Bilski v. Doll: Round I of Amicus Briefs

Bilski v. Doll (on petition for writ of certiorari 2009)

In a 2008 en banc decision, the Federal Circuit affirmed a Patent Office ruling that Bernard Bilski’s claimed method of hedging the risk of bad weather through commodities trading was not patent eligible under Section 101 of the patent act. The Court applied a “machine-or-transformation test” as the only test to be used in determining whether a claimed process is eligible for patenting under § 101. The decision holds that a claimed process either (1) be tied to a particular machine or apparatus or (2) transform a particular article into a different state or thing. Although the Court identified the Bilski test as the only test, it added two corollaries: (1) the addition of a mere field-of-use limitation without other meaningful limits on claim scope will not render a method claim patent eligible; and (2) insignificant extra-solution limitations will not render a method claim patent eligible.

Bilski has petitioned the Supreme Court to hear its appeal and look at the question of patentable subject matter for the first time in a generation. Diamond v. Chakrabarty and Diamond v. Diehr together opened the door for broader patent eligible subject matter. Notably, Justice Stevens – author of the Diehr dissent – is the only justice still on the bench. Bilski’s petition asks two questions:

1.       Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing … despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

2.       Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.

The first round of Amicus briefs – those supporting the petition – have now been filed. The PTO’s briefs and briefs in opposition to the petition are due in early April.

Amicus Briefs Supporting the Petition (I have not reviewed all of these, but wanted to post them for public consumption):

44 thoughts on “Bilski v. Doll: Round I of Amicus Briefs

  1. WHAT HAPPENED TO THE ROUND II AMICUS CURIAE BRIEFS OPPOSING THE CERTORIORARI? I THOUGHT THEY WERE LOND DUE?

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    Reply
  3. Hey I happen to know the owner of King Pharma, he lived near me back when, his wife and my mom were buds. Great to see em suing up a storm lol. They were the little guy back then.

    “King’s revenues have grown from $13 million in 1994 to over $2.1 billion in 2007. King’s common stock trades on the New York Stock Exchange under the symbol “KG,” and is a component of the S&P 500 Index and the AMEX pharmaceutical index.”

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  4. “It would be interesting to see Mooney’s take on this case as Bilski is applied to shoot down a ‘biotech’ application, specifically noting that the court decided that the act of informing a patient is unpatentable.”

    Shades of Metabolite dissent. . .

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  5. Possible introduction of new topic (but related to Bilski):

    King Pharmaceuticals, Inc. v. Eon Labs, Inc., Case No. 04-cv-5540 (E.D. N.Y., Jan. 20, 2009) (Trager, J.).

    It would be interesting to see Mooney’s take on this case as Bilski is applied to shoot down a “biotech” application, specifically noting that the court decided that the act of informing a patient is unpatentable.

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  6. “Did you notice that mention of extrinsic evidence? How many examiners have you seen point to extrinsic evidence to support their inherency argument?”

    Learn the definition of extrinsic evidence moro n.

    link to books.google.com

    Extrinsic evidence includes: expert testimony, inventor testimony, dictionaries, treatises, and prior art NOT CITED in the prosecution history.

    Also, maybe you didn’t notice, but it doesn’t say that the examiner must point to extrinsic evidence to support inherency. The extrinsic evidence can support inherency just fine without anyone pointing to it. But if that is included that comes at final time :) And is only included for kicks.

    Learn to read. Then you’ll know the law.

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  7. I am having trouble understanding what the difference between software inventions and traditional inventions are.

    With a full understanding of math, physics, biology, etc, aren’t all inventions obvious, MM? You single out software, because you say they are instructions transferred from a human to a “thinking machine.” If you believe computers can think, then we have a first problem. They cannot. They run the instructions given to them. Those instructions themselves are implementations of formulas and algorithms, just like a traditional invention is an implementation of algorithms and formulas. When confined to a specific use, a software patent, just like its traditional counterpart do not take up the entire field that that particular algorithm can be performed and they link it to a very practical use. In those instances they do not preempt mathematical algorithms, so they are not merely abstract ideas.

    Additionally, MM, you just attacked business method patents because of the results of the use of certain new business methods. In the same ilk, would you attack the patentability of new weapons for the ability to cause harm?

