Beyond Question: RMail Challenges the Use of Subject Matter Eligibility as an Invalidity Defense

RMail v. Amazon.com and PayPal (E.D.Tx 2012)

Over the past few weeks we have been having an interesting debate over whether subject matter eligibility under 35 U.S.C. § 101 constitutes as valid defense to patent infringement that may be raised in litigation. Section 282 of the Patent Act defines defenses available to an accused infringer and that statute has been interpreted to limit defenses available only to those that fit the statutory list. Thus, because improper revival of an abandoned patent application does not fit on the list, the Federal Circuit ruled that mistake by the patentee and USPTO could not be used to later invalidate the patent during litigation. One problem with Section 282 is that it is not a simple list of references, but is instead really a pointer to other sections of the Patent Act. Thus, an accused infringer can assert an invalidity defense based upon "any ground specified in [Sections 100-188] as a condition for patentability" as well as "any requirement of section 112, except that the failure to disclose the best mode." Now, we normally think of the doctrines of invalidity deriving from Sections 102 (anticipation); 103 (obviousness); 112 (written description; enablement; indefiniteness); and 101 (utility and subject matter eligibility). Now, Section 112 is clearly identified as a defense, and the patent act particularly identifies section 102 and 103 as creating the "conditions for patentability" required under Section 282. The lone outsider then is Section 101 whose status as creating conditions for patentability has not been established. Professor Hricik introduced this argument and began the statutory analysis in a post titled Are the Courts Correct in Their Assumption that a Patent Issued on Non-patentable Subject Matter is Invalid?. I continued the argument by considering its application to the new post grant review program in a post titled Can a Third Party Challenge Section 101 Subject Matter Eligibility in the USPTO's new Post-Grant Review Procedure?. Now, in RMail, lawyers are asking Judge Gilstrap (E.D.Tx.) to decide the issue.

RMail's asserted patents are directed to a new way to authenticate service of electronic messages – i.e., to prove that an e-mail was actually sent and received without relying upon key encryption. U.S. Patent Nos. 6,182,219 and 6,571,334. Many of the claims are not limited to any particular "technology" except for various simple data structures. Instead, the claims simply focus on the sending and receiving of the various data elements in ways that could all seemingly be done offline using pencil and paper.

After being sued, PayPal filed a motion for partial summary judgment – asking the court to rule those claims invalid under 35 U.S.C. § 101 as lacking subject matter eligibility.

In response, RMail has argued that subject matter eligibility is not a proper invalidity defense permitted to be raised under Section 282 (in addition to providing arguments on the merits).

VI. CONGRESS DID NOT PERMIT SECTION 101 TO SUPPLY A LITIGATION DEFENSE

Rmail closes by asking the Court to recognize and apply all appropriate statutory barriers against entertaining Defendants' Section 101 defense. The entire jurisprudential "murky morass" of subject matter eligibility need not arise again in any litigation. Myspace, 672 F.3d at 1260 (using "murky morass" label). Rmail acknowledges that this argument is for the good faith extension or modification of existing caselaw. Courts until now have uniformly overlooked Congressional will on this question.

Namely, while Section 101 analyses are appropriate in Patent Office application proceedings, this Court lacks any statutory basis for analyzing Section 101 issues as a litigation defense. Patent defenses are statutory. Under the Patent Act of 1952, only enumerated patent defenses exist. Aristocrat Tech. v. Int'l Game Tech., 543 F.3d 657, 661-63 (Fed. Cir. 2008). If an issue is not denominated an infringement defense within the Patent Act, then the Court lacks jurisdiction to address it. Id.

. . . .

It does not matter that the statutory misinterpretation has lasted so long, or so pervades conventional thinking. Even a long-term statutory misconstruction will not bar restoring the patent system to its statutory limits. See Central Bank of Denver v. First Interstate Bank of Denver, 511 U.S. 164, 177, 191 (1994). . . . Four recent Supreme Court cases arose in the USPTO administrative context, and are thus consistent with Rmail's argument: Benson, Flook, Diehr, Bilski. A fifth, Prometheus, admittedly arose within an infringement defense context. However, no one seems to have pointed out to the Supreme Court this important threshold issue of statutory construction, and statutory limitations on the powers of the federal courts. Prometheus thus does not bar this Court from issuing a correct ruling in the present adversarial context.

PayPal's response is fairly weak – that the dicta of Aristocrat identifies Section 101 as a condition for patentability. (To be clear, the PayPal briefs are quite good – they just lightly treat this particular issue).

The landmark 1996 Supreme Court case of Graham v. John Deere is interesting and sends somewhat mixed signals in its dicta describing the patent act. In that case, the court wrote that "The [Patent] Act sets out the conditions of patentability in three sections. An analysis of the structure of these three sections indicates that patentability is dependent upon three explicit conditions: novelty and utility as articulated and defined in § 101 and § 102, and nonobviousness, the new statutory formulation, as set out in § 103." The odd element of the Supreme Court statement is that it does not identify subject matter eligibility as a defense created by § 101. In Aristocrat, the Federal Circuit explained away the gap by noting "it is beyond question that section 101's other requirement, that the invention be directed to patentable subject matter, is also a condition for patentability." I guess that question is no longer unaskable.

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121 thoughts on “Beyond Question: RMail Challenges the Use of Subject Matter Eligibility as an Invalidity Defense

  1. IANAE, Prometheus?  It claimed correlations that were not functionally related to any further step.  This presents the same problem as in Morse.  Without being tied to a specific application, no use of the correlations was claimed. 
     
    It makes no difference here that the measuring steps were specific, described and enabled.  A critical step was not because it was not used to do anything.
     

     

  2. Regarding patentable subject matter and utility, from the beginning, see Morse, these have been statutory problems under 112.

    It’s possible for a claim to have two things wrong with it.

    Morse’s principle was at least a generalization of a legitimate process he had invented. He might or might not have had a 101-type issue with his claim. Prometheus did. And Prometheus had no 112 issues, as far as I could tell.

  3. My apologies 101 Integration Expert for confusing you with MM. The point I was making was that someone on Ned’s side was joyfully and repeatedly proclaiming (even though such proclaiming was self defeating) that the Prometheus decision was unanimous.

    That Ned selectively parses the Supreme Court decisions as they apply to today’s law is in focus. I think I am being fully reasonable in what I ask for from Ned in order to move this discussion forward. I will shut up now and give Ned the floor to provide his legal support.

  4. “I am asking of you (and I believe this is very reasonable) is to provide the proper legal support for your view of modern law.”

    The more things change the more they remain the same.

    I love the new Patently O.

  5. “As MM would say, “9-0 baby”"

    Umm ..with all due respect MM says 9-0 suckie.

    101 Integration Expert says 9-0 baby.

    Two different commenters.

    Two different meanings.

  6. IANAE, The “statutory” grounds are 102/103/112/251. Equitable grounds must be based on fraud or mistake or the like, or some non statutory basis, like the constitution.

    I will agree with you, that procedural violations are excluded.

    Regarding patentable subject matter and utility, from the beginning, see Morse, these have been statutory problems under 112. One cannot claim a principle (LoN, etc.) in the abstract. One must claim an application. That requires a description of how to make and use it; and the claim must particularly point out that invention and not claim the principle abstractly, functionally, essentially claiming all ways of achieving a result. Such is neither described nor enabled.

