by Dennis Crouch
PersonalWeb has added a second petition for certiorari to the Supreme Court docket. The first case focuses on res judicata and the Federal Circuit’s peculiar Kessler doctrine. That case has seen some action and is awaiting the views of the Solicitor General. See Resorbing Patent Law’s Kessler Cat into the General Law of Preclusion.
The new petition focuses on eligibility and asks the Supreme Court to reaffirm two separate pathways for computer-implemented business method inventions:
- Improving “the functioning of the computer itself;” and/or
- Causing an improvement in “any other technology or technical field.”
PersonalWeb argues that the Federal Circuit has focused only on the first prong, and only in a limited sense. [Petition].
In Alice Corp., the Supreme Court used these terms in its Step 2 (something-significantly-more) analysis:
The method claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to “nothing significantly more” than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer.
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014) (quoting Mayo). During the prior appeal, PersonalWeb argued that its “True Name” file structuring system offered significant improvements to the technical field of computer network operations, but that argument was disregarded by the Federal Circuit who concluded that the invention was a “pure” abstract idea.
= = =
The patents at issue here are part of the patentee’s “True Name” family. U.S. Pat. Nos. 6,415,280; 7,802,310; and 7,949,662. The patent begins with a description of traditional haphazard computer file storage systems where each user picks a different name and location for files. This works fairly well for well-memoried individuals, but gets a bit crazy with distributed multi-user systems. “[U]sers could save the same file with different filenames, or different files with the same filename, leading to unnecessary duplication, and confusion as to which files are actually in the system.” The inventors here apparently learned of recent “fingerprinting” algorithms that were being used for public-key encryption and then had the idea that the same technology could be used for creating unique file identifiers for computer file systems — i.e., “true names.” But truthfully, appears to be just a hash. The asserted claims use the true names to control file access; retrieve files based upon their content; and remove duplicate files on the system. The claims require use of a “content-dependent name”:
[T]he content-dependent name being based, at least in part, on at least a function of the data in the particular data item, wherein the data used by the function to determine the content-dependent name comprises at least some of the contents of the particular data item, wherein the function that was used comprises a message digest function or a hash function, and wherein two identical data items will have the same content-dependent name.
‘310 Patent, Claim 24. Claim 24 is a retrieval function that retrieves a file using the content-dependent name. The claim also includes an authorization check (such as a copyright license check) and will not permit access when “not authorized.” The patentee here explains how the security check is facilitated by the True Name system.
The technical improvement that this invention provided over conventional file systems is clear. In conventional systems—where files are identified by user-selected file
names—a user could easily circumvent this authorization check simply by changing the file name. By using True Names, however—which always uniquely identify each file—the system ensures that only authorized users can access the file.
Petition. The Federal Circuit also heard these arguments, but concluded that everything there “is all abstract.”
Random, at 5.1.1, offers a theory why 102/103/112 is not a sufficient filter of patentability and why we need 101 as well. His hypo:
Suppose A invents and publishes a better procedure to test a car battery. Then suppose B invents a better car battery, files on it at the USPTO and includes a claim to the A procedure of testing his clever new and improved battery. If I have correctly understood him, Random asserts that i) this claim misappropriates rights in A’s invention and that ii) 35 USC 101 is the ONLY provision that can stop this happening. Which is why the patent statute needs 101 in it.
I haven’t yet seen here any refutation/demolition of Random’s theory. Is there one?
Consider the owner of a car, bought new, with the B battery installed in it by the car maker who has a licence under the B patent. That owner has the right to enjoy quiet possession of the battery. However, when that car owner runs the A test procedure, does he nevertheless infringe the claim in the patent on the B battery to the A method of testing the battery? If so, is that OK?
Surely not!
If so, Random’s theory seems to be vindicated. But that can’t be right, can it?
The answer to Random’s hypo is that B’s Patent doesn’t grant B the right to use the A procedure (B’s patent only gives a negative right), thus a licence under B’s patent can’t either. To carry out A’s procedure on the B battery one would need a licence under both patents, and this would seem to be the case whether B’s patent had claims to using A’s procedure on B’s battery or not.
This A and B business is not Random’s hypo so you are just confusing things.
I chuckle as Malcolm responds to a different anon and confuses the hypo being properly responded to as “Random’s” when it was MaxDrei’s.
In too much of a hurry to jump there, Malcolm?
I will try again. I am the owner of a new car powered by a B battery. The car maker is B’s Licensee. I think I can enjoy quiet possession of my car including its battery.