    In previous posts you attack software engineers as if their work was not “worthy” of patentability like those in the electrical or mechanical arts are. I don’t understand why some fields are somehow better than others in your eyes.

    I agree with you, that a lot of software and business methods that we hear in the news should not have been able to be patented. But, I think that those fringe cases are prime examples of § 102 and § 103 rejections.

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  8. “espousing their distain for the system and American innovation in the new non-traditional value-creation industries.”

    BWAHAAHAAHAHAHHAAHHA!!!!!!

    Value-creation industries? Omigod I’m laughing so hard I’m going to puke!!! LOLOLOL.

    Remember when patent prosecution used to be about protecting inventions?

    But then, sometime in the 80s, it started to turn into something else, with a vengeance. It turned into a “value-creation business.” And that business attracted a lot of people and became a little universe unto himself. Unfortunately, that universe expanded too quickly and now, like a red giant, it is collapsing into a brown dwarf. And the folks who leveraging the least to gain the most are really, really having a hard time coping with it.

    Here’s the great Alan Greespan again:

    “Innovation has brought about a multitude of new products, such as subprime loans and niche credit programs for immigrants. Such developments are representative of the market responses that have driven the financial services industry throughout the history of our country … With these advances in technology, lenders have taken advantage of credit-scoring models and other techniques for efficiently extending credit to a broader spectrum of consumers. … Where once more-marginal applicants would simply have been denied credit, lenders are now able to quite efficiently judge the risk posed by individual applicants and to price that risk appropriately. These improvements have led to rapid growth in subprime mortgage lending; indeed, today subprime mortgages account for roughly 10 percent of the number of all mortgages outstanding, up from just 1 or 2 percent in the early 1990s.”

    Wake up, people. This isn’t just about you.

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  9. “Large parts of electronics deal with information, certainly audio and communications do, whether digital or not. The basic problem is that it is becoming less and less necessary for the hardware to be different to get a new and unobvious outcome.”

    Thank you, Alun. You’ve unintentionally wrapped up the major issues in patenting computer-implemented methods, i.e., they are claims to abstract ideas, albeit ideas that are implemented by a thinking machine instead of a thinking human; and there are never any unexpected results. While the ideas may be novel, in almost every case they are more obvious than the most obvious mechanical case ever issued.

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  10. “It could also mean that you don’t understand the art at the level of the Examiner. I’m not saying that *all* Examiners are correct when they argue inherency or implicit teachings; I’m just arguing that *some* Examiners know what they’re talking about, and you may not always be right, as arrogantly proposed.”

    From MPEP 2112:

    “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.'” In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999).

    Did you notice that mention of extrinsic evidence? How many examiners have you seen point to extrinsic evidence to support their inherency argument?

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  11. linda,

    In America we also condon the likes of MM. What is wrong with the patent office and is increasingly going to affect US innovation and R&D investment, are examiners like MM or ones that think like MM, as they think they know the law better than any court including the Fed Circuit and Supreme Court, manipulate the evaluation system to not do the job they are paid to do by failing to perform anything other than a key word search, cut and paste, fail to search and analyze the independent claims by issuing needless restriction requirements on every dependent claim because they may have to make an effort, and spend their time on Blogs espousing their distain for the system and American innovation in the new non-traditional value-creation industries.

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  12. Hello!
    I am currently writing a paper for law school on Bilski intertpreting 35 U.S.C §101 (“particular machine” and “insignificant postsolution activity”) in comparison with Art. 52 EPC and the EPO Technical Board of Appeal. I also touch a little on §103 v. Art. 56 EPC.

    If any of the knowledgeable posters of this blog volunteered to review my first rough draft, I would appreciate it a lot. I am, naturally, interested in MaxDrei’s opinion regarding the EP portions.

    If you are willing to review my paper, please send your email address to:
    limanachick [at] gmail [dot] com

    Thank you!

    Reply
  13. “When an Examiner starts arguing inherency or that a teaching is implicit, you know you’ve won.”

    It could also mean that you don’t understand the art at the level of the Examiner. I’m not saying that *all* Examiners are correct when they argue inherency or implicit teachings; I’m just arguing that *some* Examiners know what they’re talking about, and you may not always be right, as arrogantly proposed.