    Morse lays it all out.

  7. If what you say is correct, then one can allege that a patent is invalid if there is any violation of a any statutory requirement. Any.

    There’s a difference between a procedural irregularity and an express statutory provision setting out what is the proper subject matter of a grant.

    The grounds for invalidity are defined in 282. No other grounds exist. Period.

    Then call it void or unenforceable instead of invalid. It doesn’t matter. The point is that ultra vires has to be a basis for not enforcing the patent. Even if nobody called “no cheating”.

  8. If what you say is correct, then one can allege that a patent is invalid if there is any violation of a any statutory requirement. Any.

    The patent owner may pay his issue fee late. The amount might be wrong. His attorney may have been suspended from practice.

    Aristocrat Technologies Australia PTY Limited v. Intern. Game Technology, 543 F. 3d 657 – Fed. Cir. 2008 holds to the contrary lest 282 be rendered meaningless. The grounds for invalidity are defined in 282. No other grounds exist. Period.

    If the patent owner obtains by patent by fraud regarding a condition of validity, however, the patent is unenforceable.

    The Supreme Court cases of US v. American Bell Telephone, all of three of them, are consistent. There is no general defense of “ultra vires.” That did exist, but was repealed in 1836.

  9. I think lack of jurisdiction is a legal defense and not an equitable defense.

    The legal grounds for overturning a patent are specified in the statutes themselves.

    You realize how ridiculous this argument is, right? You’re saying that not only does the statute have to set out the PTO’s jurisdiction to act, but it also has to say “no exceeding that jurisdiction”, otherwise there can be no remedy for PTO action outside its jurisdiction. That can’t possibly be the right result. I don’t care what the caselaw says on the point. Which, by the way, it doesn’t even.

    Nitpick all you want as between law and equity, but there is no argument you can make to defend the validity and enforceability of a patent granted without jurisdiction and outside the constitutional power of Congress to even confer such jurisdiction.

  10. IANAE, I think lack of jurisdiction is a legal defense and not an equitable defense.  I think equity interposes when there has been fraud or mistake.  The Supreme Court itself discussed what it held about it equitable powers in its earlier case in a follow-on case involving the same parties.  In that case following case, it said,

    "In United States v. Telephone Company, supra, it was decided that where a patent for a grant of any kind issued by the United States has been obtained by fraud, by mistake or by accident, a suit by the United States against the patentee is the proper remedy for relief, and that in this country, where there is no kingly prerogative but where patents for land and inventions are issued by the authority of the government, and by officers appointed for that purpose who may have been imposed upon by fraud or deceit, or may have erred as to their power, or made mistakes in the instrument itself, the appropriate remedy is by proceedings by the United States against the patentee."
     
    United States v. American Bell Telephone Co., 159 US 548 – Supreme Court 1895, http://scholar.google.com/scholar_case?case=6812365966528575080&q=US+v.+American+Bell+Telephone&hl=en&as_sdt=2,5
     
    Equity cannot act to overturned a legal act without some lack of intention by the government.  The legal grounds for overturning a patent are specified in the statutes themselves.

  11. all I have asked you to do is read US v. American Bell Telephone. It is directly on point.

    It’s actually not as on point as you might think.

    The case was about declaring a patent void “for want of invention by the patentee“, which isn’t the same thing as declaring a patent void for want of invention.

    This much is clear from reading the facts of the case. Nobody said that the claims didn’t cover a statutory invention. The issue was whether Bell or some other party was the original inventor. It’s a misnomer of inventor case, not a statutory subject matter case.

    The PTO has jurisdiction to grant a patent to someone who represents himself to be an inventor. It’s presumably up to the true inventor to challenge that grant in a timely fashion. The PTO does not, however, have jurisdiction to grant a patent on a non-invention. Congress couldn’t give the PTO that jurisdiction even if it wanted to.

  12. IBP, all I have asked you to do is read US v. American Bell Telephone.  It is directly on point.

    The former action in equity, by scire facias, was repealled and replaced by what became RS 4920 and later sectopm 282.

    "Prior to the year 1836, from the earliest enactments of patent law, certain provisions had been incorporated in that law authorizing a scire facias to issue to declare a patent void for want of invention by the patentee, and other matters, which, though instituted by a private individual, was under the control of the official attorneys of the government. This was repealed by the act of 1836, which may be said to be the first real and successful organization of the Patent Office and the system of patent law in the United States. The law on this subject was revised by the act of Congress of July 8, 1870, 16 Stat. 198, and the Revised Statutes of the United States, from which § 4920 is quoted, contain the language applicable to this subject.
    The statute of 1836 repealed the provision for a scire facias."

    United States v. American Bell Telephone Co., 128 US 315 – Supreme Court 1888
    link to scholar.google.com

  13. Ned–

    I think you’re missing the concept of the inherent equitable jurisdiction of the court. Remember that even in the early days of patents, relief was often granted on an equitable basis, and issues were framed in equitable and not strictly legal terms.

    Please don’t make me produce cites! I can, you know…you might be surprised at just what issues various courts have framed in terms of equity.

  14. Ned,

    This reply is non-responsive to the conversation.

    All this is, is more of your “I think.”

    Respectfully, I already know what you think. I am looking for more.

  15. anon, the SC has not considered 282.  When the did consider RS 4920, they essentially held it to be limiting, which is reasonable and logical.  I think the Court will follow US v. American Bell Telephone.

  16. And Ned, with all due respect, that “simply dicta” still carries more weight than your “they must be wrong.”

    The SC was very clear and purposeful in its choice of words. You in the past have literally made thousands of posts built on such weight (and in fact, still carry your anti-business method torch on that weight).

    It is incongruent for you to accept the words when they fit your agenda, and dismiss them when they do not – especially where, as here, the words are quite explicit. All I am asking of you (and I believe this is very reasonable) is to provide the proper legal support for your view of modern law.

  17. Anon, with all due respect, the Supreme Court has yet to hear §282 issue, and it's opinion that patentable subject matter arises under section 101 in not under sections is simply dicta.

  18. Ned,

    For all of your explanation, you have (once again) completely neglected the law and the Surpreme Court post-1952.

    Respectfully, you are not addressing the point before you. Even if as you say, Prometheus is considered dicta, you have not answered that dicta with anything from the modern era that addresses the very clear language and understandign of the Supreme Court, which not only explicitly traces its judicial exceptions to the current law of 101, they flat out reject the theory you are espousing. Whether dicta or not, a flat out rejection like that needs an answer based in current law.

    In other words, please stop turning back to law that is not in place and is no answer to how the Supreme Court has announced how the current law is to be read and understood.

    As MM would say, “9-0 baby

  19. IBP, not really.  Part II has, what, 50+ sections, all making requirements in order to obtain a patent.  If ultra vires is the ultimate arbiter of invalidity or unenforceability, every single provision, every one of them, is grounds for holding a patent unenforceable or invalid.  However in the recent case, the Federal Circuit held, and rightly so, that the statutory framework limited defenses for invalidity to specific statutes, namely conditions for patentability set forth in part two (§102, §103), §112 and §251.  If this statute could be so easily evaded by framing the issue as one of ultra vires, then the holding in that recent Federal Circuit case would have been different.  Every requirement for patentability set forth in Part Two would be grounds for holding the patent invalid or unenforceable.  Every single one.  But such a holding what essentially erase the statute, and cannot possibly be correct.

