Are the Courts Correct in Their Assumption that a Patent Issued on Non-patentable Subject Matter is Invalid?

By David Hricik, Mercer University School of Law. (Note – this is an update of the essay posted last week on the Patent Ethics site.)

I forget when I first thought about this, but it’s been a while. With all the discussion of Prometheus (sadly, the case, not the film, which was great), I figured this was a good time to raise it. At minimum, there’s a litigable question here, and assumptions that a patent issued on non-patentable subject matter is invalid need examination. I’d love to be wrong about this, but I don’t think I am.

Some History.

I have not scorched the earth, but from what I can tell no court has squarely addressed the question of whether the Patent Act allows a court to deny enforcement (on any ground) of a patent granted on subject matter that is not within Section 101. Instead, what the cases showed me was that law developed in the context of challenges to the USPTO’s denial of a patent have been used to invalidate issued patents – without analyzing the statutory authority to do so.

Let’s take a look at what most people assume is the law and see if we can get there: does the Patent Act allow a court to invalidate a patent that does not claim patentable subject matter?

Section 282

The starting point is 35 USC 282. It provides in pertinent part:

The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:

(1) Noninfringement, absence of liability for infringement, or unenforceability,

(2) Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability,

(3) Invalidity of the patent or any claim in suit for failure to comply with any requirement of sections 112 or 251 of this title,

(4) Any other fact or act made a defense by this title.

Federico’s commentary, often relied on to indicate Congressional intent, doesn’t help at all, but here it is:

The defenses which may be raised in an action involving the validity or infringement of a patent are specified in general terms, by the second paragraph of section 282, in five numbered items. Item 1 specifies “Noninfringement, absence of liability for infringement, or unenforceability” (the last word was added by amendment in the Senate for greater clarity); this would include the defenses such as that the patented invention has not been made, used or sold by the defendant; license; and equitable defenses such as laches, estoppel and unclean hands. The second item specifies “Invalidity of the patent or any claim in suit on any ground specified in Part II of this title as a condition for patentability”; this would include most of the usual defenses such as lack of novelty, prior publication, prior public use, lack of invention. The third item specifies “Invalidity of the patent or any claim in suit for failure to comply with any requirement of section 112 or 251 of this title”; the first section mentioned would include the defense of insufficient disclosure, and the second sentence mentioned would include reissue defenses. The fourth item merely specifies “Any other fact or act made a defense by this title.” All the defenses usually listed in textbooks on patent law may be placed in one or another of the enumerated categories, except a few which are no longer applicable in view of changes in the new statute.

Section 101.

Section 101 is relied upon as the basis for invalidating patents. It states: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

While clearly granting power to the USPTO to issue patents on “new and useful” processes, it obviously also limits the USPTO’s power to do so.

The question here is not patentability, but validity. Simply, suppose the USPTO makes a mistake, and issues a patent on non-patentable subject matter. Is this a defense to infringement?

In my view, the answer is “no.”

Analysis.

Let’s start with the two specific subsections, because they make us focus on the text and show some very deliberate choices by Congress that easily could have gone the other way had Congress intended 101 to be a defense.

The second subsection of 282 is probably the most important: “Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability.”

Section 102 and 103 are “conditions of patentability.” They say so in their titles, and they are substantive legal conditions (technically, I’d call them “conditions of unpatentability” given the burdens of proof, but this works). The fact that 101 is not a condition of patentability is to me is very important: Congress chose in 282(2) to specify that only those things denominated as “conditions of patentability” are bases for invalidity. It then chose to label 102 and 103 as conditions, but not 101. Those are deliberate choices. In my view, a patent issued on non-patentable subject matter is not “invalid” under the second provision.

Subsection 3 of Section 282 is easy to apply to this question, but it is important because it also adds to the evidence that 101 is not a defense. Patentable subject matter is in 101, not 251 or 112. So that part’s easy: 282(3) doesn’t list 101.

But the important point, again, is that Congress deliberately thought about what should be invalidity defenses, and what should not, and left out 101 not just as a “condition of patentability,” but also in this specific paragraph, where it “caught” some strays. It left out 101. That says a lot.

Two down, two to go.

Now we’re left with arguing that, although it thought about what should be invalidity defenses in two different places, nonetheless we should imply that Congress meant to include it in some amorphous language in the other two subsections. We’re fighting uphill.

Let’s go to the first catch-all type subsection: “Noninfringement, absence of liability for infringement, or unenforceability.” Logically, I can’t make patentable subject matter fit, at all. Before explaining why, let’s be clear on the consequences of saying that Section 101 is within this section: it would be that the patent is valid but there would be no infringement.

“Unenforceability” is the easy one. The cases and legislative history I’ve read show this was designed to capture equitable doctrines like patent misuse and, arguably, inequitable conduct (long diversionary story there). We’d be straining to put 101 there.

Federico’s statements that the defendant hadn’t made the product, or had a license to do so, show that “infringement” means what we think it means. A licensed patent is valid, but “not infringed.” A patent that the defendant never violated is valid, but not infringed. So, I can’t make “noninfringement” logically work or work without giving words a very unnatural meaning.

Now the only arguable catch-all, subsection 4: “Any other fact or act made a defense by this title.” Here we are, trying to read it into the catch-all that, even Federico says, “merely” specifies things in the statute that are made defenses. But, section 101 is not made a defense by this title. Instead, it specifically points to other requirements and conditions. Again, if this were easy and clear, Congress would have put in 101 “it shall be a defense to patent infringement that…” or put 101 in Section 282.

So, tell me why I am wrong.

Let me get rid of some easy ones: no court I’ve found has ever addressed this issue. I think it’s pretty simple, but there you go. Second, don’t conflate patentability with infringement defenses. There are lots of things that can affect patentability that aren’t in 282. Third, 282 is exclusive: if you want so suggest that it’s not, you (a) have to say “Congress enacted a specific statute laying out defenses, but it’s just a guide” which is not in my view defensible; and (b) it says “shall be defenses,” not “may include” or some-such. Third, this is a relatively new “defense.” I can’t say I’ve scorched the earth, but in looking at CAFC cases it has only been raised a few times.

220 thoughts on “Are the Courts Correct in Their Assumption that a Patent Issued on Non-patentable Subject Matter is Invalid?

  1. IANAE,

    "Suppose you get a claim to "The Arrhenius equation". Clearly doesn't fit any of the statutory classes, clearly a 101 violation, but what's the 112 problem? The claim is perfectly definite and enabled, its metes and bounds are clear, and anybody using the claimed equation will know whether they infringe."

    The equation is a still a process.  The problem of lack of practical utility, though, is a 112 problem.  Practical utility requires a physical example, and the claims have to limited to those physical examples and equivalents.  Otherwise the claim scope is not enabled.  See, O'Reilly v. Morse.

    Suppose I claim a machine with process steps.  112.

    Suppose I claim a new song.  112 — how do you make and use a new song?

    Suppose I claim a new program that calculates something abstract, like risk.  112  – build one.

    Suppose I claim a beautiful rose?  112   Indefinite.  When something takes place in the mind, one cannot determine infringement.

    Suppose I claim correlations between metabolites and the need to increase or decrease dosage.  112  Mental step, see above.  Also, any  claim to information is abstract.  How does one make one?  The thing patented must be physical or produce something physical.

    Give me something that doesn't have a 112 problem if it also has "101" problems.

  2. How come suckie and anon always agree with each other? How come anon never argues with suckie?

    It’s so … mysterious.

  3. “Wrong.”
    No … correcting an issue under 101 is a mere formality in most instances — oftentimes handled as an Examiner’s Amendment in which the insertion of a just single word is oftentimes sufficient to address the issue.

    Also, best mode is less of a formality than 101. You cannot simply correct a best mode issue by amendment (or certificate of correction or reissue). To correct a best mode issue you have to add new matter (i.e., the disclosure of the best mode), which would require the filing of a CIP.

    “Whether or not the PTO has the power to act is an issue of substantive ultra vires and therefore cannot be characterized as merely formal.”
    Except that the USPTO, when all these ‘questionable’ patents were issued, determined that they had the “power to act” because the claims at issue clearly fell within the language of 35 USC 101.

  4. Very interesting post. It would apply not only to patentable subject matter, but also to utility, double-patenting, obviousness-type double-patenting, and inventorship.

    Inventorship is particularly interesting on your statutory interpretation view, because section 256 is not in your list. But section 256 says “The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section.” That implies that improper inventorship that can’t be corrected under 256 does invalidate an issued patent, despite 282.

    Also, I think there is a literature and maybe some case law on whether section titles are binding in statutory interpretation, though I don’t know the answer.

    Here’s a possible interpretation: 102, 103, 112, 251 are defenses that must be pled, but 101 are threshold issues that are not defenses at all, but pure questions of law, and therefore not things on which the defendant bears the burden of proof, and which can be raised even if not pled. This might square with the 19th Century Supreme Court case law hinting that patentable subject matter was a jurisdictional threshold issue that could be raised at any time, though it would be a departure from current Federal Circuit precedent.

  5. “because a 102/103/112 rejection presumes that the requirements of 101 have been satisfied”
    Do you practice? If so, you would have NEVER made that statement.

    “a patent cannot be issued or granted for any application that upon examination fails to disclose patentable subject-matter as required by 101.”
    Again, you completely miss the major point of my post. All the patents that have been invalidated by the Courts under 101 were examined by the USPTO under 101 and found to be directed to statutory subject matter.

