October 9, 2016

Aiding Abstraction

Affinity Labs v. DirectTV et al (CAFC 2015-1845) is another instance of willy-nilly patent ineligibility. A CAFC panel found "the claims are directed not to an improvement in cellular telephones but simply to the use of cellular telephones as tools in the aid of a process focused on an abstract idea. That is not enough to constitute patentable subject matter." Apparently, tools are only useful if their process is not focused on abstract idea. A confession in the opinion makes the large point: "we have acknowledged that 'precision has been elusive in defining an all-purpose boundary between the abstract and the concrete.'"

Posted by Patent Hawk at 2:04 AM | § 101

Viral Infection

The abstraction of patent law into utter arbitrariness continues. In Intellectual Ventures v. Symantec and Trend Micro (CAFC 2015-1769), a CAFC panel finds virus-protection software an abstract idea, ineligible for patent protection. The court is still unable to draw a clear line of patentability, instead relying on gibberish ("the category of abstract ideas is not limited to economic or commercial practices or methods of organizing human activity; an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application"). Judge Mayer, in concurrence, confuses invention with free speech, opining the non sequitor that "patents constricting the essential channels of online communication run afoul of the First Amendment." Mayer opines that "claims directed to software implemented on a generic computer are categorically not eligible for patent." No one in their right mind has any idea, abstract or not, what constitutes a "non-generic" computer, as all computers are functionally equivalent (function being the sine qua non of utility, which is what patents are all about). What is clear is that large corporations now have little to fear, except lawyers fees, from any method patent that involves a microprocessor.

Posted by Patent Hawk at 1:50 AM | § 101

May 31, 2016


In Enfish v. Microsoft et al, the CAFC (2015-1244) continues to split hairs about software as patentable subject matter under §101. Enfish's 6,151,604 and 6,163,775 claim a "self-referential" database, where the database is a single table with "the table's columns defined by rows." (The garden-variety relational database uses multiple tables with references between tables.)

The district court found claiming a self-referential database to be prima facie unpatentable for being abstract ("the concept of organizing information using tabular formats"). But the CAFC reversed, seeing the claims as "directed to a specific improvement to the way computers operate." Because "the claims are directed to a specific implementation of a solution to a problem in the software arts," self-referencing was considered not to be abstract to the appeals court, even though self-referencing is most certainly an abstract idea.

Any logician would have a seizure trying to ferret a rational rule base under current case law for software standing up to §101 when it does not direct physical activity. What most certainly cannot be patented is anything that involves financial or business practices, no matter how specific or novel. The CAFC found in First Choice Loan Services v. Mortgate Grader (2016) that "computational methods which can be performed entirely in the human mind" are not patentable. Beyond the court-sanctioned vagary of being "specific" in this instance, how fiddling with a self-referential table is something other than a mental method, and so passes muster under §101, is inscrutable.

Posted by Patent Hawk at 11:38 PM | § 101

January 22, 2016

The Unpatentable Mind

First Choice Loan Services sued Mortgage Grader for infringing its financial transaction patents. In light of the Supreme Court's Alice decision, the district court found the patent claims directed to unpatentable abstract ideas. The CAFC affirmed (2012-1042). "Computational methods which can be performed entirely in the human mind are the types of methods that embody the 'basic tools of scientific and technological work' that are free to all men and reserved exclusively to none."

Posted by Patent Hawk at 1:32 PM | § 101

July 12, 2015

Abstract Juggernaut

The steamrolling of software patents continues. Intellectual Ventures asserted two patents against Capital One that went to appeal (CAFC 2014-1506). One claimed tracking spending related to a pre-set limit. The other claimed web page customization based upon user history. Both were found grasping at an abstraction, and so patent ineligible under §101.

Posted by Patent Hawk at 5:09 AM | § 101

June 24, 2015

Abstract Loss

Internet Patents asserted 7,707,505 against Active Network and others. The district court found '505 patent ineligible under §101, which the CAFC affirmed. On appeal, Judge Newman (CAFC 2014-1048) seemed to agree that case law for §101 has all the clarity of someone speaking while gargling a mouthful of marbles. "Recently, the courts have focused on the patent eligibility of 'abstract ideas,' for precision has been elusive in defining an all-purpose boundary between the abstract and the concrete, leaving innovators and competitors uncertain as to their legal rights." In this case, "retaining information lost in the navigation of online forms" was found to be an abstract idea. The notion that the U.S. Federal courts dispense just or even predictable patent jurisprudence continues only as an abstraction.

Posted by Patent Hawk at 7:14 PM | § 101

December 26, 2014


The death watch for software under §101 continues. In Content Extraction and Transmission v. Wells Fargo et al (CAFC 2013-1588), patents that claim scanning a document and recognizing certain keywords are damned as an "abstract idea," using oxymoronic pseudo-logic that "the concept of data collection, recognition, and storage is undisputedly well-known." Asserting software patents against the cossetted financial sector is itself the kiss of death. The corruption of the patent system via court fiat is largely complete, the grim reapers in black sitting on benches in dead-end jobs having triumphed as the lords of plutocratic benevolence, giving away the meager inventions of the meek to corporate behemoths.

Posted by Patent Hawk at 1:27 PM | § 101

December 10, 2014

Horrid Host

DDR Holdings v. Hotels.com illustrates the incompetence and caprice of Federal courts in handling patent cases. Asserted claims in 6,993,572 & 7,818,399 were found valid and infringed by a jury. District court Judge Rodney Gilstrap in East Texas rebuked motions as a matter of law (JMOL) over invalidity and infringement. On appeal, '572 was found blatently anticipated by the prior art. An extensive CAFC sidebar on §101 shows how unsettled patentability is.