     

     

  20. Ned–

    Exclusivity isn’t expressly claimed for 282.

    Whether by writ or, now, civil action, and whether labeled as “invalidity” or “unenforceability”, it is within the power of the federal courts to grant relief on the basis of an administrative body’s lack of power or authority. The jurisdiction of the court is both legal and equitable.

  21. Anon, elsewhere I have posted an excerpt from Federico's commentary on the '52 Act. He was discussing the statutory source for Supreme Court cases involving "invention." The Supreme Court never made clear which section they were relying on. However, in analyzing the cases, he determined that the better argument was that "invention" was essentially a novelty discussion, i.e., just how great a difference from the prior art must the claimed subject matter be before it qualifies to be an invention. That is why he wrote §103 as a modification of §102.

    Prior to 1952, section 101 did not exist. The defenses against validity were set forth in the revised statutes 4920. The requirements for patentability was set forth and revised statutes 4886.

    In none of the cases decided before the '52 Act, did the Supreme Court ever identify the statutory authority for patentable subject matter. O'Reilly v. Morse however clearly identify the problem to be a problem with the section we now know as §112.

    Furthermore, in cases such as Parke-Davis, the court clearly was relying on novelty in considering the issue of product of nature.  I believe the best statutory section that describes the exception would be §102 (f).

    Turning back to O'Reilly v. Morse, that case also began the doctrine that one cannot claim the invention functionally.  In later cases, Supreme Court clearly stated that a major problem when claiming inventions functionally was that they did not particular point out and distinctly claim the invention as required by the statutes.  We now know this requirement to be section 112, paragraph 2.

    Finally, double patenting really is an equitable defense primarily based upon waiver.  It was one of the basic defenses available to the defendant in equity using the discarded writ of scire facias.  In essence, the owner essentially declares that the first-to-issue patent has priority over the second making it prior art to the second.

    The issue of statutory authority for the patentable subject matter defenses has never clearly been litigated and decided.  The Supreme Court decision in Prometheus is little more than dicta.  If it comes to pass, that section 101 is not a statutory defense to patent validity, that does not mean that patentable subject matter is not a statutory defense.
     
     
     
     
     

  22. Ned,

    May I remind you that you are pursuing logic that the Supreme Court dismissed by a vote of 9-0 in Prometheus?

    Yes, you have said that you thought the Supreme Court was wrong, but you have not provided anything to overcome (assuming for arguement’s sake) the persuasive dicta of an unanimous Supreme Court, who explicitly traced their (judge-made?) judicial exceptions to an implicit reading of 101.

    I get that you want to move the legal power to a different part of the statute, but the body of government responsible for determining what the law means has taken a position incongruent with your position. It takes more than a “I think they are wrong” to make your case, and simply repeating your conclusion when your case has such a large whole is a bit insulting of the general reader’s intelligence.

  23. Prof., having given it a bit more thought, I believe patentable subject matter and lack of patentable utility are in fact section 112 defenses (just like functional claiming), see O’Reilly v. Morse, product of nature is a prior art defense under section 102(f), and double patenting is an equitable defense based on the concepts of waiver, i.e., one waives his right to rely on earlier filing date or dates of invention in the case of a second-to-issue patent.

  24. Lemley..Hmmm. That name sounds familiar. Isn’t that the person that wants to limit useful arts to technology of the 1800′s ?

    I think Ned mentioned him once or twice. Which isn’t surprising, considering Neds views.

  25. “Ned,Still waiting for you to return to the topic of our discussion”

    Well, I don’t know exactly what the discussion was but you obviously backed Ned into a corner in which he was going to have to admit he was wrong, or he saw inevitable defeat as the outcome. Hence, his ignoring you now.

    Just look at the way Ned ducked “Integration Analysis”. MM and 6 too for that matter. The anti patent crowd always cuts and runs in these debates.

  26. Ned,

    You have not yet presented clear and intelligent questions for me to answer. You still have work to do and the ball is in your court.

  27. Ned,

    I did not answer the other question because you did not take the steps in the beginning of the conversation to make any meaning from an answer for which I were to provide one (and that too was on a separate thread – you really really really need to pay atention to what is going on).

    Likewise, here too, you insist on evading a logical approach and you mistate what is clearly my position for G_od only knows what purpose.

    You keep on saying something completely inane and ignore the fact of what I say in regards to 101 being an open gate – and that the Office does not have – NOR EXERCISES any law making in evaluating somethign against the open gate as written.

    In other words, not only is your attempt to write what you think my position to be at 1:58 PM wrong, it is inconcievably wrong given the posts on this thread. I can only assume that you either are purposefully mistating what I am posting or that you just have no clue about you.

  28. Anon, the let me state what I understand your position to be:

    In the case of isolated DNA, the PTO had no authority to issue patents in the first place.  In the case of Beauregard claims, ditto.

    Also I do not believe you ever answered the question I posed to you a number of times, if the last step of the process is performed in the United States on an article that embodies the other steps of the process performed by others, is there infringement under any theory?

  29. Malcolm, "reverse doctrine of equivalents?"  Isn't this central to the current debate about claim construction and whether we should liberally construed claims or construe them to be no broader than the invention disclosed?

    Regardless of the answer to that question, the reverse doctrine of equivalents has been enacted into law in the form of §112, paragraph 6.  As identified by the Supreme Court in Graver Tank, the doctrine originated in the case of Westinghouse v.  Boyden Power Brake Company.  It actually involved a functionally claimed element.  The Supreme Court there said that as you could not claim the point of novelty functionally, they were going to construe such a functionally divine claim to cover the corresponding structure described the specification and equivalents thereof.  That was a rule of construction of functional claims prior to Halliburton, and it was enacted into law in §112, paragraph 6.

  30. To respond to this post, then you acknowledge that the PTO has the right to decide patentable subject matter in cases of first impression?

    No Ned, I am not sure that I could be any more clear that I reject the very premise of your position as illogical.

    You do not seem to grasp the concept of “open gate.” It appears that you think that Congress must first deliberate and allow something “new” before that somethign new can be considered to fall under the umbrella of patent law. That’s just not how it works. Nor is it how it is supposed to work. Nor is it how it even could work. It’s a baseless and nonsense view.

    As for “since I am replying by e-mail, your constant reference to prior posts is annoying” – it is you that needs to conform to normal interactions on these blog threads. It is more than just annoying for anyone interacting with you in your preferred manner. You post irrelevancies and cross-contaminate discussions by responding by email and make what should be a pellucid conversation unnecessarily opaque. If replying by email is only convenient for you and causes so much disjoint in your ability to intelligently track the conversation and reply, then it is you that should change the method of interaction.

  31. And I am reading a draft of the infamous Lemley, who also is about attacking process patents (surely to no one’s surprise).

  32. Malcolm,
    Equity
    Law
    You apparently recognize the difference.

    I do. Did section 282 also bar application of the reverse doctrine of equivalents, in your view?

