Judge Rader on Judge Rader’s Retirement

You can read his email to a journalist here, which is similar to what I’ve heard privately.

I’ve had journalists, friends, lawyers, and others contact me for my thoughts.  Here are my thoughts:

I loved clerking for Chief (sorry, he’ll always be that).  The man is wicked smart, kind, full of life, and funny.  He cares passionately about the court and patent law.

His plan to move on now doesn’t surprise me, since I know he loved to teach (had the privilege of teaching one class for him at GW while I was up there) and he loves to travel (I’ve never seen someone bound off an airplane after 20 hours of flight with more energy than him).

The best is all I can wish for him, along with a good ticket to the next Stones tour.

137 thoughts on “Judge Rader on Judge Rader’s Retirement

  1. Of course, the scary thought is that he resigned because he knows that Alice is going to turn out so badly…

    1. btw, I don’t buy that theory – the other judges that deadlocked in Alice would likewise have acted, no?

      Plus, my prognostication follows the oral argument threads (see them in the archives for the explicit and detailed exposition).

      Hmmm, I think that we are still waiting for the other regulars to give their prognostications. At this point, all we have is gener@11ized (the mod filter still needs updating) globalized views shrift of any keen legal analysis – you know, the usual **sniff** treatment.

      Come guys, you are running out of time.

    2. btw, I don’t buy that theory – the other judges that deadlocked in Alice would likewise have acted, no?

      Plus, my prognostication follows the oral argument threads (see them in the archives for the explicit and detailed exposition).

      Hmmm, I think that we are still waiting for the other regulars to give their prognostications. At this point, all we have is over-broad (the mod filter still needs updating) globalized views short-shrifted of any keen legal analysis – you know, the usual **sniff** treatment.

      Come guys, you are running out of time.

  2. If the promotion of “Science and useful Arts” is a limit on patentable subject matter, then it should also be a limit on copyrights.

    The Supreme Court is not going to fall into that trap.

    The better question is whether the claimed subject matter falls within § 101.

    1. The better question is whether the claimed subject matter falls within § 101.

      Serious question: Which 101?

      The plain words one that Congress wrote – or the one that has been “augmented” with implicit writing (how deep the rabbit hole of implicit) by the Court?

      1. Anon, when one says that anything under the sun made by man and that is useful is eligible subject matter one simply reads out of the statute the requirement that the claim subject matter be one of a machine, a manufacture, or a composition.

        And of course if one looks at the full quote in Chakrabarty, one does not see any intention by Congress to say anything useful was eligible regardless that it be a machine, manufacture, or composition.

        1. JSFCHMAJ.

          Ned, seriously?

          the requirement that the claim subject matter be one of a machine, a manufacture, or a composition.

          You left out a FULL and independent category there.

          And no, I did NOT read the categories out – you STILL need to meet a category.

          101 is meant as a WIDE OPEN gate – not the judicially active atom bomb that it is being mashed and twisted to be like a nose of wax.

          And (once again) you appear to be conflating patent eligibility and patentability.

          Please stop the nonsense.

  3. Reiner,

    I gotta say I think you and Stevens are beyond flat wrong.

    First read the title of 101, then read the text.
    Then read the title of 102, then read the text.
    Then read the title of 103, then read the text.
    Now read the sentence: “The full sentence in the Committee Reports reads: “A person may have‘invented’ a machine or a manufacture, which may include anything under the sun that is made by man, but it is not necessarily patentable under section 101 unless the condi-tions of [this] title are fulfilled.” S. Rep. 1979, at 5; H. R. Rep. 1923, at 6.

    Now, “anything under the sun” is an “invention.” but it is only patentable if it satisfies the conditions of patentability, of which there are two (two) in all of title 35: 102, and 103.

    The whole point of the 1952 amendment was to make it that way.

    1. David, In re Russell, 48 F.2d 668 (C.C.P.A. 1931); link to scholar.google.com

      The case held, “The mere arrangement of printed matter on a sheet or sheets of paper, in book form or otherwise, does not constitute “any new and useful art, machine, manufacture, or composition of matter,” or “any new and useful improvements thereof,” as provided in section 4886 of the Revised Statutes, 35 USCA § 31.”

      Did the ’52 Act overturn this case, and if not, why not?

      1. Reinier Bakels, at June 17, 2014 at 2:54 pm, said, “Abstract business methods are not patentable. As we are getting towards the end of the 2013-2014 term, the Supreme Court will soon answer the question what “abstract” means in CLS v. Alice.”

        Reiner, can you give us one example of a non abstract business method?

        Also, which is a business? Is it a “machine, manufacture or a composition?”

        1. I just quoted the law. Bilskis business method was found too abstract to be patentable, but the SCOTUS refused to follow Stevens to ban business methods categorically. So I guess it is fair to conclude that non-abstract (or less abstract) business methods than Bilski’s method could be patentable.

          I think that abstractness is not quite the right designation, but I understand that this criterion is used since § 101 case law has identified three (and only three) exceptions to patentability: 1) abstract ideas 2) laws of nature, 3) natureal pehnomena. See Chakrabarty. Then admittedly “abstractness” is the closest.

          Yes, you are right too that a “business method” is hard to define. Eventually all patented inventions have a business purpose, else it would not make sense to take the trouble of patenting them.

          The proponents of a Eurpean-style technology requirement should be aware that allegedly technical business methods do exist (I say “allegedly” since this statement depends on poorly defined concepts). A fine example is provided by the 1983 German case of “flight cost minimization”, actually a control engineering application involving technology that lets an airplane fly at the most efficient speed (fatser uses more fuel, slower takes more time, and time = money as well).

          IMHO the solution should is something else. Patents as “property rules” allow their owners to prevent other to use their inventions. This blocking effect (with only very limited exceptions, see eBay) provides exclusivity which is contrary to the general principle of freedom of competition, which is particularly important for business method. Businesses should cope with competition by providing superior products at competitive prices, not by legal means!

          1. Reiner, actually, Myriad held that the DNA sequence claimed was not a “new” composition of matter. I don’t believe they had to resort to an exception, nor did they. It wasn’t eligible under section 101 by its own terms.