Continue reading "Horrid Host"

Posted by Patent Hawk at 2:43 PM | § 101

November 17, 2014

Not So Wild Tangent

Ultramercial sued Hulu and WildTangent for infringing 7,346,545, which claims receiving payment for a consumer viewing Internet advertising. The district found the patent invalid under § 101. The CAFC balked at that, but reversed itself after the Supreme Court Alice ruling (CAFC 2010-1544). "We do not purport to state that all claims in all software-based patents will necessarily be directed to an abstract idea," the court stated. But since Alice, not one has yet to pass muster.

Posted by Patent Hawk at 4:56 AM | § 101

September 7, 2014

Abstraction Transaction

In buySAFE v. Google (CAFC 2013-1575), a CAFC panel furthers the Supreme Court rulings of Bilski and Alice in finding that software which effects "a contractual relationship" or "commercial transactions" are not patent-eligible subject matter.

Posted by Patent Hawk at 4:31 AM | § 101

August 27, 2014

Not Bingo

Planet Bingo got patents for a computer managing a game of bingo, starting with parent 6,398,646. It assertion against VKGS lasted only until summary judgment, where all claims were found patent ineligible under § 101. Like Alice and Bilski, there is no bingo no more for patents claiming to "organize human activity." The courts consider that too abstract. Speaking of abstraction, try this on for gibberish: "Abstract ideas may still be patent-eligible if they contain an "'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application."" Sounds like organizing case law into coherency ought to be patentable, as it would be novel. (CAFC 2013-1663).

Posted by Patent Hawk at 4:01 AM | § 101

July 13, 2014

§101 Profile

6,128,415 claims a device profile to rid digital image distortion. The courts found it patent ineligible for being an abstraction. The CAFC (2013-1600): "For all categories except process claims, the eligible subject matter must exist in some physical or tangible form." The noose tightens on patenting software.

Posted by Patent Hawk at 1:28 AM | § 101

June 19, 2014

Down The Rabbit Hole

The Supreme Court affirmed the CAFC in invalidating financial patents in Alice v. CLS Bank under §101. "The claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention." Reading between the plutocratic lines, any claim to computerized finances is going to prove unenforceable. The courts are simply not going to allow financial institutions to be pickpocketed by clever patentees.

Posted by Patent Hawk at 8:50 AM | § 101

February 27, 2014

Dialing It In

Cyberfone sued major media companies in this country, asserting 8,019,060, which was granted post-Bilski. The simple fact is that a patent troll can't sue the TV media industry and expect to get away with it. The courts won't have it, however they have to corrupt case law. The district court buried the patent under § 101 without even bothering to construe the claims. The CAFC readily concurred. The claims went to computerized transaction manipulations. However useful, abstract enough.

Posted by Patent Hawk at 2:48 AM | § 101

September 7, 2013

Task Killer

The nature of automation is labor saving: replacing labor by a machine performing a task. But in Accenture v. Guideware (CAFC 2011-1486), the CAFC decided that automation is unpatentable under § 101 if done using computer software. The war against software patents gains ground. A claim that poses "any risk of preempting an abstract idea," is unpatentable. Which means that any task requiring cognition is unpatentable. Which, because no task is mindless, means every task. Legislation from the bench continues unabated.

Continue reading "Task Killer"

Posted by Patent Hawk at 3:19 PM | § 101

June 13, 2013


9-0, the Supreme Court (12-398) ruled in the Myriad case that isolating DNA was not patentable, but creating DNA was. "In this case, by contrast, Myriad did not create anything. To be sure, it found an important and useful gene, but separating that gene from its surrounding genetic material is not an act of invention." The incompetent CAFC had ruled that isolating DNA was patentable.

Posted by Patent Hawk at 9:45 PM | § 101

May 16, 2013

Down the Rabbit Hole

Alice, a corporation from Down Under, got a family of system and method patents that broadly claimed computerizing escrow as a way of mitigating settlement risk. CLS got spooked and got a summary declaratory judgment of invalidity via §101 without the judge bothering to construe the claims. In an en banc appeal, the CAFC, in affirmance, displays a profound ignorance of the law with a stunning absence of cogency.

Continue reading "Down the Rabbit Hole"

Posted by Patent Hawk at 10:17 PM | § 101

August 16, 2012


In the long-running Myriad case, a split (2-1) CAFC panel (2010-1406) opined that a method for isolating a DNA sequence was not patentable, but that isolated DNA was. A confused Judge Bryson dissented with the observation that "a human gene is not an invention." DNA sequences are not genes. Genes are a conceptual mapping of various DNA strands to a presumed trait; something approaching mental fiction, considering how genetics actually works. So, while confused on the details, Bryson was right in the gist that isolated DNA is not an invention. The majority was positively bonkers that "the claimed molecules represents a nonnaturally occurring composition of matter" that deserved patent protection. Isolated DNA is an organic derivative, unchanged from its original form in chemical sequence (otherwise, the isolation would entirely miss the point), not a concocted chemical composition that even remotely represents invention, especially considering any and every method to obtain the compound is not novel. That withstanding, wherever one may want to draw the line on the originality of chemical extraction and isolation as a patentable chemical composition, the large point is that bits of the human genome are, for the moment, patentable subject matter. The public policy implications with regard to affordable advances in health research could not be more profound. The public discourse of this issue through the courts is still just getting started.

Posted by Patent Hawk at 7:53 PM | § 101

July 26, 2012


Like banks, insurance companies are a cornerstone of the capitalist empire that the U.S. government feels beholden to. The courts are part of the cabal of plutocratic protection. So it was a nonstarter when Bancorp sued Sun Life for infringement of its insurance policy management patents; patents too valuable to be monetized. The district court invalidated the patents without bothering to consider the claims. The CAFC blithely affirmed (CAFC 2011-1467). "There is no requirement that claims construction be completed before examining patentability." Just knowing the subject matter and affected industry was enough to bury the assertion. The practical process claims were "no more than abstract ideas."

