Kappos: PTAB Has Authority to Challenge Section 101 issues

By Dennis Crouch

On his blog, USPTO Director David Kappos has posted a response to my recent essay titled Can a Third Party Challenge Section 101 Subject Matter Eligibility in the USPTO’s new Post-Grant Review Procedure? My essay was an extension of Prof. Hricik’s post on a similar topic but with a litigation focus. In the response, Kappos provides his conclusion (and thus that of the USPTO) that the new Patent Trial and Appeal Board (PTAB) has the power and duty to consider patentable subject matter challenges brought under 35 U.S.C. § 101 in post-grant review proceedings or covered business method review proceedings.

The problem with the statute is that the scope of these post-grant proceedings is defined by reference to another provision – 35 U.S.C. § 282(b)(2) and (3). Those provisions in §282 in turn reference “Part II” of the 1952 Patent Act that roughly includes 35 U.S.C. §§ 100 – 199 (skipping gaps). In addition, challenges can only be brought if “identified in part II as a condition for patentability” or as a “requirement of section 112, except failure to disclose the best mode.” Everyone is in agreement that the anticipation and obviousness elements of Sections 102 and 103(a) count as conditions for patentability. The language of the statute suggests that the requirements of Section 112 are not conditions for patentability. Most of us would probably think that Section 113′s requirement of drawings where necessary is also not a condition for patentability but instead only a requirement.

Now, the difference between a condition and a requirement is that conditions for patentability can legally serve as invalidity defenses in patent litigation and, under the AIA can also serve as the basis of a post-grant review. On the other hand, the USPTO can still refuse to issue a patent based upon failure to meet a mere requirement. But, once the patent issues such a failure cannot serve as invalidity defenses.

The big question that we raised (and that Dir. Kappos has responded to) is what to do with the traditional elements of 35 U.S.C. § 101. For its part, the USPTO argues that all requirements of Section 101 are conditions for patentability and thus are proper subject of post-grant review proceedings. Director Kappos writes:

As we described in our final rules implementing post-grant review and covered business method review in the Federal Register, in our view the “grounds available for post-grant review include 35 U.S.C. 101 and 112, with the exception of compliance with the best mode requirement.” 77 Fed. Reg. 48,680, 48,684 (Aug. 14, 2012). This interpretation is consistent with both the relevant case law and the legislative history.
 
Both the Supreme Court and the Federal Circuit have concluded that § 101 is a condition for patentability. In Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 12 (1966), the Supreme Court stated that the 1952 Patent Act “sets out the conditions of patentability in three sections,” citing 35 U.S.C. §§ 101, 102, and 103. The Supreme Court has also addressed invalidity under § 101 when it was raised as a defense to an infringement claim under § 282. See Mayo Collab. Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1305 (2012).
 
If that were not clear enough, the Federal Circuit expressly rejected the argument – raised by the dissenting judge in the case – that § 101 is not a “condition for patentability” under § 282, stating that “the defenses provided in the statute, § 282, include not only the conditions of patentability in §§ 102 and 103, but also those in § 101.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1330 n.3 (Fed. Cir. 2012) (internal quotation marks omitted) (citing Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 543 F.3d 657, 661 (Fed. Cir. 2008)).

The Federal Circuit in Dealertrack also made clear that the use of the term “Conditions for patentability” in the titles of §§ 102 and 103, but not § 101, did not change the result, relying on the Supreme Court’s pronouncement in Pennsylvania Department of Corrections v. Yeskey, 524 U.S. 206, 212 (1998) (quoting Trainmen v. Baltimore & Ohio R.R. Co., 331 U.S. 519, 528-529 (1947)), that a statute’s title “is of use only when it sheds light on some ambiguous word or phrase” in the statute and that it “cannot limit the plain meaning of the text.” Id. (quoting Trainmen v. Baltimore & Ohio R.R. Co., 331 U.S. 519, 528-529 (1947)).
 
The legislative history of the AIA also makes clear that Congress intended the PTAB to consider challenges brought under § 101 in post-grant reviews. For example, a key House Committee Report states that “the post-grant review proceeding permits a challenge on any ground related to invalidity under section 282.” H.R. Rep. No.112-98, at 47 (2011). On the Senate side, Senator Kyl also included “section 101 invention issues” among those “that can be raised in post-grant review.” 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011).
 
So, the courts and Congress have indicated quite clearly, in our view, that the PTAB should consider patentability challenges brought under § 101 in post-grant and covered business method reviews. Unless the courts or Congress tell us otherwise, we will do so.

Read the Kappos Blog

Now, for reasons discussed in prior posts, I disagree with Director Kappos that the answer is so clear. Basically, the precedent cited is dicta and not controlling. However, I do agree with Director Kappos’ ultimate conclusion that Section 101 issues are (and will continue to be) be treated as conditions for patentability. I suspect his viewpoint will be vindicated within a couple of years as the issue reaches the Federal Circuit

112 thoughts on “Kappos: PTAB Has Authority to Challenge Section 101 issues

  1. I don't ignore your posts.  

    The SC, in Prometheus, refused to decide the case under 102 or 112.  They said that all prior cases had been 101 cases.  But that is demonstrably not true, as Le Roy v. Tatham and O'Reilly v. Morse were demonstrably decided on the basis that the patent laws required one to describe how to make and use…  That is 112.

  2. It is hard to see daylight with your eyes clenched so tightly.

    Try opening your eyes. (This is YET another area in which I have posted proper legal guidance for you Ned)

  3. Ned, yet again you ignore my posts and expect me to say the same thing again.

    This gets real old real fast. Try addressing the issues as I present them to you the first time and we can avoid the Merry Go Round of me giving proper legal direction to you and you avoiding what I say to only come back later and ask me to repost.

    For this point, the refutation was done by the U.S. Supreme Court in the Promethues decision wherein the government brief you refer to ad nauseous was outright rejected on a 9-0 decision.

  4. Ned–

    Don’t avoid it.

    It’s not abstract. Show me somewhere one or more decisions that include(s) a discussion of the “how to use” of 112 that definitively includes substantiality, credibility, and specificity of “usefulness” as heretofore described under 101.

    If you can’t do that, lay out an argument that you think is compelling. Use whatever decisions you want in support.

  5. Ned: “However, I think all alleged 101 issues implicate 102/103/112, as I have demonstrated here numbers of times.”

    You haven’t demonstrated it, you have just stated and re-stated it.

    For starters, please provide a detailed explanation of how the “utility” concepts heretofore articulated under 101 are to be found in 102/103/112, including substantiality, credibility, and specificity as you understand them. Anon, for one, seems to think that 101 is different than 102/103/112, at least with respect to 101 “utility”.

  6. However, I think all alleged 101 issues implicate 102/103/112, as I have demonstrated here numbers of times.

    As has been REFUTED here a number of times. Ned, stop trying to rewrite history of what the Supreme Court did to the Government Brief in Prometheus. Ignoring reality won’t change it.

  7. Interpretation of 35 USC?  Hardly.

    282 does not apply to the PTO, but to accused infringers.  It limits the sections that can be raised by a defendant.

    If there is something about 101 that is not embraced by 102/103/112, then a defendant cannot raise it.

    However, I think all alleged 101 issues implicate 102/103/112, as I have demonstrated here numbers of times.

  8. Ned–

    Please directly address the logic in my post, rather than just re-stating your initial proposition.