            I keep bringing up the Russell case to illustrate a point. The reason that printed matter is not statutory, even when claimed in combination with a machine, manufacture or composition, is that it is not itself one of these three. Simply read the case.

            The novel subject matter is not one of these three, that novel subject matter is not statutory and cannot be used to distinguish the prior art.

            We don’t have to resort to any constitutional issue or any exceptions, or read into the statute anything that is not there already. This is as simple as simply following the statute.

            There’s nothing in the statute about business, or math, or price, or the like. These things are neither machines, manufactures, nor compositions. They are nonstatutory.

            1. I keep bringing up the Russell case to illustrate a point

              That you can STILL butcher case law and try to twist it to your agenda even after you have been corrected?

              That’s not a very good point.

              Set B is not Set A, and most definitely is not Set C (set theory is even more simple than your alleged simplicity and you STILL get it wrong).

              Your semantics are a FAIL – there is nothing in the statue either about bicycles, medicines, or the lot – oh wait, you want to play semantics only for your agenda? Shocking.

          2. Reiner – you misquoted the law.

            The holding had NOTHING to do with business methods per se – that’s the losing position.

            Rather, the holding – pure and simple – was one of “abstract” only.

            Your “desire” (competitive prices) is noted and dismissed. Thanks.

      2. Ned – down right shameful how you disregard the correct understanding of the legal principle that I explained to you with simple set theory and advocate a legal error so knowingly.

        Despicable.

        1. Anon, I am well aware of the Rich measuring cup case. The printed matter there was functional to the measuring cups.

          But that is not the point. The point is why is printed matter ineligible in the first place. We then get back to Russell that says it is not a machine, manufacture or composition.

          I am just wondering whether David now believes that Congress intended to and did in fact overrule Russell. His broad statements in his post suggest that Congress fully intended to overrule the printed matter doctrine.

          1. I have already held your hand through this with a VERY patient and simple Set Theory example.

            There is NO reason why you should not understand this now.

      3. Did the ’52 Act overturn this case, and if not, why not?

        The case simply is not about what you think it is about Ned.

        Set B is NOT Set A.

    2. David: The whole point of the 1952 amendment was to make it that way.

      Was the whole point of the 1952 amendment to make information eligible for patent protection if its printed on some old “manufacture”?

      Because that’s what these bozos “intended” if we accept your interpretation, David. It’s a bit odd that they didn’t come out and say that’s what they meant as it would represent a rather striking departure from previous law.

      “anything under the sun” is an “invention.”

      The Committee Report you cited does not say that. At best, it says that some inventions may be machines or manufactures which “may” include anything under the sun but that those machines and manufactures are not necessarily patentable under 101. Your “interpretation” goes waaaay beyond that.

      1. “Being an invention” is not a patentability requirement under US law. The definition of an invention in §100(a) is broad. It is not a criterion.

        This is not a matter of substantive law, but a matter of terminology. The “invention” in US law is the same as a “patent application” (patentable or not patentable). In contrast, the “invention” in European law is the same as patentable subject-matter” in US law. It is the result of a test (under 35 USC § 101 and Art. 52 EPC). Some have proposed to skip the 101 test, and the Art. 52 test equally, and to focus on the inventive step (=non-obviousness) step, but IMHO that is a mistake since the 101/52 test is the only absolote test, idependent of the state of the art.

        1. [independent] of the state of the art.

          …a grain of truth.

          And a reason (still) why some regulars here struggle with the takeaway from Myriad – the 101 reasoning there was separate from a time-dependency of a 102/103 argument – the warehouse of nature exception applies regardless of the timing of the invention in regards to the presence of the claimed item in the warehouse. See Chakrabarty.

          In other words, one can truly make an invention that becomes patent ineligible if it is later discovered that your invention exists in the warehouse of nature. Important to keep in mind with this concept is the reality that nature and the universe is NOT static. Nature and the universe is capable of – and does – change, all on its own accord. Thus the exclusion based on the warehouse of nature exception is NOT time-dependent, as in the patentability requirements of 102/103.

          1. Again, it cannot be stressed enough: patent eligibility is a distinct concept from patentability.

            It is only those pushing a separate agenda that wish to conflate and confuse the two.

            The Act of 1952 action in this regard cannot be considered a mere codification, and the stripping from the Judiciary of the evolutionary tool of common law judgement to define “invention” was a clear and unmistakable intent of Congress. And yet, more than fifty years later, the battle against that very addiction rages on. The power to insert “policy” with 101 remains HIGHLY addictive and seductive – so “easy” for the Court to insert its own (implicit) views and mash that 101 nose of wax – and expressly the exact type of thing that the separation of powers doctrine was meant to curb. In the U.S., the power of writing patent law was explicitly designated to a different branch of the government than the judiciary. Malcolm vom1ts out his typical brainless reply to the powerful and succinct adage of “Reading a map is just not the same thing as writing a map” because he has NO intelligent response to that adage. If he did, he would counter with an intelligent (and intellectually honest) response instead of vap1d ad hominem.

            He does not because he cannot.

            1. And 6 especially should note that my invitation to Malcolm (and other anti-patentists) to speak directly on point is an open invitation to speak, constrained only to speak in an intellectually honest manner. There is no “control” as 6 would seek to twist in his own efforts to control the content on this blog.

              The floor, Malcolm is yours. Use it to advocate your position in an intellectually honest manner – please do not “engage in conduct involving dishonesty, fraud, deceit or misrepresentation.”

    3. Pay attention folks:

      There really is a difference between patent eligible and patentable.

      Only those with a scurrilous agenda approach this fact in an intellectually dishonest manner.

      1. No question. They are judicial activist. The Washington Post has a great article about why the gap between the rich and poor is becoming wider and wider. And, I am sure that anyone that is intellectually honest would see the movement to remove patents is a move for the big corp monopolist.

    4. You know the courts removed anti-trust law from the books by merely redefining it. The courts did this without Congress.

    5. The whole point of the 1952 amendment was to make it that way.

      There remains large scale denial of what Congress was doing in 1952.

      Look at the (largely – but certainly not exclusively) academic amici briefs in Alice and see just how many call out for the Court to take the exact same type of role that Congress rebuffed the Court for having back in 1952.

