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July 09, 2017


It is interesting to consider whether the claimed multimedia system fell as a matter of substance, as opposed to bombastic verbiage, within the "machine" category of Section 101.

The components of the multimedia system as claimed are
- a wide area network
- a client device
- an external control server
- an external content server
- (implicitly) some kind of public key encryption software in the external control server.

Detailed structure enabling the system to function as claimed seems, at first impression, to be significantly lacking, at least so far as claim 1 is concerned. The subsequent claims mainly add features of naïve generality, and although the description and drawings are more detailed, little of that seems to have found its way into the issued claims.

MPEP 2106 defines a "machine" as including every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result, citing Corning v. Burden, 56 U.S. 252, 267, 14 L. Ed. 683 (1854). In that case, Mr Justice Grier explained in relation to a machine that: " It is for the discovery or invention of some practicable method or means of producing a beneficial result or effect that a patent is granted, and not for the result or effect itself" and that "He cannot describe a machine which will perform a certain function and then claim the function itself and all other machines that may be invented to perform the same function." I recall that there are numerous subsequent decisions which explain that you cannot simply claim a new function or result without specifying the structural features that produce the result.

There is room for doubt whether the claimed subject matter is truly "directed to" an abstract idea, but equal room for doubt whether it genuinely fits into one of the eligible 101 categories.

"Digital Media's activities were characterized by the Court as "[o]ther than owning and litigating the patent at issue, it is unclear what Plaintiff does."

How is this even germane to WHAT a patent is, and what it means to enforce a right in a court of law?

Patents are property, and our patent system - FROM THE START*** - was designed so that the patents - AS PROPERTY - were to be FULLY alienable.

There is no basis for a court to be even remarking as to any characteristics of the patent owner in the legal context here.

*** as reflected on this very blog a while back when the blog recognized the award winning historical research completed on the early US patent system.

As to " But combining those two concepts is not new." we see yet again the conflation that has become rampant with 101 and the other sections of the pre-1952 single paragraph that Congress explicitly chose to break into different sections of law.

It's as if the Act of 1952 - and exactly why Congress acted to reverse an anti-patent Supreme Court - never happened.

As to "being careful," I will point out that there is NO AMOUNT of "being careful than can overcome the capability to the court to arrive at desired Ends when the means to do so are simply left so undefined.

To snippet a phrase: The pitfall of this type of analysis is that a reviewing court can essentially find any patent abstract because it is that same court that chooses how broadly to define the patent.

The even more strident point - and one left out by the author here - is that Congress has already decided exactly who gets to define the invention (and it is not the courts). Congress mandated that it is the inventor that defines the invention.

The "Gist/Abstract" sword needs to be recognized for that abomination and ultra vires abrogation of separation of powers that it is.

With regard to gist/abstract, I am on record in previous comments as being in entire agreement with Skeptical. The point is made in my amicus brief in Recognicorp with reference to the all elements rule.

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