Bonum Certa Men Certa

Rather Than Accept That 35 U.S.C. €§ 101 Has Put an End to Software Patents the Large Law Firms Insist on Working Around the Law

Summary: US patent courts/judges quite consistently decline/refuse to accept software patents; so why are patent law firms still advising clients to pursue such patents -- or worse -- initiate litigation with such patents?

IN A NEW article which uses the terms "software patents" and "patent troll" ("Court irons out disagreements over patents related to Rodeway Inn's rewards system") we're just seeing more of the same, namely a judge who throws out bogus (fake) software patents (or cases associated with these), quite frankly as usual. Why does the USPTO grant these patents in the first place? This will be the subject of a later (separate) post. "A federal court has thrown out a dispute over software patents related to hotel loyalty reward points," the article says, "dismissing both a lawsuit against an alleged patent troll as well as a countersuit over deceptive trade practices."



The US patent office continues to grant fake software patents that involve nothing physical, usually mere concepts. Speaking of the hospitality sector, one company called Carnival Corporation has just boasted about such patents in a press release [1, 2] soon followed by very shallow puff pieces [1, 2]; it's a lot of Bluetooth+software, or Bluetooth Low Energy (BLE) as they call it.

It's not hard to see that when abstract patents reach actual courtrooms they typically get invalidated. Will patent lawyers deliver/dispense advice accordingly? No, they will not. Most of them will try to maintain the illusion of good odds (of winning cases) and in a later post we'll show how they continue to name-drop Berkheimer etc.

Charles Bieneman's tips regarding Section 101 are noteworthy because he runs a whole blog dedicated to patenting software in spite of the rules/law. Only days ago he wrote about 35 U.S.C. €§ 325(d):

Recent PTAB decisions on petitions for Post-Grant Review (PGR) demonstrate how little deference judges can give to patent examiners patent-eligibility decisions. Even if the USPTO in the form of a patent examiner has deemed claims patent-eligible under 35 U.S.C. €§ 101 and the Alice/Mayo test, the USPTO in the form of the PTAB may turn around and deem the claims unpatentable under Section 101 . Two recent cases saw the Patent Owner make the argument that it needs to make under 35 U.S.C. €§ 325(d), namely that the Petitioner was simply rehashing arguments already rejected by a patent examiner. These arguments were to no avail. As the PTAB receives more and more petitions for Post-Grant Review on Section 101 grounds, we may see the PTAB second-guess the examining corps regarding the patent-eligibility of more and more recently-issued patents.


On another day, only days apart, McRO was brought up again by Bieneman. It's an old Federal Circuit case -- one that Patent Trial and Appeal Board (PTAB) inter partes reviews (IPRs) are unlikely to even cite at the end of 2018. This shows how manipulators try bypass Alice/Section 101. From the post:

Patent claims directed to pricing and cataloging products have survived a Rule 12 Motion because the court thought that there was a chance that the patent owner might be able to show a technological improvement as in McRO, Inc. v. Bandai Namco Games Am. Inc. (Fed. Cir. 2016). Vendavo, Inc. v. Price f(x), No. AG et al, 3-17-cv-06930 (N.D. Cal. Oct. 22, 2018). Regardless of whether you think the patent-eligibility test should be more or less stringently applied, you may find this decision vexing if you share my (admittedly subjective) perspective that the USPTO would not today allow these claims, and that many courts would have invalidated them under 35 U.S.C. €§ 101 and the Alice patent-eligibility test.

[...]

While not new, there are three points to be drawn from this case. First, courts’ applications of patent-eligibility rules remain unpredictable. Second, even though patent-eligibility and prior art invalidity are supposed to be separate questions, they are often conflated; showing novelty or non-obviousness (or a lack thereof if you are the patent owner) can be very important in prevailing on a patent-eligibility motion. Third, if you are the challenger, you have the initial burden to show that there is no technological invention – make copiously clear to the court how that burden is met.


It has become hard to patent software in the US and then actually enforce the patent/s in court. But it doesn't matter to law firms because the final outcomes have no effect on their ability to bill gullible clients. Here's Bieneman commenting on the fact that "using a telephone to verify a person registering for an account" isn't just shallow but also patent-ineligible:

Claims of four patents directed to using a telephone to verify a person registering for an account are invalid under 35 U.S.C. €§ 101 and the Alice patent-eligibility test, the court held in TeleSign Corporation v. Twilio, Inc., Case No. 18-cv-03279-VC (N.D. Cal. Oct. 19, 2018). Accordingly, the court granted a Rule 12(c) motion for judgment on the pleadings that asserted claims of the four patents-in-suit were invalid under 35 U.S.C. 101. The patents are U.S. Patent Nos. 7,945,034 (“Process for determining characteristics of a telephone number”), 8,462,920, 8,687,038, and 9,300,792(each entitled “Registration, verification and notification system” and sharing a common specification).


This is very much expected. Why was a lawsuit even attempted? Those are software patents, hence fake patents. Sure, they have the ribbon and all, but they're good for nothing but extortion (outside the courtroom), rendering them a case of gross injustice or a racket. Bryan Hart, a colleague of Bieneman, wrote about Berkheimer in relation to obviously fake software patents that even district courts aren't tolerating. To quote:

The District of Massachusetts recently granted a motion to dismiss for ineligible subject matter under 35 U.S.C. €§ 101 and the Alice/Mayo test in a case involving home electrocardiogram sensors, CardioNet, LLC v. InfoBionic, Inc.—demonstrating that despite some courts’ decisions to the contrary, Rule 12 dismissals are available for ineligible subject matter notwithstanding the Federal Circuit’s decision in Berkheimer v. HP that such decisions can involve factual inquiries.