  9. Inviting, the requirements are set forth in many statutes.  For example, the fees one must pay.  But if the Director issues the patent, the public can challenge only on the grounds listed.  This is more than obvious from the wording of the statute.  The grounds set forth in 282 are not "include but not limited to" type grounds.  They are the only grounds.

  10. So you believe that the exact same concept, the exact same basis, can be simultaneously a “condition” and a “requirement”, at least insofar as the PTO is concerned?

    And that, therefore, interpretation of 35 USC is dependent upon the actor involved?????

    282 does not expressly exclude 101. If the grounds in the expressly-included 112 are precisely the same as those in 101 (as you suggest in the case of utility), then utility in 101 MUST be included in 282 by necessary implication.

  11. IBP, nothing in the PTO, but they should reject under 112 and perhaps object under 101 similar to the practice with new matter (object regarding 132, reject under 112).  In the courts, 282 limits the grounds.  112 is the grounds, not 101.

  12. So if you believe the “useful” of 101 and the “using” of 112 are the same, what is the problem with finding that a disclosure fails to meet both 101 and 112 at the same time?

  13. Inviting, if you can describe and enable a practical use of something, I think it has utility.  The statutes, 112, require one to describe such in the specification.  Failure to do so is a violation of 112, and that failure is specifically identified in 282 as grounds for invalidity that may be raised by a third party.

    I have a hard time seeing any real daylight between 101's "useful" and 112's "enable one to … use."

  14. Ned–

    You are assuming that the concepts in 101 are different and distinct from those in 102/103/112.

    Anon has suggested that the verb “use” of 112 is NOT the same as the adjective “useful” of 101–which is a suggestion with which you presumably agree. I will agree arguendo.

    Do you therefore suggest that the 101 concept of utility be of no further force or effect?

    If not, precisely HOW do you propose that it be effected under the statutory scheme?

  15. “Simply operating a machine to do something old is not a new process”

    Mr. Heller, you are wrong on this point because the “process” itself does not have to be new in order to be patent eligible subject matter.

    100 ( b) includes a new use of a known process

    For example if I plug an extension cord into my hand held hair dryer, and use it to then blow leaves off my side walk, I have a patent eligible application even though using the device to blow is old.

    Why?

    Because the “operating” ( the new use) of the hair dryer ( old machine ) is a process.

    Even if the process is old in view of the prior art e.g. leaf blowers, the end result of debris cleared sidewalks, is still useful, and thus my process is still patent eligible subject matter.

  16. “Go read Prometheus before cracking that smart mouth.”

    I explained Prometheus use of “Integration Analysis” to JV at Oct 05, 2012 at 04:47 AM.

    And as usual this brought about the usual silence.

    However one never knows if they read it, understood, and/or applied it.

    But at least it shuts down the illogical and often anti patent rhetoric that flares up on occasion on the blog.

  17. JV: “…..I’m sure the vast majority believe that there is no way for the Courts to easily draw the line between what is a claim directed to an abstract idea and what this is directed to an application of an abstract idea.40 years after Benson and the question is still wide open as to how that can be done.”

    With all due respect JV, you are wrong.

    The question is not wide open.

    The question is not open at all.

    The question was answered and the case closed by the Court in Diehr.

    First of all it is essential that you understand Diehr cabined Flook and Benson.
    And the Supremacy of Diehr was unanimously reaffirmed in Bilski by the Court.

    “Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.” (BILSKI v. KAPPOS, 14.)

    The answer provided by the Diehr Court was the addition of “integration” to the concept and application test.

    Integration is the “key” for establishing a patent eligible application of a concept, and thus definitively answers your question.

    As to how this can be done , please refer to the USPTO Official Guidelines on Integration, and/or the new MPEP sections on Integration. You can also refer back to my own detailed examples of “Integration Analysis” as applied to recent and past cases, including my post in response to a request by Professor Couch.

    Most important, for legal authority please remember that the Prometheus Court relied on Diehr’s “Integration Analysis” for it’s decision while at the same time reaffirming Diehr as the case most on point for what “IS” a patent eligible application.

    “The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole……[ Additional Steps Omitted] These other steps apparently added to the formula something that in terms of patent law’s objectives had significance—they transformed the process into an inventive application of the formula.” [12 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC.
    Opinion of the Court].

    Now in regards to your other statements in this thread, I do agree there are a minority of CAFC judges, and some DC judges spurred on by agenda driven lobbyist and academics, like our own Mr. Heller and the noted Professor Lemely that ignore Diehr’s Integration Analysis and seek to twist and conflate the laws for their own purposes.

    But the Supreme Court of the United States has been consistent since 1981. And unanimous in Prometheus (9-0) on Diehr’s Integration Analysis being the key for determining what is patent eligible subject matter .

    Now, whether people want to follow that law is another question.

  18. “Section 100 defined process to included a new use of a machine, but not the operation of the machine per se.”

    Mr. Heller, using is the same as operating, so it stands to reason that operation of a machine is covered in section 100 b.

  19. Not what I am saying Ned.

    Show me the pincite in Morse that discusses the difference between the utility of 101 and the use in 112.

    Go back and read again the fertilizer/herbicide story from my chemical buddies. (You obviously got lost on a 103 tangent).

  20. IBP, then read Le Roy v. Tatham and O'Reilly v. Morse one more time.  If one is required to describe and enable a practical application, how can something that has only non specific utility be claimed.  if such an invention can be claim, an embodiment does not even have to be described reasoned the Supreme Court.

  21. IBP, not only do I accept your argument, that was actually stated to be a requirement of the statutes (112) in both Le Roy v. Tatham and O'Reilly v. Morse.  Both!  

    Substituting 101 for the specific requirements and conditions set forth in 102/103/112 essentially takes patent law out of the control of Congress and lets the courts do  their thing.  For example, if something is not prior art under 102, the courts can make it prior art under 101.  Ditto utility.  Ditto invention.  Ditto inventorship. 

    101 cannot and should not be substituted for the specific conditions and requirements set forth in subsequent sections.

  22. Ned–

    That doesn’t at all change what I said, and that substantiality must be a component of the 112 “utility”.

    I have no problem of importing substantiality into 112, but to be sure, I have never heard any court, tribunal, or agency describe any utility originating in 112 as containing a substantiality component, or that said component meant something like “physicality, tangibility, or corporeality”.

    Ned, in the absence of 101 as providing defenses, what would you use as a defense against a charge of infringing a claim to a purely mental process? See what I mean?

  23. IBP, All one has to do is read Morse.  Abstract ideas need no specification because they are disembodied concepts.  They may have broad utility, but the statutes require a description of how to make and use, they said there. 
     
    There is only one statute that does that work.  It is NOT 101.
     

     

  24. Ned:

    “If the PTO wants to deny a patent for lack of utility, prior art or the like, or because it claims are not supported or enabled, 102/103/112 are sufficient.”

    In order for that to be true, you must accept my argument, made over the past few years on this board, that the utility requirement’s “substantiality” component refers not to “not de minimis”, but to “physicality, tangibility, or corporeality”. Otherwise, how would you invalidate claims under 112 to purely mental processes?

    While I am ALL FOR anything that validates my formulation, in this application there is a more immediately (if not in the long run) elegant way to achieve the objective of giving effect to the concepts articulated in 101.

  25. deny a patent for lack of utility… 102/103/112 are sufficient

    Ned, we have been through this – 112 cannot and does not cover the utility aspects that 101 covers.

    Please stop repeating arguments shown to be false.