Posted by Patent Hawk at 8:56 PM | § 101

July 9, 2012

Alice in Wonderland

Alice Corporation got patents on a computerized trading platform that ameliorates settlement risk. CLS Bank, spooked over its own infringement, filed a DJ. A DC district court judge ameliorated her docket by ruling the four Alice patents invalid under §101, as being drawn to mere "abstract ideas." The appeals court thought the claims something more concrete, albeit with dissent. To the courts, patents read like pornography: they know what they like when they see it. Patent holders best get used to bending over.

Continue reading "Alice in Wonderland"

Posted by Patent Hawk at 12:11 PM | § 101

April 2, 2012

Applying Natural Laws

The Supreme Court ruling in Mayo v. Prometheus was not a ruling based in law. To the contrary. By admission of the practicality of the claims, there was scant legal precedent to reach as far as SCOTUS did. The decision was instead a social policy decision - that society was better off not allowing monopolization of heath care treatments. From a legal standpoint, the CAFC got it right in following §101 that one "may obtain a patent," except for what has been prohibited. The Supreme Court expanding the scope of prohibition, that "a patent could not simply recite a law of nature and then add the instruction 'apply the law,'" is exactly what many patents do. All gene patents do that, as do plant patents, for that matter. By SCOTUS reasoning, any biological patent simply applies one or more laws to nature to achieve its effect. Even chemistry patents simply apply the law of nature regarding covalent or ionic bonds.

Continue reading "Applying Natural Laws"

Posted by Patent Hawk at 12:13 PM | § 101

March 20, 2012


Prometheus Labs sued Mayo for infringing drug treatment patents - which simply claim monitoring treatment and adjusting dosage. The district court ruled the patents not eligible subject matter (§101). The CAFC reversed. Now the Supreme Court has once again reversed the CAFC. "The steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field."

Continue reading "Treatment"

Posted by Patent Hawk at 10:15 AM | § 101

February 27, 2012

Abstracting Real Property

In Fort Properties v. American Master Lease (CAFC 2009-1242; precedential), the CAFC affirmed a district court finding that 6,292,788 was invalid for violating §101. '788 claimed methods for real estate transactions without incurring tax liability. Ties to tangible "commodities and money" were "insufficient." "The physical activities involving the deeds, contracts, and real property are insufficient to render these claims patentable." The court generally declares "investment tools" "an abstract concept," and so unpatentable.

Continue reading "Abstracting Real Property"

Posted by Patent Hawk at 3:42 PM | § 101

January 24, 2012

No Credit

Dealertrack sued Huber and Finance Express, along with other auto dealers, for infringing its network-based credit application processing patents: 6,587,841 & 7,181,427. A biased Judge Guilford in Central California inexcusably construed "network," which had been broadly disclosed, as "not including the internet." Defendants drove away with non-infringement. Other inanity ensued, only some of which was corrected by the CAFC on appeal.

Continue reading "No Credit"

Posted by Patent Hawk at 7:43 PM | Claim Construction

November 13, 2011

Fuzzy Jurisprudence

Fuzzysharp got patents on 3D rendering algorithms. Fuzzysharp asserted two of a family, 6,172,679 & 6,618,047 against 3DLabs. The district court ruled the patents §101 uneligible under the CAFC Bilski "machine-or-transformation test," a standard found inadequate by the Supreme Court. On appeal, a lazy CAFC panel vacated and remanded, because it figured some claim construction was needed, and wasn't in the mood to take it on. Another case where legal bills eat a small company alive because the court system is broken.

Posted by Patent Hawk at 9:36 PM | § 101

September 16, 2011

Advertising Bait

7,346,545 claims a method of online media product distribution, using the media as bait to shove advertising before a user. Central California district court Judge R. Gary Klausner idiotically dismissed '545's assertion over §101 eligibility "without formally construing the claims." Or informally construing the claims, for that matter. On appeal, the CAFC talks out both sides of its mouth: no need to construe the claims, but it you do, this patent goes to patent-eligible subject matter. (If you don't comprehend a claim, how do you know what the claim goes to?! It might seem, well, abstract.)

Continue reading "Advertising Bait"

Posted by Patent Hawk at 12:34 PM | § 101

August 31, 2011

Temporarily Immunized

John Classen got patents for immunizing mammals on a schedule, and determining whether there is an effect; patents which the patent office should have never allowed: 5,723,283; 6,420,139; & 6,638,739. Then Classen sued a bunch of companies for infringing. The district court ruled the patents §101 ineligible, which the CAFC affirmed, which the Supreme Court vacated in view of Bilski, which came back to the CAFC, where, 2-1, the CAFC changed its mind on 2 of the 3 patents. In sum, further evidence that case law is a crock for a crooked game.

Continue reading "Temporarily Immunized"

Posted by Patent Hawk at 12:05 PM | § 101

August 17, 2011

Court Fraud

CyberSource got 6,029,154 for an online credit card fraud prevention invention. '154 prevents fraud by comparing the Internet address used for an online purchase with those previously used. CyperSource asserted '154 against Retail Decisions, who initiated an ex parte reexam, leaving the court case stayed pending reexam. The reexam came back with amended claims, which were promptly §101 bounced by the district court under the CAFC's then-extant Bilski ruling, as "an unpatentable mental process..." CyberSource appealed to the CAFC, who once again expansively exercised its brazen biases. The lawless caprice of the CAFC continues.

