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May 26, 2016

Comments

There is so much very wrong with this article I scarcely know where to begin.

Let's begin with 35 USC 100(b) and compare that to one of the proposed takeaways:

"In one case, the claims recite the invention of new technology, and in the other case, the claims recite the use of old technology. A clear line has been drawn."

Several problems:
- there is no such "technology" requirement in the law as written by Congress
- the use - IF NEW - of old technology is DEFINED to be patent eligible (leastwise, belonging to a patent eligible category - I will provide that the other portion of 101 - having the right type of utility - still must be met.

Such line drawing for statutory patent law - clear or otherwise - is not the dominion of the judicial branch.

...this type of "gee shucks, we have to live with what the Supremes have done" is the absolute wrong path to take.

It is downright offensive on the order of Dred Scott.

Either push back or stomp down on the gas pedal. But do NOT under any circumstance take this type of mealy approach.

Enfish appears to create a safe harbor in the "first step" of the Alice analysis, the step of identifying a judicial exception, in particular an abstract idea: "Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis" (p. 11 of the Enfish slip opinion).

As the opinion acknowledges, this brings the "something more" analysis into the first step in the form of an "improvement" argument, albeit limited to "computer functionality."

Left for future clarification is the definition of "computer functionality." TLI provides one contrasting fact pattern, so that we have, figuratively, two data points, from which to derive a rule. Neither opinion provides an explicit rule.

In Enfish an improved generic database is claimed, and that falls within the "computer functionality" safe harbor.

In TLI digital images are remotely databased with a classification scheme.

Does one represent "computer functionality" and the other not? Or do both represent "computer functionality," while only Enfish includes clear improvement? TLI appears to suggest that it is the breadth of the claims and the clarity of the improvement argument that distinguishes the Enfish vs TLI claims, so that the differing holdings may imply nothing about what does or does not qualify as "computer functionality."

This safe harbor is no small matter in that it potentially makes many claims patent eligible, though it is not yet clear which.

For example, what about a claim to a clearly improved method of segmenting digital images, classifying the segments and databasing the extracted information?

At what point does a computer algorithm (i.e. a potential abstract idea) qualify or not qualify as "computer functionality," such that as long as improvement is clearly of record, then patent eligibility follows, in the first step of the Alice analysis.

Is the rule regarding "computer functionality," limited to something like functions historically performed on a computer? Functions addressed in basic computer science? But, computer applications in many fields might qualify under this rule.

Does the rule include any function requiring performance on a computer?

Is the rule limited to functions NOT clearly associated with some other field? E.g., pick a computer application: engineering, science, etc., if a function is more closely related to some "other" field, then does it not qualify for the safe harbor?

The effect appears to be that Enfish solidifies a safe harbor in which, for some subset of claims, improvement can be argued looking solely at the possible abstract idea and the claim as a whole, in the "first step." This is in contrast to looking for "something more" via an improvement argument in the "second step," which "something more" analysis had begun to require looking at "additional elements" of a claim, to some extent independent of an abstract idea identified in the first step.

Some will agree with this blurring of (or doing away with) the lines between the first and second Alice steps, arguing that the division into two steps was arbitrary and invited dissecting claim elements so to ignore significant combinations. Possibly, but Alice still controls.

Enfish solidifies a safe harbor, but only for a yet-to-be-defined subset of claims.

It may be superfluous to post a reminder to relevant parts of the oral argument in Alice.

General Verilli (Alice oral argument, p45): "Yeah, with - let me address software patents first because that, I think is obviously a significant question. And it's just not correct to say that our approach would make software patenting ineligible. Any software patent that improves the functioning of the computer technology is eligible. Any software patent that improves - that is used to improve another technology is eligible. For example, the patent in the - in the Diehr case is one in which -"

Justice Sotomayor: "What's the necessity for us to announce a general rule with respect to software?"

Earlier in the oral argument, Justice Breyer (p.21): "It was like - there's a Bloomberg brief out there that was on this, that said, no, you can - you can patent computer software, when it's an improvement in software, when it's an improvement in a technology that has developed out of computers like robotics, when it is an improvement in a machine or technology, but you cannot improve it where it is simply in an activity that is engaged in primarily through mental processes."

Opinion for the Court in Alice (Justice Thomas):

"The method claims do not, for example, purport to improve the functioning of the computer itself. See ibid. (“There is no specific or limiting recitation of . . . improved computer technology . . . ”); Brief for United States as Amicus Curiae 28–30. Nor do they effect an improvement in any other technology or technical field. See, e.g. Diehr, 450 U. S., at 177–178. Instead, the claims at issue amount to “nothing significantly more” than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer."

These quotes seem to prefigure what is playing out in the Enfish/TLI dichotomy. But of course, to set precedents, the CAFC needs cases at least as "technological" as Enfish.

"whether software or hardware, is not in and of itself abstract. TLI, on the other hand, reaffirms that merely using generic computer technology to carry out a procedure does not add patentable weight to a claimed invention. In one case, the claims recite the invention of new technology, and in the other case, the claims recite the use of old technology. A clear line has been drawn."

Isn't THAT line drawn by 35 USC 102 (and not 101) ?

"Already, some are contending that Enfish and TLI cannot be reconciled with one another. This is not true. "

In TLI the claims were drawn to a specific use (picture storage/retrieval). This is clearly an improvement to the computer itself. With the invention the computer can use categorization information to make later location and retrial of a desired image easier. Without it, the computer only accepts the image file name as a mechanism for finding the image, and the file name is easily forgotten by the user. Accordingly, TLI recites an improvement to the computer.

Enfish is also about data storage, but is vague about what data is stored other than the tables own index values. Because the invention is claimed in the abstract and does not recite an actual use, it is deemed as an improvement to the "computer itself" and thereby deemed eligible.

Meanwhile, the Court previously declared conversion of Binary Coded Decimal information to binary (or was it vice versa) as only useful in a computer (i.e. an improvement to the computer itself) and found that to be a reason for declaring the claims to be ineligible (Benson).

Kindly reconcile THAT.

The problem is information, not technology. All information is abstract. We want some (new, useful, fully described) to be eligible, in line with the Constitutional purposes of the patent act. We have no current means to distinguish eligible information inventions from ineligible, and we have a secondary problem that abstraction at eligibility (i.e not being tangible) is different that abstraction at patentibility (claiming too broadly, at the level of an idea rather than a single invention).

I propose a simple test, one that many actors are groping toward but not quite connecting with: information consumed by a human mind is automatically completely abstract, and should be ineligible, while information consumed by non-human actors (or a human body) should be eligible, subject to patentibilty requirements.

General Verilli (Alice oral argument, p45): "Any software patent that improves - that is used to improve another technology is eligible"

Justice Sotomayor: "What's the necessity for us to announce a general rule with respect to software?"

Justice Breyer (p.21): 'When it's an improvement in software, when it's an improvement in a technology that has developed out of computers like robotics, when it is an improvement in a machine or technology, but you cannot improve it where it is simply in an activity that is engaged in primarily through mental processes."

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