  26. They do not appear to believe it is the “critical” distinction that you do

    Actually they do. The fact that you keep missing this STILL shows you just don’t get it.

    Way to keep on self-defeating MM.

  27. anon, I will agree with you to this extent: Frederico had a plan and it was implemented by Congress.  If there was no problem under 102/103/112, or 251, or any other statute that states that a violation will lead to invalidity (and there is one), collectively, the conditions for patentability/validity, then the claims are patentable and valid.  If the PTO wants to deny a patent for lack of utility, prior art or the like, or because it claims are not supported or enabled, 102/103/112 are sufficient.  We don't need any other roadblocks than these.

    To the extent the Supreme Court rests its authority on 101 and not on 102/103/112, it is acting ultra vires and therefore unconstitutionally.  I agree.

  28. Your inability to see the worth of the point

    What point did you think you were making? The one you actually made (that there are judicial exceptions to 101 that do not appear expressly in the statute) did not matter to the Supreme Court in Prometheus. They do not appear to believe it is the “critical” distinction that you do.

    9-0.

    So what was your point?

  29. MM,

    Your inability to see the worth of the point does not mean that there isn’t any worth.

    Your continued self-centeredness and self-delusion is not appropriate on the new Patently-O. Your insults are not welcomed and you offer nothing else.

    Kindly STFU.

    Thank you.

  30. That’s why they said what they said.

    Ah yes, I remember now the huge portion of the opinion surrounding the “dead letter” comment where the Supreme Court oh-so-carefully discussed the critical distinction between the statutory languge in 101 and the “judicial exceptions”. It was so very very critical to their point regarding the government’s proposal and the “dead letter”. Why, had the government’s proposal merely rendered the non-”judicial exceptions” portion of 101 a “dead letter” the case would have come out completely differently. It was that critical.

    LOL. Yet another classic nug of nothingness from anon, the master distractor. Keep ‘em coming, anon!

  31. Actually quite to the contrary, my reading – and rest assured it is correct – is critically important to those nine people.

    That’s why they said what they said.

    That you think it “microscopic” only shows how far off you are.

  32. They are more than conflicted. But then again, so is the Supreme Court, since the Supreme Court has expressly tied their “implicit” judicial exceptions to 101.

    The conflict is constitutional in nature.

    Bottom line is that neither the Court nor the Office should be messing with the wide open welcome gates of 101. That’s the domain of Congress (even if Jefferson passed the buck early on).

    If people get upset at what fits through the wide open gate (and a pure reading of the four enumerated categories would mean a quite huge flow), then the people can hold Congress accountable – as the Constitution envisioned and set forth the patent powers (notably not to the unaccountable Judiciary or the fickle and changing Executive branch.

    The problem as noted before is that the power to set policy is too much temptation for the other branches to take their fingers out of the pie.

    It still is.

  33. Actually MM, the dead letter comment was NOT to certain sections of 101, but rather to the Supreme Court’s judicial exceptions.

    That is not a small difference.

    Even assuming your analysis is correct, you can rest assured that the “difference” is microscopic or non-existent to the 9 people whose opinion actually matters.

  34. anon, the government missed a golden opportunity to discuss 282 with the Supreme Court in Prometheus as the plain language of the statute supported their whole case that the alleged 101 problem was really a 102 problem.  

    Of course, in reading their brief in the Madstad case, they desperately need 101 to sustain the constitutionality of the AIA.  They are conflicted.  

  35. The Supreme Court would like a word with you about “education”:

    But it would force the Director to identify the 101 problem in one of 102/103/112.

    See Prometheus. (and I won’t even mention the 9-0 factor)

  36. Right.  But the PTO does not appreciate that 101 is not a "condition" of patentability.  Rejections are made based upon conditions.  Objections based on requirements.  That way, we can keep things in their proper place.

    But it would force the Director to identify the 101 problem in one of 102/103/112.  This would in turn help educate the courts that they cannot avoid 102/101/112 by using a 101 shortcut.

  37. anon, I think it remains form over substance in the PTO.  As with new matter, the rejection is not made under 132, but under 112.  Therefor, I think the examiner can object under 101, but still has to reject under 102/103/112.  I am thinking about raising this issue in one of my own 101 cases.

  38. Ned,

    I was thinking of the subset of cases (patent applications rather than patents, generally) that find their way to the CAFC from the Office (i.e. those in which the question of 101 is separate from the 282 issue).

  39. The 282 issue is alive and well in the Madstad case. The government contends the deletion of 102(f) did not delete inventorship as a condition for validity because that is a condition in 101. The opposition brief said, essentially, nonsense. Cite ONE case that said 101 imposes and independent condition of inventorship. None. Nada. Nil. Cite the case. Any case. (The requirement was always a a separate defense under, for example, RS 4920, until 1952 when it was moved, as was 102(g), into 102 as 102(f).

    The brief in opposition continues:

    “Further, as stated in Plaintiffs‟ Opening Motion for Preliminary Injunction (Dkt. 11, at 5 n.3) (and as the Government has never contested), Section 101 provides that patents may be obtained “subject to the conditions and requirements of this title.” Section 101 is thus made subject to the conditions and requirements of the rest of the Patent Act (both Sections 102 and 103 are entitled “Conditions for patentability”), which under the AIA is a first-to-file system. As the PTO itself has stated, “[u]nder the AIA, the first party to file an application to an invention that is otherwise patentable is entitled to the patent. 35 U.S.C. 102.” 77 Fed. Reg. 56075 (Sept. 11, 2012). In other words, Section 102 prescribes the “conditions” to which Section 101 refers. But the AIA eliminates Section 102(f) of the Patent Act, which formerly made inventorship a condition of patentability.

    This point is fatal to the Government‟s position, because it means that the AIA does not retain any inventorship requirement at all. It does not require that an applicant be a first, second, or even third inventor. The Government effectively admits that the Patent Clause contains an inventorship requirement of some sort. (MTD 20.) The AIA fails this test.

    The Government asks this Court to hold that Section 102(f) was merely “redundant” (MTD 10), so that its deletion was meaningless, but that would require this Court to ignore basic principles of statutory construction. United States v. Forey-Quintero, 626 F.3d 1323, 1327 (11th Cir. 2010).”

  40. Yes, Inviting, but the only ones that are "specified" to be "conditions" in Part II are grounds for invalidity under 282.  Part II specifies just two sections as "conditions," namely, 102 and 103.  

  41. Ned–

    And because none of the captions say “requirement”, there are therefore no requirements?

    I’m nitpicking, Ned, but you know what I mean. Even 282 does not state which are conditions and which are requirements–it merely suggests that some things in 35 USC are specified as conditions, and that some things in 112 are requirements.

  42. Translation: If I close my eyes and imagine everything completely different, you might be right, to a limited degree, in certain circumstances, with certain caveats, with…

  43. JV and Ned–

    I have considered your arguments at length, and I have come on board your ship—sort of.

    I had a long response prepared, which I had erased in favor of posing shorter questions involving particular types of inventions/discoveries that are either inoperable, otherwise found in nature, etc.. This was my attempt to find a scenario in which a failure to satisfy 101 would not occasion a failure in either 102, 103, or 112, because 282 allows invalidity defenses based on all 3 of those sections.

    My thinking was that if I could find something appropriate, a critical deficiency in your argument could be revealed. Alas, I was unable to think of anything that would “fail” 101, that would not also fail something in 102, 103, or 112–all of which can be used to invalidate in 282.