    It was only AFTER the Courts got a hold of the patents and nibbled at the edges at what is considered patentable subject matter have these previously-acceptable patents were deemed not directed to patentable subject matter. If you did practice, you would realize the truth of my statement that what is permissible today at the USPTO may very well not be permissible tomorrow. There are thousands if not hundreds of thousands of patents that were EXAMINED to ensure that the claims were directed to statutory subject matter that now contain invalid claims because of the shifting winds at the Federal Circuit and SCOTUS. The statute hasn’t changed yet the Courts keep moving the bar.

    In short, the Court’s continual tugging at the boundaries of patentable subject matter creates unsettled expectations, is counter-productive to the entire system and is inconsistent with the apparent intent of the drafters of the Patent Act of 1952. Once a patent application can be shown to be claiming a new and useful process, machine, manufacture, composition of matter or improvement thereof at the USPTO, then case closed. Congress didn’t want the matter revisited.

    35 USC 101 is not being used as a vehicle to exclude patents to “abstract ideas.” The claims of Benson were not directed to an abstract idea – neither were the claims of Bilski or Prometheus. 35 USC 101 is being used by the Courts to make policy decisions as to what new technology should or should not be patentable. Not only are the Courts impinging upon Congress’s role to make policy on statutory subject matter, the case law produced by the Courts is so muddled that there is great uncertainty as to what is and is not statutory subject matter.

  6. “As can issues arising under 101.”

    Wrong. Whether or not the PTO has the power to act is an issue of substantive ultra vires and therefore cannot be characterized as merely formal, and cannot be considered of the same nature as a formal error made by the applicant.

    This is getting old quickly. I knew I shouldn’t have waded in here again.

  7. Reality–

    That is correct, I should have been more precise and added “…have been satisfied in the absence of an explicit 101 rejection”

    That is not self-evident as it may at first seem, because the PTO could always reject on a 101 basis in the subsequent OA, although they did not do so in the first OA.

    But for the purposes of an applicant addressing a 102/103/112 rejection, it is presumed that the requirements of 101 have been satisfied.

  8. “it does not eliminate 101 as a source of defenses to a charge of patent infringement”

    Except that no Court (as far as I know) has accepted your theory of “void ab initio” as you have applied it.

    “it can best be considered a formality, correctable by either reissue or certificate of correction depending on the nature and extent of the error”
    As can issues arising under 101.

  9. because a 102/103/112 rejection presumes that the requirements of 101 have been satisfied

    Sounds great, except it is not necessarily true. You mean to tell me that you have never seen 101 and 102/103/112 rejections on the same claims? The 101 and 102 are typically interesting ones.

  10. It’s also not a matter of “whole class of prior art that doesn’t have to be ‘prior’” because the intent of the two sections of law – 102 and 101 – are not the same.

    And that does make it more than “only.”

    Did you miss playing Calvinball with your face that much?

  11. Sorry, by “defense” in paragraph 2 above, I meant grounds for a rebuttal or traverse by an applicant of a rejection from the PTO.

  12. Also, applications are examined for compliance with the requirements of various statutory provisions, including those of 101, rather than pursuant to 101, as you suggest.

    Legally it doesn’t matter upon which requirement of which provision the PTO chooses to examine first, even though 101 is a threshold question, and here is why: let’s say an applicant receives a rejection under 102, 103, or 112. In that case, there will be no practical defense under 101 of which they can avail themselves, because a 102/103/112 rejection presumes that the requirements of 101 have been satisfied, leaving the applicant to argue only the contrary–that the requirements of 101 have not in fact been satisfied, in which case they would themselves be arguing that they were not entitled to a patent.

    There are no restrictions on the examination of complete applications by the PTO–they must all be examined. The PTO restrictions are on issuance and grant of patents, not on the examination of applications therefor–thus, an application can be examined for compliance with the requirements of 101, but a patent cannot be issued or granted for any application that upon examination fails to disclose patentable subject-matter as required by 101.

    There is no inconsistency.

  13. IV–

    The OP’s stated his essential question thusly: “does the Patent Act allow a court to invalidate a patent that does not claim patentable subject matter?”

    Legally speaking, the answer to this question is a resounding “no”.

    When something is void ab initio, it is as if it had never occurred. Essentially, an ultra vires finding under 101 and a subsequent void ab initio characterization mean that there is no patent, and that there never was a patent.

    Thus, there is no legal basis for any assessment or holding of validity or invalidity.

    The point is that a defense under 101 is not an “invalidity” defense as contemplated by 282–but it IS nevertheless a defense to a charge of infringement of one or more valid and enforceable patent claims because, if successful, there are no patent claims that can be infringed. Think of it as an administrative law defense, rather than as a patent law defense.

    282 refers only to defenses “under this title”, but does not serve to exclude defenses arising other than “under this title”.

    As far as the new best mode requirement goes, it can best be considered a formality, correctable by either reissue or certificate of correction depending on the nature and extent of the error. Best mode disclosures will continue to be possible sources of unenforceability defenses relating to inequitable conduct.

    So, regardless of whether or not the omission from 282 of 101 as a defense was intentional, it does not eliminate 101 as a source of defenses to a charge of patent infringement.

  14. David, I posted a law review article from the ’60s that analyzed 282 and concluded that the new statute was intended to align validity and patentability. The article noted that former known defenses (RS 4920) appear to have been eliminated or changed in nature.

    Frederico was a creature of the PTO. He might have had the view that if it is patentable, it is valid. That is a quaint notion.

    I think, therefor, that Frederico viewed the defenses we now call 101 either as patentability problems or judicial exceptions. He did not think 101 was an independent source of invalidity or unpatentability.

    If one actually reads the original cases on the exceptions, they appear to come out of thin air, or find their authority in some existing requirement. On sale was pinned to prior use, for example. Abstract was pinned to “112.” Product of nature? Probably 102 — see Parke-Davis.

    Double patenting? That is a good one, but limited times is a constitutional requirement.

    Take the latter as a starting point. It has long been a judicial exception not pinned to any statute. Perhaps, if we had to choose one, then 154? Patents expire after a fixed term?

  15. That’s a major difference.

    A very major difference. One that should bother you, because it defines a whole class of prior art that doesn’t have to be “prior”.

    But that doesn’t make it any less “only”.

  16. the only difference being that “we can’t prove that it existed before the filing date” doesn’t disqualify the reference.

    Only difference? That’s a major difference.

    You are such a shmuck IANAE.

  17. Have to laugh Ned, as even I, not caring much for “names,” knows that A New Light is not a woman and is not Noise Above Law.

  18. suckie: The claim at issue never prevented anybody from “thinking something new.” You could have thought that new thing before Prometheus and had no liability. However, you would have liability if you added the action set forth in the claim.

    This may be too difficult for you to follow, JPP, but the “action set forth” in Prometheus’ claim was old and conventional. Remember those words? They are important.

    Prometheus sued Mayo, in fact, not because they were practicing the prior art (Mayo was free to do that) but because Mayo’s doctors “added the action set forth in the claim” (i.e., thinking the new thought).

    If you want to have a silly discussion about what some words on a piece of paper “prevent” people from doing, we can do that. It will be short and you will end up looking like an a–.

  19. 101 Integration Expert,

    Is this when you take off your helmet, smile, raise your arm and point to the scoreboard?

    Um … that’s not a helmet.


  20. Does the claim suddenly become ineligible under 101?

    No. The claim was alwasy ineligible. Only now the knowledge to establish its ineligibility is available.

    Was it always ineligible under 101?

    Yes (lack of knowledge of the item in nature does not change its 101 state – only the ability to apply 101 correctly).

    Sounds a lot like 102, the only difference being that “we can’t prove that it existed before the filing date” doesn’t disqualify the reference.

    Now, explain again why Monsanto’s Roundup-Ready patents aren’t self-invalidating under 101.

  21. “Boy, if you say that any time the USPTO went outside its agency scope to issue a patent, it’s invalid, you’re going to overrule a ton of CAFC cases.”
    Who are you addressing that comment to because I certainly never inferred anything like it.

    “This dog won’t hunt.”
    What are you referring to by “this”?

  22. “any patent issuance that is in violation of 101 is, as described, ultra vires, and therefore void ab initio.”
    Explain the new law on best mode? A requirement (during examination) yet not a defense.

    “no applications are ‘examined under 35 USC 101′, as you suggest”
    Tell that to the USPTO. MPEP 700 is entitled “Examination of Applications” and subsection 706.03(a) refers to rejection under 35 USC 101. Also, one of their documents is entitled “Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility.” It seems to me that the USPTO are examining patents under 35 USC 101.

    Regardless, you missed the major point of my post. The omission of 35 USC 101 as a defense was intentional. Congress wanted an expansive scope for 101 and they didn’t want the Courts messing with that scope. Hence, the did what they could to prevent the Courts from addressing that issue in most circumstances.

  23. Of course they’re eligible. You can’t get more patent-eligible than a claim to a lump of material

    You have a profound lack of understanding on this issue. So much so, that I think it is intentional. You might try reading the case law if you decide to take the concept seriously.

    But to answer your questions:

    Does the claim suddenly become ineligible under 101?

    No. The claim was alwasy ineligible. Only now the knowledge to establish its ineligibility is available.

    Was it always ineligible under 101?

    Yes (lack of knowledge of the item in nature does not change its 101 state – only the ability to apply 101 correctly).

  24. “there has never even been the hint of a suggestion in any case suggesting that one’s right to think about any given subject could be curtailed.”

    The claim at issue never prevented anybody from “thinking something new.” You could have thought that new thing before Prometheus and had no liability. However, you would have liability if you added the action set forth in the claim.

  25. But like a mineral just discovered, or a plant, just discovered (as mere examples), are not patent eligible.

    Of course they’re eligible. You can’t get more patent-eligible than a claim to a lump of material.