  33. anon, since I am replying by e-mail, your constant reference to prior posts is annoying.

    To respond to this post, then you acknowledge that the PTO has the right to decide patentable subject matter in cases of first impression?

  34. assume that congress has not expressly authorized patents on isolated DNA and B-claims as a class.

    Why?

    Congress does not expressly authorize patents on particular things (for any particular thing – hence your longstanding confusion between the category and particular claim) for any number of simple logical reasons – for example, you cannot know innovation areas a priori. That is precisely why 101 is an open invitation.

    You ask me to accept an assumption that is neither germane, wise, nor even logical.

    As to any type of testing, that too is already present in 101. What the PTO is doing is deciding to issue (or not) against something already in place. Your intimation of power to decide is confused with an implicit power to write law against which to decide.

    Further, it has absolutely no tie into the discussion on agency power. So instead of asking me to make an invalid assumption to prove some unknowable point, cam we return to the discussion we had already statrted?

    Once again, I ask you to return to my post at Sept 12 at 4:30 PM.

  35. Why don’t you ask Hans, Orily, or even yourself, Malcolm Mooney?

    I believe Hans has already expressed his view of the subject. Not my sockpuppet, though. I have no idea who “Orily” is. MM, of course, is an abbreviation of “Malcolm Mooney” and is not an attempt at sockpuppetry.

    The major (ab)user of sockpuppets in these threads has been plainly identified. That individual currently uses the name “anon” (and likely continues with sockpuppets — a habit like that has got to be really really hard to break!).

    In any event, nobody is surprised that “anon” refuses to make such a prediction. I’m pretty sure I know where “anon” stands because “anon’s” propensity for getting it wrong is only matched by “anon’s” propensity for revealing his “secret” identities. But I thought I’d give “anon” the chance to put forth a clean unambiguous prediction here, now that we have a chance to learn something about his great skills and knowledge of patent law, how the system works, etc.

  36. anon, assume that congress has not expressly authorized patents on isolated DNA and B-claims as a class.  The question to you is this:  can the PTO decide to issue such patents without first testing them through the courts to decide?

    I think they can.  But this would imply they have the power to decide the question in the first place.

  37. Malcolm,

    Equity

    Law

    You apparently recognize the difference.

    The statutes list the legal grounds for holding a patent invalid.

    Equity would hold a patent unenforceable if it was issued through fraud, mistake or ultra vires.  The latter would include a patent issued beyond either the statutory authorization or constitution if authorized by congress via statutes.

    From Mowry v. Whitney, 81 US 434 – Supreme Court 1872
    "The ancient mode of doing this in the English courts was by scire facias, and three classes of cases are laid down in which this may be done.
    1. When the king by his letters-patent has by different patents granted the same thing to several persons, the first patentee shall have a scire facias to repeal the second.2. When the king has granted a thing by false suggestion, he may by scire facias to repeal his own grant.3. When he has granted that which by law he cannot 440*440 grant, he jure regis, and for the advancement of justice and right, may have a scire facias to repeal his own letters-patent.[*]

    From US v. American Bell Telephone:
    "The statute of 1836 repealed the provision for a scire facias. It is now argued that the repeal of this provision, together with the enactment of the provision of § 4920, shows that the only remedy for the improvident issuing of a patent is to be found in the language of that section…

    "The argument need not be further extended. There is nothing in these provisions expressing an intention of limiting the power of the government of the United States to get rid of a patent obtained from it by fraud and deceit. And although the legislature may have given to private individuals a more limited form of relief, by way of defence to an action by the patentee, we think the argument that this was intended to supersede the affirmative relief to which the United States is entitled, to obtain a cancellation or vacation of an instrument obtained from it by fraud, an instrument which affects the whole public whose protection from such a fraud is eminently the duty of the United States, is not sound."

    It appears from this that the SC recognized Congress's power to regulate the scope of legal and equitable challenges to patents by the public. But its power is limited by the Constitution.  If PTO issued a patent within its statutory grant of power, that, nevertheless, was in someway not authorized by the constitution, I believe an adversely affected party could raise a constitutional challenge to the patent.  The ACLU suit regarding isolated DNA has that flavor.  While framed in 101, it really is a constitutional challenge.

    Parenthetically,  the Supreme Court in the case of copyrights has recognized that Congress can legally authorize the restoration a copyright even after it has fallen into the public domain.  

    The legal grounds are for challenging a patent are specified in Section 282.  The Federal Circuit has already held that one cannot challenge the validity of a patent on ground not specified in Section 282.  If a party did, this would essentially erase Section 282.

    From all of the above, Congress has the power to exclude 101 from validity challenges UNLESS that would somehow violate the constitution, and it would, I think, if the patent were beyond the power of congress.  Granting patents to non inventors or those in privity, IMHO, is one of the things beyond the power to authorize.  Granting patents that have an indefinite term is another.  Granting patents that are not withing the useful Arts (ultility?) is also excluded.  But, beyond that?

    Can Congress grant patents that withdraw information from the public domain not invented or discovered by the patentee?  I think not.

    But, beyond that, Congress has a lot of power within the scope of its constitutional grant.

  38. Ned, are you suggesting that your examples of patents on isolated DNA and Beauregard claims violate some part of the patent act?

    And what does that have to do with our discussion? Please return to my post at Sept 12 at 4:30 PM.

  39. “Yes, I did. Because when you have a process claim, it’s pretty easy to tell that it’s not a composition of matter claim.”

    That’s the most inane statement I have ever read on this blog. What does composition claims, or ANY category, have to do with the “process” category being clearly statutory??

    Back to the tower with you!

  40. You left out process.

    Yes, I did. Because when you have a process claim, it’s pretty easy to tell that it’s not a composition of matter claim.

  41. “You ever notice the types of people that seem to neglect that point of law?”

    Yes, anti-patent types, and of course Ned, MM, and IANAE.

  42. He fully intended that 102 and 103 and 112 contain the entire gamut for holding a patent invalid.

    Once again (and for the last time): I’m talking about unenforceability. It’s fine with me if you don’t want to address that issue. But for the love of cripes please don’t pretend that I’m talking about something else just so you can poot forth some case law that is not relevant to the issue I’m raising. Don’t make me go sockpuppet on you. ;)

  43. MM, I'm not so sure that you're understanding what the Supreme Court held in AT&T. It held that the writ based upon ultra Vires was repealed.  The grounds for invalidity are specified in the statute. That is it. There is nothing else.

    Frederico took care to include in section 102 and section 103 the whole grounds for invalidity based upon prior invention and lack of invention. He fully intended that 102 and 103 and 112 contain the entire gamut for holding a patent invalid.

    Sent from iPhone

  44. “Similarly, when your claim is clearly statutory, nobody cares whether it’s technically statutory as a machine, as a manufacture, or as a composition of matter. Nobody ever argues which one it is, because it doesn’t matter. ”

    You left out process. A process is one of the four enumerated categories and is equally as statutory as a machine, composition, and article of manufacture. Never forget that!

  45. If the intimations are true, it is precisely because 6 is nowhere near the top percent of his LSAT Class that his pursuit of higher education in law is nearing its nigh half-decade dormant mark.