      When a Court refuses to let their implicit writing go – at the expense of reading the plain words written by Congress – you know you have an addiction problem with the Court. The Court cannot help but stick their fingers into the 101 nose of wax.

      The question should be answered shortly: Will the Court respond now to the rebuke from the CAFC, who threw their hands up in desperation, telling the Court that their gobbledygook of 101 jurisprudence cannot be applied (consistently, rationally, in an intellectually honest manner), and that the Court needs to clean up the mess that the Court has made with their addicted activism.

      Will we see a Churchill moment? Or will we see (yet another) Chamberlain one? Based on the record captured, it certainly will be difficult to justify ANY decision that the anti-software people can truly celebrate (given the stipulations by both parties, and the admissions against interest by Perry at oral argument). The make-up of the bench and the fact that 4 is not 5 shows signs that the most abject and outright addictive steps will not be taken.

  4. Mallow Marshm0rron MM, I’m still waiting for you to explain why the first guy who claims a physical disk in his hand has structure, but the second guy to claim that same disk and recites the same structure but also says that the disk has data stored on it, well, the disk transforms into vapor/ether/unpatentium and is no longer an apparatus.

    Unfortunately I’ve never said that any such disk “transforms into vapor/ether” so I’m not the one to explain that to you. Perhaps you should try explaining it to yourself since it seems to be your own strawman.

    If you are wondering why the addition of ineligible subject matter to old, eligible subject matter creates subject matter eligibility issues then I strongly recommend that you read Kevin Collins’ article here: link to papers.ssrn.com I don’t agree with everything that Kevin says but his article is a great start for folks who seem unable to connect two points on a line.

    The question that is buried underneath all your straw is an important one that is also easy to answer. I’ve already stated the question: why does the addition of ineligible subject matter to old, eligible subject matter creats subject matter eligibility issues?

    In a nutshell, the answer is that the existence of eligible subject matter in a claim does not per se remove the claim as a whole from questions about its eligibility. To understand why this is the case, consider the simple example of a claim reciting a process of drinking a cup comprising a caffeinated beverage. That is an eligible process. It’s also an old, unpatentable process. Now, consider that same claim with an additional limitation of “thinking about [insert useful non-obvious information]“. That claim is plainly ineligible because the claim turns people who are legally practicing an old step (drinking coffee) into infringers merely because they think about some ineligible information. In other words, the claim effectively protects the information itself, at least with respect to practitioners in the field of coffee drinking.

    Are you still following along? Gosh, I hope so because this is incredibly simple and basic stuff (but for some reason certain people are loathe to mention it — can you guess why?).

    Now consider the similar scenario of an old, eligible apparatus for storing organized information on stacks of bound paper and transmitting the information using reflected light waves when the paper is exposed to said reflected light. Normal people (i.e., non-patent attorneys) refer to such apparati as “books.” As I already noted, books are eligible subject matter. They are also old and unpatentable. Now consider a “new” book comprising [insert non-obvious useful information here]. Do you see the subject matter eligibility issue? If such claims were eligible for patenting, people could use patents to prevent book manufacturers from communicating the otherwise ineligible information using books. See how it works?

    I hope so. It’s very straightforward.

    I trust you have enough, um, information now to take the teeny tiny baby step from a book (which computers can read) to a disk (which computers can also read) or even computers themselves (which everyone knows are capable of storing and transmitting organized information when, where and how a seeker of said information desires said information to be transmitted — very much like those dusty old analog books).

    Thanks for asking your question, Marshm0rr0n. It’s useful for people to be reminded of what patents are for and how the system has been warped and broken by patentees attempting to protect inelgible information itself (e.g., “correlations” or any other information, whether that information is accurate or inaccurate) with broadly written patent claims that recite nothing new except for that ineligible information.

    1. This is another example of the age-old question whether an invention partially consisting of non-patent-eligible subject matter can be patented if the non-eligible part is nog novel/non-obvious. The answer that the statute requires patent application to be assessed as a whole apparently leads to a counter-intuitive result. The same applies to the (related) objection that the “subject-matter” test (101) should not be mixed with the novely/non-obviousness test (102/103).

      Very similar problems exist in European patent law, if “abstract” is substituted by “non-technical”. The EPO Boards of Appeal noted that non-technical elements often can not be ignored because then no working system is left, but still believes that those non-technical elements can not contribute to the inventive step (T 688/05 (Ticket auctioning system/TICKETMASTER).

      The problem IMHO is that patent applications are seen as a collection of claims, which hides the effect that they must relate (and the all must relate!) to a single inventive idea, so they are always related to each other in a proper patent application. Eventually and invention is not a thing but a thought. It is a teaching, a “trick”. Applying that perception to the age-old paradox whether an (non-novel) CD can be patented with novel music on it, the question is: what is the trick? What did we learn from that alleged invention?

      I guess the solution to CLS must be sought along the same lines.

      This approach also resolves the question whether “insignificant post-solution activity” still MUST be included because of the “whole contents” rule. IMHO it is decisive whether the (alleged) post-solution activity is part of the “trick”. In CLS, I guess the computer implementation is not. But we will see.

      Incidentally, the concept of “insignificant post-solution activity” was “invented” by the German Federal Supreme Court in Dispositionsprogramm on 22 June 1976, exacly two years before the U.S. Supreme Court adopted the same concept in Flook.

      1. (yawn) – Stay within the Useful Arts with your examples please, as the moment you venture past them, you lose all credibility and the item is beyond the patent law to begin with.

        1. Stay within the Useful Arts

          In case you haven’t noticed, I’m not trying to patent anything here. I’m just commenting on a blog.

          It’s the patent applicant who needs to worry about “staying within the Useful Arts” and describing his invention in terms that do not rely on ineligible subject matter (e.g., ineligible information). That means reciting new structures or steps leading to new physical transformations, not just new information or new “steps” of “processing” information.

        2. Listen anon, one does not even have to ask what “useful Arts” means. The better approach is to ask whether the claimed subject matter is within 101.

          E.g., a machine, manufacture or a composition, or a method of making or using one of these.