    Under such a formulation, anticipation, obviousness, utility, s-m category, and inadequate metes and bounds can all be used to invalidate, if—and it’s a BIG IF–the accepted definitions and interpretations of those concepts so permit.

    As an illustration of what I mean, consider a perpetual motion machine, which would have an “incredible” utility under the current judicial interpretation of 101. If, IF the concept of “credibility” was imported into the “manner of using” requirement of 112, then that requirement would not be met by any such machine.

    This is but one example, which considers but a single requirement–the “manner of using”. A more difficult problem arises when the generally-accepted need to invalidate claims to “mere intellectual processes” is considered, but even there, I think that the “substantiality” component of the utility requirement can be of valuable assistance, but ONLY IF it is interpreted to mean something like “tangible” or “corporeal” or “physical”. 112 requires that “the manner and process of making AND using” the invention be described in writing. “Making” AND “using” could be profitably interpreted to be 2 separate and distinct requirements, that must both be satisfied–the point being that a “mere intellectual process” is NOT “made”, but is only “described” and “used”, and therefore would fail the “manner of making” requirement of 112.

    Note that this process requires very specific interpretations of the “conditions and requirements” of 35 USC in order to give effect to decades of jurisprudence and “settled expectations”. Although potentially possible, it would involve much convolution, potentially distorting concepts currently articulated under 101 in order to legitimately be able to find them in 102, 103, and 112.

    So, I am on board in a very limited fashion, and only provisionally.

    A much more elegant way to proceed IMHO would be to characterize “invalidity” as a broad concept, that would include the narrower sub-concept of “unpatentability”, and that 282 was never intended to be the exclusive source of defenses such that “unpatentability” under ultra vires could also be used to “invalidate” a presumed-valid claim.

    So, 282 would be seen to only provide some examples of how “invalidity” could be proved. Note that under strict construction, 282 is likey not exclusive, as it does not specify that 1-4 shall be the “only” defenses available in an action involving the validity or infringement of a patent.

    Also, lack of s-m jurisdiction in the court is a defense at common law, apart from what is written in 35 USC, and entirely apart from the concept of “invalidity” described in 282 (i.e. a granted claim is not properly characterized as either “valid” or “invalid”, but rather as “void”.

    So, in the end, I could accept your formulation, but it would require much massaging of the jurisprudence to square it with reasonably settled expectations, which is something that needs to be done. I therefore favor the alternate approach.

  44. Even if you (or Rader) “defers,” the Office must still evaluate under 101 and also still maintains its policy of “compact prosecution.”

    In order to achieve what I think you want to be achieved, it is not Rade that needs to champion a change, it is Kappos.

  45. Actually MM, the dead letter comment was NOT to certain sections of 101, but rather to the Supreme Court’s judicial exceptions.

    That is not a small difference.

  46. Perhaps then you might understand the “dead letter” comment (amongst other things).

    With respect to the government’s proposal that elements that implicate 101 (mental steps, recitation of newly discovered natural laws, etc) should be ignored for 102 purposes, the Supreme Court concluded that such an approach would turn at least certain portions of 101 into a “dead letter.” Not to mention the fact that there was no Supreme Court precedent for ignoring elements during a 102 analysis …

  47. Rader has been looking for a vehicle to defer 101 challenges, and to get the courts to look first to 102/103/112.

    Common sense and practicality would seem to suffice for that purpose (at least with respet to 102/103), particularly after Prometheus.

  48. the critical concept is the effect of the deficiency upon the public (the potential future infringers).

    Agreed that this is generally true and is the fulcrum upon which all the big (Supreme) decisions are ultimately balanced.

  49. The Supreme Court typically doesn’t address arguments not raised.

    You might amuse yourself a little by reading the government’s brief in the Prometheus case, the arguments it raises and then go back and read the Court’s response in the Prometheus case.

    Perhaps then you might understand the “dead letter” comment (amongst other things).

  50. “Go read Prometheus before cracking that smart mouth.”

    Get Scalia’s ____ out of your mouth. The Supreme Court typically doesn’t address arguments not raised. Most Courts don’t. Until they do, the issue is still open.

  51. The Supreme Court agrees. In Bilski, then wrote “Even if an invention qualifies as a process, machine, manufacture, or composition of matter, in order to receive the Patent Act’s protection the claimed invention must also satisfy

    Actually I think this passage speaks to the opposite of what you propose. The language of “even if” and “must also” clearly indicate that the 101 material have every bit of an effect as the other statutory material.

  52. Needless to say, this will make anything “made by man” patentable. However, once that is done, if people what to eliminate claims to software, genes, business method, medical treatments, financial methods, tax avoidance procedures, whatever, they can go to Congress and ask Congress to change the law to exclude them. Let Congress draw the line and make the ultimate determination as to what is patentable subject matter and what is not.

    Q: why is Jefferson NOT on the $1 bill?

    A: because he passed the buck.

    Ever since way back when when Jefferson passed the buck on the difficult job of defining “invention” and passing the job off to the courts to “better define,” we have been saddled with a LACK of definition, with the courts and congress both dodging the task (or making nebulous pie in the sky policy statements).

    What the courts SHOULD have done is pass the buck right back (but the temptation to legislate from the bench was too powerful).

    It still is.

  53. You’re not too familiar with Supreme Court jurisprudence, are you?

    You’re not too familiar with recent Supreme Court history, are you?

    Go read Prometheus before cracking that smart mouth.

  54. “Good luck with taking the Supreme’ fingers out of that pie.”
    You’re not too familiar with Supreme Court jurisprudence, are you? SCOTUS has never had a problem punting on issues. They are all too happy to finding a way to dispose of a case via a technicality that does not involve a ruling on the real issues. No one has ever presented this “out” to them so I’m not quite sure how they would react.

    “You too may want to reference the “dead letter” comment in the 9-0 Prometheus case.”
    I’m not sure what the Supreme Court means that “[t]his approach, however, would make the ‘law of nature’ exception to §101 patentability a dead letter.” A law of nature exceptions is better described as unpatentability based upon prior invention (i.e., by nature).

    The very next sentence includes the cite “A person may have ‘invented’ a machine or a manufacture, which may include anything under the sun that is made by man, but it is not necessarily patentable under section 101 unless the conditions of the title are fulfilled.”

    This language is entirely consistent with the observation that 101 includes the phrase “subject to the conditions and requirements of this title.” Hence, 101 eligibility is dependent upon the conditions and requirements set forth elsewhere – not that 101 is a condition or requirement itself.

    If 101 was intended to be a Condition for Patentability it would have been written something like this:

    100.5 Inventions Patentable
    A patent may be obtained for any invention or discovery, subject to the conditions and requirements of this title.

    101 Conditions for patentability; subject matter patentable
    A person shall be entitled to a patent unless the patent was not directed to any new and useful process, machine, manufacture, or compositions of matter, or any new and useful improvement thereof.

  55. We are not interested in making policy decisions as to what is patentable subject matter and what is not

    Good luck with taking the Supreme’ fingers out of that pie. You too may want to reference the “dead letter” comment in the 9-0 Prometheus case.

  56. Just a note, Professor Hricik (who first posted on 282′s language) is going to clerk for CJ Rader trough August of next year. Rader has been looking for a vehicle to defer 101 challenges, and to get the courts to look first to 102/103/112.

    The plot thickens.

