Hricik: Why Section 101 is Neither a “Condition of Patentability” nor an Invalidity Defense

By Dennis Crouch

On his side of the blog, Professor David Hricik again raises the question of whether Section 101 can serve as the basis for a defense to patentability.

[http://www.patentlyo.com/hricik/2013/09/why-section-101-is-neither-a-condition-of-patentability-nor-an-invalidity-defense.html]

The basic notion is that the defenses to charges of patent infringement are listed in 35 U.S.C. § 282 and there is no statutory pathway for recognizing § 101 as such a defense. Hricik also discusses some amount of legislative history in drafting of the 1952 Patent Act that bolsters his conclusion. The Supreme Court approach makes sense then only by ignoring the statutory language and legislative history.

Other Posts:

There are a few potential legal challenges on this question that are rising through the process, including the Versata case (Inter partes (CBM) review on eligibility grounds). In Sinclair-Allison v. Fifth Ave. Physician (2013-1177), the accused infringer is counter-intuitively agreeing with Hricik that subject matter eligibility is not a validity defense but instead is an off-book “eligibility defense.” The point of the line of argument is that the presumption of validity shouldn’t apply to eligibility challenges.

236 thoughts on “Hricik: Why Section 101 is Neither a “Condition of Patentability” nor an Invalidity Defense

  1. I thought your whole sphele was that it wasn’t grounds for rejection at the office OR invalidation at the district courts.

    I guess if you’re giving up on 101 being a grounds of rejection at the office then that is a step in the right direction.

    Still, there are hundreds if not thousands of 101 cases before the DCs that provide ample stare decisis for the district court invalidations as well.

    But, again, gl with that whole line of “reasoning”.

    This is my final post on the subject, have your final say and let’s call it a thread.

  2. 6, but there may be a difference between the PTO and the district courts.  282 applies only to the latter.  Benson and Brenner came out of the PTO.

     
    Sent from Windows Mail
     

  3. For some reason ned my comment keeps getting eaten. Suffice to say: gl with that line of argument. That isn’t how stare decisis works, and furthermore, the actions of agencies have minimal if any impact on stare decisis when an issue is finally brought to a court for the first time.

  4. “Furthermore, the statutory construction issue has never been litigated and decided and therefore there is no stare decisis. ”

    I’m sorry Ned, but Benson, and all the rest of the 101 cases provide stare decisis as to 101 being a grounds of rejection or invali dation. Just because some los er hasn’t gotten up and said “But but but Freddy said back in the 50′s…” doesn’t mean that stare decisis doesn’t end the statutory construction. I literally cannot believe that you would bother to suggest otherwise.

    But be my guest to was te your money in the courts over this issue. You’ll be paying for my l ulz.

    “But even the Supreme Court found that the long history of the PTO issuing patents on DNA was not sufficient when the legal issue of their eligibility was finally litigated and decided.”

    Actions of administrative agencies have minimal, if any, effect on stare decisis.

  5. “Furthermore, the statutory construction issue has never been litigated and decided and therefore there is no stare decisis. ”

    I’m sorry Ned, but Benson, and all the rest of the 101 cases provide stare decisis as to 101 being a grounds of rejection or invalidation. Just because some los er hasn’t gotten up and said “But but but Freddy said back in the 50′s…” doesn’t mean that stare decisis doesn’t end the statutory construction. I literally cannot believe that you would bother to suggest otherwise.

    But be my guest to was te your money in the courts over this issue. You’ll be paying for my lulz.

    “But even the Supreme Court found that the long history of the PTO issuing patents on DNA was not sufficient when the legal issue of their eligibility was finally litigated and decided.”

    Actions of administrative agencies have minimal, if any, effect on stare decisis.

  6. “Furthermore, the statutory construction issue has never been litigated and decided and therefore there is no stare decisis. ”

    I’m sorry Ned, but Benson, and all the rest of the 101 cases provide stare decisis as to 101 being a grounds of rejection or invalidation. Just because some loser hasn’t gotten up and said “But but but Freddy said back in the 50′s…” doesn’t mean that stare decisis doesn’t end the statutory construction. I literally cannot beleive that you would bother to suggest otherwise.