          1. You are doing that sub-treatment of the category thing again Ned.

            Process just is NOT a handmaiden of the hard goods categories.

      2. Reiner This is another example of the age-old question whether an invention partially consisting of non-patent-eligible subject matter can be patented if the non-eligible part is nog novel/non-obvious.

        That question was answered decisively by the Supreme Court in Prometheus. The answer is “no” unless the ineligible subjct matter is sufficiently “integrated”. It pretty much goes without saying that the “integration” requires the recitation of a novel structure or a new physical transformation but that question was reserved for another day. But Prometheus’ claims were tanked by the Supreme Court without any consideration of the non-obviousness of the ineligible subject matter (i.e., the step of thinking about the correlation). It was irrelevant because there was no “integration” of the ineligible subject matter with the old subject matter.

        The answer that the statute requires patent application to be assessed as a whole apparently leads to a counter-intuitive result.

        Please be aware that there is no requirement in 101 that the claims be considered “as a whole.” That requirement is found in 103 (obviousness), under which, oddly enough (and without the pearl-clutching we see from the would-be defangers of 101), the Federal Circuit has created a doctrine that permits ineligible subject matter to be ignored when determining obviousness.

        1. Apologies for the formatting error. The second paragraph in the above comment should not be in italics (that’s my own writing, not Reiner’s).

        2. It pretty much goes without saying that the “integration” requires the recitation of a novel structure or a new physical transformation

          Except (9-0 Baby) it does not.

        3. We are getting closer. The requirement of “sufficient integration” should eliminate “insignificant post-solution activity”. But it requires to Supreme Court to figure out whether Alice’s computer implementation is “sufficiently integrated”.

          Basically a patent should relate to a single inventive concept (codified in Art. 82 EPC, I am not really sure about the US equivalent, § 121?). This rule is obscured by the fact that patent applications usually contain multiple claims. Still, an invention (as a whole) is supposed to solve a particular problem. That’s what makes them valuable. Now the patent may only claim what is essential to solve the particular problem. An invention is a teaching, a “trick”.

          In CLS the “trick” is the arrangement of the transactions, involving a trusted third party. If CLS would have asked a consultant to solve the prolem how to secure its financial transactions, the answer would have been an arrangement involving trusted third party. And a computer program? of course not. Managers at CLS know very well that computers are indispensable to handle large amounts of transactions in a secure and timely manner. A consultant saying: we recommend you to use a computer would be ridiculous.

          Likewise, in Prometheus the trick was to calculate the appropriate dose of a medicine in a particular way, full stop. If a clinic would have hired a consutant (or a scientist) to develop a better method to determine the appropriate dose, he/she would not have dwelled on the implementation details that were argued by metabilite to defend patentability.

          In sum, features in a patent application should always be “sufficiently integrated”, else they should not have been mentioned at all. Then they are truly “insignificant post-solution activity”.

          For anyone who reads German: this rule was written down very clearly in Elektronisches Stellwerk, GRUR 1987, p. 799-800.

        4. Please be aware that there is no requirement in 101 that the claims be considered ‘as a whole.’

          You are forgetting that the Court (in their graciousness) sees this differently, right?

          1. I guess this issue has been dealt with extensively in Flook and Diehr.

            “[C]laims must be **1058 considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.” 450 U.S. 175, 101 S.Ct. 1048, 1057-58.

            1. Reiner,

              Malcolm is anti-Diehrist. Even his pet-theory does NOT survive his own highly prized Prometheus case (his pet theory rests on a non-integrated view of [oldstep]+[newthought]). Regulars here remember well the Malcolm-FAIL of his being the very first to provide a hyperlink to the Office takeaway from the Prometheus case that focused on integration (as opposed to his pet theory) and he remains to this day unable – and unwilling – to address the fact that integration only makes sense in a “Claim as a whole” regime. Integration is quite meaningless if there was not mandate to take the claim as a whole – it would be an absolutely unnecessary thing to even talk about if you did not have to take the claim as a whole.

              Of course, any intellectually honest treatment of the law would make this abundantly clear.

              He crowed loud and long that Bilski would crush “the Diehrbots” and (refreshingly) hid for a few months after that decision came out (with Stevens losing his majority position – you have not replied to that fact in your desire to hew to his lost views in the dissent dressed as a concurrence).

              Contrast that action with his full vom1t response in Myriad – which “absence” was brought to his attention before the Myriad decision was released.

              In short order (within days), on a subject he professed to not care about, he qq’d 30,000 plus words of mewling nothingness. Even months later he admitted that he still did not understand the Myriad decision – even (especially…?) after I had explained to him how the case was going to come out in our detailed discussions before the case came out.

              There are none so blind as those who wish not to see.

    2. since it seems to be your own strawman.

      I’ve never said that any…

      LOL – he just doesn’t answer the counterpoint and explain the simple question that goes to the heart of the software as patent eligible item of exactly how “oldbox” – without change – can have a new capability that was not there beforehand. See Nazomi.

      Sure – he does “not say,” but he is fully aware of it and continues to make posts disregarding this material item in furtherance of his advocacy – a clear ethical breach (if he is, as he purports to be), an attorney.

      Not addressing a material part of the issue, but no lack of vap1d ad hominem for those bringing up the valid point… Lovely soapbox there Malcolm.

      Case in point right here: bringing up (again) the strawman of the printed matter on a coffee cup when he KNOWS (and we know he knows because he volunteered an admission about knowing) that the real legal issue is NOT mere printed matter (a Set B item), but particular printed matter that is different in kind (a Set C item). No stopping his dissembling and prevaricating on this point, even as he has had his nose rubbed into his CRP repeatedly.

  5. In my country, judges retire at 65, in exceptional cases at 70. Rader is 65. For me it is a strange phenomenon that judges in the US can continue until a very old age. Common wisdom is that one gets wiser as one gets older, but isn’State Street a sign that Judge Rich had better retired at the age of 94? And aren’t the opinions of Pauline Newman who will turn 87 next Friday) a sign that she tries very hard to be “modern” with her almost extremist views on business method patenting? On the other hand, Judge Stevens delivered a wonderful opinion in Blski at the age of 90. But he is a Supreme Court rather than a Ciruit Judge.