    The problem you raise is either that the claimed mineral wasn’t actually invented by the person claiming to be the inventor, or that its discovery made it known to the public and therefore 102 art.

    Take MM’s hypothetical. Claim a mineral that you’ve invented in a lab and the world has never seen before (let’s assume all the other conditions for a valid and enforceable claim are satisfied), and then later discover the same mineral in nature. Does the claim suddenly become ineligible under 101? Was it always ineligible under 101?

  26. If an inventor claims something other than a “machine, process, manufacture, or composition of matter” that is not only a 101 problem, but demonstrably a problem under 112.

    Demonstrate it, then.

    Suppose you get a claim to “The Arrhenius equation”. Clearly doesn’t fit any of the statutory classes, clearly a 101 violation, but what’s the 112 problem? The claim is perfectly definite and enabled, its metes and bounds are clear, and anybody using the claimed equation will know whether they infringe.

    If an inventor claims a product of nature, that is a problem under 102.

    It’s a 102(f) problem (if you hurry) if the “inventor” found it in nature and didn’t himself invent it, but otherwise you’ll have to explain how products of nature that are unknown to the public are inherently “available to the public” in a meaningful way that an easily manufactured but not yet invented device isn’t.

    Finally, double patenting. These cases can be read when the inventorship is the same, the first to issue patent is prior art to the second, with some exceptions.

    Presumably they’re all exceptions, since it would be pretty trivial to make out a legitimate case for anticipation if one patent was 102 art to the other. Double patenting exists for those exceptions.

    the SC has no statutory authority to independently declare such subject matter non statutory.

    The statute says what is patentable subject matter, so the court clearly has the authority to declare the subject matter non-statutory. The only question here is the one in the title – is it (and should it be) a defense to infringement that the patent claims something patents aren’t allowed to claim?

    What is novel, is placing all these defenses (above) under 101.

    It’s not novel, but it’s obvious. 101 is exactly the place to put a defense of “this isn’t the kind of thing patents are for”, when the claim is otherwise novel, non-obvious, and definite. The Prometheus claims, for example.

  27. I guess this contribution is in the category of creative nonsense. There are two types of patentability requirements: absolute (101) and relative (to the “”state of the art”): 102 and 103. If only “102″ and “103″ would be decisive, anything would be patentable as long as it is novel and non-obvious. Remember Stevens’opinion in Bilski v. Kappos that Congress *never* said that “anything under the sun” ought to be patentable: the phrase must be read in context, and then it purports to exactly the opposite.
    Incidentally, Art. 138 EPC mentions non-compliance with Art. 52 EPC – the peer of 35 USC 101 – explicitly as a valid reason for revocation.
    There iss currently a debate whether a stronger test on non-obviousness (103) may replace the cumbersome and unclear “101″ test. IMHO the “101″ test is indispensable, for the above reasons. It should excluded overly abstract ideas (whatever that means).

  28. IV–

    “However, all patents that issue are examined under 35 USC 101.”

    This statement is problematic. 101 is not the grant of examination authority–it is, as has been stated, an express statutory limitation on the general authority granted the PTO in 35 USC 2(a)(1) to “grant and issue patents”.

    The examination authority is in 35 USC 131, which is a limited and specific statement of authority to first examine, then to issue, if and only if “on such examination it appears that the applicant is entitled to a patent under the law”. This restriction includes the limit found in 101.

    So, no applications are “examined under 35 USC 101″, as you suggest. 101 limits the authority of the PTO to lawfully issue patents, and any patent issuance that is in violation of 101 is, as described, ultra vires, and therefore void ab initio.

  29. Well, I guess your point is Congress used “condition of patentability” in the statutory text of 282, and it used them in the title of 2 provisions in part ii, and it didn’t use it in 101, and 101 is not a “condition” (102 and 103 say “unless” but 101 does not), that, nonetheless, 101 is a condition of patentability, or 282 is not limited to conditions of patentability. (You keep saying I ignore the context: I’m relying on it — 101 is not a condition but 102/03 are, and 101 isn’t’ labeled as one). We disagree, I guess, but it’s not a straw man to be knocked down: Congress knew how to draft a “condition of patentability” and did so, twice, and Congress knew how to specify a condition — “unless” — and did so, twice. There we are.

    I still don’t’ understand 3. Sorry. I am a strong believer in contextual interpretation. You and others seem to be relying upon implied purposes. The purpose, as I see the statute, is for the USPTO to decide whether something was within 101, and for that to the be the end of that inquiry. The intent, as evidenced by Federico, seems to be the same. The fact that courts have gotten a statute wrong for decades is not uncommon. See the other thread on the ethics page.

    Turn it around for a second: if you forget judicial assumptions, what language is there which shows 101 is a condition of patentability?

  30. Your argument is profoundly literal, so my initial reply would be that, no, your Congress did not provide, in Art. 282(2), “under the headings ‘Conditions of Patentability’”, as it might have. It instead referred to the entire part, and to anything that might be considered “conditions of patentability”. I am not suggesting that “part II” means less or more than “part II”–you are suggesting that those words mean less, and in particular, “only two provisions of part II”. To get there, you need to establish that *only* 102 and 103 answer to the name “conditions of patentability”. How would you describe the content of 101? Indeed, if we are focused on headings, how would you describe the heading? It either means, “Inventions [*are*] Patentable” (in which case, we must search for a definition of “invention”, whose parameters describe the conditions), or it means “[Conditions under which] Inventions Patentable” or “[Kinds of] Inventions Patentable”. I understand your argument–ignore any context, ignore the dictionary definition of “condition”, and focus exclusively on the headings used. I don’t think it’s fruitful to argue about “burden of proof”–but I would say, given the acknowledged novelty of your position and its extraordinary consequences, you may be the one “fighting uphill”.

    My third point was that, even if one accepted that the exclusive reference was to 102 and 103, those provisions refer to “patents” and “inventions”. If you do not even have a “patent” or an “invention” (100, 101), it is an even more radical defect, and one cannot possibly meet the “conditions of patentability” described (102, 103). One could make the same argument that the reference to a “patent” in 282 requires reference to the same definitions (without which even the presumption of validity would not apply). Absurd consequences could follow from any other interpretation: could I assert a foreign “patent” with no available defence? Could I assert that a handwritten document bearing the words “patent” entitled me to rights without a defence? Completely acontextual interpretation in unlikely to lead anywhere…

  31. One last point that may not be clear from my original post — this seems to be a “new” invalidity defense. I haven’t scorched the earth, but Diamond v. Diehr and Chakrabarty (sp) were patentability cases, not validity cases, so arguing that this is some long-standing interoperation of the statute that everyone knew about… I don’t think there’s evidence of that, but I haven’t scorched the earth. It is not a high-profile issue, surely, since no one hear has even cited a case where a court considered the question.

    And that should be troubling.

    Have fun.

  32. Boy, if you say that any time the USPTO went outside its agency scope to issue a patent, it’s invalid, you’re going to overrule a ton of CAFC cases….

    But maybe I’ve just read too many US Supreme Court cases on statutory interpretation. This dog won’t hunt.

    Apart from “it should be a defense” I don’t see any clear statement that “it is a defense.”

    That’s troubling, no?

  33. Far more serious than whether Congress gave them power to address it in an issued patent? I hardly think so. Separation of powers is in the Constitution; section 101, not so much.

  34. I don’t know Dennis, I haven’t read the reissue, reexam, etc. statutes closely enough to work it through, and now have managed to catch a horrific summer cold!

  35. apparently not one

    You might check out the Hricik thread at link to patentlyo.com where Anon, while not in the exact words, does indicate that there is a larger picture than the magic-microscoped 282 discussion.

  36. That’s an interesting point, Ned, and it has significant consequences for how one analyzes this whole problem (see the recent CAFC cases).

    My own view of statutory interpretation is affected by having written a book about it. Text matters more than anything else. The text here to me is pretty darn clear: 101 is not a defense to patent infringement.

    What happens next? I do think you’re right that we still have 102, 103, and 112, but we’d come at the question in a way we’re all much more comfortable with, I think. E.g., putting “do it with a computer” at the end of a claim won’t cut it.

  37. Well, the headings are what Congress referred to in 282(2), but no, as I said substantively 102 and 103 are “conditions of patentability” (rather, unpatentability). Congress chose to limit it to part II, and to limit it to those things enumerated as “conditions of patentability.” What do you think it meant if not the clear plain meaning of the text? Does “part ii” not mean “part ii”? Does “condition of patentability” mean “things that are not denominated as such”? You’re fighting uphill… Congress’ words aren’t ambiguous, they aren’t really unclear at all. They’ve been ignored…

    I don’t understand point 3.

  38. (Haven’t read through the comments below, but I’m guessing someone says it’s implicit from SCOTUS’ Prometheus decision that courts can invalidate under 101.)

    Actually, it is explicit from SCOTUS (and not just the Prometheus decision) that courts can invalidate under 101. Where it is implicit is where the courts say they derive their authority for such action.

  39. “Because as written 101 was not meant as exclusionary as the courts have turned it into.”
    I see we can agreee on this — the Courts have taken 101 and made it into something it was not intended to be. The Courts can interpret the statutes but they cannot rewrite them.

  40. “It truly troubles me that in the first page of comments, nobody raised this basic Constitutional issue with Prof. Hricik’s argument.”

    Interesting point, but are you now going to argue that the new 35 U.S.C. 282(a)(3) is unconstitutional? Under AIA, best mode is a requirement. However, it has been eliminated as a defense. Thus, it appears that Congress believes that they have the ability to impose requirements at the examination stage that don’t apply after a patent has granted. Given this backdrop, I don’t believe Prof. Hricik’s arguments are constitutionally unreasonable.

