The latest CLS v. Alice thread is some days old, so posting in
off-topic.
Standard disclaimers, IANAL etc.
I was mulling over
how to copperfasten a case for 101 ineligibility, whether this was supported by
the standard SCOTUS 101 cases, and what the counter-arguments might be. And
also, where CAFC judges might be coming from.
Maybe a good result from
the CAFC en banc appeal would be a decision that pleases many Groklaw
readers, whilst having many posters to patent blogs frothing at the mouth. But
perhaps the best outcome would be a well-argued collection of opinions that
leads to a SCOTUS result that pleases many Groklaw readers, whilst having
many posters to patent blogs frothing at the mouth.
I understand that
the traditional approach of the CAFC is that Section 101 is a "coarse filter",
and that anything that, judging the claims on their face, could be shoehorned
into at least one of the categories, and which is not manifestly drawn to a
judicial exception, passes Section 101, and should be considered for validity
under 102 and 103. The Supreme Court rejected that argument in Mayo, on
the grounds that such an approach would make Section 101 a dead letter. (But
this proposition does not seem to have filtered through to some CAFC judges: was
it Judge Linn who, on the audio, remarked that "we determine these things under
102 and 103", or words to that effect?) One can presume that at least one of
the opinions in the CAFC en banc appeal will argue that this ruling is not
relevant, at least with regard to the system claims.
An argument might
be put forward as follows. There are four categories of invention: processes,
machines, manufactures and compositions of matter. There would be some, but
fairly minimal overlap: a machines and new compositions of matter might also
qualify as manufactures. I suspect that it may be argued that the judicial
exceptions apply to specific categories. Thus the ineligibility of products of
nature would be specific to manufactures and/or new compositions of matter, and
the exceptions for abstract ideas and laws of nature would be specific to
processes. It would be argued that the interpretation of the term 'process' in
the statute is problematic and that, as a result, some processes may fall into
the morass engendered by the 'judicial exceptions'. But (it would be argued)
the rulings and dicta in Morse, Benson, Flook,
Diehr, Bilski and Mayo concern and apply to process
or method claims. They arise from the fact that one cannot naively
interpret the word 'process' in the statute simply in accordance with its
dictionary meaning, combined with a superficial reading of the statute, but must
take the judicial exceptions into account. But the concept of machine, and thus
the judicial interpretation of the statute for machine claims, is not bedevilled
by all the 101 issues that have arisen with regard to business-method-type and
computer-implemented-invention claims. Therefore a claim drawn to a
machine can take advantage of an island of firm terrain in the midst of
the 101 morass.
Also, the thought occurred to me, on listening to the
oral argument in CLS v. Alice a second time, that perhaps some of the
CAFC judges do think of the four categories in fairly basic terms. One could
imagine them thinking of the four categories as jars. Each claim on a patent
application is like a ball that has to be thrown towards the jars, and provided
that the ball lands within its chosen target, the claim is OK for purposes of
Section 101, and is judged for novelty and obviousness etc. under sections 102
and 103. The process jar is somewhat removed, and has an oddly-shaped
and fairly narrow mouth. But the machine jar has a wide and inviting
mouth. And, for a ball to land successfully within this jar, it is simply
necessary to point to claim limitations that are characteristic of some sort of
machines. I suspect that judges who base their approach to Section 101 on such
principles have no real concern with 'preemption'. And a straightforward 'duck'
test, i.e., 'if it walks like a duck, swims like a duck, quacks like a duck...'
is sufficient, even when applied by an observer who is myopic and partially
deaf. Maybe the following principle or test would capture their approach: if
the claim recites a machine or system, and if it could only be infringed through
the manufacture and/or operation of a machine, then it is drawn to a machine,
and therefore satisfies the requirements of Section 101. Such an approach
would prompt questions of the following nature: If a computer is
patent-eligible subject matter (subject to the novelty and obviousness
requirements of Sections 102 and 103), how could a computer programmed in a
certain way fail to be patent eligible? The thinking here is that a
computer is a machine. The general-purpose computer ball can clearly be thrown
into the machine jar. How can a computer configured and/or programmed in
a particular fashion cease to be a machine? How can programming or
configuration constraints possibly strip the computer of its basic essence as a
machine? If one throws the ball towards the process jar, then
considerations specific to processes will determine whether or not the ball will
land in the process jar. But if only a machine can infringe the claims, then
one can throw the ball towards the machine jar, which provides a more
inviting and easier target. For example, if a claim is a system or machine
claim that recites two or more computers connected through a network, then it
demonstrates on its face the characteristics of a machine claim, and thereby
passes the requirements of Section 101.