    1. “And aren’t the opinions of Pauline Newman who will turn 87 next Friday) a sign that she tries very hard to be “modern” with her almost extremist views on business method patenting?”

      Oh please, what utter malarkey. Newman knows more patent law (and is more adherent to the patent statutes) than any of the current judges on the Federal Circuit. I’ll take her 87 years anytime over almost all the other judges on the Federal Circuit.

      1. Plase note that I do not question her knowledge of patent law. But the limits of business method patentability are still quite unclear (see Cls v. Alice, and here Judhe Newman apparently still fosters the perception that “anything under the sun made by man” ought to be patentable. Why? Because believes in patents, is seems. Like judges on specialized patent courts often “believe” in patents. They often have a background as patent agents who strived to help their clients to get as many patents as possible.

        I do not have numbers, but it seems to me that the U.S. Supreme Court is devoting a disproportial amount of time to patent cases, because the CAFC (despite its ambition to be the “Supreme Court for patents”) is so pro-patent that its decisions often have to be corrected by the Supreme Court as a more objective court.

        Listen to the oral argument of CLS v. Alice, where one of the judges notes that firms should win in the market place that deliver the best product for the best price to society, not firms who have the best patent attorney!

        1. “They often have a background as patent agents who strived to help their clients to get as many patents as possible.”

          Reiner,

          As a second-generation patent attorney, what you say is offensive and insulting to those of us who strive to deal with a “real patent law” universe (and “real” clients), versus the alternate “patent law universe” that Our Judicial Mount Olympus seems to reside in. And calling the Federal Circuit “pro-patent” is completely disingenuous. When it comes to patents, the Federal Circuit is “balanced,” versus our “unbalanced” Judicial Mount Olympus. As was once said by Justice Jackson, “the only patent that is valid is one which this Court has not been able to get its hands on.” Never were truer words spoken when it comes to Our Judicial Mount Olympus’ views on patents.

          1. EG As a second-generation patent attorney,

            LOL. Eric’s feelings are super important because his daddy was a patent attorney, too!

            what you say is offensive and insulting to those of us who strive to deal with a “real patent law” universe (and “real” clients)

            Speak for yourself, Eric.

            What’s offensive to “real patent attorneys” like me is an alleged patent lawyer like you advocating that good judges be impeached because they use the term “monopoly” when discussing patent rights.

            1. EG, the point of view you express is exactly what is wrong with the patent bar and its mouthpiece the Federal Circuit.

              No doubt.

              Guys like EG and other “old schoolers” have been driven off the deep end by their loss of power. The great irony, of course, is that one of their heroes (Rader) recently shot himself (and his jxnk-patenting cheerleaders) in the foot because he was unable to come to terms with the new reality.

              Decisions about who the patent system exists to serve are no longer going to be made in a vacuum by people who directly benefit from those decisions. Those days are over unless and until access to the Internet is massively curtailed and we return to the dark ages of paper “gazettes” (and yes some of the same interested parties are working day and night to make Internet access an increasingly costly “privilege” for their own selfish reasons).

              Just like a certain class of elderly conservative and wealthy folks were gravely mistaken about their power to decide who is entitled to marriage benefits, guys like EG are gravely mistaken about their power to decide what is going to be patent-worthy in the future. All they do is stamp their feet and shout silly apocalyptic warnings about the return of the “iron age” if they don’t get their way (i.e., More Patents, All the Time, Easier to Enforce). They’ve been doing this since KSR, at least. They did it when Rader himself wrote the Apotex decision (which correctly neutered product-by-process claims).

              But they are doomed to keep losing until the patent system approaches something close to normalcy rather than a casino for wealthy grifting lawyers who (like any twelve year old) can write patent claims that cover hundred million dollar computer-implemented “systems” but who couldn’t write a simple piece of software if their life depended on it.

          2. EG As was once said by Justice Jackson, “the only patent that is valid is one which this Court has not been able to get its hands on.” Never were truer words spoken when it comes to Our Judicial Mount Olympus’ views on patents.

            Meanwhile the PTO has been granting record numbers of patents just about every year for the past 15 years. Apparently that’s enough for Eric. Anybody wonder why? Maybe his daddy didn’t leave him enough money.

            1. Gee, maybe you can hope Eric’s mother passes away so that you can insult his mother and Eric during his normal grieving period – like you did with his father.

              (and no one like 6 or Dannyboy ever speaks up about this Psycho piece of work…)

            2. maybe you can hope Eric’s mother passes away so that you can insult his mother and Eric during his normal grieving period

              Maybe you should see a doctor about your sick fantasies.

          3. Attorneys are partial and the MUST be partial. That is their obligation towards their clients, and that is their business. I am very sorry if you find that “offensive”.

            you may be aware that among economist there is a debate going on whether patents are useful to society. Machlup pioneered in this field (1950 article with Edit Penrose, long report in 1958), and they still do not know. One of the problems is that economists fail to ask the question what “parameters” make a patent useful to society, let alone to answer it.

            The paradox is that patents may prohibit competition while competision is the cornerstone of western economy. Competition may cause damage to firms – which is hard to accept for lawyers, but eventually the only alternative is communism which is, eh, not an atractive alternative.

            Patents stem from privileges. As early as 1623, the British government issued the “Statute of Monopolies” with the purpose to reduce excessive (monopolistic) privileges.

            1. One of the problems is that economists fail to ask the question what “parameters” make a patent useful to society, let alone to answer it.

              It’s a difficult question to address in general/abstract terms because those parameters are going to depend very highly on the particular field in which the patent is granted.

              Plant patents might make an interesting case study as there seems to have been a bona fide attempt to set plants apart and offer specialized protection for them. Far more people are seeking plant patents now as compared to the early 1960s but the absolute numbers are relatively miniscule (less than a thousand in 2013; for every plant patent granted roughly 300 utility patents are granted). Does anyone on earth believe that we’d have more plant hybridizing and cultivar developing going on if there were, say, 300 times more plant patents being granted?

            2. No one said it would be easy. In any case, I am not aware of economists who even tried.

              IMHO, economists are searching in the wrong direction: they commonly consider patents as a means to appropriate (“internalize”) the benefits other have from inventions (“externalities”).

