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« Rapid Litigation Management Ltd. v. Cellzdirect, Inc. (Fed. Cir. 2016) | Main | Webinar on Willful Infringement and Enhanced Damages »

July 07, 2016


The recipe for jugged hare famously contains the direction: First catch your hare".

The claims in issue here do not give the slightest hint as to how the parking data is to be collected and integrated into the graphical display device.

There is "a software application for receiving parking data transmitted over the Internet to the wireless communications device". Presumably the parking data is provided by the fairies, and a group of computer-literate elves have written the software application without revealing too much about the magic which makes it work.

If there was a problem in creating the claimed parking system, that is not apparent from either patent specification.

If this case goes up on appeal what are the Federal Circuit judges to think of us?

Sure, the claims are broad and the specification is thin. But, according to the statute, that's a job for 112, not 101. Instead, the 101 analysis results in the vigorous handwaving we see here from the parties and the court.

"The fundamental issue is that a driver has no idea of parking lot occupancy beyond what he or she can see."

Let's set aside the laughable wrongness of this statement ("no idea"<-- LOL) for a moment.

If this "fundamental issue" is the "technical" problem to be solved, what's the non-obvious technical solution? Surely it's not "get more data and use it."

One cannot help but wonder if the "famous" IBM airplane toilet parking availability patent 6,329,919 was considered as prior art?

@ Mike Borella

Anyone who knows me will be well aware of the efforts that I have made to help develop a more sensible interpretation of Section 101.

But for our part we have to draft sensible specifications and claims, not over-optimistic ones. Section 101, it seems to me demands a plausible invention on the fact of the document filed at the USPTO. I have not found anything either in the quoted claims or in the two rather thins specifications which gives anything to hang your hat on in this regard. There are cases which the judges reasonably want to get off their docket, and this, it seems to me, was one of them.

Mr. Cole,

"Reasonably get off their docket" does not, and should not, mean that law is applied inappropriately, no matter how thin, or lacking on the face something is.

I believe the part of law that you may want to consider would be 35 USC 112. 101 is intended to be a wide open gate. Do you fit at least one of the statutory categories? Does the claimed invention have the right type of utility?


In a perfect world this would have been invalidated under 103 and maybe 112.

But the patent bar has for too long abused the ladder of abstraction, the now the supreme Court is causing a reckoning.

It's unfair but it's not unjust.


Your view is the ultimate "ends justify the means."

I really do hope that you are not an attorney or in any other way involved with the law.

Practically ALL claims of ANY worth use (abuse...? that's an unsubstantiated, personal and as used here meaningless word) the ladders of abstraction. There might - just might - be a very very very tiny fraction of claims written in exacting picture form that do not.

Sure, I'll play again.

Alice not only fails to bifurcate eligibility and patentability, mirroring the structure of the patent act, but the doctrine mashes them so subjectively that most cases essentially turn on a judge's whim, including CAFC judges, no two of whom see Alice was working in the same way.

This is inevitable when your statutory eligibility criteria on their face allow for abstract inventions, but your common law does not because having unlimited patents on abstractions is a fool's errand and unconstitutional at any scale.

Without some means of distinguishing eligible abstractions from ineligible abstractions, the process will remain intolerably subjective at the USPTO and in the courts at all levels.

Abstraction manifests in separate ways at eligibility and patentability. That means at a minimum that two tests are needed.

In the former, abstraction should be found in the intrinsic nature of the invention itself (e.g. is it tangible or is it information of some kind? If information, what is the nature of the information?) Some information inventions are new, useful, and fully described.

What to do about them?

At patentability, it needs to be a multi-pronged test of 102/103/112 to see if the purported invention is actually the idea of an invention, or a mere direct transfer of an invention to a new technical environment. The Alice test is well-suited for this role.

In the present case, the patent should fail on both counts; the result of the method is information (about parking spaces) and the claims are statements of a problem but not a fully described, buildable solution to the problem that a PHOSITA could use as a teaching.

But the question is unanswered; how to distinguish eligibility of those information inventions that should be patent-eligible despite their abstraction?

I answer in depth here:


PS the answer surely can't be "technical solutions to technical problems" or "improving the function of computers" which are both also essentially Rorschach tests.

Sounds like your livelihood is built on abusing the ladders of abstraction and the patent system. I'll weep for you when I'm done weeping for the wealthy victims of the french revolution.

What comes to mind is something from another blog, namely MM's caustic remarks about the (non)patentability of an "invention" that amounts to the mere exhortation to "Do it on the internet".

Why? Because I do not recall ever having seen a clearer case of such a claim.

Finding a hole in a parking lot is an age-old problem. Wouldn't it be nice to have a little man in a tower crane overlooking the lot, directing you via a radio link to the empty space? Suppose you claimed that as your "invention". Would you feel aggrieved, if you were turned down? Wasn't it much earlier than 1999 that radio stations had spotter planes reporting on rush-hour traffic conditions?

What does the subject matter claimed here add to what was egregiously old, other than a non-specific exhortation to "Do it on the internet"?

Or, looking at it another way, the task of "finding a hole" is ancient, in every technical field under the sun. So why should the specification of one particular field, namely "parking slots" lead anybody to suppose that the restriction to this particular field is patentable?

One point that is lost with MaxDrei's reference to someone else's argument is that eligibility and "egregiously old" are different LEGAL concepts.

No amount of "exhortations" changes a 102/103 argument into a 101 argument.