    Why that is the case is quite evident.

  46. unenforceabilty is based on fraud on the PTO and that is discussed in AT&T.

    Yes, I’m aware of those grounds for unenforceability. The question I’m asking is: what law or doctrine precludes the Supreme Court (or any other court) from basing unenforceability on other grounds besides fraud?

    The patent statute is clear that not all subject matter is properly the subject of patents. So what are courts to do when such a patent is mistakenly granted by the USPTO? Are we forced to simply shake our heads and click our tongues and say “Gee, too bad for the public but congrats to the patent owner!”

    This subject really is incredibly pedantic and tiresome. It’s too bad courts can’t sanction litigants for that. ;)

  47. IANAE, the specific holding of AT&T was that, even though the writ of scire facias (ultra vires) was repealed, that RS 4290 allowed a defense based on fraud and that the action could be pursued by the government.  You might actually want to read the case.

  48. “since your sockpupettry seems to have settled down for the moment, what do you predict the Supreme Court will do with Myriad’s nucleic acid compositions?”

    Why don’t you ask Hans, Orily, or even yourself, Malcolm Mooney?

  49. “and it does not include a general writ that a patent was issued ultra vires. ”

    That’s kind of silly, isn’t it? We grant the PTO some jurisdiction, and if it acts outside its jurisdiction – in creating rights for people to sue other people, no less – we shrug our shoulders and say “oh well, that zany PTO is at it again!”

    Not only do we need to have a set of rules, we need another rule at the end that says “no cheating”. Otherwise, someone will stand up in court one day and claim that “you never called ‘no cheating’.”

  50. Someone should point out that there is controlling Supreme Court authority on grounds for invalidity, and it does not include a general writ that a patent was issued ultra vires.

    US v. AT&T.

  51. IBP, the Supreme Court has already held in AT&T that the general writ to void a patent based on ultra vires (scire facias) was repealed by Congress in 1836. The sole grounds for holding patents invalid/unenforceable are specified in Section 282. That, nothing else, nada, zilch.

  52. A fifth, Prometheus, admittedly arose within an infringement defense context. However, no one seems to have pointed out to the Supreme Court this important threshold issue of statutory construction, and statutory limitations on the powers of the federal courts. Prometheus thus does not bar this Court from issuing a correct ruling in the present adversarial context.

    Weak. See, e.g., NRA v. Chicago, 567 F. 3d 856, 857-58 (7th Cir. 2009):

    Plaintiffs say that a decision of the Supreme Court has “direct application” only if the opinion expressly considers the line of argument that has been offered to support a different approach. Yet few opinions address the ground that later opinions deem sufficient to reach a different result. If a court of appeals could disregard a decision of the Supreme Court by identifying, and accepting, one or another contention not expressly addressed by the Justices, the Court’s decisions could be circumvented with ease. They would bind only judges too dim-witted to come up with a novel argument.

  53. I just replied to MM on the issue of whether the courts had the power to declare invalid a patent that congress had declared valid.

    I didn’t raise that issue so I’m not sure who were responding to but it certainly wasn’t me.

    I did raise the issue of unenforceability and I’ve not seen any compelling explanation as to why a court could not find an otherwise valid patent unenforceable because it was directed to ineligible subject matter.

  54. I disagree with your opinion that it is unimportant to specify correctly the legal basis of a decision–especially where that basis is ultra vires by an agency such as the PTO.

    I’m not saying that as a general rule. I’m saying that in this very specific case, where the test is going to be “does this claim comply with 101″ regardless, and where the result is going to be “you can’t enforce this claim” regardless, it doesn’t make any difference whether the defense finds its authority in one form or another. The end result is the same.

    Similarly, when your claim is clearly statutory, nobody cares whether it’s technically statutory as a machine, as a manufacture, or as a composition of matter. Nobody ever argues which one it is, because it doesn’t matter. The test is more or less the same, and your claim is just as enforceable either way.

    Now, if 101 turns out not to be a valid way to attack a patent at all, I agree that every possible justification for using 101 as a defense should be independently considered and rejected. But I don’t think that’s the case, and the Supreme Court doesn’t seem to think so either.

  55. IANAE, I just covered this point and post I've made to you a couple minutes ago.  The exclusive defense for invalidity is provided by §282.  There is no other, the general defense provided by scire facias having been repealed by Congress in 1836.  You might want to read US v.  AT&T.

  56. IANAE, you might want to check my post above in reply to Malcolm, the last at 11:04 today. The Supreme Court has already ruled in the case of US v. AT&T that the exclusive source of invalidity is in what we now know to be §282. This is the analog today of former RS 4920. Congress expressly repealed, the court held, the more general writ of scire facias in 1836 that enabled a defendant to set up the more general defense of lack of the invention, are ultra vires.

    The defenses of RS 4920 are specific, and some of them were incorporated directly into what we now know to be §102.

    We also know that Supreme Court continued to develop the law regarding “invention” over the years regardless. That law was enacted into statute by the creation of §103 in 1952.

    It does appear that there is no general defense that a patent is invalid because it was granted ultra vires. That defense was specifically repealed by Congress, as noted by the Supreme Court itself in AT&T.

  57. IANAE–

    While I am in entire agreement with the substance of your post, I disagree with your opinion that it is unimportant to specify correctly the legal basis of a decision–especially where that basis is ultra vires by an agency such as the PTO.

  58. anon, the question is not patentabiltiy, but validity.  See my two posts above on this topic, largely taken from US v. AT&T, and a case describing why some defenses from RS 4920 were moved into 102.
     
    The last post was at 11:04 today.

  59. MM, further to my post of 07:59, it has to be emphasized that prior to ’52, the exclusive grounds for invalidity were specified in RS 4920 that became 282. It was this statute, not the 101/102 analog, that provided, for example, that only the first inventor might obtain a patent.

    For example, in revising the ’52 Act, Frederico moved the law about prior invention into 102. Paulik v. Rizkalla, 760 F. 2d 1270 – Court of Appeals, Federal Circuit 1985 (Rich, concurring) link to scholar.google.com

    It is worth noting that Congress repealed the more general defense of scire facias in 1836 that essentially related to “ultra vires.” A fuller quote from the AT&T is appropriate:

    “Prior to the year 1836, from the earliest enactments of patent law, certain provisions had been incorporated in that law authorizing a scire facias to issue to declare a patent void for want of invention by the patentee, and other matters, which, though instituted by a private individual, was under the control of the official attorneys of the government. This was repealed by the act of 1836, which may be said to be the first real and successful organization of the Patent Office and the system of patent law in the United States. The law on this subject was revised by the act of Congress of July 8, 1870, 16 Stat. 198, and the Revised Statutes of the United States, from which § 4920 is quoted, contain the language applicable to this subject.

    The statute of 1836 repealed the provision for a scire facias. It is now argued that the repeal of this provision, together with the enactment of the provision of § 4920, shows that the only remedy for the improvident issuing of a patent is to be found in the language of that section.