              In practice, patents are indeed used for such purposes, but not always. Some firms (e.g. IBM) obtain patents to generate revenue, but others obtain patents in order to prevent competitors from doing certain things, so that they can benefit from monopoly pricing. Add that to the “network effects” typical in the IT industry and you get a very different picture.

              Bessen and Meurer have figured that few firms really make money from patents. The only exception may be pharma, but there the problem is that patents have a detrimental effect on actual innovation, since firms focus more on profit than on risky research in complicated fields like cancer treatment. Research shows that true innovation in medicine actuall declined since WW patentability of medicines was strengthened by TRIPS.

              Of course, I do not blame firms for trying to maximise profits. But legislators should set a framework of rules so that firms maximising their profit at the same time do the most useful work to society. Health is not a normal market. one can not say: “we could cure you, you have to die because we do not make enough profit by curing you”.

              @anon: Ulike in Europe, in the U.S. patents should fulfil a constitutional purpose: “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” This rule provides clarity. The purpose is not to make patent owners rich, that is at best a means to the constitutional end of promoting “the progress of science and useful arts”. And the implication is that no patent should be granted that have no use to society, even if they would be extremely profitable for their owners.

              Actually baid-fath “trolls” (AKA patent assertion entities) have plainly extorted banks for 9-digit amounts of dollars with questionable business method patents. The victims of such entities may go to court, but that is costly as well, it takes much time, and may harm their public image. The typical extortion scheme.

            3. Bessen and Meurer have figured that

              Bessen and Meurer have been debunked and been shown to be ardent anti-patentists.

              The company you keep…

            4. Reinier – you ignore the fact that the purpose is achieved NOT by a one-sided deal, but by a Quid Pro Quo.

              You continue to ignore this point at the peril of your arguments FAILing right at the start – your position is stillborn.

              Stop drinking the koolaid.

            5. And please stop pandering to the FUD of lawsuits.

              Lawsuits are the CHOSEN manner of enforcing a patent right.

              US jurisprudence is to blame for making the option to file first-negotiate second or even to threaten to file first a de facto business option.

              Your gripe with the patent system is (as typical) misplaced.

        2. …as opposed to one such as you that believes in anti-patents, eh Reiner?

          Your bias is so thick as to defy reason.

          Your “Supreme Court for patents” – while reflecting what should be as designated by Congress – smacks of the bloated taint of Prof. Samuelson. That type of Ivory Towerism has no place in the real world.

          US Law explicitly allows business methods – see that same Bilski case in which the dissent dressed as a concurrence from the Justice you admire (because he aligns with your viewpoint) lost his majority position.

          4 is still not 5.

          1. I think it is a fact that the Supreme Court spends a lot of time lately on the “patentable subject-matter” problem. And you cannot deny that many of the CAFC judges have a patent/agent/attorney background.

            Re business method patents: Firstly, Stevens has noted that the often-citen phrase “anything under the sun” is actually cited out of context: Cogress actually said the very opposite. Secondly, § 273 is incorrectly believed to give a statutory base to business method patents, in view of its legislative history. Thirdly, The “business method patent” concept is confusing. “Business” is a field of use. The field of use normally is irrelevant for patents: one can patent a spoon although it is a tool used for eating.

            Anyway, there is broad agreement that business method patentability is limited: in Bilski it was noted that (overly) abstract business methods cannot be patented, and CLS probably will have the same result.

            Perhaps State Street was right that (alleged) business method patent applications should be assessed by the same standards as all other patents (but of course the “useful, concrete and tangible” result was not a proper general standards, as was confirmed in Bilski).

            People like Judge Newman apparently believe that patents are a general vehicle to allow people to appropriate valuable knowledge. That cannot be true. A patent is a “property rule”, and the posession of a mere idea, however valuable, would have an excessively wide scope.

            We will see whether the Supreme Court finds CLS’s “invention” more than a mere idea.

            1. Hmmm… why do you say Stevens is right on the “under the sun” quote? It appears twice in the legislative history, and I think he’s wrong on his read but please explain.

            2. While I would agree you could call Newman pro-patent and that she has a patent background, I would not call the Federal Circuit these days pro-patent. I think it was back in the 80′s and early 90′s when it first started, but that pendulum has swung.

              Many if not most of the active judges on the Fed. Cir. now have a background that has nothing to do with patents. And even those that do are not always pro patent.

            3. I would not call the Federal Circuit these days pro-patent.

              Right up to the present the Federal Circuit has been bending over backwards to coddle patentees who seek to use patents to remove valuable information from crucial parts of the public domain.

              That’s about as “pro-patent” as you can get.

              In any event, the terms “pro-patent” and “anti-patent” are fairly meaningless as used by the patent txxbxggers. Anyone who disagrees with their extreme views about what is patent-worthy and the sooper dooper ultra importance of patents generally will be tarred with the “anti-patent” brush. They’ve been playing that game for years. There are entire blogs which do little more than that, round the clock, seven days a week, for years. Let me know if you need a specific example.

            4. Chakrabarty, in fn. 6, clarified, “This same language was employed by P. J. Federico, a principal draftsman of the 1952 recodification, in his testimony regarding that legislation: “[U]nder section 101 a person may have invented a machine or a manufacture, which may include anything under the sun that is made by man.”

            5. Cited from Stevens’ opinion in Bilski: “The full sentence in the Committee Reports reads: “A person may have‘invented’ a machine or a manufacture, which may include anything under the sun that is made by man, but it is not necessarily patentable under section 101 unless the condi-tions of [this] title are fulfilled.” S. Rep. 1979, at 5; H. R. Rep. 1923, at 6. Viewed as a whole, it seems clear that this language does not purport to explain that “anything under the sun” is patentable. Indeed, the language may be understood to state the exact opposite: that “[a] personmay have ‘invented’ . . . anything under the sun,” but that thing “is not necessarily patentable under section 101.””

              I do not have to add anything to that.

            6. You want to comment about US law Reinier? I suggest that the burden is on you to be familiar with US idioms.

              I am not going to hold your hand for some term that is understood in the equivalent of the ‘art’ to which the use pertains.