But I want to test the battery and do so using the A process. OK, if I am not to infringe A’s patent, I shall need a licence from A. Fair enough. But (as you say, anon) if my act of testing is not to infringe B’s patent, I must also get a licence from B. Random (if I understand him right) asserts i) B ought not to be issued with such a patent claim, and if he is then the claim should be held invalid, and ii) 35 USC 101 is the means to stop the nuisance. I still do not see a refutation of this proposition, here in this thread and if there is one I should like to understand it.
Over here in Europe there is a similar conundrum, namely the “re-stringing problem”. You are the proud owner and keen user of a tennis racquet, the manufacturer of which has a patent on the racquet. The patent claims not only the racquet but also the racquet, stringed.
You find you need to re-string the racquet. When you do that, do you infringe the claims to the racquet, stringed? And if you do infringe, is that “fair enough”?
The great legal answer: it depends.
Infringement of patent directed to a (hard goods) manufacture includes “make” — regardless of the “how” of that making.
You indicate (but do not state affirmatively) that even though the “how” is by the patented method, it is not clear whether you are infringing that method or if you have proper permission to DO that method (with the NOT SMALL caveat that there are no other patents on the end item — as critically, patents are of a negative right nature, and thusly, overlap is entirely possible).
So you MAY be infringing BOTH claims to a manufacture as well as claims to a method of making.
Does the patent get exhausted and busted up so the no additional licence is needed?
Selective confirmation bias at work:
“I haven’t yet seen here any refutation/demolition of Random’s theory. Is there one?”
There have been plenty. You are just not paying attention.
Rather than assert that “There have been plenty,” you could have pointed to one or more of these refutations, if they exist. Even when you happen to make a correct assertion, you don’t have sufficient credibility to not require additional support. Why do you believe otherwise?
Based on past experience, you will continue to make unsupported assertions as fact, and your response, if any, will be ad hominem.
NS II,
It is you that applies ad hominem with your assertion of my lack of credibility.
You have no credibility to make that assertion, given as most every time you choose to speak up, you are dead wrong.
You are confusing ad hominem with conclusions based on observation. Apparently, “based on past experience” was confusing to you. Relatedly, you don’t seem to understand the concept of credibility, which is an observable phenomenon.
I am not the one confused NS II – and it is not my credibility that is impugned with the observable phenomenon.
The “past experience” of you choosing p00rly and being on the wrong end of the whooping stick is clearly observable. I “get” that you don’t like it, but that is the way that it is.
Filter on item from cut and paste evidencing selective editing…
Selective confirmation bias at work:
“I haven’t yet seen here any refutation/dem01ition of Random’s theory. Is there one?”
There have been plenty. You are just not paying attention.
MD: “ I haven’t yet seen here any refutation/demolition of Random’s theory. Is there one?”
It’s not the hypo I would have written but the silly zombie idea that you can have a sane functioning patent system without a subject matter eligibility screen has been put to bed a zillion times over (and yes the EPO has one).
An easier hypo for most will be the ineligible dependent claim in the battery patent “A method, comprising the step of detecting the battery of claim 1”.
Is there anyone out there who does not understand why 101 is needed here? If so, we are here to help you but you have to actually want to be helped.
Thank you. Your hypo is indeed “easier”. Not quite so easy for me is to see what objections to such a claim under the EPC would most clinically dispose of it.
But Malcolm, your mention of the EPO has me slightly puzzled. Are you saying that the EPO has a sane patent system? Or are you saying that within that system it has a functioning eligibility screen?
MD: “what objections to such a claim under the EPC would most clinically dispose of it.“
The claim is “A method comprising the step of detecting [insert non-obvious manufacture].”
C’mon, Max. Apply EPO law. They have a subject matter screen, too, as we all know. This is easy.
I can guarantee that Malcolm will NOT like the results of anyone’s applying “C’mon, Max. Apply EPO law.” when it comes to the application of the eligibility screen
(As such and per se and all — )
Sorry, Prophet, but I’m not finding it “easy” to apply EPO law to a hypo in which we have i) a set of patent claims in which claim 1 is not invalid and is directed to a battery and ii) in the set, a claim to a method of detecting the claim 1 battery. First thoughts are that such a claim would attract objection (if at all) that it i) fails to comply with the Art 84 EPC requirement that it be “clear” and ii) for as long as the lack of clarity remains, is not unitary with the invention of claim 1.
How do you see it failing the EPC’s Art 52 eligibility filter/subject matter screen? I’m curious.
Come MaxDrei, you know full well that “Prophet” is Malcolm, and he has in the past disagreed with the EPO filter on eligibility.
And that’s not even taking into account the differences between EPO-ville view on technical arts and the more expansive US-ville view on Useful Arts.
