reply to This | # ]

Groklaw © Copyright 2003-2013 Pamela Jones.
All trademarks and copyrights on this page are owned by their respective owners.
Comments are owned by the individual posters.

PJ's articles are licensed under a Creative Commons License. ( Details )