    You concern yourself with “a patent granted on unpatentable subject matter.” However, all patents that issue are examined under 35 USC 101. Moreover, as far I know, every patent that has been invalidated under 35 USC 101, on its face, met the requirements of 35 USC 101. What has happened is that the Courts, through the use of patentable subject matter “exceptions” have nibbled at the boundaries of 35 USC 101 to their own liking over the years. As such, what is patentable today at the USPTO may be unpatentable tomorrow via judicial fiat.

    You cannot tell me that a 101 issue at the Federal Circuit is going to be decided the same if Dyk and Linn are in the majority versus Newman and Radar being in the majority. From everything I’ve read, Newman and Radar are going to come down on the side of patentable subject matter and Dyk and Linn are going to come down on the side of unpatentable subject matter. Given the practical impossibility of the Supreme Court laying out a bright line test for determining whether or not a claim is directed to an “abstract idea” that can be consistently applied across all the varied technology groups, we will continue to have uncertainty as to what is patentable subject matter and what is not for years to come.

    Prof. Hriciki’s observations have led me to believe that perhaps the drafters of the Patent Act of 1952 were smarter than we give them credit. They wanted the scope of patentable subject matter to be expansive. However, knowing the desire of the judiciary to muck with things, they realized no matter how inclusive the language they used (i.e., “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”), the judiciary was still going to nibble at the edges. However, by omitting 101 as a condition for patentability and a defense for infringement, they would achieve this goal of having the scope of patentable subject matter be expansive by eliminating the judiciary’s ability to play with it.

    Right now (as perhaps foreseen by Congress in 1952), the Courts are using the judge-made exceptions to patentable subject matter to make policy decisions as to what should be patentable and what should not. Software, business methods, medical diagnostic methods, and gene patents have all come under attack. I think any Congress (either today or in 1952) would say that the determination of whether or not these are patentable subject matter is policy decision best handled by Congress – not the Courts.

    Perhaps the Congress in 1952 decided so that as long as an invention is ostensibly a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” then the invention is directed to patentable subject matter. Moreover, perhaps they wanted the judiciary to keep their noses out of Congress’s business (i.e., to make policy). Prof. Hricki’s observations fit in nicely with this view of the intent of Congress in 1952 and how 35 USC 282 should be interpreted.

    IMHO, the handling of 35 USC 101 by the Courts has been a disaster. The Courts have taken an extremely expansive original intent of patentable subject matter, and created so many different doctrines/exceptions that the USPTO has to change their policies every few months to reflect the latest changes. As such, what is issued today (given the USPTO’s current understanding of what is patentable subject matter) may not be patentable subject matter tomorrow as a result of a new Federal Circuit case that nibbles at the edges of what is patentable subject matter. This (continued) uncertainty harms everybody.

    Far too much time, money, and effort is being expended by the judiciary, USPTO, and inventors to address what should be a simple threshold issue of 35 USC 101. Additionally, the uncertainty created by the continually varying decisions by the judiciary is constantly creating unsettled expectations as to what is patentable subject matter and what is not. I think Congress had it right in 1952 when they consciously decided to omit 35 USC 101 as a defense to infringement. The Courts should stick to 102/103/112 and stay out of 101.

  41. I think the CAFC’s decision in Aristocrat Technologies v IGT (543 F.3d 657 (CAFC 2008)) supports David’s position – up to a point. Namely, Aristocrat supports the notion that invalidity for improper subject matter is not a defense to infringement that can be raised before a court. As you will recall, the issue in Aristocrat was that the PTO had revived an application in which the applicant missed the national phase filing date by a day and then petitioned for revival due to unintentional abandonment – even though the statute seems to say the the PTO can only revive in such circumstances for unavoidable abandonment. The defendant thus challenged the validity of the patent on grounds of “improper revival”, but the CAFC said that’s not a cognizable defense under 282. It should be noted that the CAFC only looked at prongs 2 and 4 of 282, not prongs 1 and 3, but I think David’s analysis is correct that “non-statutory subject matter” doesn’t fit under prongs 1 or 3 either.

    More importantly, though, is the fact that if you can get the patent before the PTO again – e.g. in a reexamination – and somehow draw the PTO’s attention to the subject matter issue, then even under Blacklight Power (295 F. 3d 1269, CAFC 2002) the PTO would have authority to invalidate the patent, a holding not contradicted, let alone overruled, by Aristrocrat.

    (Haven’t read through the comments below, but I’m guessing someone says it’s implicit from SCOTUS’ Prometheus decision that courts can invalidate under 101.)

  42. So if a patent does not meet one or more of the requirements of the statute a court must invalidate it — is that what you are saying?

  43. Because as written 101 was not meant as exclusionary as the courts have turned it into (this is not to say that it does not have requirements – it does). However, the litigation and enforcement was clearly viewed as resting in the other-than-open-gate postions of the law.

    See? That was easy.

  44. “Validity is a presumption predicated on acts performed by the PTO. As such, validity is immaterial if the PTO action is void ab initio.”

    If so, then the same rationale should apply to 102/103. Therefore, it was unnecessary to spell it out in 282 regarding 102/103. However, it was spelled out for 102/103 and NOT for 101. How can you explain away that inconsistency?

  45. Holy geez.

    All these commenters, apparently not one has reviewed the basic principles of admin law. Even you, 6 ? For shaaame. Your blindered perspectives mock your legal training (?). Out of kindness I will revisit the basics:

    1. Executive agencies may act only to “faithfully execute” the laws enacted by Congress.

    2. An agency action ultra vires, is ab initio void as unConstitutionally exceeding the proper powers of the Executive branch.

    3. Presuming Congress has enacted a Constitutionally coherent patent statute, then this statute circumscribes the power of the USPTO re: granting patents. Section 101 is one of the metes or bounds on the power to grant.

    4. Therefore, in case the USPTO has granted a patent on non-101 subject matter, and has thereby exceeded its lawful authority to grant, the agency’s excess must be put right by the court, and the public put as much as possible back into status quo ante.

    E.g., a patent granted on unpatentable subject matter, was granted ultra vires. It must be invalidated, and the defendant to the lawsuit must be dismissed, so as to avoid condoning the USPTO’s going beyond its Congressionally delegated authority.

    It truly troubles me that in the first page of comments, nobody raised this basic Constitutional issue with Prof. Hricik’s argument. It troubles me even further that a law professor would fail to consider this point before writing the above piece.

  46. IV–

    Validity is a presumption predicated on acts performed by the PTO. As such, validity is immaterial if the PTO action is void ab initio.

  47. 101 Integration Expert,

    Is this when you take off your helmet, smile, raise your arm and point to the scoreboard?

  48. Ned,

    Don’t for a minute think that being a professor means anything as far as substance and insight into the law.

    There are many professors that are not only absolutely clueless, they are downright dangerous if you ascribe any legitimacy based on being a professor. Case in point was the recent guest thread by Professor Cristal Sheppard. Abominable would be a kind word.

  49. No IV, I do get it. I am very much intrigued by the potential that the Surpreme Court itslef has been acting ultra vires in regards to patent law. If the Supreme Court recognizes and controls itself to only judging the law written by Congress (without its implicit readings) and gets out of the 101 what is patent eligible game, the legal landscape changes immensely.

    The point of my post was that certain other entities may not share that enlightenment. The question is though, is the Court willing to keep its fingers out of the patent pie?

    As far as presuming “that everybody is right,” you must be new on these boards and not recognize that I am in complete agreement with that sentiment.

    As far as 101: it is purposefully a wide open gate in part because innovation is not linear and the path of innovation cannot be known a priori.

  50. Mr. That,

    Assume arguendo that if it is not prior art under 102, and there is no separate 101 defense, then where does that leave us?

    Again, no separate 101 defense is the operative assumption.

  51. Further, I think that putting to Congress the power to make patent law was wise – just as Stevens warned (and yet was guilty of himself), leaving the power to twist the nose of wax in patent law (101 – the very entrance gate) in the hands of a few unaccountable and arguably untrained men (SC) invites the philosophical marring that we have seen. The Court should not be trying to read into the unambiguous words of Congress any implicit restrictions. If the Court judges a case by the law and the public outcry raises up in response, the constitutionally mandated power is already in place for the designated bearer of that power to answer to the voting society in a highly contrasting ability to answer to the people.

    A New Light’s point that patent law is not to be governed by common law should be well taken.

  52. Ned,

    Give credit where credit is due: it was A New Light that launched the question of the legality of the Supreme Court additions to patent law with the judicial exceptions.

  53. Ned,

    As I have said before (in relation to “suckies”), I read for content regardless of name. If you have a great name but post crrp, I give you less credit than an unknown and crrp name posting good content.

    It’s a policy that works great if applied objectively.

  54. “Shall we read the mental step out of the claim when analyzing the claim for anticipation/obviousness, as the USPTO suggested (without any legal justification for doing so)?”

    Absolutely not. As you have said, there is no legal justification for doing so, and no logical reason either. The law says claims must be taken as a whole. This was established in Diehr.

    For example, all the steps in Diehr’s rubber curing process were old. And yet the claims included a new thought, or thinking step of calculating the Arrhenius equation.

    Granted this was performed by a big ole computer brain, you know the kind you are so found of.

    But let’s say Rainman was working for you and curing rubber while constantly calculating the temperture by doing the Arrhenius in his head. Much like this example:

    link to youtu.be

    Rainman would be infringing Diehr’s patent!