Yes, indeed we both suppose The Prophet to be the poster formally calling himself Malcolm Mooney and then MM. Nevertheless, when I reply to a comment from “The Prophet” I think it courteous to address the poster by the name he posts.
MM and I disagree on many things, indeed. He thinks (as do the patents judges in England) that on eligibility under the EPC the established case law of the EPO is misguided whereas I see it as much preferable to the less-than-satisfactory approach to Art 52 EPC that they have in England, and which we also see in the USA.
As to your obsession with technical vs useful, for as long as you have no experience or grasp of the established case law of the EPO on “technical”, your endless nudge-nudge, wink-wink about “the differences” between technical and useful reminds me of that the man in the blazer in that Monty Python sketch.
I could do far LESS with your choice of “courtesy” in responding to a person’s name, and could do far MORE with you changing your lack of choice of “courtesy” in respecting different choices of Sovereigns, as well as respecting the counter points put to you that you ceaselessly 1gn0re.
And please (please, please, oh pretty please) inform me of what I am lacking in my “established case law of the EPO on “technical”…” as to date, you have rather blandly done an exceedingly p00r job of that, either pointing merely to the corpus, or mouthing something like “well, it has to remain undefined.”
And make no mistake, I am NOT “nudge-nudge, wink-wink” on the differences, as I have been very clear that the CRITICAL difference is that Useful Arts encompasses MORE THAN the EPO version of technical arts – even accounting for the “as such” and “per se” that I have ribbed you with.
That YOU are reminded of the man in the blazer in the Monty Python sketch is merely you clinging to your Peak of Mount S. You have been around that same ‘block’ of yours so many times over the decades that you cannot see but the path your prior footsteps have laid out.
What is the problem to be solved by the invention of my claimed method, MD?
A better question, Malcolm:
What is your point?
Prophet, your question is relevant to the examination for non-obviousness at the EPO of an independent claim. Here, the contribution to the art made by the subject matter of your hypothetical patent is a new battery. Its main claim is directed to the new battery and the objective technical problem (which is the pivotal concept in the EPO’s “problem-solution approach” to obviousness) would be (at the very least) the problem of finding a different battery.
The claim you put up for analysis was one present in the same patent and directed to a method of testing that new battery. For its patentability at the EPO I think it benefits from the patentability of the battery claim.
But now suppose the battery as such turns out to be within the state of the art, and accordingly not eligible for patent protection. That would leave the patentability of the claim to the (any) method of testing that battery to stand on its own feet. Clearly, it crashes because it too is not new.
Perhaps I’m not grasping accurately the hypo you are putting forward? Perhaps you suppose that at the EPO every dependent claim to be allowable must be inventive over the claim from which it depends? If you want to continue the discussion, do say more.
“Perhaps you suppose that at the EPO every dependent claim to be allowable must be inventive over the claim from which it depends? ”
THIS is also a part of the fallacy being advanced by Random.
While I certainly do attempt to use dependent claims as a structured fallback with innovative aspects of their own, there is NO such “requirement” as has been postulated by Random (his words: “The law used to be that inclusion of preexisting limitations violated “failing to point out and particularly claim.” The thing that would prevent you from claiming using a conventional method to interact with your nonobvious structure was a 112b violation“).
Good luck with having Malcolm cogently explicate his position AND stay true to his comment about the EPO filter (with the implication that he views that filter as acceptable). No amount of ‘politeness’ from you will obtain that.
“An easier hypo for most will be the ineligible dependent claim in the battery patent “A method, comprising the step of detecting the battery of claim 1”.”
Are you really trying to move the goal post to a dependent claim in a different statutory category than the independent claim from which the dependent claim refers to?
That’s “easily” a lot of straw. Did you enjoy beating that?
Random asserts that i) this claim misappropriates rights in A’s invention
That is part of the problem. There are two other parts.
The larger problem for patent law is the stated goal of patent law: To promote the progress. If one assumes that these types of claims are valid, we would naturally assume that whenever there is any improved structure, every interaction with that structure becomes repatentable. The encroachment on the rights of the already-patented is nothing compared to the damage to future innovation.
The very first battery tester is assuredly not very good, and it cries out for improvement. But after this first tester is disclosed, every other battery advancement includes its own claim to testing their battery. Now someone comes up with an improved battery tester. What is the point of them disclosing it? It costs money to register a patent. How will that money ever be made back? There is *hypothetical* utility in their invention but no utility in fact – It *can* test batteries better than the previous tester, but what battery testing currently exists in the public domain? Who would buy a battery tester when every battery on the market would constitute an infringing use of the tester? If nobody would buy a battery tester, the value of the exclusionary right is zero. Nobody would disclose because there’s no money in the patent. The first disclosure in the field would be the last disclosure in the field.