    Reply
  14. Large parts of electronics deal with information, certainly audio and communications do, whether digital or not. The basic problem is that it is becoming less and less necessary for the hardware to be different to get a new and unobvious outcome. So, if we can’t patent the software, then new advances are rendered unpatentable by the improved technology. We might still be able to get a patent for doing the same thing using vacuum tubes, perhaps?

    It would certainly suit some people if the demand for EEs dropped of a cliff and only chemical patent attorneys/agents had good job prospects, naming no names.

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  15. I might would agree that there is a chance MM is an examiner but his understanding of 112 6th is far and away better than that which pretty much all examiners I have met have. Including some that lecture on the subject. This coupled with his strong desire to be abrest of changes in the law are to me overwhelming evidence of being an attorney. (I’m here mainly for the lulz, not the being abrest of changes, but that’s a bonus). And I don’t see how the pittance of evidence of things such as his not liking software patents and being averse to patenting in some electronics fields as well as rather um, creative, interpretations of some caselaw would speak stronly enough to overcome the other evidence. It could be that he is an examiner turned attorney. That I might would believe.

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  16. I totally agree that MM is an examiner.

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  17. “Word of the Day: implicit.”

    When an Examiner cannot find evidence to support their findings, they assert that the evidence is “implicit” within the teachings of the prior art.

    When faced with an intractable problem – wave your hands in the air (like you just don’t care), drop a few dung-related bombs, and argue that everything is implicit.

    When an Examiner starts arguing inherency or that a teaching is implicit, you know you’ve won.

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  18. Derek,
    Yes, this is the USA, anybody can file an amicus brief. And anybody can go to law school.

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  19. Two more points, the “overweening” claim issue requires a bit more interpretation than the other issues (means/ends? what’s the difference? kind of like the old civil pleading difference between the “ultimate” element, which you can’t plead, and the supporting elements, which you must). Also, the overweening claim is really a scope issue (better handled under Sec. 112?)

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  20. Some of the briefs posted here are truly impressive. I particularly liked the briefs by the Boston Patent Law Association and John Sutton.

    The Boston brief did an excellent job explaining why the Federal Circuit’s two-prong test was unduly limiting and harmful to innovation. I particularly liked their specific examples of acclaimed patents that would not have passed muster under the two-prong test (pp. 14-19). Also, their explanation of just how patents are important to small firms and how “paradoxically, monopoly may evoke competition” was outstanding (pp. 20-22).

    I was wondering if anyone would ever cite Tarczy-Hornoch. I could hardly believe it when I saw Sutton’s brief, who explained that he had briefed and argued the case before the venerable Judge Rich. It is really an honor to hear from someone associated with this excellent 1968 opinion. I won’t go further into the points Sutton makes, but his brief, like the Tarczy-Hornoch opinion, is a model of clear-thinking in this area.

    Despite the multiplicity of cases in the Sec. 101 area, I think it basically boils down to this. There are certain things you just can’t patent, stuff like laws of nature, natural phenomena, purely scientific or mathematical principles, and purely mental processes (or, if you will, “abstract ideas.”)

    The best explanation for why you can’t patent the first three, I think, is that such laws or principles are already inherently “out there” and so belong to everybody (or, as it’s sometimes put, they belong in the common storehouse or treasury set aside for benefiting all humankind). Really, this reduces to a kind of “it’s old” or non-novel argument. Perhaps the best reason you can’t patent the last two, purely principles or abstract thinking, is we can’t regulate thinking (e.g., how do you prove what someone is thinking), and probably wouldn’t want to if we could (how does someone innovate “around” or “beyond” a patent if they can’t even think about it). (Granted, the result of abstract thinking is likely not a “useful art” as the Constitutional framers envisioned it.)

    The problem in Benson was that the Court seemed to be facing the purely mathematical principles problem when, in fact, the case dealt with yet another type of “ineligibility” issue. The problem in Benson was that it appeared the applicant was trying to claim the desired “end” result without limiting the claim to the applicant’s particular solution or “means” for achieving that result. Congress can grant patents to “promote” the useful arts, and the thought here seems to be that if an applicant can tie up the desired result without limiting themselves to the particular solution (or technical contribution) by which they achieve the result, this will clearly NOT promote new (or transformative discoveries)that would allow reaching the same result. This is what all the talk in Benson about “preempting” all uses of the algorithm was about. To really grasp the problem of the overreaching claim (claiming the end, not the means), it is instructive to read Judge Rich’s opinion in Tarczy-Hornoch, in particular, his mention of the following “notorious” and “overweening” claim at issue in the Wyeth case “It is claimed as new, to cut ice of a uniform size, by means of an apparatus worked by any other power than human.”