    But no worries. As long as Diehr is good law, and both Bilski and Prometheus have upheld it, your mental steps dissection dreams will never see the light of day.

    Meanwhile you may want to check out the Official Office Guidelines on Integration Analysis.

    link to uspto.gov

    You know, the Guidelines based on the “integration” that was established in Diehr, and ruled 9-0 in Prometheus as the key to patent eligible subject matter.

  55. “Somebody tell the Supreme Court that in Prometheus, Bilksi, Flook, and Benson.”

    You don’t get it. The Supreme Court (and the lower down the food chain) presumed they could because nobody told them otherwise.

    Look at the problem not through the eyes of somebody who “knows” the answer, but through the eyes of a 1L looking at the statute for the first time. Connect the dots and find where they take you. The hallmark of a very, good lawyer is that they don’t presume that everybody is right.

    I remember having a conversation with one of my professors while I was a 3L regarding the construction of a particular statute. I was construing it to mean “X” because that is how the government was construing it (via their published guidance. Her point was forget what the government said, read the words and ask yourself, does it mean “X” or can it also mean “X’” or “Y.”

    Ask yourself, is 101 was supposed to be treated the same way as 102/103, why is it written differently? If it was like 102/103, it would be written something akin to “A patent shall be granted, subject to the conditions and requirements of this title, to whoever invents or discovers [XXXXX] unless … [YYYYY].”

  56. MM said ….

    If the leaves in a forest rustle after a strong wind and nobody heard anything, did they make a sound?

  57. Anon, but the problem is this: the good professor is a recognized authority.  Since we do not know who you are, we cannot assume that you have equal status as the good Professor.

    That said, I listen to you.  I hope you do the same with me.

  58. Malcolm, clearly a mental step that is not integrated into an old machine, process, etc., such as to modify it in some useful way is a mental step that simply hangs there.  If it is the sole novel feature of the claim, the law has long held that the claimed subject matter is not novel. 

    E.g., the printed matter doctrine.  

    E.g., the discovery of something inherent in something known:  one cannot re-patent the known whatever under 102.  One is entitle to a use claim.

    If the output of the claim is simply numbers or other abstract material, it clearly falls under the mental steps exception.  But that is the same thing as claiming anything abstract with some conventional physical data gathering steps as inputs.

    Regard Morse, you may want to reconsider what it said about the lack of a written description of embodiments when something abstract is being claimed.  There is no need to describe how to make and use something abstract.  But the statute requires such a description.  Ergo, a claim to something abstract is non statutory under 112.

  59. If something exists in nature and is unknown to man, it is not art under 102.

    But like a mineral just discovered, or a plant, just discovered (as mere examples), are not patent eligible.

  60. III: Was not a process claimed in Prometheus?

    Was not this simpleton’s argument avoided in Prometheus for fear that even Clarence Thomas might wake up and tell the presenter of the argument to STFU?

  61. JS The first amendment is not absolute.

    Correct. But absent (maybe) a contractual agreement, there has never even been the hint of a suggestion in any case suggesting that one’s right to think about any given subject could be curtailed.

    There are plenty permissible restrictions on “speech” — more so with commercial speech, which this is arguably a part of.

    To the extent this is intelligible, it does not help your “argument.”

    My solution to the whole “mental step” issue is to dispose with it as an evidentiary issue. You cannot prove someone did the “new thought” (absent a confession) so you cannot establish infringement.

    So much for all those civil and criminal statutes requiring that intent be demonstrated. They can all be “disposed with” because you “can’t prove” that someone thought any particular thing at any particular time.

  62. If an inventor claims something other than a “machine, process, manufacture, or composition of matter” that is not only a 101 problem, but demonstrably a problem under 112.

    If an inventor claims something that has no substantial utility, how can he describe its utility as mandated by 112?

    If an inventor claims something abstract, like a Law of Nature, Morse would also provide express authority that the statutory problem is 112.

    If an inventor claims a product of nature, that is a problem under 102.

    If an inventor claims a mental step that is not integrated into a old process or machine or manufacture or composition, there is a problem under both 102 or 103.

    Finally, double patenting. These cases can be read when the inventorship is the same, the first to issue patent is prior art to the second, with some exceptions. When inventorship is not the same, the cases would say that the patentee controls which patent issues. He knows who invented first and by his election of which patent issues first, he grants that the first to issue is prior art to the second.

    The problem we have is thinking that the statutory authority to deny a patent or to hold a patent invalid is 101 under the above conditions. It really is and always has been 102/103/112.

    Now that being said, anon makes a very good point that if congress has not declared certain subject matter invalid by statute (the so-called 101 exceptions above) then the SC has no statutory authority to independently declare such subject matter non statutory. That is circular reasoning at its best. The Supreme Court is not congress. Not at all.

    282 has been understood to list 102/103/112 as the only grounds for invalidity in law review articles published contemporaneously with the ’52 Act. I cite one early. This is not a novel construction.

    What is novel, is placing all these defenses (above) under 101. That is both unnecessary and apparently non statutory.

  63. you cannot attack the validity of the patent under 35 USC 101 based upon this reading of 282

    Somebody tell the Supreme Court that in Prometheus, Bilksi, Flook, and Benson.

  64. Same comment above as to “authority” to “expert” here.

    Then again, Ned, you have been known to comment on 6 being an expert on something he merely agreed with you upon. Your “eye for talent” holds no candle to the blindman.

  65. Professor Hricik plays a little loose with his own statutory constructions as I note on his blog page (and he conveniently ignores the points I make).

    Just because he wrote a book does not make him an authority, and I consider myself every bit an authority as he.

  66. 282 presumes the patents are valid and you cannot attack the validity of the patent under 35 USC 101 based upon this reading of 282. Once the horse is out of the barn … too late.

  67. “In that case I’ll give you a 1st Amendment defense against USC 271.”

    The first amendment is not absolute. There are plenty permissible restrictions on “speech” — more so with commercial speech, which this is arguably a part of.

    My solution to the whole “mental step” issue is to dispose with it as an evidentiary issue. You cannot prove someone did the “new thought” (absent a confession) so you cannot establish infringement.

  68. “Are we still advancing the argument that putting “a process comprising” in the preamble gives you a free pass on 101 no matter what is actually claimed? Because if so, Prometheus v. Mayo would like a word. As would Benson, regarding machine/manufacture claims.”

    Was not a process claimed in Prometheus? The claims recited steps. What about that claim didn’t make it a process? Reading the plain language of 35 USC 101, the Prometheus claim fell with one of the four listed types of subject matter. As I said, it took mental gymnastics to declare something that is clearly not abstract as being abstract.

    FYI – Benson was a process claim as well (“The question is whether the method described and claimed is a ‘process’ within the meaning of the Patent Act.”) Like Prometheus, SCOTUS in Benson had to perform mental gymnastics (i.e., “[h]ere the ‘process’ claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion.”). You can simply delete the “abstract and” from that sentence and you get to the sleight of hand performed by SCOTUS – they thought the claim was overly broad (i.e., “sweeping as to cover both known and unknown uses”). However, you can say the thing about a screwdriver – for which there are probably still a large number of uses for which people have yet to discover.

    “The belief of judges. Lots and lots of judges. Sure, it hasn’t been argued, but there’s a reason for that too. You can’t stand up in front of a judge and say that he should enforce your patent claim anyway, even though it’s not proper subject matter for a patent as a matter of law. Not with a straight face, anyway.”
    You don’t know many litigators, do you? You’ll be surprised what they’ll argue with a straight face. I wouldn’t be surprised if the Federal Circuit and even SCOTUS, if faced with such a question says “you are right, 101 is not a valid defense grounds, and we are going to wash our hands of the matter. If Congress wants to fix it, they can. If they want to makes changes to what is patentable subject matter, they can do it at the same time. Don’t bother us with this anymore.”

    “A claim can’t be anticipated by nature. 102 is pretty clear on the point that anticipatory art must be either known, used, described, patented, or in some other way part of general human knowledge. If something exists in nature and is unknown to man, it is not art under 102.”
    I realize that … but anticipation (i.e., not being novel/new) is the best candidate to explain the underlying policy reasoning behind the natural phenomena and law of nature exceptions.

  69. I asked: “Where in 35 USC might one find the statutory support for [ignoring a recited mental step in a claim during analysis of anticipation]“?

    Ned’s answer:

    If the novel subject matter is abstract, and certain a mental step is abstract then the claim is non statutory under 102/112.

    You just re-stated your earlier, dubious conclusion, Ned.

    Morse is a worthless case, IMHO. Gobbledygook.

    Abstract concepts like music cannot be built and sold.

    Is that a joke?

  70. Pay no attention to the man behind the curtain…

    The restatements here of “Rights/Freedom” and Regarding Easy-to-Reinvent” paint a more pleasant view of the concepts and attempt to downplay a rather obvious misstep, but neither of which have any business near serious patent law (especially as some very minor justification for indulging in anti-patent rhetoric. It is not “more complicated” than they deserve, it is more validity than they deserve.

  71. Leo, I reference a law review article discussing the new 282(2). It compared and contrasted, for another purpose indeed, the prior revised statute (4920) with the new statute, and concluded that it was intended to align conditions of patentability with invalidity:

    “This interpretation seems to fit the plain meaning of the statute. The defense under section 282 ( 2) is invalidity of the patent or any claim in suit on any ground specified in Part II of this title as a condition for patentability.” Part II is entitled “Patentability of Inventions and Grant of Patents.” Section 282(2) appears to refer only to sections 102 and 103, which list under the heading “Conditions for Patentability” the conditions under which a patent may be granted. 87 Thus, there is support in the language of the statute itself for reading 282 ( 2) to mean “any ground specified in Part II as a condition for granting a patent.”