The greater issue is the notion of federalism itself. Imagine how the medical field would fare if every improved device not only included claims on the structure of the device, but repatented all conventional medical procedures that had any relation to the device. You want to perform a surgery? Not unless you either keep a set of public domain tools on you, or these 15 manufacturers license it. So too with every other field. The chief regulatory agency would not be the state, but private corporations under grant from federal authority. And remember, it’s Congress that sets the 20 year term and even controls who gets the grant. The notion that states essentially surrendered their police power to the federal government is ridiculous. The question is not whether “battery testing” can be remonopolized. The question is whether any conventional method in any field can be remonopolized.
In that context its easy to see why Alice is what Alice is. The Supreme Court isn’t going to let, e.g., Intel tell you when you can and can’t engage in a “fundamental business practice” over a phone or computer merely because they manufacture processors. That’s for the state to regulate.
Take a second and replace “battery testing” with anything you routinely do on a daily basis, and ask yourself if the only reason you’re free to do it is because Intel has graciously chosen not to claim the full scope of their rights with respect to their processors over the past 20 years. Do you think you’ve had something to drink or eat, or crossed the street or seen a loved one that in some way wasn’t under the control of a processor at some point before it got delivered to you? Do you think Intel is unaware of what their processors are used for? You give me an omnibus spec and a few thousand claims paid for an I would make Intel your legal master. If you think the worst is in prohibitions on battery testing and valet parking you simply lack vision.
ii) 35 USC 101 is the ONLY provision that can stop this happening
It’s not, but it’s the option that least unsettles the law, which makes it “best.”
The law used to be that inclusion of preexisting limitations violated “failing to point out and particularly claim.” The thing that would prevent you from claiming using a conventional method to interact with your nonobvious structure was a 112b violation. I think there’s fertile ground from solving this at the examination stage.
Similarly, related features apply in 102/103 when they just ignore “unfair” (my word, but that is essentially the standard) limitations. We won’t patent a book with different words on it, but we will patent a cdrom sitting in a drawer that has different 1s and 0s. There’s no statutory basis for ignoring nonfunctional descriptive material (most commonly seen as the printed matter doctrine), and yet there is a cannon of rendering an otherwise nonobvious claim unpatentable by just refusing to give weight to certain things. It makes just as much sense to ignore nonrelevant structural features as it does to ignore nonfunctional ones.
Were I a litigator coming up against one of these claims, I would raise 101, 112b, and 103. But were I a judge, 101 makes the most sense to move forward on. I should point out that I read the Supremes as actually wanting to move forward on 112b, because there is a clear roadmap there.
Random, thanks for that thoughtful reply. I have already mentioned the “re-stringing” problem. That was addressed by the UK Supreme Court recently, in the Werit case, under the rubric of “repair versus re-manufacture”, but without any reference to patent eligibility. The owner enjoys a right to quietly enjoy possession, including a right to repair but no right to make a new product under the guise of repairing it. Does that not answer your Intel hypo? Or do purchasers of products in the USA have no right to use their purchases how they please?
Then there is the “reach-through” issue, encapsulated by Robin Jacob with his hypo of the inventor of a steam whistle who tags on the end of his set of claims one to a battleship which includes the whistle. Big Pharma loves reach through claims, not to mention the makers of chips for smartphones. But again, over here, eligibility is not the provision used (effectively) to stop this abuse.
Suppose we live in a Panglossian world. What would be the best tool to curb these abuses? Eligibility? I doubt it.
Suppose the independent claim to the steam whistle fails for want of novelty, an inventive step or enablement. I’m thinking that would be enough to clear out the reach-through claims too, without any need to invoke a lack of eligibility.
But the lower courts can only work (to serve the interests of justice) with the tools they have been given by the legislator and the courts above. That’s where you are coming from, right?
That said, it is strongly evident, not only to the Learned Justices, that, left unchecked, the creeping advance of patent rights into areas beyond the “useful arts” (business methods, for example) hinders rather than promotes the progress of useful arts, inhibits innovation and hurts rather than helps the general welfare. How do you drive back that advance? By the resolute deployment of a statutory eligibility clause that is fit for purpose. It’s all a bit unfortunate though, if the courts find that their methodology on 101 eligibility is such an effective tool that, creepingly, they increasingly use it in areas (102, 103 or 112) where the existing tools are proving to be less sharp and less effective. Instead, they should sharpen up their existing tools. Again, we agree, don’t we?
Suppose we live in a Panglossian world. What would be the best tool to curb these abuses? Eligibility? I doubt it.
