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January 09, 2023


Great post. To be fair, there are many claims that could, as a thought experiment, be performed mentally without the challenges you note. Of course, it is unclear why we should be concerned if those claims are written to require computer implementation.

A constant problem with this topic is that there is some authentic root concern (e.g., someone infringing a claim just by thinking) that is lost in the game of telephone that is common law evolution. But no decision makers seem to care about the disconnect if you point it out...

Well said.

Easwaran's comment was not yet visible when I wrote my "well said" yesterday. My comment from yesterday referred to Dr. Borella's original post. Nevertheless, Easwaran's comment also merits a "well said."

I do not agree with Easwaran's contention in so far that for a claim to be infringed, ALL elements must be present, and the situating of a claim to REQUIRE computing elements necessarily means that such a claim cannot be infringed "just by thinking."

The "just by thinking," is a bit of a lazy strawman that moves the goalposts from what claims are actually present.

Further, the Mental Steps Doctrine actually is an older historical doctrine, and the references to more modern case law do not provide justice to the disconnect from the original doctrine (and why that doctrine 'aged out' -- only to resurrected as some type of anti-computing arts zombie).

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