    But be my guest to waste your money in the courts over this issue. You’ll be paying for my lulz.

    “But even the Supreme Court found that the long history of the PTO issuing patents on DNA was not sufficient when the legal issue of their eligibility was finally litigated and decided.”

    Actions of administrative agencies have minimal, if any, effect on stare decisis.

  7. Good post, 6.  But it is interesting that the statutory language is consistent with Frederico's testimony and commentary, not inconsistent.
     
    Furthermore, the statutory construction issue has never been litigated and decided and therefore there is no  stare decisis.  The fact that the courts had assumed something to be true which is not true in fact may be worth consideration if substantial rights are dependent upon the prior assumption being correct.  But even the Supreme Court found that the long history of the PTO issuing patents on DNA was not sufficient when the legal issue of their eligibility was finally litigated and decided.

     
      I think the Supreme Court will be definitely interested in whether confining patentability of validity to 102/103/112 is constitutionally permissible.  This will of course involve a consideration of whether the statutes are sufficient to address eligibility issues.
     

  8. Then ask him what he means by new thought process (as I am sure that he is not thinking…, well, not thinking about the same thought proess with varying content).

    LOL – On Malcolm’s different world, machines think and that may be what he considers a new thought process.

  9. “Because the newbie says so!”

    No, it’s because you can’t see a thought.

    Can you you show me a thought?

    Didn’t think so.

    Nuff said!

    • It seems the Supreme Court could have rested its views on 112 just as much as on 101.

    I am reminded of an admittedly childish (but no less accurate) retort:

    Coulda-Woulda-Shoulda – BUT DID NOT.

    Blame it on the 101 nose of wax addiction.

  10. Tr0 llb0y: Collins does NOT answer my question

    As I said, the Federal Circut is the answer to your question.

    Collins is … unworthy of attention.

    Of course he is, Tr0 llb0y. Because he disagrees with you and he explains why in a persuasive manner. Therefore, he must have some “agenda” or “bias” and he needs to be shunned by all reasonable people.

    it is not the printed matter doctrine that is a favorite of mine (nice attempted spin, Malcolm) – it is the exceptions

    Again, that’s what I said.

    You are SO outclassed in this discussion.

    LOL. You’re funny, Tr0 llb0y!

  11. “6, nice but for the testimony/commentary of Frederico that by extracting the conditions for patentability from 4886 and the validity defenses to infringement of 4920 and placing them together in 102 he was intending to put into one place all the grounds for patentability and validity.”

    Ned, you know, if there is one thing you ought to know by now as a lawlta rd, it is that the drafter’s intent is not how the law always works out in practice. This happens all the time. So, even if you are correct about his testimony, he surely doesn’t seem to have pulled down the columnar supports of the USSC’s building around their ears as they misread ‘his’ statute.

    I understand your assertion, and I understand that you think that Frederico has some say in how ‘his’ law was to be interpreted. Unfortunately, the only time they read down into the congressional record for statutory construction is when there is something which seems unclear to the judiciary reviewing a case. It didn’t seem very unclear to them, they interpreted the law, and we now have decades of stare decisis which will never be undone by the courts.

    “Frederico clearly did not intend that 101″

    The author of the patriot act clearly did not intend for the NSA to get this out of hand. He ck, unlike Frederico, the author of the patriot act is being very vocal in his stating so. Yet, I don’t see courts bending over backward to interpret the law the way he intended it to be. Instead, they continue to follow their precedent. And let me tell you, the patriot act being misinterpreted is a much graver problem for the country than the USSC misinterpreting 101 to be a condition of patent eligibility.

    That’s just how it is Ned, and you can either like it or not, I don’t much care. Your assertions about how Frederico meant the law to be interpreted may or may not be correct, but they’re irrelevant either way.

    And the funniest thing is, if he were alive and standing here with us today and we asked him “Hey freddy did you mean for 101 to be a grounds to reject or invalidate a app/patent?” He’d be like “of course, who told you differently?”