    Later Patents As Prior Art, 1967 Wash. U. L. Q. 078 (1967). link to digitalcommons.law.wustl.edu

    What is clear from the discussion is that new statute did not fully align with prior case law or theory.* What does this suggest, that the ’52 Act was FUBAR as some have suggested?

    *One of the most intriguing aspects of the article is that Milburn was base on the theory that a prior patent application (filed in the US) disclosing but not claiming the same invention was prior art to the extent it demonstrated that the inventor of a later-filed application claiming the same invention was not the first inventor.

    First inventor?

    The author struggled to find a statutory basis for this aspect of the holding in the new 102. 102(g) was construed to be a method of determining priority between rival applicants claiming the same invention. Thus, there was nothing in 102 that truly codified Milburn, not even 102(e).

  72. This is someone else’s rebuttal to this purely academic conjecture [which no court will seriously entertain] so I just pass it on here:
    If the patent violates 101 the USPTO had no statutory authority to grant the patent in the first place. The ability to “obtain a patent ..[is]… subject to the conditions and requirements of this title.” Non-compliance with 101 is non-compliance with a condition or requirement of Title 35. Thus the USPTO had no authority to grant the patent in the first place. Normal legal analysis thus makes such a patent “void ab initio.”
    The courts have far more serious 101 problems to deal with.

  73. Douglas could not be bothered to understand real patent law and made thIngs up on the fly.

    Quoting to him should be avoided.

  74. That’s a much more logically coherent argument, Ned. I agree that the drafters of the ’52 act probably thought the language was comprehensive. That said, the intent of the drafters is not the be-all and end-all of statutory construction, is it?

    That also doesn’t tell us whether they thought 101 was a “condition for patentability” or instead thought that all subject matter issues properly arose under other statutory provisions.

  75. This is all just a couple of very minor points stemming from Hricik’s essay and we may be making them more complicated that they deserve.

    Rights/Freedom: The right/freedom distinction that you prompted came out of the Supreme Court’s Golan decision. In that case, the Court found that the public has no property rights per se in the public domain. Even though I don’t have a “right” to use the public domain, my very basic point is that if I’m a manufacturer, my decisions will be impacted by whether or not someone else holds a patent on what I want to do.

    Regarding Easy-to-Reinvent: Sometimes easy-to-reinvent is code for being obvious. However, that’s not necessarily true. One distinction is that at the time of re-invention the PHOSITA is likely better skilled and informed than at the time of the original invention. Thus, things that were previously nonobvious may now be obvious to one skilled in the art.

  76. Perhaps “unpatentable” would be a better word”

    The standard of patentability is a constitutional standard; and the question of validity of a patent is a question of law. Mahn v. Harwood, 112 U.S. 354, 358, 5 S.Ct. 174, 176, 6 S.Ct. 451, 28 L.Ed. 665. The Court fashioned in *156 Graver Tank & Mfg. Co. v. Linde Air Products Co., 336 U.S. 271, 275, 69 S.Ct. 535, 537, 93 L.Ed. 672, a rule for patent cases to the effect that this Court will not disturb a finding of invention made by two lower courts, in absence of a very obvious and exceptional showing of error. That rule, imported from other fields, never had a place in patent law. Having served its purpose in Graver Tank & Mfg. Co. v. Linde Air Products Co., it is now in substance rejected. The Court now recognizes what has long been apparent in our cases: that it is the ‘standard of invention’ that controls. That is present in every case where the validity of a patent is in issue. It is that question which the Court must decide. No ‘finding of fact’ can be a substitute for it in any case. The question of invention goes back to the constitutional standard in every case. We speak with final authority on that constitutional issue as we do on many others.

    Great Atlantic & Pac. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 155-156 (1950)(Douglas J., concurring).

  77. Actually, I would prefer the vacating or voiding of any action or determination made by the PTO in such an instance, such that discussions of validity or unenforceability are rendered meaningless.

  78. Also, “easy to reinvent” seems to be a code word for “improperly granted due to actually being obvious.”

    You run right smack into the problem of hindsight bias and that many deserving patents are on things “easy to invent” or “easy to reinvent” once the cat is out of the bag.

    You may wish to try to regain a sense of objectivity…

  79. Leo, I start with the premise (that you so ably detected) that congress did not make a mistake in ’52 in its structuring 282 the way it did. If they fully intended to cut 101 out, and they made no big hullabaloo in doing so, they must have been of the view that double-patenting, etc., were not 101 problems.

    Frederico of the PTO wrote the ’52 Act. He thought he was codifying the law. He must thought his expression of the grounds for invalidity were comprehensive. Excluding 101 considerations of patentability or validity was a big deal if that was consider to be a shift in the law. But no one said a thing, it appears.

    His draft was copied and distributed to every patent bar association in the land. 1500 copies. His draft was heavily reviewed and critiqued. No one, apparently, thought that excluding 101 was a problem, at least none that I know of. Assuming that no one noticed a problem, one could safely assume that no one thought excluding 101 in 282 changed the law.

    If you have a persuasive counter, please let us here it.

  80. Dennis,

    You seem to be playing the devils advocate for Anarchy “Rights.”

    Law by its very nature has that tendency to limit “what you can do.”

    Are you really trying to make a point that “whatever I can do” is a proper reason to denigrate patents and the patent right? Even the use of “freedom” and “practical but not legal” paints a connotation that seethes anti-patent rhetoric.

    I think you might be revealing more than you wish…

  81. …there has to be some way for aggrieved parties to challenge wrongly issued patents

    Including for patents wrongly issued due to the PTO’s failure to follow “procedural minutiae,” as in Aristocrat v. IGT?

    I think you might be tinkering with the lid to Pandora’s box, Dennis.

  82. I suggest you actually read the statute. It is clear and unambiguous. 101 is not a grounds for invalidity.

    Period.

    Unambiguous.

    Period.

    But that does not means what we believe to be 101 defense are not defenses. It means that Prometheus was wrong on this point that the defenses arise under 101. They arise instead under 102/103/112 and 251.

  83. There are ways to challenge wrongly issued patents – by statute. Congress has the constitutional authority to set the parameters of the paten game, including the rules for challenging wrongly issued patents. I think you are really reaching to say that the constitution reaches into what the constitution grants (on an open basis, or a nearly open basis subject to the leading consitutional phrase which does not impact the current topic).

    Can you explain more how you think due process becomes involved? Are you saying that any government decision “in error” must, as a constitutional matter, have some way of being rectified by anyone perceiving themselves to be wronged by the decision? (that seems like an awfully big can of worms you are wrestling with the boxtop of…)

  84. Thanks C – you are correct. I should have used a different term such as “freedom” or “practical but not legally enforceable right.” If a third party knows of the invention (or it is easy to re-invent) then the existence of a patent limits what I can do.

  85. Dennis, I agree.

    Thus, it seems clear that Congress did not believe in 1952 that the so-called 101 defenses were 101 defenses. They instead were primarily 112 defenses, followed by 102/103.

    I recall reading cases that pinned double patenting on 102(g) for example.

  86. Runaway, you might want to read Professor Hricik’s post on this point. It is he who raises the constitutionality of 282 if it excludes 101.

    It is I who counter that it is not unconstitutional and state why.

  87. then the patent does limit a third-party’s rights

    This cannot be right – for the very same Golan decision you cite. If this were right, than all people have standing (including the ACLU in the Myriad case). If this were right, then the public would have rights in the items recaptured in Goaln and Golan itself must be wrong.

    Is that what you are really saying?

  88. Malcolm, the answer actually is in O’Reilly v. Morse. If the novel subject matter is abstract, and certain a mental step is abstract, then the claim is non statutory under 102/112.

    Also, see this from my reply to A New Light:

    A short reply to A New Light.

    Read O’Reilly v. Morse. If one claims a principle in the abstract, a law of nature, or something even more abstract such as music, one cannot comply with the statutory requirement to describe in a specification how to make and use one. Morse implies, if it does not actually state, that the output of a process must be something physical that can be sold and/or subsequently used. Abstract concepts like music cannot be built and sold.

    Morse makes it very clear, IMHO, that practical, physical, applications of abstract concepts must be disclosed. The claimed subject matter is then limited to these embodiments and equivalents. The case actually says this.

    How can there be an embodiment of music? There cannot. If however there is a physical embodiment, such as a CD, and the point of novelty is the music, the problem is a combination of 102/112. If the only thing new in a claim is non statutory under 112 (it is abstract) then the claim is invalid under 102/112.

  89. Regarding the constitutional question – I think this is right in that there has to be some way for aggrieved parties to challenge wrongly issued patents – otherwise we have a due process problem. If not as a defense to infringement, then as a direct action against the USPTO.

  90. what Prometheus opined in dicta

    Even if dicta (a mighty big if), what proper legal support do you have to say that that dicta is wrong?

    Hint: because an academic said so is an extremely non-persuasive authority.

  91. And yes, I was asking that metaphysical question, and I think your answer is correct. Which I think means that the comment from “Dennis” at 2:07 is incorrect.

  92. Are there any administrative remedies for a potential defendant when it comes to 101: Starting in two weeks you can file for review of certain patents (“covered business methods”) on 101 grounds. The scope of this will expand to all AIA-patents in 2013 under the title Post Grant Review.

  93. Without putting too much thought into it, it seems to me that subject-matter jurisdiction of the PTO is the issue, not “validity”.

    Exceeding the scope of statutory authority.

    Use of the term “validity” in a 101 context is one more example of the legal sloppiness that pervades patent law. Enforceable or Unenforceable should be the order of the day, Validity or Invalidity being immaterial.