Continue reading "Court Fraud"

Posted by Patent Hawk at 10:57 AM | § 101

July 31, 2011

Fear & Loathing

"An assortment of medical organizations, researchers, genetic counselors, and patients" filed a declaratory judgment action against 15 claims of seven Myriad patents. The claims covered "isolated" human genes "associated with a predisposition to breast and ovarian cancers." Myriad provoked the DJ by cease-and-desist nastygrams and lawsuits against research institutes and universities. Those with fear and loathing banded together.

Continue reading "Fear & Loathing"

Posted by Patent Hawk at 8:28 PM | Standing

December 17, 2010


Medical treatment patents 6,355,623 and 6,680,302 were flogged to death by the district court using §101. Resurrection came at the CAFC under Bilski, applying the solitary machine-or-transformation (m-o-t) test of the time. The Supreme Court found m-o-t merely "a useful and important clue," and so vacated and remanded the Prometheus v. Mayo case where '623 and '302 had been so buffeted. Remand was a revisit, but with eyes wide open to a "liberal encouragement".

Continue reading "Resurrection"

Posted by Patent Hawk at 12:54 PM | § 101 | Comments (7)

October 30, 2010

Putting Genes On

In May 2009, the ACLU and PUBPAT filed suit to overturn DNA patents: claims to both isolated DNA and methods of isolating DNA. In March 2010, NY Southern District Judge Sweet soured on isolated DNA as unpatentable subject matter under 35 U.S.C. §101. Billions at stake, hopping-hot corporate toads and "pity the patient" poobahs have pummeled the CAFC with amici briefs, for what is referred to as the Myriad matter - Myriad Genetics is the owner of the target patents. Now the Department of Justice (DOJ) has weighed in, against the patent office, which granted the target patents.

Continue reading "Putting Genes On"

Posted by Patent Hawk at 3:47 PM | § 101 | Comments (4)

August 13, 2010


King Pharmaceuticals sued Eon Labs for infringing 6,407,128 & 6,683,102 after Eon filed an ANDA to make a generic version of the muscle relaxant claimed, metaxalone, which was first patented in 1962 (3,062,827).  Eon got summary judgment of invalidity via six prior art references, three of which the court relied upon. The district court found claims inherently anticipated.  "To inherently anticipate, the prior art need only give the same results as the patent, not better." One claim was found inherently obvious. Other claims, in both '128 and '102, were found wanting under §101 for lack of transformation: the claims' "informing" limitation was ethereal. Whereupon appeal, with its own special informing about "informing" being unpatentable. "It is not invention to perceive that the product which others had discovered had qualities they failed to detect."

Continue reading "Inherent"

Posted by Patent Hawk at 11:46 AM | Prior Art

August 4, 2010

Pig Out

Merial got a line on a virus infecting swine, and patented it: 6,368,601. Intervet developed a vaccine for treating the virus. Then Intervet filed a declaratory judgment action against Merial. The district court ruled noninfringement in summary judgment based on claim construction of six disputed terms. Merial squealed and appealed. Dissent by Judge DYK raised the specter of a rehearing, as to whether an isolated DNA sequence is patentable subject matter (§101).

Continue reading "Pig Out"

Posted by Patent Hawk at 10:03 PM | Claim Construction | Comments (6)

July 8, 2010

Behind the Times

In the interest of less-than-compact prosecution, the USPTO is, for the time being, adhering to the ancient military supply rule: "smoke 'em if you got 'em." The day Bilski rolled out of the Supreme Court, Robert Bahr, Poobah for Patent Examination Policy, pooted forth a letter on the ruling, directing examiners to stick to the old standby machine-or-transformation test, whereupon giving "the applicant" "the opportunity to explain why the claimed method is not drawn to an abstract idea."

Posted by Patent Hawk at 8:10 PM | § 101 | Comments (36)

July 3, 2010

What can we patent?

Chris O'Brien, news columnist at the Silicon Valley Mercury News, who surely never squeezed a patentable invention out of his pea brain, asks the title question about the SCOTUS Bilski decision. "How crazy is this?" O'Brien opines in his abject failure to comprehend what § 101 as "a threshold test" means. A garden-variety mainstream press putz scratches his noggin and concludes "we're back to square one having to figure out how to move forward since the Supreme Court decided not to do it for us."

Continue reading "What can we patent?"

Posted by Patent Hawk at 9:48 PM | § 101 | Comments (23)

June 29, 2010


A deluge of patent lawyers wanting to explain the import of the Supreme Court's Bilski bonk has besieged my email inbox, and maybe yours too. Let me save you the time. Of the SCOTUS patent rulings in the past decade, the implications of Bilski are the easiest to decipher. What Bilski means is that business methods are patentable. What Bilski means is that the CAFC § 101 standbys, notably State Street and AT&T Corp. are precedentia non grata (yep, just making up Latin, but you get the point). § 101 as "only a threshold test" may mean more a retuning elsewhere than another attempt at pinning down 101 itself.

Continue reading "Meaning"

Posted by Patent Hawk at 9:37 PM | § 101 | Comments (32)

June 28, 2010


Today, 9-0, the Supreme Court ruled Bilski's claimed risk hedging an abstract idea, thereby contravening § 101 as patentable subject matter. Four Supreme Court justices would have ruled that business methods are categorically not patentable. So, 5-4, § 101 "precludes a reading of the term 'process' that would categorically exclude business methods." And, oh, by the way, to hell with State Street.

Continue reading "Vapors"

Posted by Patent Hawk at 1:49 PM | § 101 | Comments (7)

June 24, 2010


This coming Monday, June 28, is the last day of the Supreme Court session that started in October 2009. It is also the final day that Justice Stevens sits on the high Court before retiring. The first case Justice Stevens authored was Parker v. Flook, 437 U.S. 584 (1978). Flook tried to patent use of a known algorithm, applied to computerized updating of alarm limits. The claimed method tripped over § 101 as not "eligible for patent protection," as being merely "the identification of a limited category of useful, though conventional, post-solution applications of such a formula." Bilski will also violate § 101, leaving only the question of exactly how the Court will cast the rejection. Pundit Hal Wegner expects the Bilski decision Monday, and puts the odds of Justice Stevens writing an opinion "almost certain," though hedges "the bigger question" of "whether his opinion will be for the majority or whether it will be a concurring or dissenting opinion."