    The Federal Circuit was right to focus on the preemption issue but its reduction of the principle to a two-prong test misses the mark (well, it did have to deal with the particular language of the unhelpful Benson opinion).

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  21. Some of the briefs posted here are truly impressive. I particularly liked the briefs by the Boston Patent Law Association and John Sutton.

    The Boston brief did an excellent job explaining why the Federal Circuit’s two-prong test was unduly limiting and harmful to innovation. I particularly liked their specific examples of acclaimed patents that would not have passed muster under the two-prong test (pp. 14-19). Also, their explanation of just how patents are important to small firms and how “paradoxically, monopoly may evoke competition” was outstanding (pp. 20-22).

    I was wondering if anyone would ever cite Tarczy-Hornoch. I could hardly believe it when I saw Sutton’s brief, who explained that he had briefed and argued the case before the venerable Judge Rich. It is really an honor to hear from someone associated with this excellent 1968 opinion. I won’t go further into the points Sutton makes, but his brief, like the Tarczy-Hornoch opinion, is a model of clear-thinking in this area.

    Reply
  22. “That’s funny. I’ve read KSR several times and it doesn’t mention section 101. ”

    Word of the Day: implicit.

    Look it up.

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  23. Mooney said:
    “‘Did KSR have anything to do with 101 issues?’

    Yes, insofar as the Supreme Court was acknowledging in KSR that a lot of crxp claims were being filed and issuing and the nonsense needed to stop.”

    That’s funny. I’ve read KSR several times and it doesn’t mention section 101. Not even once. See 550 U.S. 398 (2007), or link to slip opinion:
    link to supremecourtus.gov

    A few of the cases KSR cites mention 101 only in passing, but never in the context of Bilski, Benson, Flook, Diehr or Chakrabarty. Obviousness is pretty much entirely separate from eligible subject matter.

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  24. “How does one qualify to write an amicus brief? The list seems to indicate that anyone really can. Is there not a standard?”

    Anyone can. I was going to, but I just felt like the SC has got this one on lock already so why waste my time?

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  25. JV “If they convince you that your on the right side, that’s all well and good, but if you want to persuade Scalia, Thomas, and Breyer, I’d skip the science lesson.”

    Like 99.9999999% of people on the planet, including nearly every Ph.D. scientist alive, the Supreme Court never wants or needs to hear an argument for the equivalence of information and matter.

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  26. We get questions.

    “Malcolm, is it your position that man made compounds comprising amino acids should be patentable but man made signals comprising electrons should not be?”

    Yes. It’s also the position of the Supreme Court and the Federal Circuit and most people who aren’t financially invested in different outcome.

    “Taking it a step further, how do you feel about patenting gene sequences,”

    I agree with the courts and the PTO and most human beings on earth that gene sequences are not patentable. Novel isolated polynucleotides with unpredictable but desirable properties are patentable, however, and I think that’s reasonable.

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  27. “Did KSR have anything to do with 101 issues?”

    Yes, insofar as the Supreme Court was acknowledging in KSR that a lot of crxp claims were being filed and issuing and the nonsense needed to stop.

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  28. How does one qualify to write an amicus brief? The list seems to indicate that anyone really can. Is there not a standard?

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  29. I think Mooney’s DOA comment is on the mark and I’m personally included to be favorable to the amici position.

    Technical arguments that electrons, quarks, or muons are not abstract aren’t going to carry the day in what is ultimately a policy call regardless of how those arguments resonate with engineers and scientists. If they convince you that your on the right side, that’s all well and good, but if you want to persuade Scalia, Thomas, and Breyer, I’d skip the science lesson.

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  30. Willis asked:
    “Is it not clear that Scalia doesn’t understand the patent procuremnt process?”

    As someone who attended the KSR oral argument, I’m afraid the answer is “yes.” It was embarrassing when Scalia kept hounding the respondent’s counsel “Why do you keep bringing up Asano?” Counsel (IIRC Thomas Goldstein) kept trying to explain that the petitioner pointed to Asano as the closest prior art, but it was obvious (pun intended) that Scalia didn’t understand the basics of patent prosecution or litigation.