  57. JV, Rader and a few other judges have openly argued that 101 should not be addressed in court cases as a threshold issue.  They beg for the district courts to look at 102/103/112 issues first.

    This new theory provides statutory authority for their wishes.  They can force the courts to go through 102/103/112 first.  If there is no problem under these statutes, there probably is not problem under 101 as well.  Regardless, 101 is not a validity issue — by statute.

  58. JV, Regarding Benson, the SC framed the issue whether the claims were patentable as a process.  This should have been a case under 100, not 101.  The question should have been is whether the operation of a machine a process?   Section 100 defined process to included a new use of a machine, but not the operation of the machine per se.  

    This comports with the accepted understanding process at that time.  One could use an old machine in a new application and claim it as a process.  But the new operation of an old machine was neither a new machine or a new process.

  59. JV, I don't think 112, p. 2, is the primary problem.  It is scope.  It is the problem with single means claims.  This generally invokes both p.1, and p.2.

    Regarding "screw…"

    The claimed invention: Claim 1: a picture frame comprising four pieces of wood arranged in a frame and attached together.  Claim 2, wherein the pieces of wood are attached with a means for fastening.  If a screw is an known substitution, there is infringement.

    Disclosure: nail.  Is claim 1 or claim 2 indefinite, not described or not enabled?  No.  Why?  Attaching, or means for fastening, can be by any known method of attaching the sticks together.  Why?  The means for attaching or fastening is not the invention.  The claim sets forth a new combination of old elements. 

    Invention, improved means for attaching the pieces of wood together in picture frame: glue.  The combination is old.  The improvement is in one element.  

    Claims: Claim 1, a picture frame comprising four pieces of wood arranged in a frame and attached together.  Claim 2, wherein the pieces of wood are attached with a means for fastening.

    Claim 1 reads on the prior art.  Claim 2 does as well, unless means for fastening is limited to glue.  But clearly, Claim 2 does not tell us what the invention is.  But for Donaldson, it should be declared invalid as reading on the prior art as well.  But since Donaldson commands the limiting construction for validity, it is valid, but clearly, it remains indefinite.  We need the PTO to step up and make the case to the Federal Circuit under 112, p.2.  That statute requires "the invention" be distinctly claimed.  Arguably, 112, p. 6, does not authorize functional language at the exact point of novelty.  It is only permissible where the novelty is in the combination, as specified by Faulkner v. Gibbs, and as "stated" in 112, p.6.

    Now, if the claim defined the glue as "means for attaching without using nails or screws," the claim might define over the prior art, but it still does not tell us what the invention is.  This claim should be declared indefinite regardless of 112, p. 6.

    Benson next.

  60. One point that bears repeating from some of my earlier posts on this subject involves why would the Federal Circuit/SCOTUS buy these arguments.

    First, since they are strict statutory construction arguments, the Courts cannot simply ignore them.

    Second, and perhaps more importantly, I think the Courts may find the prospect of a “reset” to be attractive. Like us, I’m sure the vast majority believe that there is no way for the Courts to easily draw the line between what is a claim directed to an abstract idea and what this is directed to an application of an abstract idea. 40 years after Benson and the question is still wide open as to how that can be done.

    A “reset” would mean the Courts saying to Congress, “we are going to take you on your word that when you wrote any ‘process, machine, manufacture, or composition of matter,’ you meant it. We are not interested in making policy decisions as to what is patentable subject matter and what is not. If you didn’t mean any process, machine, manufacture, or composition of matter, then put it in the statute.”

  61. “they alone include the word ‘unless’ in the case of 102, and ‘may not be obtained …if,’”
    Good point. I have long recognized this. 102/103 talks about what will prevent an applicant from getting a patent. Similar language is not found within 101.

    “Why, if every requirement in Part II was a condition?”
    Exactamundo. You have to assume that Congress did not treat 112 as a “condition for patentability” so they had to additionally address it within 282. This leaves open the question as to what is “conditions for patentability.” As the case law cited by IBP suggests, you can look to the titles of the section for guidance. When you do that, these titles provide unmistakable guidance as to what Congress intended.

  62. I think that Benson was both decided incorrectly and based upon the wrong section. Douglas was concerned about the breadth of the claims … however, under 112, 2nd paragraph jurisprudence, there is nothing inherently indefinite about broad claims. My ‘screw’ hypothetical speaks to this since Douglas’ logic can equally be applied to a screw.

    To me, if a claim is directed to a “process, machine, manufacture, or composition of matter,” then by definition, the claim is not directed to an abstract idea. Instead, the claim is directed to an APPLICATION of an abstract idea, which is patentable subject matter. Benson changed that that very simple-to-apply test. Now, we have at least one Federal Circuit judge openly expressing belief that a claim directed to a machine can be deemed unpatentable subject matter. If that becomes the “law,” where does it end? How and where do we draw the line? Douglas, within Benson, made a big f’n mess out of 101 that has taken millions of man-hours to address (and that mess is still there and growing bigger). The Supreme Court can issue another 20 decisions on 35 USC 101 and there will still be ambiguity as to what is patentable subject matter and what is not. I do not believe this is what Congress intended.

    IMHO, the best solution to this mess entails SCOTUS holding the following: (i) 101 is not a condition for patentability and is not a defense under 282; (ii) the plain meaning of 35 USC 101 controls and so long as a claim is ostensibly directed to a “process, machine, manufacture, or composition of matter,” then it is directed to statutory subject matter; and (iii) finally, any cases that are inconsistent with (i) and (ii) are overruled. In essence, SCOTUS is pressing the reset button and letting Congress know that SCOTUS is staying out of fray.

    Needless to say, this will make anything “made by man” patentable. However, once that is done, if people what to eliminate claims to software, genes, business method, medical treatments, financial methods, tax avoidance procedures, whatever, they can go to Congress and ask Congress to change the law to exclude them. Let Congress draw the line and make the ultimate determination as to what is patentable subject matter and what is not.

    Right now, we have people with economic agendas asking the Courts to invalidate certain patents based upon 35 USC 101. In essence, they are asking the Courts to make policy decisions on new technology by expanding what is considered to be a claim to an abstract idea. Policy making, however, is not the province of the Courts – that belongs to Congress.

  63. JV, good post. I would add that Benson came out of the PTO. From Dennis OP, I think the PTO can enforce requirements, as opposed to conditions, by failing to issue patents that in its opinion fail to comply with the requirements. Viewed in that light, Benson might be a valid 101 case. But if the patent issued, it is valid unless there was a problem under 102/103/112.

    Now you mentioned that the lack of a specific use was the reason the for the Benson decision and that this was a 112 issue.

    I fully agree. The statutory basis for the decision was wrong. This does not mean that the result was wrong. But it does mean that cases such as Le Roy v. Tatham and O’Reilly v. Morse were controlling law, as both rested their statutory authority on what we now know to be 112.

  64. JV, good analysis.

    I would add that alone among the statutes, sections 102 and 103 not only include conditions for patentability in their titles, but they alone include the word “unless” in the case of 102, and “may not be obtained …if,” in the case of 103. Those two statutes by their own terms condition the grant on meeting the subsequent “requirements.”

    Part II sets forth numbers of other requirements. It also states in some sections that a patent may be held invalid if there is a violation. See, Section 185 which reads in part, “A United States patent issued to such person, his successors, assigns, or legal representatives shall be invalid, unless the failure to procure such license was through error and without deceptive intent, and the patent does not disclose subject matter within the scope of section 181 of this title.”