Posted by Patent Hawk at 8:12 AM | § 101 | Comments (7)

April 12, 2010


Global Locate took SiRF and others to the ITC to stop the defendants from importing products infringing six of its GPS patents, which claim methods for improving signal reception. Global Locate prevailed. The defendants appealed. At issue were standing, infringement, and whether GPS-based methods were patentable subject matter under the Bilski standard.

Continue reading "Located"

Posted by Patent Hawk at 10:10 PM | Standing

November 10, 2009


J. Michael Jakes had one helluva day being slammed with well-deserved shots from Supreme Court Justices in oral arguments Monday. Jakes represents Bernard Bilski in his quest for a patent on a ridiculously vague claim for managing risk. On the government's side, Deputy Solicitor General Malcolm L. Stewart's position was stiff as a board in supporting the CAFC's rigid machine-or-transformation test for patentable methods. But that was not entirely a bad thing.

Continue reading "Incoming"

Posted by Patent Hawk at 12:14 AM | § 101 | Comments (13)

November 7, 2009

Out of Hand

The New York Times turns troglodyte on invention, fearing patents can "stifle competition and infringe on the rights of non-patent holders. Not every bright idea should be protected as a property right." Only bright ideas that take jobs from workers. In a nutshell, the New York Times thinks that there should be a law against the law.

Continue reading "Out of Hand"

Posted by Patent Hawk at 9:28 PM | § 101 | Comments (4)

September 28, 2009


In the eyes of an economist, all inventions go to one purpose: increasing human productivity. Less effort for equivalent result. More bang for the buck. Patents are intended as incentive for increasing productivity. Patentability is circumscribed by utility: a patented invention must be useful. Natural phenomenon are not patentable, but harnessing such a phenomenon is (think electrons racing around defined circuits). As a result, increasing productivity always alters the way humans organize their activity. However things were done in the past, an invention changes how somebody may do something. The dictionary corresponds with this by defining 'technology' as "the practical application of knowledge." On all points foregoing, the U.S. government does not converge.

Continue reading "Productivity"

Posted by Patent Hawk at 4:41 PM | § 101 | Comments (9)

September 27, 2009

Brain Damaged

Janssen battled a gaggle of generic drug makers over "a method for treating Alzheimer's disease with galanthamine." The patent of contention was 4,663,318. The issue before the courts was enablement (§112 ¶1), which, on appeal, the CAFC majority tied to utility (§101) for instant determination.

Continue reading "Brain Damaged"

Posted by Patent Hawk at 1:30 PM | § 112

September 18, 2009

Patented Treatment

Prometheus Labs got patents (6,355,623; 6,680,302) on "methods for calibrating the proper dosage of thiopurine drugs, which are used for treating... autoimmune diseases." "[N]on-responsiveness and drug toxicity may complicate treatment in some patients. To that end, the patents claim methods that seek to optimize therapeutic efficacy while minimizing toxic side effects." The claims go to two steps: 1) administer the drug, and 2) determine "the levels of the drug's metabolites." Yes, drug treatment is patentable.

Continue reading "Patented Treatment"

Posted by Patent Hawk at 1:22 AM | § 101 | Comments (2)

July 27, 2009


Bernard Bilski and his buddy got a nebulous notion about risk management. So they hired a run-of-the-mill prosecutor to scratch a sketchy spec and draft some bodaciously crappy claims. The PTO pitched the poop. But then the CAFC fouled the plumbing with precarious precedent, so the Bilski bauble floated to the top, where the Supreme Court has the final flush, but the only needed motion is reiteration.

Continue reading "Lever"

Posted by Patent Hawk at 3:26 PM | § 101 | Comments (13)

June 29, 2009

Requisite Clarity

In Bilski, the rogue CAFC ruled on the wrong grounds, and in the process warped the law, by setting in stone what were intended as guidelines. To afford case-by-case consideration, a court writes itself wiggle room. Instead, the CAFC tends to sew itself straightjackets. To invalidate Bilski's claim, all SCOTUS need do is reaffirm the definiteness requirement, and then correct the CAFC's errant way regarding patentable process subject matter.

Continue reading "Requisite Clarity"

Posted by Patent Hawk at 9:04 AM | § 101 | Comments (22)

June 26, 2009

Definitely Not

Bilski's claims are neither useful nor definite, and hence non-patentable under §101 and §112 ¶2. The Supreme Court should rightfully ignore flawed CAFC case law, looking to its own precedents, most notably Diamond v. Diehr (for §101) and Markman v. Westview Instruments (§112 ¶2). Here's how SCOTUS should shoot down Bilski and claims of its ilk - recognize the intertwining of  §101 and §112 ¶2, that an ill-defined process is a strong indicator of indefinite usefulness, and hence unpatentable subject matter.

Continue reading "Definitely Not"

Posted by Patent Hawk at 12:06 AM | § 101 | Comments (34)

June 15, 2009

Snuffing Candles

Tackling Bilski and patents in general, the Wall Street Journal presents one of the more subtle propaganda pieces seen: "The greatest innovations today are better methods rather than new machines. We shouldn't grant monopolies on concepts." Quoting IBM's David Kappos: "As things now stand, the vagueness of patent law means the 'precious time of skilled scientists and engineers is too often spent defending against costly and time-consuming litigation, instead of creating innovations that drive economic growth.'"