CardioNet and InfoBionic compete selling home electrocardiogram (ECG) sensors that monitor a patient’s heartbeat via the electrical activity passing through the heart muscles. In this dispute—not their first—CardioNet accuses InfoBionic’s MoMe Kardia Systems of infringing CardioNet’s U.S. Patent No. 7,941,207. The ’207 patent covers a way of detecting atrial fibrillation and atrial flutter, two types of heart arrhythmia.


It has actually become very major news when software patent do withstand scrutiny and are upheld as valid by courts. Why are such patents even pursued anymore? And actual lawsuits? Maybe the large and wealthy companies just rely on getting lots of these low-quality patents in large quantities, then cross-licensing to establish a cartel.

Recent Techrights' Posts

Links 10/06/2025: Jaws at 50 and US Democracy Crushed Very Rapidly (Martial Law Seems Imminent)
Links for the day
Abuse Inside the Polish Patent Office (UPRP) - Part VII: Washing Their Hands After Corruption and Abuse
"Tragedy or comedy?"
Culling Bad RSS Feeds of Bad Sites
Not throwing out the baby with the bathwater
Live as You Preach
technology is fast becoming dysphoric
 
Links 10/06/2025: Apple Hype and Physical Attacks on Bloggers
Links for the day
Gemini Links 10/06/2025: Loon Lake, Farming, and Forth
Links for the day
If 'Microsoft v Techrights' is Dealt With by a 'Microsoft Court' (or a Court Outsourced to Microsoft)
More on that later
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Monday, June 09, 2025
IRC logs for Monday, June 09, 2025
Gemini Protocol Turns Six in 10 Days From Now
If you haven't tried it yet, then give it a go today
Gemini Links 09/06/2025: Addition Addiction and Nitride
Links for the day
Links 09/06/2025: Science, Hardware Projects, and Democracy Receding
Links for the day
Computers Got Smaller, So GNU/Linux Got Bigger
Many people here recognise the lack of urgency (or need) to get expensive new laptops
BetaNews is a Plagiarism and LLM Slop Hub, the Chief Editor Isn't Addressing This Problem Anymore
SS Fagioli is basically a parasite leeching off or exploiting other people's work
Links 09/06/2025: Chaos in Los Angeles and Hurricane Season
Links for the day
GNU/Linux Grows at Windows' Expense and Microsoft Trolls Infest and Maliciously Target Articles About It
Microsoft is - and has long been - organised crime
They Say I'm Mr. Bombastic
They didn't take good lawyers
Links 09/06/2025: Windows TCO and Many Data Breaches
Links for the day
Abuse Inside the Polish Patent Office (UPRP) - Part VI: Political Stunts by Former President Edyta Demby-Siwek and the Connection to Profound Corruption at EUIPO
it's like a money-laundering operation where one politician rewards another at taxpayers' expense
Gemini Links 09/06/2025: Pipelines and Splitgate
Links for the day
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Sunday, June 08, 2025
IRC logs for Sunday, June 08, 2025
Links 08/06/2025: Tiananmen Carnage Censorship Persists, North Korean Goes Offline
Links for the day
Gemini Links 08/06/2025: Love as an Ethnographic Method and Monitorix Gemini-Frontend v0.1
Links for the day
Links 08/06/2025: Exposure of More GAFAM Surveillance and Social Security Records Compromised
Links for the day
Linux Foundation is a Mediator for Microsoft et al, Not for Small Companies That Support Rather Than Attack the GPL
Many people still wrongly assume that because it is called "Linux Foundation", then it is pro-Linux and represents the same mindset
This Past Friday, Confirming What We Said All Along About Brett Wilson LLP: It's Shrinking, Has Considerable Debt, Loss of Net Assets Despite the Microsoft SLAPP Money
The documents only became publicly available less than 2 days ago
Some of the Many Reasons We Sued Microsofters for Harassment
perpetrators of harassment
For 20 Years Many People Were Sharecropping for Canonical's Oligarch, Now He's Deleting All Their Contributions
"Ubuntu has erased instead of archiving the trove of material at Ubuntu Forums"
There Was Always Too Much 'Crazy Stuff' Going on Around Freenode
What many IRC users lost sight of
Exposing Crime is Not a Crime (It Never Was)
In the eyes of rich and powerful people, those who speak about their crimes are the "criminals"
GNU/Linux Distros Abandoning Microsoft GitHub
Will curl be next to leave Microsoft GitHub?
Expect More XBox Mass Layoffs Soon If the Rumours Are True
From a Microsoft media operative
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Saturday, June 07, 2025
IRC logs for Saturday, June 07, 2025
Europe Needs to Move Away From GAFAM; The Sooner, the Better
Europe - not just the EU - must abandon GAFAM as soon as possible
The Issue Isn't GNOME's Promotion of Diversity But GNOME Corruption, Abuse, Censorship, and Worse
So-called "Conservative" (republican, pro-Trump, bigoted) people want you to think the problem with GNOME is politics
When the News Sources Become Scarce and Increasingly Full of Polluted/Contaminated 'Content' (With LLM Slop and Slop Images)
Integrity matters
"Linux" Sites That Spew Out LLM Slop
We're lacking enough material for another "Slopwatch"
Abuse Inside the Polish Patent Office (UPRP) - Part V: Breaking the Law, Just Like EPO
We'll hopefully cover some of the pertinent details later this year