    Section 112 does not have any “unless” language. It sets forth requirements for the specification and claims. But, as you say, 282 specifically includes that section by name. Why, if every requirement in Part II was a condition?

    We have been conditioned to think that patentable subject matter is a Section 101 “condition” when the case law prior to ’52 seems to have suggested only that patents are granted for “inventions,” not principles in the abstract, and that the statutes required an invention to be a practical application of the principle and be described in the specification so as to enable one to how to make and use the invention as a condition of grant. These concepts are now embraced in 102/103/112.

  65. “It does not in any way limit the manner in which something can be so specified. 101 leaves open the possibility that all things in 35 USC, including all things in 101, are either conditions or requirements–the question is how to decide.”

    A fair question. However, 35 USC 282 explicitly uses the phrase “conditions for patentability.” 102/103 also include this exact phrase – I’m not covering new ground here. What is also interesting is that the drafters of 35 USC 282 felt the need to additionally address 35 USC 112 and 251. If “all things in 35 USC” were conditions for patentability, then there would be no need to include this additional language. Hence, we have to presume that the drafters did not intend to have all things in 35 USC be a condition for patentability. If so, this additional language addressing 112 and 251 would be superfluous. As such, “conditions for patentability” is not all encompassing.

    In one of your string cites above, you reproduced the following: “they can only ‘aid in resolving an ambiguity in the legislation’s text’ (INS v. National Center for Immigrants’ Rights, 502 U.S. 183, 189-90 (1991) (citing Mead Corp. v. Tilley, 490 U.S. 714, 723 (1989).” Since there is no explicit identification of what is considered a “condition for patentability,” then this term is ambiguous. Thus, under the case law you cited, it is permissible to look at the title of the section for guidance.

    “So, assuming the ‘new’ of 101 is the novelty and non-obviousness of 102 and 103 respectively, you would argue that utility and the s-m categories are requirements rather than conditions for the purposes of 282?”
    I don’t see 35 USC 101 being a condition for patentability. I see 35 USC 101 as being a statement of purpose – not to set forth requirements for patentability. This section refers to “subject to the conditions and requirements of this title” and the language I cited from Bilski implies that SCOTUS recognizes a difference between what is contained within 35 USC 101 and “the conditions and requirements of this title.” When you read that in conjunction with 282, which talks about “conditions for patentability,” while also considering that the title of 102/103 include “conditions for patentability,” I think it is a very fair argument that Congress did not intend 101 to be a condition for patentability.

    To argue otherwise would necessarily require you to argue the statute is ambiguous. If so, based upon the case law you cited, it is permissible to look at the titles of the sections to resolve this ambiguity, which also supports Hrick’s interpretation.

    I know it seems silly to argue against something that has been “settled” law since the 70s. However, statutory construction arguments are very powerful.

  66. Ned,

    My point exactly. 112 does not capture the same “utility” as referenced in 101 exactly because of “invention.” Describing how to use is not the same as utility.

  67. JV–

    282 expressly refers to “any ground specified in part II of this title as a condition for patentability”.

    It does not in any way limit the manner in which something can be so specified. 101 leaves open the possibility that all things in 35 USC, including all things in 101, are either conditions or requirements–the question is how to decide.

    It is important here that 282 refers to not only “conditions”, but to the “specification” of conditions, so it appears that the specification is what is of particular interest.

    For such an inquity, titles are indeed of some utility. Again, reference to titles is usually only made in the event of ambiguity, but this is a very particular inquiry.

    You are arguing that since the phrase “conditions for patentability” only appears in the titles of 102 and 103, that anything not appearing in either of those sections is therefore a requirement, correct? So, assuming the “new” of 101 is the novelty and non-obviousness of 102 and 103 respectively, you would argue that utility and the s-m categories are requirements rather than conditions for the purposes of 282? Just making sure.

  68. Ned–

    Not that I agree with your finding, but if you want to find a utility condition in 112 as well as 101, then my above comment is further restricted to only the statutory categories.

  69. Starting with Benson, the Courts have simply ignored the plain language of 35 USC 101 and started importing additional imitations into 101 while paying lip service to the notion that “courts ‘should not read into the patent laws limitations and conditions which the legislature has not expressed.’” This is exactly what the Courts are doing. If 35 USC 101 is a “condition for patentability” then all that is required is that the invention is new (see 102/103), useful (easy test), and either a “process, machine, manufacture, or composition of matter.”

    Because of Benson, the plain language of 35 USC 101 is being ignored so much that a Federal Circuit judge (Moore in CLS Bank) expressed belief in a dissent that a claim directed to machine should have been rejected under 35 USC 101. If that is not ignoring the plain language of the statute, then what is?

    Another interesting thing is the actual language of Benson: “Here the ‘process’ claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion. The end use may (1) vary from the operation of a train to verification of drivers’ licenses to researching the law books for precedents and (2) be performed through any existing machinery or future-devised machinery or without any apparatus.”

    What Douglas is writing is that the claim is too broad – this isn’t a 101 issue. This is an issue of enablement under 112. Moreover, the analysis is simply poorly reasoned. Under the same reasoning, you can argue that a claim to a screw (i.e., a specific type of fastener) is abstract because its end use may vary from use in a train to the enclosure that takes your picture for a driver’s license. Also, the screw can be used with any existing machinery or future-devised machinery. Finally, Douglas’s statement that the method could be performed “without any apparatus” is simply wrong. The claims refers to registers, which are part of a machine. As such, the method is tied to a machine.

    By ignoring the plain language of 35 USC 101, 282, the Courts have given us a mess that will NEVER get resolved absent (i) Congress rewriting the statute or (ii) the Supreme Court holds that (a) 282 does not implicate 101 and (b) the plain meaning of 35 USC 101 controls. Until then, we have a Supreme Court whose best test is “I know an abstract idea, when we see it” and a Federal Circuit that keeps producing inconsistent decision after inconsistent decisions depending upon what judges are on the panel.

    At the USPTO, the test for 101 has changed a dozen times over the last few years – this despite the statute at issue (i.e., 35 USC 101) not changing for the last 60 years.

    I’ve written this before, and it is worth repeating. Perhaps Congress didn’t consider 101 a condition for patentability because they didn’t want the Courts making policy decisions as to what is patentable subject matter and what is not. Congress provided clear and expansive terms with laying out the bounds of patentable subject matter. As admitted by SCOTUS, “Congress plainly contemplated that the patent laws would be given wide scope.” However, the Courts are continually chipping away at the scope.

  70. “There is a presumption that statutes are internally consistent, that they are not contradictory.”

    102/103 uses the phrase “conditions for patentability.” 282 uses the phrase “conditions for patentability.” 112 does not. However, 112 is addressed separately within 282. For your interpretation to prevail, you have to argue that Congress didn’t realize that they used “conditions for patentability” within 282 and also in the titles of 102/103 and didn’t mean to tie one to the other.

    Congress constructed the phrase “conditions for patentability” and used it several instances. Hrick’s interpretation is the one that is consistent with the plain language of the statute – not your interpretation.

    Another interesting thing is that 101 states that “may obtain a patent therefor, subject to the conditions and requirements of this title.” Notably, 35 USC 101 REFERS to the “conditions and requirements of this title.” To me this implies that 101 was not intended to be a condition or requirement itself but other sections of 35 USC address the conditions and requirements. The Supreme Court agrees. In Bilski, then wrote “Even if an invention qualifies as a process, machine, manufacture, or composition of matter, in order to receive the Patent Act’s protection the claimed invention must also satisfy ‘the conditions and requirements of this title.’” As such, SCOTUS recognizes that qualifying as a process, machine, manufacture, or composition of matter is SEPARATE from the conditions and requirements of this title.