Continue reading "Snuffing Candles"

Posted by Patent Hawk at 11:03 AM | § 101 | Comments (7)

June 6, 2009


Bilski's and Warsaw's "managing... consumption risk costs," are miserable claims to be scuttling to the Supreme Court on the topic of patentable subject matter, because they clearly are not patentable under §112 ¶2, not to mention §101. At issue is whether the CAFC misconstrued §101, in limiting processes to: 1) machine dependence or 2) transformation. This is something to be scraped off the judicial shoe as too close-minded, just as Judge Newman opined in dissent. What should/will SCOTUS do? To read the crystal ball, peer into how the Supreme Court has decided before. As to that, one gem gleams.

Continue reading "Diamond"

Posted by Patent Hawk at 8:07 PM | § 101 | Comments (23)

June 1, 2009


Byoki is the Japanese word for sick. Bilski is the American word for sick patent method case law. At the time of handing down the CAFC decision, Chief Judge Michel didn't consider Bilski much of a change, even as it immediately roiled understanding of patentability for processes, especially software. Today the Supreme Court decided to blow the haze around Bilski, granting certiorari to the matter.

Continue reading "Byoki"

Posted by Patent Hawk at 9:14 AM | § 101 | Comments (5)

May 29, 2009


Every Penny Counts is running a problematic enforcement campaign with a bankrupt patent family. Florida district court Judge Paul A. Magnuson saw through claim 15 of 6,112,191, which ostensibly claims an apparatus, but really claims a method, as not being patentable subject matter. Bilski takes another bite.

Continue reading "Breaking"

Posted by Patent Hawk at 2:51 PM | § 101 | Comments (5)

May 18, 2009

Method High

In re Bilski, the bad brew for method claims, is scheduled to be discussed by the Supreme Court May 28th. A decision to grant or deny certiorari could be included in the Court's Orders List as early as June 1st.

Posted by Patent Hawk at 9:52 AM | § 101 | Comments (1)

March 6, 2009

Marked Marketing

Lewis Ferguson et al filed a patent application claiming marketing methods, and, really, the pits of vagary, claims of a "paradigm for marketing." The prosecutor needs to have his head examined. The examiner rejected the 68 claims under prior art and indefiniteness. On appeal, the BPAI blew that off, and put up a § 101, a la Bilski. The CAFC appeal comes as no surprise, but some delight, at least in a scathing concurrence.

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Posted by Patent Hawk at 9:22 PM | § 101

February 12, 2009

Inscrutable Inconsistency

Amphire Solutions tried to get a patent (2003/0188264) on normalizing XML into a relational database, reducing redundancy using linked lists. On appeal before the patent board (BPAI), the application was Bilskied, then stomped by Obzilla. While the Board found computerized methods abstract, and hence unpatentable, a computer performing a function is not abstract, and hence patentable.

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Posted by Patent Hawk at 10:05 PM | § 101 | Comments (8)

January 29, 2009

Unreal Estate

Bilski, as intended, is eradicating business method patents. In Fort Properties v. Master Lease, Central District of California Judge Andrew Guilford granted summary judgment of §101 invalidity for 6,292,788, which claimed creating a real estate investment.

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Posted by Patent Hawk at 11:38 AM | § 101

January 25, 2009

Intellectually Amish

Patent examiners are embracing §101 rejection for process claims, reinvigorated by Bilski. Oddly, the rejections often skirt citing Bilski directly, instead relying upon earlier precedent, such as Benson. The Bilski ruling favorably cited 1982 Abele for discrimination between overreaching claims and more "narrowly-claimed process patent-eligible." Abele provides an escape route from rejection, by analogy: data that represents "physical and tangible objects."

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Posted by Patent Hawk at 3:12 PM | § 101 | Comments (12)

January 17, 2009

Compact Prosecution

On the seventh office action of a competitive pricing patent application, yet another non-final, a new  rejection appears, besides the continual findings of prior art pieces that never survive reply, owing to their inadequacy in rendering the claims anticipated or obvious. A "computer-implemented method" of changing price is not patentable in light of §101.

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Posted by Patent Hawk at 1:30 PM | § 101 | Comments (5)

January 16, 2009


Bilski has bilked Intel. The PTO patent appeals board rejected Intel's claimed alternately calculating using software or processor hardware depending upon whether the result was "tiny." Such calculation was found not to be "a practical application of the mathematical algorithm because the result d, a number, is not a tangible result because it is not a real-world result." Taking no wooden nickels, the BPAI repeatedly refuse to "exalt form over substance."

Continue reading "Tiny"

Posted by Patent Hawk at 6:33 PM | § 101

January 14, 2009

Mental Method

Stephen Comiskey filed a business method patent application, which he pursued to the CAFC, which ruled his idea an unpatentable "mental process." Petition for en banc rehearing met with cacophony: limited to authorizing the panel to revise its earlier flub, to a chorus of dissent. § 101 process patentability once again gets a retread, this time intimating that novel computer software may be patentable.

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Posted by Patent Hawk at 4:56 PM | § 101 | Comments (2)

December 22, 2008

Funked Koo Kung Fu

IBM inventors Fred Koo and Ting Leung got their database query modification patent application sua sponte kicked in its Bilski on BPAI appeal. The decision shows how moronically the CAFC In re Bilski ruling is being applied. Not that something better could have been expected.

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Posted by Patent Hawk at 8:29 PM | § 101 | Comments (21)

December 19, 2008


Bilski has no basis in statute, and by any reasonable metric of jurisprudence, is downright bad case law. That's right, Chief Judge Michel, I am addressing you, sir. You are just making stuff up willy-nilly. But it doesn't help that prosecutors draft jackass claims, which examiners let pass, and then, rather than sicing the big-footed Obzilla on them for a good stomping, it's just too easy to rule: "damn, son, you can't patent that." We are talking a chronic disorder here.