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  31. “JUSTICE SCALIA: It produces more patents, which is what the patent bar gets paid for, to acquire patents, not to get patent applications denied but to get them granted. And the more you narrow the obviousness standard to these three imponderable nouns, the more likely it is that the patent will be granted.”

    Is it not clear that Scalia doesn’t understand the patent procuremnt process?

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  32. QUOTE FROM MALCOLM MOONEY: “Anne Barschall[‘s argument that just because] ‘You can’t see electricity or quantum particles … does not make them abstract ideas’ is DOA.”

    Malcolm, is it your position that man made compounds comprising amino acids should be patentable but man made signals comprising electrons should not be?

    Taking it a step further, how do you feel about patenting gene sequences, i.e. is the “discovery” of a gene sequence already in existence worthy of patent protection but a discovery of some other naturally existing phenomenon is not? Or is it merely a new use for a gene sequence that is patentable, and if so why do you feel a use for a natural phenomenon should not be patentable?

    Note that I am not necessarily for or against any of these propositions, I am merely curious as to your rationale.

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  33. You attorneys should be begging Bilski to drop the matter before the SC rips your precious 101 patentable subject matter a new one.

    And yes Jen, comments are routinely not published, you have to copy your comment and then make sure it posted. If not, paste it back in and post again. I think this is tyeppads new spam filter at work. It is the only reason I can think of.

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  34. Huh. My first comment disappeared. Anyone else having that problem?

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  35. And while I am not crazy about KSR, it is because it replaces a nice bright line test with a vague set of considerations. As law, it actually makes a lot of sense. A lot of factors really ought to go into determining whether an invention is obvious or not.

    Bilsky doesn’t make that kind of sense.

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  36. I do a lot of signal processing patents, and I would really like to see Bilsky go away. Yeah, I can include what the signal does after it is processed in the claim, but that often means two different parties contribute to infringement, or that the end user is the infringer. Along the lines of Anne Barschall, signal processing is engineering, not magic.

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  37. Did KSR have anything to do with 101 issues?

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  38. “JUSTICE SCALIA on the strict TSM test: It produces more patents, which is what the patent bar gets paid for, to acquire patents, not to get patent applications denied but to get them granted. And the more you narrow the obviousness standard to these three imponderable nouns, the more likely it is that the patent will be granted.”

    That is some serious cutting through the crap. And the patent in KSR was undoubtedly patentable subject matter.

    Bilski ain’t gettin’ anywhere.

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  39. “Dennis, do you agree that this is a very weak list of supporting briefs that doesn’t bode well for the Supremes taking this up?”

    Chris – after reading them (and, yes, looking at the names on them), I think “very weak” is wrong. I’d put them closer to “average strength.” Although, I’m thinking that any non-solicitor Amici for granting cert can only improve probabilities of grant, if anything.

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  40. Anne Barschall: “Anne Barschall: The Supreme Court appears to have some “prejudice against electronic devices [as evidenced by] both Benson and Morse.” Its not magic, it is engineering. You can’t see electricity or quantum particles but that does not make them abstract ideas.”

    This argument is DOA.

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  41. Imagine what would happen if the Supremes took the case and asked for briefing on the issue “Are business methods and purely software related claims patentable subject matter per se?”

    I’m guessing at least 4 justices would like to see the case qued up this way.

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  42. Dennis, do you agree that this is a very weak list of supporting briefs that doesn’t bode well for the Supremes taking this up?

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  43. MR. GOLDSTEIN: Justice Scalia, I think it would be surprising for this experienced Court and all of the patent bar — remember, every single major patent bar association in the country has filed on our side —
    CHIEF JUSTICE ROBERTS: Well, which way does that cut? That just indicates that this is profitable for the patent bar.
    (Laughter.)
    MR. GOLDSTEIN: Mr. Chief Justice, it turns out that actually is not accurate.
    JUSTICE SCALIA: It produces more patents, which is what the patent bar gets paid for, to acquire patents, not to get patent applications denied but to get them granted. And the more you narrow the obviousness standard to these three imponderable nouns, the more likely it is that the patent will be granted.

    Reply

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