  71. Chevron deference applies if the words of the statute are ambiguous/vague. 282 uses “conditions for patentability.” 102 and 103 start with the phrase “conditions for patentability.” 101 isn’t labeled with the phrase “conditions for patentability.”

    This isn’t ambiguous. It is only ambiguous if you ignore the plain language of the statute.

  72. Describe how to use? How it that possible if the invention has no utility?

    Quite easily actually.

    My chemical buddies would put it this way: dump it on your lawn; if the grass grows, it’s a fertilizer, if it dies, it’s a herbicide.

    But only somewhat more seriously, using something and utility are simply different concepts – related, yes; but different.

    And this is without reminding you yet again the very particular words chosen by a 9-0 majority in the Prometheus decision that simply makes your argument a non-starter (or if you prefer, a dead letter). If you have a problem with that, don’t argue with me, argue with the Supremes.

  73. Ned–

    You are saying 2 basic things:

    1) the concepts stated in 101 are not “conditions”, but instead are “requirements”; and

    2) failure to follow “requirements” does not lead to “invalidity”.

    As far as (1) goes, you have stated and re-stated your position, but provided no accompanying evidence. You seem to want to require that the 101 concepts that also appear in 102/103/112 be independent of the 102/103/112 concepts; there is, however, no such requirement, and in fact the legal presumption of internal consistency requires presuming precisely the opposite.

    Once you understand this fact, you will have no problem considering the concepts in 101 that also appear in 102/103/112 as conditions, just the same as the consistent articulation of those concepts in 102/103/112 are considered conditions.

    The titles of 101, 102, and 103 are not controlling in any way, because they “cannot enlarge or confer powers” (Pennhurst State Sch. & Hosp. v. Halderman, 451 U.S. 1, 19 n.14 (1981) (quoting United States v. Oregon & California R.R., 164 U.S. 526, 541 1896) and Cornell v. Coyne, 192 U.S. 418, 430 1904), and citing United States v. Fisher, 2 Cranch 358, 386 (1805) and Yazoo & Mississippi Valley R.R. v. Thomas, 132 U.S. 174, 188 (1889)).), they can only “aid in resolving an ambiguity in the legislation’s text” (INS v. National Center for Immigrants’ Rights, 502 U.S. 183, 189-90 (1991) (citing Mead Corp. v. Tilley, 490 U.S. 714, 723 (1989); and FTC v. Mandel Bros., Inc., 359 U.S. 385, 388-89 (1959)).

    Again, since you have not proved any ambiguity, resort to the titles for interpretive aid is improper and void.

    I don’t much care what Federico said. Since there is no demonstrated ambiguity, there is no reason to consult the legislative history.

    The above applies to the 101 concept of novelty. The 101 concepts not discussed in 102/103/112 are utility, and the s-m categories. The issue now is how to characterize utility and the s-m categories.

    I reject your use of the touchstone of “invalidity” as a means to distinguish between two types of concepts in 35 USC. I use the touchstone of “patentability” instead, as it is more meaningful.

    If a claim is found to be unpatentable by the PTO, it should be rejected. If it is later proved that the PTO failed to reject an unpatentable claim, the PTO determination that the app was in condition for allowance should be reversed, and therefore any action subsequent to that action and predicated upon it be considered null and void, including the issuance of the patent.

    This pertains to defects in the substance of the claims, as opposed to defects in the form, for which objections are properly issued. If a defect in form is found after issuance, unless that previously-undiscovered defect in form was the product of an intent to deceive by the applicant, the claim should not be considered to be unpatentable and therefore void, but an investigation should then be conducted into the effect of that defect in form upon the reasonable reliance placed on a public record by an alleged infringer. In a parallel proceeding, action could be taken to correct the formal defect(s) for future purposes. In the latter case of malfeasance, the patent should be, and is, considered unenforceable, and there should be no opportunity afforded for correction of the formal defect(s), so that subsequent producers could reasonably rely upon said defects to escape liability.

    If, OTOH, an innocent mistake by the applicant resulting in a formal defect played no part in the alleged infringer’s assessment of the patent once made aware thereof, the claim should be considered patentable and enforceable as against that party, with the opportunity for subsequent correction in fairness to future parties.

    If the not-relied-upon mistake is not innocent, then the claim should be considered patentable but unenforceable as against the first party, with no opportunity for subsequent correction, with future parties being entitled to reasonably rely upon the broadly-applied penalty of unenforceability.

    This sort of mirrors reality, with some changes–but the point is, within a framework like this, how best to characterize utility and the s-m categories? It depends on the nature of the deficiency–if it would have been grounds for rejection at the PTO, it is a condition, and failure to satisfy it results in unpatentability and voiding of the claim.

    This sounds circular, but the critical concept is the effect of the deficiency upon the public (the potential future infringers). The question is always, is it fair and equitable, considering the interests both of the public and the patentee or applicant, to permit the applicant/patentee an opportunity to correct the disclosure–and if it is, the second question is whether or not it would be equitable to permit the patentee to collect damages from an alleged infringer thereof.

    Utility and the s-m categories are clearly substantive, and are just as clearly conditions. It would be inequitable to permit the patentee to change the substance of the disclosure after the defective disclosure had been reasonably relied upon by others in the past.

    Sorry for the rambling quality of this, I was thinking as I was typing, with no edits.

  74. This reminds me of “otherwise made available to the public” in the new 102. Kyl said a main reason for this was to eliminate third party secret use as prior art.

    Huh?

  75. IBP, Frederico stated his goal was to align validity and patentability.  That was his intent.  His stated goal.  

    Section 282 references "conditions."  101 references conditions (and requirements).  The statute states the "conditions" are found in 102/103.

    In order to accomplish his goal, Frederico moved prior invention from 4920 into 102 as 102(g).  He added 102(f) from 4920 for the same reason.  He stated that "invention" was a novelty issue — that is why he put 103 as a modification of 102.  And the beat goes on.

    Everything is consistent.  There is no independent novelty condition in 101.  There is no independent utility condition in 101.  There is no independent invention condition in 101.  The "requirements" of 101, if they are requirements, are not conditions.  NOT conditions.  NOT.  Conditions.  Is that clear?

    Conditions and requirements.  They are distinct.  Conditions lead to invalidity.  A failure to follow a requirement does not.

    Even if 101 lays out requirement, the failure to follow a requirement does not lead to invalidity.

  76. Utility?

    "The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, "

    Describe how to use?  How it that possible if the invention has no utility?

    If the description is not there, 112.

    If the description is not sufficient, 112.

    If the utility is phony?  112.

    What is different, if anything about 101 utility?

    What is different, if anything, about 101 invention?

    What is different, if anything, about 101 newness?

    If a claim purports to claim a process that is not a process within the law, isn't that a 112, p. 2 problem.

    If a claim purports to claim a machine but sets forth only process limitations, isn't that a 112, p.2 problem.

    If a claim purports to claim an article of manufacture but discloses an old article that varies only by the information it contains, isn't that a 102 problem?

    At the time of '52, lack of invention was a defense under RS 4920 because of lack of novelty.  Frederico even said so.  If a claimed invention did not define over the prior art there was no invention.  Prior art included anything in the public domain, including laws of nature, etc.