  94. Thanks, Dennis C., I was actually responding to the post by “Dennis” above, but failed to properly “nest” my comment – I’m assuming now that the earlier comment was not from you.

  95. that actually might be constitutional in stature

    How do you get to a consitutional question?

    Also, Product of Nature is not a 102 defense, nomatter how many times people want to shove it there. There is no “time” aspect to the Product of Nature exception.

    As far as changing your mind, Don Quixote is away on travels at the moment.

  96. I agree, Malcolm. In that case I’ll give you a 1st Amendment defense against USC 271, at least with respect to the “use” prong and related indirect infringement. But Dennis (the Dennis?) made an unqualified statement about diminished rights. I’m still curious as to what those rights are, in the more general case.

  97. Clearly Prometheus could have been decided under 102.

    Only if you ignore the mental steps.

    Where in 35 USC might one find the statutory support for proceeding in that manner? That’s a rhetorical question. We both know the answer.

  98. First – note that the original post above is a guest post by Prof Hricik.

    I think you are asking the metaphysical question of whether I had the right to perform the invention even before it was invented. As a legal matter, SCOTUS answered this with a “NO” for copyright in last year’s Golan decision. In that case, the court held that there was no “right” to the public domain. I would suspect that one has even less right to use the not-yet-invented public domain. HOWEVER, on practical grounds, once we have an invention in the public domain (or one that is easy to re-invent) then the patent does limit a third-party’s rights.
    -Dennis

  99. “The conditions are listed.”

    Some conditions are explicitly listed, others are listed and are implicitly conditions. Wow. Huge news. It’s only been the lawl for the last how many decades?

  100. The grant of a patent diminishes the rights of everyone but the patent holder

    If the patent holder truly invented the subject matter, then it did not exist prior and no rights of anyone else could be diminished.

  101. At least with respect to claims that are asserted against people who are “thinking something new” but who are otherwise practicing the prior art (e.g., as was the case with the doctors at the Mayo Clinic), there would seem to be a conflict between the patent grant and the First Amendment.

  102. And Ned, I would simply invite you to actually read what I wrote, as I’m quite sure O’Reilly v. Morse has nothing to do say about the illogical structure of your argument regarding Congressional intent.

  103. As you may remember, I have made this point about 282 many, many times in these fora.

    This is true. I remember the discussion.

    Patnerds.

  104. MM, lets go through this, step by step:

    1. Are the so-called 101 issues only 101 issues, or can they be raised under 102/103 or 112?  
    2. If they can be raised under either, and the statute expressly limits, as it does, invalidity defenses to 102/103,112 and 251, what does that say about the so-called 101 defenses.  They are not overruled by 282.  Rather, the defenses are statutory, but under 102/103/112 or 251.
    3. If a recognized 101 defense is not also a 102/103/112 or a 251 defense, then we have a real problem with 282 that actually might be constitutional in stature.

    Clearly Prometheus could have been decided under 102.  The US brief showed how.  
    Morse was a 112 case.
    Product of nature is a 102 defense.
    Double patenting is a 102/103 defense.
    Lack of utility is a 112 defense.
    Not being a machine, process, manufacture or composition is a 112 (p.2) problem.
    Abstractness and Law of Nature are generally 112 problems.  They could also be framed under 102/103.

    If you have anything to add that might change my mind on this, please do so.

  105. The grant of a patent diminishes the rights of everyone but the patent holder.

    Which rights specifically, Dennis? Assume for the sake of argument that the patent at issue does meet the (other) conditions for patentability, so that the subject matter is novel and non-obvious.

    …anyone adversely affected by such an erroneous decision would have a Constitutional right to seek redress in court, perhaps after exhausting their administrative remedies.

    What’s the basis for the “after exhausting their administrative remedies” suggestion, Dennis? (I’m not arguing here, I’m asking.) Are there any administrative remedies for a potential defendant when it comes to 101? It’s not a ground for reexamination.

  106. 6, you really need to read the statute.  The conditions are listed.  They include only 102/103.  Give Professor Hricik some credit.

    As you may remember, I have made this point about 282 many, many times in these fora.  101 is not a listed 282 reason for holding a claim invalid.  The statute is unambiguous.  It is clear.

    As well, there are Federal Circuit judges who have raised the same point.

    And, just as Professor Hricik has noted, the Supreme Court has never considered the effect of 282.

  107. Leo, I would  simply invite you to once again read O'Reilly v. Morse.  The discussion about the specification says it all.  The SC in Morse identified that a claim to a principle in the abstract was a problem under "112."

  108. “This might force the courts either hold that the defense is nonstatutory, or find authority in 102/103 or 112, as apparently Congress intended.”

    Or they might simply read all the conditions of patentability set forth in SECTION 2, as 282 cites to, including 101. Like they have for many a decade or so.

  109. IANAE 102 is pretty clear on the point that anticipatory art must be either known, used, described, patented, or in some other way part of general human knowledge. If something exists in nature and is unknown to man, it is not art under 102.

    Point taken.

    Caveat: the doctrine of inherent anticipation.

    [leans back in armchair and draws fine tobacco smoke from ornately carved ivory pipe, like the one Ward Cleaver owned]

  110. looking, I have acknowledged in every fricken post what Prometheus opined in dicta.  The SC may be wrong.  Hricik may be right, and I think he is right.

  111. Again, Leo, it doesn’t matter. Either there is no remedy for the applicant because he would have no patent, and thus no grounds to complain to the court of infringment, after the completion of the proceedings, upon which to sue because it would be invalid, and thus the court has no jurisdiction and must throw out the case. Or else you go through the case and then it becomes a defense to infringement and the court invalidates the patent. And yes, it is a condition of patentability, regardless of whether 101 explicitly calls it out as one. Either way, an invalid patent isn’t going to be a basis for complaining about infringement. They explained this in a case not too long ago posted on these very boards if I do recall quite correctly. In any event, ask ol’ Rader, he’ll tell you right fast all about it.

    Likewise, the courts authority to invalidate a patent comes from the same place that its authority to do anything, or even to exist comes from. A dark imaginary fictitious place within the human psyche which people with guns pay attention to. Or, if you prefer, in lawlspeak, article 3. In other words, a piece of paper that people attach significance to.

    And until you go halvsies with me I won’t be getting grades.

    Why would a respected patent lawl blawg want to waste our time with this nonsense?

  112. Mayo, I acknowledge that Prometheus dicta is contra.  This sets up test, in the proper case, as to whether the statutory authority is actually 101 or 102/103 or 112.

  113. Compare:

    Ditto every other 101 case. They all can be framed under 102/103/112

    with a post by Ned in the past (Jun 24, 2012 at 03:27 AM):

    Ned Heller said in reply to Thou Shall Not Conflate…

    This post is a joke.

    Prometheus made it clear that issues of patentable subject matter are not to be decided under any other statute but 101.

    W

    T

    F

  114. The PTO is an administrative agency. Even if the statute could be interpreted as is proposed here, I have to question whether such an interpretation would pass Constitutional muster. The grant of a patent diminishes the rights of everyone but the patent holder. Therefore, if the agency improperly grants a patent on subject matter that is not patentable, I believe anyone adversely affected by such an erroneous decision would have a Constitutional right to seek redress in court, perhaps after exhausting their administrative remedies.

    If the constitutional limits of administrative agency power are in play here, than I believe this textual statutory interpretation argument will not avail. In accord with the principle of constitutional avoidance, a court will not interpret the statute in the manner proposed.

  115. a process claim, which is acceptable under 35 USC 101.

    Are we still advancing the argument that putting “a process comprising” in the preamble gives you a free pass on 101 no matter what is actually claimed? Because if so, Prometheus v. Mayo would like a word. As would Benson, regarding machine/manufacture claims.

    These judicial exceptions are predicated on the belief that 101 is a condition for patentability.

    The belief of judges. Lots and lots of judges. Sure, it hasn’t been argued, but there’s a reason for that too. You can’t stand up in front of a judge and say that he should enforce your patent claim anyway, even though it’s not proper subject matter for a patent as a matter of law. Not with a straight face, anyway.

    anticipated by nature (i.e., 102).

    A claim can’t be anticipated by nature. 102 is pretty clear on the point that anticipatory art must be either known, used, described, patented, or in some other way part of general human knowledge. If something exists in nature and is unknown to man, it is not art under 102.

  116. Is there any reasonable person who has coherently and persuasively defended allowing patents on purely mental processes? or who has coherently and persuasively defended claims that turn practitioners of the prior art into literal infringers when they think a new thought while they are practicing the prior art??

    Just curious. I’ve not encountered any such person but maybe you have. In the absence of any such person or argument, it does seem crystal clear that a patent which turns otherwise non-infringing actors into literal infringers merely because they think about a useful “idea” (whether that idea is “concrete” or “abstract”) is not eligible for patenting.

  117. “A person should have the right to say that what you gave a patent for isn’t the kind of thing patents are given for.”

    However, almost every recent patent we have talked about involves a process claim, which is acceptable under 35 USC 101. It is only when you consider the judicial exceptions to patentable subject matter can you say “[it] isn’t the kind of thing patents are given for.” These judicial exceptions are predicated on the belief that 101 is a condition for patentability. If 101 is a not a condition for patentability, perhaps the Courts were incorrect in characterizing these exceptions.

    Consistent with some of the arguments above, natural phenomena and laws of nature exceptions are really a statement that they are anticipated by nature (i.e., 102). The sticky issue involves abstract ideas, e.g., “what is an abstract idea?” and “why aren’t abstract ideas patentable subject matter?” Some people think that the Supreme Court has given great guidance as to what is an abstract idea and what is not. However, the USPTO is issuing patents that these same people would argue are directed to abstract ideas. As such, you cannot realistically argue that the guidance given by SCOTUS to the question “what is an abstract idea?” has been particularly clear.

