ON 102(g)

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M. Slonecker wrote:

>BTW, perhaps I am missing the point, but I do not understand the perceived need to

>include something “secret” in the claim.

Because a 102(g) defense can be used in litigation whereby the defendant shows prior invention and diligent reduction to practice without suppression or concealment. If some element is secret, however, then 102(g) may not apply because of suppression. The point of the “junk method” is to “arbitrage” a defendant’s trade secret even if it is invented prior to that of the plaintiff. Essentially the plaintiff insidiously co-opts the defendant’s trade-secret by discovering and patenting it. Since the “junk patent” method claim doesn’t distinguish relative dates of invention (or avoids merited rejections), a 102(f) may preclude obtaining an enforceable patent, as I posted above. Hence the method is not-enabled (one of the steps requires obtaining a patent).

Note that secrecy of an element by itself to avoid 102(g) is not enough, there must be intentional suppression as in a trade secret:

“Intentional suppression occurs when an inventor ‘designedly, and with the view of applying it indefinitely and exclusively for his own profit, withholds his invention from the public.’ Paulik v. Rizkalla, 760 F.2d 1270, 1273 (Fed. Cir. 1985) (en banc) (quoting Kendall v. Winsor, 62 U.S. 322, 328 (1858)); see also Fujikawa, 93 F.3d at 1567.

. . .

See E.I. Du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1436 n.5 (Fed. Cir. 1988) (“Because work is ‘secret’ does not necessarily mean that it has been ‘abandoned, suppressed or concealed.'”)”

Flex-Rest, LLC v. Steelcase, Inc., 455 F.3d 1351, 80 USPQ2d 1620, 1624-25 (Fed. Cir. 2006)

A HYPOTHETICAL

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Now consider a hypothetical that gets to the heart of the matter:

Are you being harassed by nuisance suits? Are your valuable trade secrets being hijacked? Then consider help from Troll Protection Services (a full service troll exterminator. Fees vary by venue. Investment prospectus available. See our sister company Bilski-proof Claim Drafting Licenses and our financial services company Patent-Infringement-Defendant Credit-Default Swap Services with access to US Treasury):

Our standard troll-infringement counter-claim (more lethal concoctions available)

Title: Monetary Arbitrage of Other’s Trade-Secrets

Secret, but enabling spec.

Claim 1. A method of altering data stored in a storage system comprising:

altering a first data on a storage system, wherein said first data represents an account balance kept in a financial institution, and

wherein said step of altering further comprises:

1) obtaining an equity interest in a patent filing in a jurisdiction;

2) identifying a target party infringing said patent filing;

3) identifying a secret element of said target party’s infringing activities, wherein said secret element is adequately concealed or suppressed to avoid a statutory invalidity rejection against said patent filing;

4) effecting inclusion of an additional claim having said secret element during prosecution of said patent filing to read-on said target party’s infringing activity;

5) negotiating with said target party;

6) receiving a second data represented from the group consisting of a number inscribed on a check indicating an amount of currency and a number in an electronic notice from said financial institution indicating an amount of currency transferred and combinations thereof;

7) consummating alteration of said first data selected from the group consisting of depositing said amount of currency on said check into said financial institution for the benefit of said account balance and depositing said amount of currency by confirming said electronic notice for deposit into said financial institution for the benefit of said account balance and combinations thereof.

Claim 2. The method as in claim 1 wherein the step of altering comprises the additional steps of:

1) buying a credit-default swap on a financial obligation of said target party;

2) effecting a patent grant arising from said patent filing, wherein prosecution of said patent filing intends to follow ethical and legal requirements in said jurisdiction;

3) effecting a suit on said target party for patent infringement.

Claim 3. The method as in claim 2, wherein the step of altering comprises the additional step of:

issuing a global press release.

Claim 4. The method as in claim 3, wherein the step of issuing further comprises:

effecting reporting of said press release in a daily financial media, wherein said reporting distresses financial obligations of said target party.

COMMENT

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Note the attempted anti-Bilski structure of the independent claim grounded in physical transformation, yet still capturing the essence of the benefit. Many financial trading business method patents can follow the same pattern whereby the terminal position can be claimed as something physical which is transformed by at least one physical step such as a transaction. The extra-solution-activity problem is turned on its head by making it the principle of the claim.

Business methods, essentially designed to make money, should not directly claim the method, but rather the physical changes to financial accounting arising inherently from the method. In other words, don’t claim a method of making money, but rather a method to change the recording of your bank account arising from the method.

Money is real, because eventually your financial institution says it is. So just prove it to the Federal Circuit and think about claiming that way.

Paul Gardner correctly suggests we not wallow, but start to find ways around Bilski.