I also doubt it. Granting that the problems that RG identifies are real and worthy of consideration, I have not yet seen in RG’s posts on this thread a single yet that really is best addressed through §101. So far, all of them look more like §§102/103 or §112 problems to me.
To my mind, §101’s real value is for excluding card games or miniseries plots from patent protection. The battery charger is no more held up by his hypothetical test-method claim than VCRs were held back by copyright laws that forbid people from using VCRs in the manner that they wished to do.
Greg, we agree on the point of having §01. But lest there be any doubt about the eligibility of “card games” I would refer back to the (17th century?) English Statute of Monolpolies definition of elegibility namely “manner of new manufacture” of which echoes can be discerned in both the US Statute and the EPC.
Like 101, it includes the word “new”. And like §101, it covers all manners of manufacture ie new things and new ways of making them, card games not excluded.
The EPC (Art 52) excludes from eligibility (inter alia) methods of playing games and of doing business. But the exclusion is narrow, being limited to those categories “as such”. That will do for me. For the rest, the patentability provisions, 102, 103 and 112, administered in an orderly way, are sufficient.
[T]he (17th century?) English Statute of Monolpolies definition of elegibility namely “manner of new manufacture” of which echoes can be discerned in… the US Statute…
Agreed. Insofar as one is playing with the same 52 card deck, but one has new rules of play, one’s claimed process may well be novel and even nonobvious, but there is no “manner of new manufacture,” nor any “new and useful… process” (emphasis added). It is precisely to exclude such that §101 is in the statute.
The EPC (Art 52) excludes from eligibility (inter alia) methods of playing games…
I am a bit lost as to how we moved from the proper construction of §101 to the EPC Art. 52. The U.S. §101 was drafted in the 1950s, while the EPC did not arrive until 1973. Consulting the EPC, therefore, cannot tell us anything about what the Congress of 1952 had in mind when it promulgated Title 35.
You are right, of course, Greg. I cited the EPC only in support of my proposition that the centuries-old test of eligibility “manner of new manufacture” continues to survive the test of time.
I like your chosen subject matter, a new game but played with the standard 52 card deck, as a means of enquiring into the meaning of “useful” in §101 (as opposed to the “useful arts” of the patents clause).
MaxDrei,
this is LESS about “continues to survive” and MORE about you merely ploying your typical EPO Uber Alles shilling.
As “I like your chosen subject matter, [__] as a means of enquiring into the meaning of “useful” in §101 (as opposed to the “useful arts” of the patents clause).”
This makes ZERO sense, as the “useful” in §101 IS the Useful Arts of the patent clause – and not “as opposed to.”
Further, Greg is NOT right (and yet another instance of people ‘politely’ playing patti-cake to the detriment of an actual discussion on the merits).
Greg appears to want to separate out patenting from copyright, and yet trips with “rules of play”
See link to americanbar.org.
Vis a vis ‘method of operation.’
“I have not yet seen in RG’s posts on this thread a single yet that really is best addressed through §101“
Haha. And of course you’ll ignore the the example I provided. How lame.
Maybe you could at least try to explain why 101 is not preferred getting rid of the claims that RG has presented. What’s your objection to it? You find it “confusing”?
Your example is beyond asinine, Malcolm.
Why should innovative detection methods be beyond the protection of our innovation protection laws?
“ innovative detection methods”
LOL. What?
What right back at you:
“getting rid of the claims that RG has presented.”
Utter balderdash:
“That said, it is strongly evident, not only to the Learned Justices, that, left unchecked, the creeping advance of patent rights into areas beyond the “useful arts” (business methods, for example) hinders rather than promotes the progress of useful arts, inhibits innovation and hurts rather than helps the general welfare. ”
Demming (and countless others) belie your nonsense as to business methods and the Useful Arts — your attempt at misconstruing what that entails [on a US patent law blog] is deceitful and reprehensible.
That would be Demming the noted patent jurist, would it, anon? Or W. Edwards Demming who helped to revolutionise various manners of manufacture (cars in Japan, for example). The term “methods for doing business” is very different from “methods of manufacture”. The term “useful arts” embraces all methods of manufacture but not all methods for doing business.
I’m still waiting for the US Supreme Court to tell us what “useful arts” means today in the context of the patent statute.
Meanwhile, what “technical character” means in the context of Article 52 of the EPC continues to evolve, under the civil law systems of mainland Europe, where there is no doctrine of binding precedent. For SCOTUS, laying down a binding precedent on eligibility is quite a challenge, I should think, one the Justices don’t fancy rising to. I bet they decline to take the Axle case.