            7. Dear anon, it is clear to me that you do not like my postings, but others may benefit from hearing a European perspective, for instance on the idea to limit patentability to technology.

              American patent critics have often written that patents ought to be limited to technology, like in Europe. And then it is helpful to know that distinguising technical from non-technical subject-matter really is a nightmare.

              A basic example is software. Some believe that all software is technical, since it runs on machines and it is written by people called “sofwtare engineers”. Others believe that no software is technical at all, because it is intangible. Courts distinguish technical from non-technical software. programmers may agree on first sight: writing an operating system is technical, writing a general ledger application is non-technical. But a system for secure transactions using cryptography? “Transaction” sounds like business, cryptography like technology (or rather mathematics – and it is another debate whether mathematics is technology or basic science). Spell- and grammar checking is linguistics, non technology, but if it is to be done realtime it requires a smart (technical) aalgorithm (German BGH Suche fehlerhafter Zeichenketten decision, 2001).

            8. Take your European perspective and integrate a proper understanding of US law.

              Your “philosophical” bias is well known – need I again show that quote from some, what, 8 years ago exhibiting your outright h@t red of patents?

              You.
              F00l.
              No.
              One.

            9. American patent critics have often written that patents ought to be limited to technology

              More koolaid and no place in US law.

              If you want that changed, contact your Congressman.
              Oh wait, you are not even a citizen.

          2. Ivory Towerism

            What does that term mean? Please define it for everyone so we can begin to understand your bizarre views about the world.

            1. I posted a link to the meaning of the term previously, and your vaunted “English a s first language” skills should be able to figure out the use here with the addition of “ism.”

              Try again.

            2. I posted a link to the meaning of the term previously

              I must have missed that or, more likely, the link was directed to some Repukkke website that I’ve no interest in perusing.

              Please post your definition again. You’re a proud sincere person who is very serious about these matters. This shouldn’t be a problem for you at all.

            3. First – you WRONGLY assume that my political stand aligns with your slur.

              Second – Since you (FALSELY) claimed that you read a full decision AND all of my comments pertaining to copyright ever posted on this blog awhile back in under four hours, I will leave the burden on you.

              My posted link is in the archives (and is easy enough to google on its own merits).

              Try again.

          3. US Law explicitly allows business methods

            Maybe some of them, but certainly not all of them.

            But go ahead and define the term for everyone. Give us your definition of what kind of “business method” is eligible for patenting and give us an example of a kind that is not eligible for patenting.

            Go ahead and define it for everyone so we can all see where you’re coming from.

            1. Abstract business methods are not patentable. As we are getting towards the end of the 2013-2014 term, the Supreme Court will soon answer the question what “abstract” means in CLS v. Alice.

            2. Reiner: Abstract business methods are not patentable. As we are getting towards the end of the 2013-2014 term, the Supreme Court will soon answer the question what “abstract” means in CLS v. Alice.

              The lynchpin is novel physical structure or a physical transformation achieved by novel steps.

              Eventually we’ll get there, one way or the other. And regardless of how we get there, these same old-timers are going to howl about it how unfair it is. And they’ll be wrong and the world will keep turning and people will still innovate and we’ll still have patents.

            3. Maybe some of them, but certainly not all of them.

              Nice strawman – no one ever said ALL.

              BTW, I am long on the record concerning this point, and this applies EQUALLY to any of the other categories.

              Pay Attention.

            4. “Maybe some of them, but certainly not all of them.”

              Nice strawman – no one ever said ALL.

              Great! So you agree that some “business method” patents are not eligible for patenting.

              Please describe for everyone a general class of such patents that are not eligible. Show everyone that you have a brain that works in an honest, sincere way.

            5. The lynchpin is novel physical structure or a physical transformation achieved by novel step

              Lol – distinguish that from the (9-0 Baby) Bilski holding that MoT is not required.

              Thanks in advance for the silence.

            6. @MM: Unfortunately “a novel physical structure or a physical transformation achieved by novel steps” is not the proper criterion. In Cochrane v. Deener (1877) it was decided that a transformation is sufficient even if no new machine is nvolved. Later decision by the CCPA (In re Ernst, 1934, In re Prater II, 1969) have explained that Cochrane must not be interpreted as a physicality requirement.

              Frankly, there is some ecnomic logic to it. A “transfomation” typically is a process of adding value (if it is no destruction ;)), and value can be added as well in the non-physical realm.

              Incidentally, I recall an amicus brief (I guess it was for Bilski in the CAFC stage) in which prof. Duffy argued that business transactions eventually have an effect in the physical world at all. If that is true, the criterion of physicality is not just wrong but unhelpful as well.

            1. .. and if so, should the (technical) product involved be novel and non-obvious?

              I can’t wait for the CLS v. Alice decision.

            2. Enough – is enough.

              As long as you recognize the fundamental difference – and integrate this into your posts in an intellectually honest manner we will be fine – ok pumpkin?

            3. anon, you know, someone ought to cite Russell to the Supreme Court. The problem with printed matter, which was the novel subject matter in that case where the claim was to a “directories,” an otherwise tangible manufacture, is that the novel subject matter was neither a machine, manufacture, or composition of matter.

              Now I suppose you are going to tell me that novel subject matter that does not involve a machine, manufacture or composition of matter is statutory?

              Next you are going to tell me that a business is a machine, or a manufacture, or composition of matter.

              I wonder how the courts got it so clear and so right in cases such as Russell and cannot get it right since?

            4. Ned, your understanding of Russell is simply DEAD WRONG – as I explained to you in simple set theory.

              Pleasw stop attempting to dissemble that Set B is Set A.

            5. @anon Yes of course. Incodentally, it is questionable whether the EPC requires technology. Since 2007, Art. 52 EPC contains the phrase “in all fields of technology”, copied from Art. 27(1) TRIPS, but “all” is not “only”, and in TRIPs it definitely means “all” (in particular including medicines, which was not the law in 1995 in many WTO member states).