Not paying attention to this difference in law does not make that difference go away.

Dogberry (oops, sorry, I mean "Skeptical")makes the tired old point, that the USA ought to do eligibility absolutely (like the EPO does) rather than relative to the art (as England does under the same pan-European eligibility law). England asserts that the EPO's "absolute" view of eligibility is "intellectually dishonest". I note that SCOTUS agrees with the judges in England, notwithstanding numerous voices urging that the EPO's absolute view of eligibility is not dishonest at all but is in fact more robust and rigorous, and so ought to be followed, also in the USA.

At least Europe doesn't have the burden of interpreting a patent statute that in its eligibility section recites the word "new". That, for me, hinders rather than helps SCOTUS, even if it wanted to adopt an absolute test of eligibility, one that eschews any comparison of the claimed subject matter with the state of the art.

Why does England think the EPO absolute view "dishonest"? I suspect because the eligibility section of the EPC includes the word "invention" (and so only claims in which an "inventive concept" can be inferred can be taken as eligible. But (SCOTUS watchers) does that thinking really stand up to scrutiny? I think it is well-established law that when a patent statute recites the word "invention" it is implicit that the term is to be taken to include within its ambit any "alleged invention".


Your reply is nothing but ad hominem and an incorrect assumption that I have my beliefs based on my own pocketbook.

Such is simply not true.

I weep for you that you have no other response but to suggest that my views are so selfishly motivated. Clearly, you do not appreciate the positive benefits that accrue from a strong patent system and my informing you that I love my work because I help others protect their innovations would be lost on you.

Instead of reaching into the gutter, perhaps you would like to take another opportunity to respond to my post in a different manner.

Of that, well, I remain...


First, not sure what the reference of "dogberry" is, but it certainly is not appropriate for this forum.

Second, "tired old point" is NOT a tired point. Clarity in law is essential. I made NO such international comparisons - I strictly presented how law in the sovereign of the US runs. If you do not know that, then this is a great time for you to come to understand this.

Third, it is not up to the Justices to write patent law in the United States. That you may feel that they have some proclivity is simply not germane to how the US law has been actually written.

Fourth, understanding the presence of "new" in the 101 section has been provided for in the Congressional record for the Act of 1952. You appear to show yet another lack of understanding of our law.

NONE of these points are new (and rest assured, I am more than certain that you have been exposed to them). I can only take it that you are not approaching this with a mind open to learning, but rather, with a mind seeking to place your desired viewpoint on US jurisprudence.

Instead of the term "dogberry," you would be far better off paying attention to those who know and understand US jurisprudence.

"A parking system comprising:
***** a wireless communications device capable of accessing the Internet [I think such devices have been available in high streets for more than a decade]; and
***** an application for receiving parking data transmitted over the Internet to the wireless communications device [but which it appears contains no significant technical features, and about which I chose to specify nothing new or interesting],
***** wherein the parking data can be rendered by the wireless communications device as a substantially real-time representation indicating an occupancy condition of an available parking lot [how does this happen? by magic? is Merlin around?? Or by technical apparatus, and if so what technical features have been built in. The rest is silence, as Hamlet said.], and
***** the occupancy condition changes according to presence and absence of vacant parking spaces within the available parking lot [I think this happens whenever people enter or leave a car park].

So should ANY judge take a claim of this scope seriously? And does it really matter if the claim is held ineligible under 101, 103 or 112? It is very arguably over-broad and invalid on the face of the document.

Mr. Cole,

Quite simply and rather emphatically, yes it really does matter the means used to get to any ends in the law.

Quite frankly, I am rather shocked at your apparent cavalier attitude here.

This is not a place for sloppy thinking.

Paul, I'm surprised by your question "does it really matter if the claim is held ineligible under 101, 103 or 112?" It most definitely matters. And you should know better. So I'm going to guess that it wasn't the real Paul Cole who wrote that comment.

Ha now that's interesting... Maybe the real Paul Cole recognizes that a million to two million bucks to get to an inevitable end is actually a means that does matter, while scholastic fealty to obsolete legalisms matters somewhat less....

There is clearly needed a Markman-like procedure early in cases to review patentibilty matters of law beyond construction of the terms.

If anyone can tell me why the combination of features in the claim above quoted amounts to more than a mere idea devoid of transformative supporting detail, I will be happy to retract what I have just said.

However, I am unable to see sufficient to qualify it as a machine or manufacture.

Therefore I cannot see a way of gainsaying the 101 objection. There comes a level of vacuousness where a judge is just going to throw a claim out.

In the old days of electromechanical calculators you could not have got a patent for such a calculator with a cube root key. You would have to disclose a suitable calculation mechanism and put the essentials of the mechanism into the claim. Otherwise it would be just a bright idea and nothing more, just like the claim here.

@ Paul F. Morgan

You are completely right about the "famous" IBM airplane toilet availability patent 6,329,919. What is AMAZING is that it took no less than FOUR people to think up this difficult concept.

Mr. Cole "does not see," so he feels it is "ok" for sloppy legal thinking.

Well anyone can have an opinion, no matter how badly that deviates from critical legal thinking and if Mr. Cole wants to jump on that horse, then "giddie up."

Of course, ANY semblance of Mr. Cole beseeching ANYONE else to ever employ critical thinking ALSO goes "giddie up" and rides into the sunset.

What? You thought that such careless thinking came for free?

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