Incidentally, on the other blog there is toda a piece from Bachmann about a fall-off of filing activity at the USPTO. If memory serves, Accenture used to be “right up there” with its filing activity. I wonder whether one reason for the fall-off is less frenetic filing activity at the USPTO by Applicants from the business management consultancy space following a stream of negative decisions from the courts of appeal on the eligibility of claim to methods for doing business.
I bet they decline to take the Axle case.
At this point, one wonders whether the SG is ever going to file their amicus brief. They have literally set a new record here for time necessary to respond to the SCOTUS’s request for their input.
Greg, I’m impressed that you have the time and inclination to follow yet another of the tedious exchanges on these threads between anon and me. But I’m encouraged that you do, for when I do reply to anon it is because I think other readers might find my text worth reading. It’s the only thing that makes it worth a reply to anon, somebody who continues to remind me of the pitiful man in the blazer in the very memorable Monty Python nudge nudge sketch.
Incidentally, do you have any thoughts on whether firms like Accenture are today filing at the USPTO at the same high levels that they used to before the 101 jurisprudence tightened up?
But you be you there MaxDrei – how pathet1c.
“The term “useful arts” embraces all methods of manufacture but not all methods for doing business.”
As YOU do not understand US patent law (as you asserted of my knowledge of the case law of the EPO), I will simply tell you that you are just not correct in your attempt to have BOTH methods of manufacture and methods of doing business be so ALL or NOTHING.
And that would be Edward Demming, whose actual contributions ARE business methods (as applied to various parameters – parameters EQUALLY viable to manufacturing or business methods.
“I’m still waiting for the US Supreme Court to tell us what “useful arts” means today in the context of the patent statute.”
Two things:
1) that is NOT their place.
2) YOU have left ME still waiting for your assertion on the EPO front of defining “technical.” Your “continues to evolve” falls to what I have already stated as a NON-answer.
And your (rather odd) notions as to binding precedent versus NON-binding precedent actually work AGAINST your assertions here, as if what you postulate were to be true, then the EPO would need not have any qualm about explicitly defining “technical” as they could always RE-define it — and giving a NON-answer only shows as NON-sense.
You actually tired to post this with a straight face?
“It’s not, but it’s the option that least unsettles the law, which makes it “best.””
How full of
C
R
A
P
can you get?
(and MaxDrie playing patticake with this nonsense shows that nothing MaxDrei says on the topic should be taken seriously)
Adding content or information to an existing device or system is not an eligible invention.
This is not difficult to understand.
Hit a filter…
Your comment is awaiting moderation.
February 10, 2022 at 12:05 pm
Thank you Malcolm for your tr1te drive-by mono10gue.
See 5.1 and (again) feel free to not use any Type of innovation that you would deny patent protection to.
Call it trite but the reality is if your claim falls into that category a decent attorney with the money and willpower will destroy that claim in court 95% of the time (and the other 5% of the time will be incorrectly decided Supreme Court decision).
Lol – tell me more about this 5% that you postulate.
Your title presumably references TRUE NAMES by Vernor Vinge. One of the early science fiction books, maybe even the earliest, that presaged what it means to have an online presence. Nice! Great book and a great read.
Thanks! I have not read that one yet, but probably will.
Armageddon 2419 A.D., first published in 1928 and introduced the character of Anthony “Buck” Rogers, has several sections that discuss people communicating with each other over video from their homes, including ordering services and goods which are then delivered to their homes.
The technical improvement that this invention provided
over conventional file systems is clear. In conventional
systems—where files are identified by user-selected file
names—a user could easily circumvent this authorization
check simply by changing the file name. By using True
Names, however—which always uniquely identify each
file—the system ensures that only authorized users can
access the file.
I love when applicants create a self-serving statement of the prior art and compare their invention to some state of the art that never reasonably existed. I suppose someone at one point posited a system that could be defeated by changing the file name, and that would be a bad system. Regardless, a system that can be defeated by lopping off the last 2 seconds of a 90 minute movie isn’t all that smart either. So don’t pat yourself on the back too hard.
In step (a), a “first computer” sends
a “request” for a “data item” to a “second computer.” Id.
That “request” includes a “content-dependent name”
for the data item. Id. The “content-dependent name”
is computed by “a message digest function or a hash
function,” based on “the contents of the particular data
item,” such that “two identical data items will have the
same content-dependent name.” Id….Thus, the “comparison” in
step (b)(i) is between True Name of the file requested
by the first computer, and the list of True Names in the
second computer’s license table. In step (b)(ii), the second
computer looks through the list of “licensees” for the given
True Name, and determines whether the first computer is
a licensee. Finally, in step (b)(iii), if the second computer
determines that the first computer is not a licensee, it
denies access to the file.