              The technology requirement is a German tradition. It is often related to the German Federal Supreme Court “Red Dove” decision (1969), but this very decision actually de-emphasizes the technology requirement, and focusses on repeatability, a condition not met in the particular case. The orginal 1973 EPC does not contain a technology rquirement since it was not commonly understood as a requirement by the contracting states,

              A British court once noted that the technology requirement is a “restatement of the problem in more imprecise terminology” (Aerotel, 2006). That matches the occasional German perception that definespatentable subject-matter as “technical” (in the legal sense).

              “Useful” is supposed to be synonymous to “susceptible of industrial application” (Art. 57 EPC), at least according to a footnote in TRIPS. This EPC provision is hardly a hurdle, if only because of its expansive language (“including agriculture”). Still it has been argued that application in free professions (doctors, attorneys) would not qualify as “industrial application”.

            6. The concept of “repeatability” and non-technology was also previously explored when Malcolm tried to make a snide concept concerning the scientific method in relation to business methods.

              He disappeared (of course) with his tail between his legs when I started discussing Deming et al and pointed out that business methods very much use the scientific method in their conception and evolution to more inventive states.

    2. Age and retirement…

      Your stance is entirely conflicted – you give NO reason why a Justice should be evaluated differently than a judge as to age.

      Further, the average age of the Court is nearly 68 and a half. By that measure, the Court as a whole should be retired. Only Alito, Sotomayor, Roberts and Kagan would remain with a 65 year mandatory retirement; Thomas just relatively recently broaching the cusp and Breyer, Scalia, Kennedy and Ginsburg well past their expiration dates.

      1. It is just a striking difference. Perhaps it is nice that in the US still the wisdom of elderly people is valued, wheras in my country you often hear “it is time for a new generation now”.

        Are elder people more conservative? Or are they rather trying harder to be “modern”? Their experience may be a benefit (they have it all seen before), but may also prevent them from trying again when that is useful.

        AFAIK it is not done to be disrespectful on the U.S. Supreme Court as an institution. In my country, courts are under pressure from right wing “populist” politicians, who blame them to be “politicians in robes”. And then it does not help if judges are said to be “fossiles”, not connected to the modern world.

        1. It is only a “striking” difference if you squint your eyes and want to see only that which you want to see.

          In other words, there is no difference – at least you have not yet provided a difference as to why age would matter for a judge but not the same way for a Justice.

          (it is your inconsistency here that I am drawing attention to Reinier)

  6. I understand doing what one finds enjoyable. But I always thought that Rader really believed in what he was doing as a judge.

    Perhaps part of the reason he departs is that the Supreme Court does not seem to agree with some of his positions, see, e.g., Prometheus and Akamai.

    Perhaps he does not want to be on a court that has to implement decisions with which he fundamentally disagrees.

    Perhaps he ought to write think pieces, or law review articles, that might illustrate why he is right and the Supreme Court wrong. If enough people agree, congress might do something.

  7. Great post, Professor. Thanks for sharing the IAM link. I am sure that Professor Rader will continue to challenge and inspire his students with his quick wit and passion for patent law.

  8. The article says:

    “It’s fair to say, I think, that Rader commands a great deal of respect among IP practitioners around the world and also inspires a large amount of affection.”

    While that may be true, it’s certainly not the whole story…

    1. What is the whole story, Joe? The man dedicated most of his entire life to improving the patent system, here and abroad. He is beloved by many.

      1. The man dedicated most of his entire life to improving the patent system

        And yet like so many others he found it impossible to do the right thing when push came to shove.

        Now that Rader is imminently off the bench, I look forward to hearing him explain how in the world a “dedicated” person like him could believe for one second that adding an old data-gathering step to an ineligible step of thinking about some “discovery” could possibly be patent eligible, or that merely reciting the words “on a computer” along with a generic information processing “paradigm” somehow cures all subject matter eligibility ills.

        Anybody’s guess when that will happen? Just kidding.

        We all know that’s never going to happen.

        1. That’s okay, MM, I’m still waiting for you to explain why the first guy who claims a physical disk in his hand has structure, but the second guy to claim that same disk and recites the same structure but also says that the disk has data stored on it, well, the disk transforms into vapor/ether/unpatentium and is no longer an apparatus.

          Lol.

          If you can’t see that yours is the ridiculous legal fiction, well, then there is no help for you…

          1. Do not expect a cognitive reply from Malcolm.

            Last time he tried his hand at actually holding an intellectually honest discussion on the merits, he volunteered an admission against interests in knowing the controlling law as to the exceptions to the printed matter doctrine (note to 6, it was NOT a typo).

            Malcolm does not address these types of points that go to the heart of the software as patent eligible discussion because he has no facts to pound (nor has he any law to pound). He will only pound his table of subjective “policy”/opinion. We should all listen (at least once) to Malcolm express his opinion, but we should also demand more in any conversation with him – because a conversation is NOT a mere soapbox.

          2. I first started using the name “Mellow Marsher” several months ago to poke just a small bit of fun at NWPA who in a comment said something about “marsh mellows” (I don’t remember any of the other context of that comment).

            In any event, the above “Mallow Marsher” is not me, i.e. not the person who swings by from time to time to comment as Mellow Marsher.

            1. Thanks Mellow,

              I too have noticed a duplicate nym user of late. I suspect the same person (and also suspect that this person used to post some entertaining – albeit unrelated to patent law – gifs).

            2. Yes, I recall you once made some reply that implied I was that giftastic commenter.

              I tried several times to reply to that one to rebut your comment and finally gave up since it did not seem to be going through despite being typically mildly worded.

              My comments seem to sit, minimum, 2 hrs awaiting mod, and the bulk of them eventually disappear non-posted.

            1. What, is this some sort of trick question?

              The data is new and the disk, to the extent the act of recording the new data onto changes its physical structure (thinking surface pits in the mirror band) now has a new physical structure.

              Why?

              Also, were you addressing me or the poseur?

              If so, get the names straight, please.

            2. You also miss the CRITICAL functionality thingie.

              I can only think that you are doing this on purpose, as I have carefully explained this to you and your purposeful trying to advocate otherwise appears unethical.

  9. David, great post. Chief is a special guy. I don’t think I’ve met anyone as dedicated to improving the patent system (here and abroad). I hope he stays involved (and have a strong suspicion he will).

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