One rejoinder to this might be
to focus in detail on Benson and the succeeding cases. Claim 8 of the
Benson patent application was a claim for a method of converting binary
signals from binary coded decimal form into binary which required the use of
a re-entrant shift register. (Aside: this claim concerns signals.
would it have been patentable today, given the decision in In re
Nuijten?) Might the claim in Benson have sailed through Section 101
if it had been drawn to a computer, configured with a program for adjusting
the value of a re-entrant shift register, wherein...? And, if so, would the
'pre-emption' considerations that were of concern to the Supreme Court justices
have been relevant to patent-eligibility under Section 101?
Another
approach, I suggest, is to focus on the form of the claims and claim
limitations. If a claim purports to be a claim to a machine, then surely the
claim limitations should be consistent with the the delimitation of the physical
characteristics of the machines for which the patent is claimed. It would
matter whether a computer storage register was required to hold a value that was
an integer, or a floating point number, or a boolean value. Such considerations
are relevant to storage requirements, speed of operation etc. If a computer
stores a digital image, then the values (and the data structure used) will be
correlate with the nature of the image as an array of color intensities. But
machines do not operate by adjusting legal obligations, credit entitlements,
legal undertakings, and the like. The uses to which a machine may be put may be
relevant for demonstrating the utility of the claimed invention. A
machine may have significant utility if it can be used as a portable digital
camera, for example. But, if one machine is to be distinguished from some other
machine, as a machine, then it must surely be distingished on the basis of the
physical characteristics of the machine. If two machines are physically
identical, then surely they have the same uses. Suppose that the first machine
can be used to mow the lawn. If the second machine has physical characteristics
that correspond to, or are equivalent to, those of the first machine, then
surely the second machine can also be used to mow the lawn?
With the
above considerations in mind, consider a so-called system claim from
Alice:
A data processing system to enable the exchange
of an obligation between parties, the system comprising:
- a data storage
unit having stored therein information about a shadow credit record and shadow
debit record for a party, independent from a credit record and debit record
maintained by an exchange institution; and
- a computer coupled to said
storage unit, that is configured to (a) receive a transaction; (b)
electronically adjust said shadow credit record and/or said shadow debit record
in order to effect an exchange obligation arising from said transaction,
allowing only those transactions that do not result in a value of said shadow
debit record being less than a value of said shadow credit record; and (c)
generate an instruction to said exchange institution at the end of a period of
time to adjust said credit record and/or said debit record in accordance with
the adjustment of said shadow credit record and/or shadow debit record, wherein
said instruction being an irrevocable time invariant obligation placed on said
exchange institution.
Now the claim would be construed during
prosecution or litigation. Let us suppose terms such as shadow credit
record and shadow debit record are construed in a fashion consistent
with claiming the physical characteristics of a physical machine. But what
about the claim limitation? What constraint on the physical design of a machine
that generates 'instructions' (however that term is construed) by the
requirement that such instructions be 'irrevocable time invariant obligations'?
What are the physical characteristics of a 'time invariant obligation'? What
species of physical or natural object of phenomenon is capable of being
'revoked'? And how can a machine be designed and built so as to ensure that
something it generates is incapable of being 'revoked'? I would suggest that,
where a claim to a physical machine is limited in a fashion that makes essential
reference to some mental, social or legal construct with no physical
manifestation, then either the claim should be disallowed, or else the claim
limitation should be ignored in prosecution and/or litigation. At least, if
there is a safe harbor from 'judicial exceptions', pre-emption
considerations and other 101 concerns afforded to 'machine' claims, then a claim
should not be able to take advantage of this safe harbor if purports on its face
to be a machine claim, but displays claim limitations inconsistent with
delimiting the physical characteristics of a true machine, considered as a
machine.
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