    Section 101 was not intended by Frederico to be an independent condition for patentability.  He said so.  He said his objective was to align patentability and validity.  What he wrote was intended.

  77. Sorry, I wrongly put a double negative in the third paragraph…ignore “not” in the last sentence thereof.

  78. Wow, Ned…

    There is a presumption that statutes are internally consistent, that they are not contradictory.

    In that spirit, a claim could well run afoul of 2 separate statutory provisions, like 101 and 112.

    You seem to be manufacturing a problem where none exists. Nobody is ignoring statutory structure–quite the opposite, in fact. We risk ignoring nothing not alleged with specificity in the complaint or application.

    101 does not “specifically state that the conditions for patentability follow”. What it does specifically state is that title 35 contains both conditions and requirements of obtaining a patent–and since 101 forms a part of title 35, conditions or requirements could well be articulated in 101 itself.

    You are correct in your conclusion that there is no ambiguity, but IMO incorrect concerning precisely what it is that is unambiguous.

    In the end, Ned, it is up to YOU to PROVE that 101 is inconsistent with some other provision in title 35, to PROVE the extent of that inconsistency, and in the event inconsistency is proved, to PROVE that the various provisions of 101 are not separate and distinct from each other–none of which you have accomplished as far as I can tell.

  79. Ned,

    For some unfathomable reason, you think section 282 needs to be construed to have the Supreme Court obliterate your theory that 101 matters can be tracked to the other portions of the act that may (directly) fall under 282.

    Stop kicking up dust.

  80. The problem, Inviting, is that by using 101 as a separate condition for patentability, we now have to determine whether a claim is new and useful, or is an invention, under both 101 and 102/103/112.

    “Newness.” Is this different under section 101 than under section 102?

    “Invention.” Is this different under section 101 than under section 103?

    “Utility.” Is this different under section 101 than under section 112?

    When one claims a principal in the abstract, why is this not a section 112 problem? The Supreme Court in both Le Roy v. Tatham and O’Reilly v. Morse said it was.

    By ignoring the statutory structure given to us by the Supreme Court and by Congress, we risk ignoring the specific statutory requirements set forth in the conditions for patentability in favor of the more general section 101. That section was not intended to be a condition for patentability by its own terms. Section 101 specifically states that the conditions for patentability follow.

    Thus, 282 and 101 are consistent. Both, BOTH, state the conditions for patentability follow or lie other sections, namely, 102/103/112.

    The language of both 101 and 282 is plain and clear. There is no ambiguity. None.

  81. Anon, I also find it interesting that Kappos cites cases that specifically state that the plain language of the statute cannot be ignored. The plain language of the statute we are talking about here is that in section 282. It is this language which is under discussion.

  82. Interesting stuff… I agree with Dennis that we have not seen the last of this. And, the fact that the supreme court in Prometheus treated it like a defense, when the issue of whether it was a defense was not raised, is hardly support! Love it.

    David

  83. Dennis, I don't think it is all that complicated. From the very first case, Le Roy v. Tatham, the courts have agreed that one cannot patent a principal in the abstract and the term "invention" requires a practical application that must be fully described and enabled. It is this description of a practical application for which a patent is granted.

    This from Tatham,

    "A patent is not good for an effect, or the result of a certain process, as that would prohibit all other persons from making the same thing by any means whatsoever. This, by creating monopolies, would discourage arts and manufactures, against the avowed policy of the patent laws.
     
    "A new property discovered in matter, when practically applied, in the construction of a useful article of commerce or manufacture, is patentable; but the process through which the new property is developed and applied, must be stated, with such precision as to enable an ordinary mechanic to construct and apply the necessary process. This is required by the patent laws of England and of the United States, in order that when the patent shall run out, the public may know how to profit by the invention."

    O'Reilly v. Morse is to the same effect.

    Therefore if one claims a principal in the abstract, even while disclosing invention, the claim suffers the same defect. Clearly the proper statutory grounds is §112.

    There do exist cases that appear to be inconsistent with this line of authority. Those would include Funk Brothers and Flook, which treated the law of nature or principle in the abstract as prior art and required some further invention in view of that prior art. However the majority view appears to be that stated in the first two cases and that patents are rewarded for disclosure of practical applications and that a claim that exceeds the scope of disclosure and begins the claim principles in the abstract is invalid under what we now call §112.

    But even if the Funk Brothers line of authority is followed, the ineligible matter is treated as prior art, and the patent is granted for invention in view of that prior art. This sounds in §102/103.  But even here the proper rejection would be §112.

    Regardless, Federico and the rest of the patent bar probably thought the statutory basis for a rejection lay either in §112 or in §102/103. In cases of law of nature or principles in the abstract.

    Clearly the same applies with respect to utility. That is a §112 problem.

    As I discussed before, double patenting operates on the principles of waiver, and is an equitable principle as opposed to illegal principle. Essentially, by obtaining a patent on an invention, that patent becomes prior art to any second patent not by statute but by waiver of the patentee's rights.

    Thus Frederico, and the patent bar, probably saw no problem in limiting invalidity to §§102/103/112 and 251.

  84. So what you’re trying to tell us is that employees of the USPTO can’t read case law properly? In other breaking news, water is wet.

  85. This is a non-issue.

    Although it is good that Kappos has dealt with it so briefly, it is somewhat of a shame that he/the PTO had to deal with it at all.

    I deny totally any suggestion that it is otherwise important, or substantial. What IS important is that, with relatively minor exceptions, neither the PTO, the courts, legislators, nor practitioners have any basic common understanding of the statute law, the case law, and how the two have influenced each other over the years. This is especially evident with respect to 35 USC 101, utility and its specific, substantial, and credible nature, so-called “pre-emption”, “products of nature”, etc..

    Consider the term “patentability”, as opposed to “validity”. “Patentability” would suggest a consideration of whether a disclosure has the potential to be patented at all, not whether an already-granted patent is valid or not. The problem, IMHO, lies in the use of the term “validity”. Anything failing 101, 102, 103, or 112 should be ruled as having been UNPATENTABLE at the either time of the PTO’s decision to reject (if in fact rejected), or as of the date the application was put in condition for allowance (if granted). In the latter situation, the PTO finding that an application was in condition for allowance would be overturned.

    “Invalid” is a second-order term, denoting an issued patent containing claims that were in fact UNPATENTABLE as of the times before mentioned. Once PATENTABILITY is understood as being the underlying legal basis of the convenience/blunder known as INVALIDITY, the “issue” is quickly seen as trivial.

  86. I think it interesting that Kappos does not actually address the point of the Hricik article – that the courts have been getting the application of the law wrong all this time.

    In essence, Kappos is relying on the fact that the courts have decided how they have decided. But if Hricik is correct, then not only do the court cases go away, but so does everything built on those court cases – including this most recent Kappos post.

  87. Dennis, to understand what Congress meant in ’52 in dividing out 101 from 102, and rewriting RS 4920 to reference only 102/103/112 and 251, we need to consider the state of the law prior to ’52.

    Prior to ’52, no patentable subject matter case of which I am aware specifically identified a particular statute for support, except O’Reilly v. Morse. That case specifically referenced what we now know to be Section 112 and provided it complete rationale for its decision: the requirements for a specification, written description, etc., etc.

    This history should inform the debate.

    In other words, the question is not whether patentable subject matter is reviewable, but under what statute.

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