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August 21, 2016


When did Congress write either of these "tests" into the law...?

They did not, and obviously they didn't write the Alice test either.

MB: "For instance, the ineligible, financially-focused claims of Alice and Bilski v. Kappos were technical solutions to business problems."

Really? What were the technical problems that were "solved" in each of those cases?

Also, be very, very careful about putting too much weight on Enfish, DDR and Bascom. The CAFC's analysis of the prior art in those cases, not to mention the "logic" the court employed to reach their conclusions, is severely wanting.

Lastly, I want to congratulate you on seeming to accept the reality of subject matter eligibility and its crucial role in any sane patent system. It's not going anywhere! It's good that you seem to acknowledging that, even if you're about ten years behind the curve. Don't worry -- you can still catch up.

Here's a little exercise for you, MB: tell everyone (1) what is the "technical" problem being solved by the patent at issue in the CAFC's pending Planet Blue case and (2) tell everyone what the "technical" solution is. Here's a little hint to help you along: looking up rules in a table isn't a "technical" solution to anything. Good luck!


Please note that Alice and Bilski were represented as addressing non-technical problems.

The technical problem in Blue Planet is lip-syncing of animated faces. And the technical solution is the weighting system as claimed.

But, sure, the claims are broad and given that the CAFC has taken so long in rendering a decision, this one could go either way.


MB: "The technical problem in Blue Planet is lip-syncing of animated faces"

In the early 21st century, why is deciding when a cartoon character's mouth is going to stay open or closed a "technical problem"? I animated my own cartoons forty years ago and I was able to figure out when to add sound to accompany a character's mouth movements. It didn't seem like much of a "technical" problem back then.

the technical solution is the weighting system as claimed.

Wow, that's a convenient answer -- it works in every case! What's being "weighted" by this system and how is that "weighting" achieved? It's not something non-technical like looking up some unclaimed (and unclaimable) "rules", is it?

Displaying information about phone calls on a prior art piece of paper is neither "technical" nor eligible, the last time I checked. And yet this patent was just asserted by Blackberry. How much money do you suppose they want for this brilliant "solution" to the "technical problem" (?!?) of ... displaying stored information about phone calls.


1. A method of displaying a communications log on a mobile device, the method comprising:

detecting an outgoing phone call associated with a phone number;

detecting an incoming phone call associated with the phone number;

storing in a memory communications-related information for the incoming phone call;

storing in the memory communications-related information for the outgoing phone call;

displaying an entry in the communications log associated with one of the outgoing phone call and the incoming phone call; and

displaying at least part of a listing when the entry is selected, the listing comprising communications-related information stored in the memory associated with the phone number including the outgoing phone call and the incoming phone call associated with the phone number.

As to Blue Planet, borderline on "technical", what might be the reason for the delay at the Federal Circuit?

I have a possible explanation.

If the CAFC is keen now on exploring what is and is not "technical" there is no better place to look than the EPO'S "White Book" of the "Established Caselaw" of its Boards of Appeal (which have been wrestling with exactly this question since 1978).

The 8th Edition of the book just published. Perhaps the Fed Ct thinks it prudent, to check out the 8th Edition before putting its own pen to paper.

It really is a one trick pony "here, wear my glasses, they work for me" nonstop DISregard for the differences between sovereigns with you, is it not MaxDrei?

Is it any wonder that you have earned the reputation of being a shill?

Mike, thanks for the article. My vague impression is that the PTO may have a longer-term agenda to move more explicitly toward the EPO-style technical problem/solution approach as part of harmonization--the current 101 situation in the US notwithstanding. I think one could argue that the AIA's first to file provisions were a first big step in moving in that direction but that more is planned, although not openly stated for some reason. As an aside, there was an opinion in this morning's (Aug. 23) Wall Street Journal that you might find interesting; I couldn't find a link to provide here but the gist was: patents incentivize invention; look at decisions like Sequenom in contrast to CellzDirect; what we really need to do is establish a court with judges who have the technical expertise to be able to properly assess patents and send patent cases there. Hmmm...I feel like this idea was floated before...maybe in the 80s? Whatever happened to that? (LOL)

The whole concept of eligibility turns on the existence of an objective standard to separate the eligible from the ineligible. If the standard is subjective, then why bother with an eligibility analysis at all?

Eligibility is for a kind of thing, and patentability is for a specific thing.

If the analysis is always subjective, it's always specific, so why not void Section 101 for vagueness /redundancy and simply move to patentability analysis? Surely, establishing utility is inherent in section 112, and establishing relations with prior art is handled by 102/103.

An ineligible invention cannot be new, useful, non-obvious and fully described, can it?

But in the real world, the idea of eligibility and Section 101 can't and won't be eliminated, for various good reasons, a big one being that there is only one of the four section 101 categories causing trouble: processes.

Every new and useful thing that is not a composition of matter can likely be characterized as a process, and we can't patent every novelty in the universe. Or at least reasonable people don't think so, FWIW in the last days of civilization.

If eligibility can't be eliminated, than an objective standard for the eligibility of certain inventions is going to be required to avoid essentially random or political outcomes.

To consider a "technical solution to a technical problem" or a "technical tool" test as objective, when information technology infuses every aspect of life, is silly. They both amount to another "knowing it when they see it" test.

Something will have to give, both here and in Europe.

I don't understand Martin, your "Europe". Both the EPO and Germany do eligibility objectively/absolutely. A claim "1. a digital computer." passes the eligibility test.

But not in the UK. There, the European test is said to be "intellectually dishonest". But the UK isn't "Europe" is it?

Martin, in Europe, the notion of "technical" is informed by Article 52 of the EPC which lists the things that (as such) are not eligible ie lack technical character. They include programs for computers, business methods and the presentation of information. Europe thus has a hard eligibility boundary that is not to be over-stepped. Skilful drafters though, are pushing hard at that statutory boundary, so the courts have to be steadfast.

I suppose there is not yet any such guidance from the Federal Circuit, what "technical" means.


You appear to have forgotten to include those great caveat words "as such" and "per se," so your statement of "hard eligibility boundary" is not nearly as "hard" as your post may indicate.

In other words, software and business methods (in some cases) may in fact be easier to obtain in EPO-land, n'cest ce pas?

Max you could drive a lorry thru "presentation of information" or "software program' per se.

Yes it's more narrow than the US, yet cases are still difficult to predict in advance when information inventions are involved.

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