“Before my invention, three babies in a trenchcoat could enter a bar and purchase a beer simply because they appeared to be of beer-drinking height. But I have a brand new multistep method to stop this from happening, where I incorporate an already-existing four year old ‘fingerprinting’ algorithm into an authentication check in the most common sense manner one could think of. Here I have an individual seeking to enter a bar provide their fingerprint. I then have a list of fingerprints eligible to enter the bar, and my novel ‘bar flouncer’ checks the list. If the individual’s fingerprint is not on it – get this – I deny them entry.”
“Now it’s true I didn’t invent fingerprinting, and people using their names to determine if they are ‘on the list’ to enter the bar is conventionally done, but those people could just lie about their names. Moreover, you usually use fingerprinting to identify criminals, not bar patrons, and I’m using fingerprinting to determine who can enter a bar. Even though I invented neither authorization to enter a bar, nor the fingerprinting to identify a person, my method of using a fingerprint identity to provide authorization to enter a bar is clearly *my* eligible invention. The fact that I’m using a feature of a person to identify a person is clearly not an abstract act, and the fact that the context of bar authorization is conventional does not mean it is not significant. When you consider the entire thing together and think about the babies in a trenchcoat I clearly have improved the art.”
This is why I don’t do the private side. I would just feel guilty taking people’s money to write a petition brief on such an argument. Imagine admitting during the course of your argument that someone else invented the hashing algorithm and you’re just putting it to the same use – identity – in a different-but-similar preexisting context, and arguing YOU are the one improving another field.
Big ‘ol for Random, who cannot be bothered with actual law (my emphasis)
e.g., 35 U.S. Code § (b)The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
a new use
A new use does not mean “the old use is in a new context.”
Again, when someone invents a camera that takes pictures, they’re the inventor of the camera and the picture-taking use. If someone points the camera at something new they have not discovered “a new use,” nor would anyone in their right mind call them an inventor. People who use cameras in their conventional manner to take pictures of new, nonobvious contexts are called photographers, not inventors. The notion that obviousness is the only standard that protects the public here is incredibly underinclusive and very damaging to the value of the camera inventor in disclosing their invention.
You invent a battery tester. Tomorrow, someone invents a non-obvious battery. They claim using a conventional battery tester in the exact same way the conventional battery tester is used to test the state of their non-obvious battery. The method as a whole is clearly non-obvious, as the battery itself was sufficient to confer non-obviousness. Why would anyone take a license on your battery tester when it can’t be used to test any new batteries that come out after it? Why should the battery owner be rewarded with proceeds from the use of battery testers, cameras, and any other device that may interact with their battery when they don’t innovate in those spaces or even know anything about those devices?
Nice strawmen – now move the goalposts back to what I actually posted.
Nice strawmen – now move the goalposts back to what I actually posted.
Okay, why don’t you articulate why this is a new use of a known process or machine. What feature of the claims make this a new use.
What did your compatriot (the original examiner) have to say on the matter?
PS – I already put to you to explain what “new use” DOES mean to you (as opposed to your screeching about what it does NOT mean).
>Imagine admitting…that someone else invented the hashing algorithm and you’re just putting it to the same use…in a different-but-similar preexisting context, and arguing YOU are the one improving another field.
OK, serious 103 issues, but this is 101…shouldn’t “different-but-similar preexisting context” be enough to count as “an improvement” for 101 purposes? Put differently, shouldn’t the quantum of technical-contribution required for the purported “coarse screen” of section 101 be less than for 103 itself?
And that’s even assuming that any of this was consistent with the statutory text /rant.
There is nothing remotely “technical”about this alleged improvement. The improvement is in the “field” of logic and “naming things.”
Those “things” have to have hardware and software to interface with them. That’s how this works, with technology. You can’t do it in your head, you can’t do it on paper, etc.
“you can’t do it on paper”
Paper and writing tools are manufactures and technology is (or was) involved in their creation. Do you agree? They are also useful for assisting with the processing of data and the storage and organizing of data. Do you agree? In general terms, they are also old. Do you agree?
And yet non-obvious instructions about how to build rockets or non-obvious instructions about how to process data using a pen and pencil are ineligible. Why is that? Is it because we don’t value instructions for building rockets or data processing?
Why do we create tools?
Ohhh – almost looks like you want to have a discussion on the Printed Matter Doctrine (and it’s important exceptions).
Well, then again, we’ve been down that road many times, haven’t we?
And each and every time, you simply end up running away.