    RS 4920, then read in pertinent part:

    “Sec. 4920. In any action for infringement the defendant may plead the general issue, and having given notice in writing to the plaintiff or his attorney thirty days before, may prove on trial any one or more of the following special matters:

    “First. That for the purpose of deceiving the public the description and specification filed by the patentee in the Patent Office was made to contain less than the whole truth relative to his invention or discovery, or more than is necessary to produce the desired effect; or,

    “Second. That he had surreptitiously or unjustly obtained the patent for that which was in fact invented by another, who was using reasonable diligence in adapting and perfecting the same; or,

    “Third. That it had been patented or described in some printed publication prior to his supposed invention or discovery thereof; or,

    “Fourth. That he was not the original and first inventor or discoverer of any material and substantial part of the thing patented; or,

    “Fifth. That it had been in public use or on sale in this country for more than two years before his application for a patent, or had been abandoned to the public.”

    AT&T, at 371.

  60. But, if Congress stripped from validity 101, what does that mean? The only one who has the “power” to decide is the PTO. If they issue the patents, they are valid.

    The PTO doesn’t have the “power” to decide if they have no statutory jurisdiction to grant patents to non-inventions under 101. Doubly so, if Congress doesn’t have constitutional authority to give the PTO that power in the first place.

    I don’t care what word the courts choose for “you can’t collect on this patent because of 101″. We already seem to have settled on “ineligible”, and it’s pretty pointless to ask the Supreme Court to start saying “void” or “unenforceable” instead, which is the most the law on this point is ever going to change.

  61. You do know the point of this discussion, do you not?

    (it’s not evident that you are totally cognizant of what’s going on)

  62. Can you give something that you are “powerless” to give?

    If I give you the empire state building, can you march up and evict everyone there?

    It is precisely when the inchoate right has not ripened is when the government can say “no.”

    And actually, there are plenty of holes in the “everything from 102/103/112″ theory (for instance, the 102 notions depending on “in this country” don’t translate well to an eligibility bar). Also, you are assuming that nature is static in order to inject the time element into the Law of Nature argument (and the fact that the judicial exceptions are not time-dependent is one horse well beaten).

    There is a rampant neglect of remembering that there is a very real difference between patent eligibility and patentability.

    You also have to deal with the fact that the Supreme Court (9-0) shot your premise down. Your keep on trying to point out something that won’t fly is why I haven’t even bothered dismantling the offerings. It’s another DOA.

  63. anon, I just replied to MM on the issue of whether the courts had the power to declare invalid a patent that congress had declared valid.  No.  See, United States v. American Bell Telephone Co., 128 US 315 – Supreme Court 1888

    The grounds are the Statute, and fraud and mistake.



  64. Mr. anon, I am not so sure that the PTO has the authority under 101 to deny a patent to one whose application fully complies with 102/103/112.  There is no "condition" set forth in 101.  That is a general description of the subject matter of patents.  It is a source of power given to the Government.  It does not allow the Government to deny a patent that otherwise complies with 102/103/112, and that otherwise comply with the other statutory requirements, such as payment of fees, etc.

    As I have tried to point out, every single 101 requirement that I know of originated at one time under what we now know to be 102/103/or 112, or could be.  Utility, for example.  How can you comply with 112 if you cannot describe how to make and use something?

    Law of Nature, etc., — this is a 102 problem.  

    Is there anything else?  

    Double-patenting:  that originated as a 102 problem.  Where is there a requirement that a rejection be made under 101?

  65. MM, United States v. American Bell Telephone Co., 128 US 315 – Supreme Court 1888
    link to scholar.google.com,

    somewhat considered the question you posed. It found a court of equity could set aside a patent based on the grounds set forth in Sec. 4920, the predecessor to Sec. 282, for fraud on the Patent Office.

    Cf., McCormick Harvesting Machine Co. v. Aultman, 169 US 606 – Supreme Court 1898, the courts, and not the governmental, has power to set aside a patent for fraud or mistake.

    Given that Congress has limited the grounds for invalidity by statute, and by implication, declared that any that are not invalid under those grounds are valid, the courts would not seem to have the power to set aside a patent that was “validity” granted except if it were procured by fraud, or granted by mistake.

  66. Anon, binding on the PTO does not mean, I think, binding on the US government.

    Great. But what has this to do with our discussion of agency power?

  67. the rejection would haver to be entirely framed on 102/103/112

    Actually Ned, 180 that. For rejections, 101 is still in play for the Office. For post- grant validity challenges (282) is where the play of 101 comes into question.

  68. anon, perhaps.  But it seems to work in new matter cases.  But, you are probably right, the rejection would haver to be entirely framed on 102/103/112.

    BTW, the original double-patenting cases were "102" cases.

  69. Anon, binding on the PTO does not mean, I think, binding on the US government.  We have seen there is a difference in the DNA case, where the PTO was granting patents that the government thought were ineligible.  

    Regardless of whether the PTO thinks it has the power or not, the US government can still litigate that issue in the appropriate case.

    But, if Congress stripped from validity 101, what does that mean?  The only one who has the "power" to decide is the PTO.  If they issue the patents, they are valid.

  70. Since you’re in the business of predicting what the Supreme Court will do and will not do, and since your sockpupettry seems to have settled down for the moment, what do you predict the Supreme Court will do with Myriad’s nucleic acid compositions?

    Will it grant cert? And will they find the claims ineligible under 101?

  71. I politely suggest that you are a little confused with suggestions intermingling rejections and discussion of 282.

    Two different ballparks.

  72. Ned,

    Two things:

    1) Agency Power

    The ability to delegate power is contolled in the agency organic law (that’s why I mentioned it). The Supreme Court never wrote a law allowing that delegation post facto – they ruled on existing law as written by Congress.

    2) Tafas and the limits of Agency Power for the USPTO

    A Supreme Court case is not needed to settle the power limit for the USPTO. Tafas is binding on the USPTO. Recall the discussions on exactly why vacatur was so critical in that case.

    Again, you may choose to suggest any number of thoughts and ideas. This one, though, is DOA.

  73. anon, but we in fact have US Supreme Court cases that actually allow Congress to delegate quasi legislative authority to agencies.  

    Then there is the matter of Tafas.  But that is not a Supreme Court case.  It is a district court case.  I would suggest that the issue of PTO power is not fully decided yet.

  74. Is it fundamentally wrong in the case of the PTO?

    The great legal answer: it depends.

    Is the scheme backed by the proper grant of power in the organic agency law?

    A little case called Tafas comes to mind.

    So…

    On top of the Judicial Branch in the Supreme Court acting ultra vires or unconstitutional (let’s go with unconstitutional based on the definition previously supplied) by writing patent law, we have the executive branch also de facto writing patent law…?

    If only I were an academic, I’d write a paper on this!

  75. Maurice, really?

    The framework established by Frederico is that the PTO decides what is patentable subject matter. If they issue patents on DNA, they are valid. This seems to allow the PTO the power to declare what is eligible.

    If they determine, however, that something is ineligible, then the dissatisfied applicant can appeal, ultimately to the Supreme Court.

    This would leave in the agency’s hands a lot of power to decide these issues. Other agencies have such substantive power, why not the PTO?

    Ultimately, if the PTO starts issuing patents that are completely frivolous, Congress could overrule it by statute. That is the scheme practiced generally in the US regarding regulatory agencies. Is it fundamentally wrong in the case of the PTO?

