December 10, 2014
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.
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
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
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
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
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.
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.
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.
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.
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."
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.
Posted by Patent Hawk at 3:42 PM | § 101
January 24, 2012
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.
Posted by Patent Hawk at 7:43 PM | Claim Construction
November 13, 2011
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
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.)
Posted by Patent Hawk at 12:34 PM | § 101
August 31, 2011
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.
Posted by Patent Hawk at 12:05 PM | § 101
August 17, 2011
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.
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.
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".
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.
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."
Posted by Patent Hawk at 11:46 AM | Prior Art
August 4, 2010
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).
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."
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."
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.
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.
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."
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.
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.
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.
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.
September 27, 2009
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.
Posted by Patent Hawk at 1:30 PM | § 112
September 18, 2009
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.
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.
June 29, 2009
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.
June 26, 2009
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.
June 15, 2009
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.'"
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.
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.
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.
May 18, 2009
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.
March 6, 2009
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.
Posted by Patent Hawk at 9:22 PM | § 101
February 12, 2009
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.
January 29, 2009
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.
Posted by Patent Hawk at 11:38 AM | § 101
January 25, 2009
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."
January 17, 2009
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.
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."
Posted by Patent Hawk at 6:33 PM | § 101
January 14, 2009
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.
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.
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.
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.
November 9, 2008
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.
November 4, 2008
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.
November 2, 2008
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.
November 1, 2008
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.
October 31, 2008
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.
October 30, 2008
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.
August 29, 2008
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.
July 2, 2008
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
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.
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).
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.
Posted by Patent Hawk at 11:04 PM | § 101
February 11, 2008
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.
September 20, 2007
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.
Posted by Patent Hawk at 11:58 PM | § 101
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.
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.
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.
Posted by Patent Hawk at 5:13 PM | § 101
November 28, 2005
PBAI Claim Mixup
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.
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.
Posted by Patent Hawk at 12:48 PM | § 101
October 16, 2005
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".
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".
Posted by Patent Hawk at 1:09 PM | § 101