OK, serious 103 issues, but this is 101…shouldn’t “different-but-similar preexisting context” be enough to count as “an improvement” for 101 purposes? Put differently, shouldn’t the quantum of technical-contribution required for the purported “coarse screen” of section 101 be less than for 103 itself?
Because 103 is not a sufficient filter and 101 requires one to invent something. I’ll repeat the example above. Suppose you invent a new car battery that, due to its nonobvious structure, can store twice as much energy in the same space as conventional batteries. But your car battery interacts with a car in the same manner that conventional car batteries do, and it interacts with battery testers in the same way conventional batteries do, and it interacts with cameras in the same manner that all light-reflecting physical matter does.
A claim limited to the structure of your new nonobvious battery is an accurate representation of what you invented. But a claim to using a battery tester to test your new, nonobvious battery is just as nonobvious (because the battery itself was sufficient to render the claim non-obvious) but has the effect of usurping the value of the battery tester inventor’s invention. Same with the camera. Same even with (although people seem less likely to understand this) the car. You know car batteries. You improved car batteries. It makes no sense to view the law in a manner that allows for you to rattle off the conventional uses of conventional goods in wholly different fields in which you are no better versed than a lay person to deprive other people of the value of their disclosures.
Why would anyone disclose a car battery tester if they are unable to commercialize their disclosure? Why take a patent out on a tester when every conceivable battery in use and every battery that will come out within 20 years requires its own license to test? More importantly, when would the car battery tester ever be dedicated to the public if every future battery was allowed to claim using a battery tester to test it? Still more importantly, what do we do about things that were previously dedicated to the public that are later withdrawn from public use by these types of claims?
The only logical result is that at some point the use of a car battery tester to test car batteries is simply a use that is dedicated to the public. An improved tester is eligible, and a new, distinct method of testing is eligible, but the old use directed toward a new subject that gets exactly what one expects is not eligible. It is true that when the subject is already known in the art that the method may in addition be obvious, but it can’t be that when you invent a new widget you get to claim all possible conventional interactions with that widget.
Imagine inventing a new computer, waiting for it to be stolen, and then suing not the thief, but google for providing it search results and microsoft for providing it OS updates because you claimed entirely conventional acts directed toward your new device.
You have a funny way of NOW wanting to expand the ladders of abstraction to cover all functionalities…
Well, “funny” is the kind word for it.
In accord with your other view of enablement, were all those future improvements for that old use enabled?
But even beyond that – you kind of glossed over what 35 USC 100(b) actually means.
You merely assert “new use does not mean “the old use is in a new context.”
Where are you finding the legal support (meaning, or even context) for inserting “context?”
And instead of braying “does not mean,” maybe you can elucidate what it DOES mean.
To help you out, here again are the plain and direct words (focus on the emphasized portion, if you do not mind):
“The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
Where are you finding the legal support (meaning, or even context) for inserting “context?”
This isn’t hard. “New” is a limiting adjective that means “not old,”
and you construe like terms in the same statutory scheme similarly. “Use” is guided by the meaning as it has in 112a’s “make and use” requirement.
There’s ample cases about how far a disclosure supports the “use” of something, and you know as well as I that “use” is not limited to the exact contexts disclosed. If you invent an improvement to a bicycle the claim is not only valid with respect to bicycles expressly posited or bicycles in existence at the time of filing, but it extends to reasonably similar contexts while remaining the same “use.” You like to somewhat bluntly call this the ladders of abstraction, while I find that term inartful. A new use is a use outside of those contexts.
You and I have significant disagreement about how far “abstraction” can be validly extended, but that’s irrelevant for the instant question. However far you think it extends, a context of use that falls within the previous scope cannot be a “new use” it is an infringing, old use.
And instead of braying “does not mean,” maybe you can elucidate what it DOES mean.
Sure. Let’s say people molded silver spoons and people conventionally used the spoon to convey liquids. That was a known use. When someone invents a new liquid compound, a method of conveying that compound using a spoon is not a new use of the spoon (unless there was some significant difference in the conveyance that you described and enabled). But conversely, if you use a conventional silver spoon to transfer electricity or because it has the exact right amount of heat dissipation, that is a “new use” for the old structure – it is not being used to convey liquids.
In short, the definition of process there simply states that using the same old structure in new ways is contemplated as being patentable. It on its face does not authorize the patenting of old uses of a given structure. When the applicant admits that they got this algorithm from someone else, and when they got it it was used to uniquely identify the content of a file, and they are using to uniquely identify the content of a file, they are putting it to its old use.
And what pray tell is encompassed by “new ways?”
Be sure to tie your answer to the direct words of 35 USC 100(b).