Continue reading "Vaccination"

Posted by Patent Hawk at 1:57 PM | § 101 | Comments (23)

November 15, 2008

Process Flavor de Jure

The techno-Neanderthal CAFC having roiled process claims with its bilious Bilski ruling, the question remains how to best draft software method claims. The economical "computer-implemented method" preamble may not fly now. Another charade exists. Post-Bilski, the BPAI still let Beauregard software claims pass §101 muster.

Continue reading "Process Flavor de Jure"

Posted by Patent Hawk at 12:16 AM | § 101 | Comments (4)

November 9, 2008

Getting Physical

Non-final office action, received post-Bilski, directed to claims with the preamble: "A computer-implemented method comprising:", followed by steps of computer file selection, storage, and network transfer/copy. Examiner rejection as follows:

The claims lack the necessary physical articles or objects to constitute a machine or a manufacture within the meaning of 35 USC 101.They are clearly not a series of steps or acts to be a process nor are they a combination of chemical compounds to be a composition of matter. As such, they fail to fall within a statutory category. They are, at best, functional descriptive material per se.

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Posted by Patent Hawk at 4:29 PM | Prosecution | Comments (35)

November 4, 2008

Divining Bilski

Bilski was nothing short of a jurisprudential obscenity, horrendous in its incoherence. To the degree it was coherent, it was ludicrous. That makes Bilski a definitive statement on the quality of the CAFC, most notably majority author Chief Judge Michel. Only Judges Newman and Rader had a clue. As Judge Newman put it:

This exclusion of process inventions is contrary to statute, contrary to precedent, and a negation of the constitutional mandate. Its impact on the future, as well as on the thousands of patents already granted, is unknown.

From one judge to another, that's harsh language. None more harsh.

Continue reading "Divining Bilski"

Posted by Patent Hawk at 1:41 AM | § 101 | Comments (16)

November 2, 2008

Bilking Bilski

35 U.S.C. § 101 cedes patentability to "any new and useful process," without further qualification. The CAFC Bilski ruling, limiting process claims to being tied to a particular apparatus or transforming something, has no basis in statute, and questionable case law heritage. As dissenting Judge Newman observed:

The breadth of Section 101 and its predecessor provisions reflects the legislative intention to accommodate not only known fields of creativity, but also the unknown future. The Court has consistently refrained from imposing unwarranted restrictions on statutory eligibility, and for computer-implemented processes the Court has explicitly rejected the direction now taken.

Posted by Patent Hawk at 1:07 AM | § 101 | Comments (7)

November 1, 2008

Milking Bilski

Bilski was a simple ruling, affirming software patentability from State Street (though discarding the State Street test as "insufficient"). The Bilski brouhaha was its effect on software and business method patents, of which there was little to none. The reaction of uncomprehension has been impressive, a Rorschach of patent attitude. Anti-patenteers who drank the mega-tech corporate kool-aid were delusionary thrilled. The mainstream press mostly revealed its cluelessness.

Continue reading "Milking Bilski"

Posted by Patent Hawk at 1:42 PM | § 101 | Comments (4)

October 31, 2008

Software Patents

Software patents are best embodied as method claims. Did yesterday's In re Bilski decision change the patentability landscape for software? Not in the least. If anything, Bilski affirmed the patentability of software as a data transformer.

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Posted by Patent Hawk at 2:45 PM | § 101 | Comments (9)

October 30, 2008

Method Acting

Bernard Bilski and Rand Warsaw filed a patent application claiming managing commodities trading risk. The patent appeals board agreed with examiner rejection that the claimed process wasn't statutory under §101. In a sua sponte en banc hearing, the CAFC affirmed, albeit contentiously. In re Bilski sets the patentable-process test to whether a claimed method is: (1) "tied to a particular machine or apparatus," or (2) transforms the subject matter of the claim.

Continue reading "Method Acting"

Posted by Patent Hawk at 12:14 PM | § 101 | Comments (10)

August 29, 2008

101 Love

USPTO Deputy Commissioner for Patent Examination Policy John J. Love took it upon himself to interpret 35 U.S.C. §101 for software method claims. Months ago in an internal memo to examiners, Love encouraged 101 rejections for method claims that merely recite computer usage in the preamble. Love wants software process claim steps tied to a system or apparatus, and transformation of the underlying subject matter. Now he has backing from the PTO appeals board. Herein, a BPAI ruling bombastic in its vacuity, disingenuous dissembling of case law to drive process patentability into the ditch.

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Posted by Patent Hawk at 10:15 PM | § 101 | Comments (15)

July 2, 2008

101 Clarification

An interoffice memo on examining claims for § 101 compliance issued to the USPTO examiner corps in mid-May.

Based on Supreme Court precedent and recent Federal Circuit decisions, the Office's guidance to examiners is that a § 101 process must (1) be tied to another statutory class (such as a particular apparatus) or (2) transform underlying subject matter (such as an article or materials) to a different state or thing. If neither of these requirements is met by the claim, the method is not a patent eligible process under § 101 and should be rejected as being directed to nonstatutory subject matter.

Posted by Patent Hawk at 1:18 AM | § 101

June 23, 2008

Smoke Signal

Law professors John Duffy, Dennis Crouch, Mark Lemley, and others, filed an amici brief for certiorari before the Supreme Court, to toss the CAFC mistake In re Nuijten, which ruled that transient signals were not patentable subject matter under 35 U.S.C. § 101.

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Posted by Patent Hawk at 9:53 PM | § 101 | Comments (1)

June 16, 2008


The USPTO has chimed in on the Bilski case on its internal website.