    Perhaps when Congress intended that patentable subject matter to “include anything under the sun that is made by man,” they meant it. So long as you can claim your invention as a process, machine, manufacture, or composition of matter, then you are good. Bilski’s process was supposedly an abstract idea. However, to say that a process is an abstract idea requires the type of mental gymnastics by the Courts that many people have derided as being contrived. A process may involve an abstract idea, but it is not abstract. Similar, calling a machine claim clearly directed to a computer system as being directed to an “abstract idea” is also contrived yet some of the Courts have made that argument.

  118. I need to sit down and read, but

    1. Ned’s comments about how these issues really belong in 102/03 reflects (as I understand it, and I admit I’ve avoided reading Prometheus and its progeny in much detail) some of the views of some judges, that this turns in large part on 102-type analyses.

    2. I really would hesitate — strongly — to imply 101 through 112, since that ignore the plain text of the statute. Congress could have put 101 in easily, by either designating it as a “condition of patentability” or putting it with 112 and 251. It chose not to both times. To override a clear decision like that takes some compelling evidence. Show me.

  119. 6, other than through the defenses to invalidity codified in 35 USC 282, where do you suppose a court’s authority to invalidate a patent comes from? You might want to think about your answer, since your entire grade is riding on it.

  120. It implies that Congress did not consider these defenses to be 101 defenses. Rather they considered them to be 102/103 or 112 defenses.

    Ned, have you ever heard the expression “begging the question”?

  121. This seems a bit silly to me. A person should have the right to say that what you gave a patent for isn’t the kind of thing patents are given for. The statute doesn’t apply, which is a defence in all civil cases. The statute shouldn’t have applied.

  122. Agreed. Ditto every other 101 case. They all can be framed under 102/103/112

    Uh, no. And you can think of your own counter-examples, Ned.

    Sheesh.

  123. Lack of utility under section 101 is a defense to infringement since utility is read into the enablement requirement of section 112. If an “invention does not have utility, the specification cannot enable one to use it.” In re Brana, 51 F.3d 1560, 1564 (Fed. Cir. 1995). I would extend that to read patent eligibility into section 112 as well since something that isn’t a process, machine, manufacture, or composition of mattter within the meaning of section 101 can’t be a ‘useful’ process, machine, manufacture, or composition of matter.

  124. Are the claims abstract (indefinite) or do the claims claim abstract (whatever that is) subject matter?

    Morse should be a 112 and not a 101 case.

  125. Professor Hricik, I fully agree with your post that 101 was not listed as condition for patentability. But, what then does this imply?

    It implies that Congress did not consider these defenses to be 101 defenses. Rather they considered them to be 102/103 or 112 defenses. If you pause and consider each and every one of the defenses which we now considered to be 101 defenses, each of them can be phrased as a 102/103 or a 112 defense.

    You pose the question: Could section 280 to be unconstitutional construed as written. Clearly, the problem is not in section 282, but in the courts’ sourcing it statutory authority for the so-called 101 defenses in section 101.

    When Prometheus opined in dicta that the government was wrong in trying to shoehorn the defense against the claims in that case into 102, or hypothetically, even into 103 and 112, the Supreme Court itself was creating a problem it did not have to create.

    But now that Prometheus exists, it might be very interesting to raise the statutory construction issue regarding 282 in some future litigation where a 101 defense is raised. This might force the courts either hold that the defense is nonstatutory, or find authority in 102/103 or 112, as apparently Congress intended.

    For a very interesting case that somewhat raises this issue, I reference Rich’s is opinion in In re Bergstrom. The patent office there tried to raise a product-of-nature exception. Judge Rich framed the issue as a novelty question over something found in nature by the applicant. He said novelty was resolved under 102, not under 101.

    As I mentioned in my earlier post in the other thread, even O’Reilly v. Morse, arguably the first 101 case, pinned its authority, not under what we now considered to be 101, but under what we now considered be to 112. That is the clue to law of nature and abstract claims.

    Utility. 112.

    Double-patenting — 102 (first to issue is considered the first to file/invent, and is statutory prior art (102) to the second to issue).

  126. To those who say that I am arguing 102 and 103 are conditions of patentability, but 101 is not: read the statutes. 102 and 103 begin “conditions of patentability.” 101 does not.

    Dennis, it would have the problem with utility being a defense. And no, not opposed or in favor of amending the statute.

    To those I’m “formalistic.” Well, I believe Congress has its job, and the judiciary, its. Formalism is called “textualism” and I’d love to know why I’m wrong….

  127. In my opinion, the Breyer opinion came to the correct conclusion (invalidating the claims), but for the wrong reasons.

    So what is the “correct reason” for “invalidating” a claim which recites a new invention but effectively prevents a practitioner of the prior art from thinking about an otherwise patent-ineligible fact? Shall we read the mental step out of the claim when analyzing the claim for anticipation/obviousness, as the USPTO suggested (without any legal justification for doing so)?

    Truly, the March of the Mayo Nays is no less amusing and pathetic than watching those zombies descend upon the shopping mall at the end of Dawn of the Dead, seeking that mysterious thing that provided them “comfort” in their earlier lives. Will it ever end? Somehow I doubt it.

  128. “So, tell me why I am wrong. ”

    Because it doesn’t matter whether the patent being invalid is a defense to infringement. That’s why. You may well have infringed an invalid patent, but it doesn’t matter, the patent will not be in force after it is invalidated for a court to enforce a judgement determining you infringe against you.

  129. It’s a fascinating argument, I suppose, if you like arguments. However, I don’t think any (appellate) court is going to be formalistic enough to buy it in the face of the foregone conclusion that a bad claim under the statute is a bad claim and should not be enforced.

    Sure, 102 and 103 are specified as “conditions for patentability”, and 101 isn’t. But 101 is specified as “inventions patentable”, and is clearly a constraint (or a “condition”, if you prefer) on what is patentable.

    All it amounts to is the technicality that by challenging a patent under 101 you’re not questioning its patentability – you’re denying its existence. An inventor may not obtain a patent for a claim that violates 101, so what is to become of such patent once it is illicitly obtained and inflicted on a third party?

    I would argue that 101 is a defense either as a basis of “invalidity” or as a fact that is inherently “made a defense by this title”, because if you may not obtain a particular patent you inherently may not enforce such a patent.

    Sure, we could relegate 101 to “not really a requirement, just slip it past the examiner” status like best mode, but I don’t think the careless enactment of the defenses to infringement is the same kind of thing as the not-so-subtle not-quite-repeal of the best mode requirement. Also, a patent that enables something useful but not quite optimal is still a benefit to society (and perfectly acceptable in most jurisdictions), unlike a patent that restricts thinking about abstract concepts or using laws of nature.

    282 is exclusive: if you want so suggest that it’s not, you (a) have to say “Congress enacted a specific statute laying out defenses, but it’s just a guide” which is not in my view defensible; and (b) it says “shall be defenses,” not “may include” or some-such.

    I don’t see why the “shall” language is necessarily exclusive. If the statute had said “invalidity shall be a defense…” you wouldn’t interpret that as excluding other defenses such as non-infringement. It simply says that the enumerated defenses must be available.

    It’s always a defense that the plaintiff has no right to assert, whatever the reason. That shouldn’t require us to reduce Section 282 to “just a guide”, but surely we can make such mostly harmless additions as logic and justice require.

  130. I think you have a few problems with that analysis.

    1) It relies exclusively upon the language of the headings of 102 and 103. Although you contend that these are, in fact, “conditions” of patentability, it seems to me incredibly hard to argue that the mandatory criteria for a “patent” or an “invention” are not such substantive “conditions”.

    2) Your interpretation would be more consistent with a 282(2) reference to 102 and 103, rather than “part II”.

    3) The provisions 100-103 are not hermetically-sealed. Would you contend that we should overlook the definitional provisions in 100, in examining a 102-103 argument? If not, I can’t see license for overlooking that definitional narrowing in 101.

  131. The problem with Justice Breyer’s opinion, is that much of what he wrote it not correct. The Breyer opinion is like church doctrine proclaiming that the earth is at the center of the solar system. What the U.S. Supreme Court wrote is simply wrong, as any person with a Ph.D. in biochemistry or molecular biology can tell you. Fortunately, on July 3, 2012, the USPTO issued a 13-page memo for use in guidance in complying with the Prometheus decision, where this memo, in effect, re-characterized the Breyer opinion to make it more compatible with firmly established facts in biochemistry, molecular biology, and other sciences. In my opinion, the Breyer opinion came to the correct conclusion (invalidating the claims), but for the wrong reasons. I expect to be publishing a short article on the Breyer opinion, perhaps in September 2012. (This comment is not legal advice. This comment does not necessarily reflect the opinions of the writer’s past, present, or future employer.)

  132. Second Comment – Your approach fits nicely with Prof TJ Chiang’s suggestion of the Supreme Court’s new strict textualism under Bilski v. Kappos.

    link to prawfsblawg.blogs.com

    The question is whether your approach is what he calls the “cartoonist caricature of textualism that is stick-in-the-mud literalist” or instead a more realistic textualism (i.e., nuanced and convincing).

  133. Thanks David. If you are right here, then we also have a problem with utility invalidity decisions as well – right?

    To be clear, I think you are trying to get to the correct statutory interpretation and would not be opposed to an amendment to Section 282 that adds 101 to the list of defense-origins. Right?

    Dennis

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