  76. Telling, what we have then is the PTO being the ultimate arbiter of patentable subject matter, not the Supreme Court. If the PTO decides to grant the patent on some new technology, that is within that agency’s discretion. Only if they do not issue the patent does the applicant have a right to complain to the Supreme Court.

    Thus, if the claim remains patentable under 102/103/112, it is valid.

    In point of fact, this seems to have been what has actually happened in the case patents on isolated DNA, patents on Beauregard claims, etc. The PTO decided to issue the patents. If they did, so be it. The patents are valid.

    The singular objection to this is that Congress has NOT granted the PTO substantive power. But that is exactly what they would have if they could, by choice, issue patents in an field that the Supreme Court or Congress would not.

  77. anon, prior to '52, the SC cases on patentable subject matter did not identify a statutory provision at all.  This probably had something to do with the fact that what we now know as 101 was integrally intertwined with what we now know as 102.  (This also helps explain why novelty is integral with patentable subject matter analysis.)

    With the breakout of 101 from 102 in '52, the SC began for the very first time to pin their statutory authority on 101, not knowing about 282.  What are they do now?  

    I politely suggest a combined 101/102 (or 112) rejection, exactly in the mode of 132/112.

  78. May I suggest a statute that permitted the impermissible just might have a constitutional problem.

    You might suggest that.

    It would not go very far.

    The Supremes are not likely to ignore a constitutional problem like that without explicitly saying that Congress has a constitutional problem (that’s kind of what they do). You are asking the Surpemes to be stuffing some very large elephants into som every tiny mouse holes.

    Also, the Supremes have been fairly diligent in pointing out that their pronouncments are grounded in the Congress words (albeit implicitly) – to invoke the idea that the Congress words are unconsitutional, and then to implicitly rely on those very same (unconstitional) words just does not seem likely, does it?

  79. “Just because you didn’t understand the nuances being debated does not make it frivolous”

    There are no “nuances” left. There are only people who do not understand that there are no “nuances” left and which continually try to manufacture such from thin air.

    “I wouldn’t be surprised if Dennis doesn’t ask is students to debate the issue in class — or have it on the final exam.”

    All good and well, it does make for an excellent exercise for young attorneytar d to bes. I would bet that only one or two outstanding students will successfully realize that the law hasn’t changed in over 30-40 years and that no new nuances have crept up since.

  80. Plurality:
     
    1. Most 101 problems present 102/103/112 problems as well.  If they do not, there is something wrong with the 101 problem.
     
    2. Judicial exceptions based on the constitution and not the laws you say?  May I suggest a statute that permitted the impermissible just might have a constitutional problem.

  81. I think you might have a typo – you cite “The landmark 1996 Supreme Court case of Graham v. John Deere . . .” Unless there were TWO landmark Supreme Court cases captioned Graham v. John Deere, I think you meant 1966 instead of 1996 . . .

  82. With great respect, the argument that Section 101 does not provide a defense to a claim of patent infringement is so frivolous that Rule 11 sanctions could properly awarded for anyone who makes it. Further, it is misleading to frame the issue in relation to solely to invalidity–rather, the defense renders a patent unenforceable and it also is arguably jurisdictional. The best word to describe this argument—silly.

  83. I guess its managers would normally just let everything through to issue.

    Why would you guess that?

    I struggle to see the basis for coming to that conclusion, as reality simply paints a different story.

    But don’t let facts get in the way.

  84. Good point, Tell. There are some issues best kept out of inter partes disputes, for the sake of procedural economy. Thus, Europe charges the EPO with the task of examining patent applications and not letting them through till they are clear enough to comply with the provisions of Art 84. But, quite deliberately, Art 84 is no ground on which to dispute validity after issue. Was there ever a patent, in the history of the world, that on issue was “clear” to a value of 100%? So, would there ever be an assualt on validity without putting clarity in issue?

    Of course, there might be a downside to your plan. The EPO, as the last instance on clarity, takes its filtering job very seriously. Only the clearest of clear gets through to issue, to the frustration of many an inventor. Bear in mind though, that there is no supervisory court outside the EPO, to tell the EPO when it is too strict.

    Conversely, every PTO rejection being appealable, all the way to SCOTUS, and the USPTO having to drive down its backlog, I guess its managers would normally just let everything through to issue. Time thinking any 101 thoughts is wasted time, right?

  85. My love says she would marry only me,
    And Jove himself could never make her care.
    What women say to lovers, you’ll agree,
    One writes on running water or on air.

  86. “The ago-old exclusion of “abstract ideas” is based on § 101.”

    A process, machine, manufacture, or composition of matter, or any new and useful improvement thereof are not an abstract idea. However, we have courts seriously debating whether a claim that recites a processor and a memory is directed to an abstract idea. 101 doesn’t belong in the hands of the Courts because it is an extremely simple test to apply at the USPTO and because the Courts are using the “abstract idea” exception to make policy pronouncements and rewrite the statute.

  87. Mr Bakels, I was amused to read that you see this as moving US patent law further away from European patent law. You remind me of that old London Times front page title: FOG IN THE CHANNEL; EUROPE CUT OFF.

    I was puzzled by your categorising EPO caselaw on Art 52 EPC as “pollution”, especially after you had (correctly) pointed out that eligibility ought to be seen as an “absolute” requirement (as opposed to any attempt to do it “relative” to today’s state of the art. At the EPO, Art 52 remains a sharp, clear measure of patent eligibility, that very effectively filters out a huge amount of ineligible matter before it gets as far as the obviousness filter. The different and complementary roles of Art 52 (technical character Y/N) and 56 (solution to an objective technical problem) are by now abundantly clear. So, would you like to expand on what you mean by “pollution”?

  88. The USPTO already examined the claims under 35 USC 101. Are you going to set aside an agency’s determination that the claim was directed to a method to invoke “ab initio”?

    Perhaps this is what Congress was thinking when they omitted 101 from 282. They were concerned that the Courts were going to ignore the VERY BROAD inclusive language of 101 — which is precisely what has happened. The Courts have continued to play around with the definition of what is statutory subject matter for the last half century. However, they continue to ignore the STATUTE when determining what is STATUTORY subject matter.

  89. § 101 is the only “absolute” test, i.e. the only test independent from the state of the art. The ago-old exclusion of “abstract ideas” is based on § 101 (there is a link with § 112 only insofar as overly abstract subject-matter CANNOT be described sufficently for the PHOSITA, as required by §112).
    In view of persistent problems to interpret the “abstract ideas” exclusion (after decades of fruitless attemtps, from FWA to UCT onto machine-or-transformation test), it will often be questionable whether § 101 requirements are met. And then it appears completely inconsistent not to allow that to be used as a defense.

    It will also move US patent law farther away (again) from European patent law: the European Patent Convention explicitly provides that not meeting the subject-matter test (Art. 52 EPC) is a ground for revocation (Art. 138 EPC).

    In Europe too, there is a tendency to move the subject-matter test to the non-obviouness test, but this is actually a form of legal “pollution” totally conflicting with the system of patent law, the statutes and centuries of case law.