The USPTO has done its best to follow the guidance in State Street and AT&T, which some believe state that any useful series of steps is patent-eligible. However, the USPTO does not believe that such a broad reading of those rulings is consistent with the Supreme Court's views on the eligibility of "process" patents, as set forth in Diamond v. Diehr, 450 U.S. 175 (1981).

Continue reading "Bilskiwhacked?"

Posted by Patent Hawk at 12:11 PM | § 101

May 12, 2008


The CAFC's sua sponte en banc rehearing of Bilski's claimed risk management process, so far denied as unpatentable subject matter, indicates the appeals court's desire to draw a "bright line test for determining whether a claimed invention embodies statutory subject matter," a "quest" that a BPAI judge in Bilski's case deemed "an exercise in futility." That just shows the BPAI not having the sharpest tacks in the box, because a bright line test is exactly what's called for, and can be accomplished.

Continue reading "Useful"

Posted by Patent Hawk at 11:04 PM | § 101

February 11, 2008

No Signal

Petition for CAFC en banc rehearing In re Nuijten shorted out 9-3. Nuijten had appealed encoded signal claims, disallowed by the BPAI as unpatentable subject matter under 35 U.S.C. § 101; a ruling upheld in CAFC panel. A cogent dissent signals the wire still live: the Nuijten ruling conflicted controlling precedent, and left unanswered questions about the relationship between § 101 & § 103. Resolution awaits a willing en banc, or certiorari before SCOTUS.

Continue reading "No Signal"

Posted by Patent Hawk at 5:47 PM | § 101 | Comments (1)

September 20, 2007

Mental Process

Claiming in his patent application legal arbitration, Stephen Comiskey appealed his patent board rejection from 35 U.S.C. § 103(a). The appeals court didn't care about obviousness, finding of its own volition Comisky stepping out of bounds on statutory subject matter: mental processes are not patentable, but "a claim that involves both a mental process and one of the other categories of statutory subject matter (i.e., a machine, manufacture, or composition) may be patentable under § 101." In a case-law flip-flop return from the grave: the "technological arts" test.

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Posted by Patent Hawk at 11:58 PM | § 101

Ephemeral Signals

Petrus Nuijten appealed to the CAFC patent office rejection of his encoded signal claims. The disclosed technology went to reducing distortion from introducing a "watermark" into signals. Nuijten had claims granted for the encoding process, a device that performs such process, and storage for holding resultant signals. The signals themselves were found unpatentable subject matter, outside the scope of 35 U.S.C. § 101, by the patent appeals board. The CAFC affirmed, via long-winded analysis. The appeals court decision followed the precedent of the 1853 Supreme Court Morse code ruling without acknowledging it.

A logically compelling dissent found the signals an article of manufacture, and thus statutory. Ephemeral existence, which the majority found germane, was an irrelevancy to the dissenter - the claimed signals last as long as they need to.

Continue reading "Ephemeral Signals"

Posted by Patent Hawk at 10:22 PM | § 101

June 13, 2007

CAFC Chief Judge Plays Patent Examiner

Hal Wegner reports: In In re Comiskey, Fed. Cir. App. No. 2006-1286 (Michel, C.J., Dyk, Prost, JJ.), the overworked court is now looking for additional work beyond its statutory mandate, pondering whether to affirm the PTO in an ex parte appeal on the basis of a ground of rejection that is not before the court, viz., a patent-eligibility determination under 35 USC § 101.

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Posted by Patent Hawk at 3:40 PM | Prosecution

February 19, 2007


Bernard Bilski helped the USPTO set up an appeals court review of statutory subject matter - 35 U.S.C. §101. Bilski claimed a method of economizing in managing risk; more simply, simply a method of doing business. Self-admittedly, the claims aren't tied to any physical structure, don't recite a transformation of matter, nor even of computer data. The patent appeals board rejected Bilski's claims as unpatentable. A case with considerable intrigue, it raises the question of whether the patent office is attacking its pendancy problem by attempting to scotch business method patents.

Continue reading "Transformation"

Posted by Patent Hawk at 5:13 PM | § 101

November 28, 2005

PBAI Claim Mixup

In a non-precedent case before the Patent Board of Appeals (PBAI 2005-0970), Xerox got a copy of the IPXL v. Amazon ruling: mixing claim types traverses 35 U.S.C. § 101 & § 112 ¶ 2.

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Posted by Patent Hawk at 12:34 PM | Prosecution

November 14, 2005

Business Methods Patents

The United States Patent and Trademark Office released a set of interim examination guidelines for assessing the patentability of business method patents.

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Posted by Peter Haas at 9:20 AM | § 101

October 28, 2005

Highway 101 Revisited

Surfing the wake from the Lundgren case, the Patent Office has released an interim "Guidelines 101", informing examiners, and the patent prosecutors who argue with them, how to tell if a claim is eligible subject matter.

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Posted by Patent Hawk at 12:48 PM | § 101

October 16, 2005

Technological Arts

Carl Lundgren has been pushing the state of the art in economic processes. He's also pushed the state of the legal art in having the Patent Office Board of Appeals (BPAI 2003-2088) get rid of a non-statutory § 101 rejection that a claim must be within the "technological arts".

Continue reading "Technological Arts"

Posted by Patent Hawk at 11:15 AM | § 101

September 8, 2005

§101 Wilted Flower

Dana Fisher et al had a single claim relating to corn synthetic genetic material during anthesis: "A substantially purified nucleic acid molecule that encodes a maize protein or fragment thereof comprising a nucleic acid sequence selected from the group consisting of SEQ ID NO: 1 through SEQ ID NO: 5."

So, what is that good for? The Patent Board of Appeals and CAFC (04-1465) said "not enough".

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Posted by Patent Hawk at 1:09 PM | § 101