  90. Perhaps, if a claim does not cover patent eligible subject matter then the claim ab initio is a nullity.

    The statutory basis for invalidating a claim must include the presumption that the claim is properly drawn to patentable subject matter. If it is not, it is not a “claim,” and would not even meet the threshold for determining whether it meets the “conditions for patentability.”

    Thus, even if we construe section 282 to not include section 101, the defense should nonetheless be available to be able to declare the thing a nullity.

    From this perspective, section 101 really does present a threshold for determining the “validity” of a claim. That some CAFC judges would rather cop out and apply whichever of the other conditions provide the shortest path to a conclusion can at least be said to be a practical approach, even though it sidesteps the issue of eligible subject matter.

  91. “That doesn’t make any of the “argumentlols” therein any less frivolous.”

    Just because you didn’t understand the nuances being debated does not make it frivolous. I wouldn’t be surprised if Dennis doesn’t ask is students to debate the issue in class — or have it on the final exam.

    Just because examiners tend to ignore 35 USC doesn’t mean that the courts will.

  92. 6 … in law school? He wishes … really, he wishes he was in law school. Instead, he is a frustrated examiner who ha tes his job.

  93. “If the argument was frivolous, there wouldn’t be two threads on this blog debating its veracity.”

    There are at least a dozen threads on this blog debating the veracity of 101 rejections as a whole. That doesn’t make any of the “argumentlols” therein any less frivolous.

  94. If the argument was frivolous, there wouldn’t be two threads on this blog debating its veracity.

    I’m guessing you’re not at the top of your law school class.

  95. One difference is that failing to satisfy 132 doesn’t (generally) “break” a claim the way that obviousness, indefiniteness, or yes, not falling within the four 101 statutory classes breaks a claim. In a case with improperly introduced new matter, claim construction shouldn’t rely on the new matter, but the claims can still be valid despite introduction of the new matter. Sort of a “no harm, no foul” interpretation.

    On the other hand, if enablement relies on that new matter being introduced, then by virtue of the 132 prohibition, a court might see fit to invalidate non-enabled claims based on the unamended disclosure. (Has this ever happened before?)

    The difference with statutory subject matter under 101 is that a claim that fails to satisfy the requirement is “broken”, i.e., there is no way to correct for the problem aside from invalidating the claim.

    Besides all that, much of the 101 jurisprudence is based on judicially-created doctrine anyway (e.g., Bilski), in view of the Constitution, so a reading of 282 that eliminated that jurisprudence as a last attempt to protect the public right of access to unpatentable subject matter wouldn’t stand up to scrutiny.

  96. Oh, so all you have to do in order to not get hit with rule 11 is acknowledge up front that your “legal argument” is completely frivolous.

    Try again David.

  97. Ned, you mention 102/103/112. 102 would include 102(f) — did not invent subject matter. So something like a product of nature would be prior art against the inventor. (And the modifications which the inventor makes to the product of nature would be tested under 103.)

  98. (apologies if this is a re-post — internets were acting up)

    Ned, I agree that it’s theoretically possible for new legal doctrines to be created by courts and shunted into 102/103/112 so those provisions have the necessary teeth for chewing up ineligible subject matter. The Supreme Court has disapproved of that approach (9-0) but I suppose in the extraordinarly unlikely event that they find 101 to be castrated they might change their mind. Also, with respect to claims that effectively cover mental processes, a 1st Amendment defense has not been demonstrated to be ineffective.

    HOWEVER all of that is non-responsive to my question. So I’ll repeat it:

    Even if the courts were to completely switch tracks (and hold that claims covering ineligible subject matter remain valid) at this late date, would it require some great leap of the imagination or legal somersaults for a court to hold that claims to ineligible subject matter are unenforceable?

  99. Clearly,the separation of 101 from 102 was intentional.  Grant me that much.  Frederico did have a plan.

    Further he said, and others have quoted him or contemporaneously observed, that the purpose for 282 was to strictly align the conditions for patentability with the conditions for validity.

    Conditions.

    Align.  

    Intended.

    Specifically intended.

  100. MM, Look at 132/112 practice as a clue.  I think most 101 problems are also 102/103/112 problems.  For example, implementing a Roman Empire escrow accounting scheme in a computer system would seem obvious.  (The CLS Bank case.)  Ditto using a GP digital computer to calculate a math algorithm (Benson).

    Gathering data using an old method followed by a mental step?  That seems to be anticipated/obvious.  The mental step, new property or information does not modify the old steps and can be ignored.

    A method of reducing risk that is old an notorious using conventional steps, is anticipated/obvious.  Using a new mathematical algorithm to determine when risk is balanced … well that does present a problem unless the utility is not within the useful Arts.

    Food for thought.

  101. “It was intentional”. You are expressing your opinion as though it is the undeniable truth, which clearly it isn’t. Right or wrong, the Federal Circuit has held that 282 is not exclusive.

    The line to draw is between substantive issues and procedural issues. For example, 102 is an attack on the substance of the patent. Whereas, improper revival is an attack on the process used to issue the patent. In most cases, it should be easy to distinguish between a bad patent, and a good patent issued badly. 101 is clearly a substantive attack.

  102. 6,

    This is likely precluded by “Rmail acknowledges that this argument is for the good faith extension or modification of existing caselaw.” as mentioned by Professor Crouch.

  103. Ned Question, if the courts open the door to 101 as a grounds for invalidity

    “If”?

    Another question: even if the courts were to completely switch tracks on this subject at this date, would it require some great leap of the imagination or legal somersaults to hold that claims to ineligible subject matter are unenforceable?

  104. NS, then there is the case where Rich, writing for the majority, Nies dissenting, that 132 was not a proper grounds for unpatentability (invalidity). 132 prohibited the introduction of new matter by amendment. If such were done, in fact, the patent was unpatentable/invalid under 112.

    We also have two dissents/concurring opinions in recent Federal Circuit cases stating that 101 is not listed in 282 as a grounds for invalidity.

    Question, if the courts open the door to 101 as a grounds for invalidity despite it not being listed, does that open every statute in Part II that makes any statutory requirement a grounds for invalidity? If I don’t pay the issue fee on time, for example? Is my patent invalid?

    I think not, and emphatically so. Such looseness in statutory construction would make a mockery of the ’52 Act.

    The drafters of the ’52 Act, who split out 101 from 102/103/112 and placed it in a separate section, limiting invalidity to the latter (and 251), had a reason for doing so, just as they had a reason for not including violations of 111, 115, 116, 132 and the like as grounds for invalidity. It was intentional.

  105. Here is another passage from Aristocrat v. IGT:

    We acknowledge that section 282 is not the only source of defenses in the Patent Act. See Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1584 (Fed. Cir. 1995) (“Section 282 does not state that the list of invalidity defenses contained therein are the only ones available; the statute merely says ‘[t]he following shall be defenses.’ The express words of section 282 therefore allow for the existence of other invalidity defenses.”).

  106. Dennis, I don’t think it is accurate to say that the response is “weak,” as if you think that it is likely to lose. Paypal’s response is cursory and dismissive, but that is probably because they think the argument is not worth spending time on. And I would bet a lot of money that the court will in fact rule that section 101 is a defense in litigation. There might be a textual argument as David Hricik made, but it is not one that is likely to be accepted by a court any time soon.

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