  12. Reinier, I agree that any claim is “abstract” at some level, particularly when you employ Lourie’s insidious ploy of stripping out most of the elements of a lengthy claim and restating “the idea” of the claim in a single ten or twelve word summary that usually is not found in the claim itself. For a hilarious example, check out the decision in the recent Accenture Global Services case. A long claim was stripped down by Lourie to a six word “abstract idea” and then a few paragraphs later Lourie restated the “abstract idea” in fourteen words, with the two competing “abstract idea” formulations bearing little resemblance to each other. It is hard to believe anyone proof-read this opinion before it was published. You know Lourie thinks something abstract is afoot, but you don’t what it is, much less why either of the options should be considered to be “abstract”.

    But I would not dignify the legal doctrine of “abstractness” with the descriptive term “abstract itself”. That bestows too much credibility on it. The legal doctrine of “abstractness” is worse than abstract – it is mere tautology that has no definition ab initio. You don’t know whether anything is abstract until a court declares it as such. Only once the initial tautology is resolved can you start employing the gimmicky tests enunciated by the Supreme Court.

    So I would not define “abstractness” as being “abstract itself”. I would define it as being a “gimmick”.

  13. Apparently not all the kinks have been worked out. This morning I ended up here in the public site. I’ll clear out my cache and try again…

  14. It did look like a more pleasant area to post.

    Look at my test above at 2:31; heed my directives as to quality blogging.

  15. Yes David, traditionally the conviction of the inventor was enough to walk through the (very) wide open gate of 101. Congress WANTED people to use the patent system. MORE is better.

    Similarly, ‘utility’ was an extremely easy hurdle to overcome (a joke about utility used to be that a claimed substance almost always had utility – through it on your lawn and if the grass grew, it was a fertilizer, and if the lawn died it was a herbicide).

    Enter the philosophical shenagins of anti-patent people, and the temptation of the 101 nose of wax was simply too irresistible to prevent the plunging in of greedy fingers (greedy in the sense of the power addistion of legislating from the bench and ‘controlling’ patents that some felt simply too easy to obtain).

  16. Strange coincidence: in preparing for class today I am reading Lowell v. Lewis, from 1817. Justice Story, talking about the words “useful invention” in what evolved into 101, says: “the patent act uses the phrase ‘useful invention’ merely incidentally; it occurs only in the first section, and there it seems merely descriptive of the subject matter of the application, or of the conviction of the inventor.”

    And so it goes.

  17. On the shadow board Lemley made the point that the AIA says that mistakes in inventorship that can be corrected cannot be a grounds of invalidating a patent, which implies there are other ways to invalidate that are expressly in 282.

  18. It did look like a more pleasant area to post. Some of the people on here definitely just harass me and make it impossible to have an intelligent conversation.

    It was funny on the shadow board Mark Lemley was posting about the different pleadings that one should make. He actually was making good points and being rational. I guess because it was a practice area that he cared about, and so he wasn’t going off into la la land with nonsense regarding 101. I read his functional paper and boy that paper is so far from reality that it should been marked fiction.

  19. Definitely anon. I just wanted to tell you. The site was filled with Mark Lemley postings. So, there is some sort of member only posting area. I don’t know how I ended up in it, but I think it had something to do with that test post that Dennis had up.

  20. probably relate to subjtect-matter that should not be considered patent-eligible to start with.

    The ‘logic’ of this statement is self-evidently false.

    Unbelievably so. You jump from a conclusory “cannot” and conflate different sections of law that exist for different purposes. There simply is no way to judge a ‘cannot’ from anyone’s failed attempt (assuming a 112 rejection is rightfully maintained). Stop playing the ‘academic’ games RB.

  21. Why would I not be surprised and why would such be yet another negative perception building item?

    On the other hand, it is his site and he can do as he pleases (more or less). If he wants to build a shadow site that is geared to an anti-patent view, it is perfectly within his right to do so.

    C’est La Vie

  22. Collins does NOT answer my question – his writing is nothing more than academic gobbledygook masquerading as an attempt to desperately find some statutory toe hold. It is internally inconsistent and unworthy of attention.

    The fact that you are unaware of this and glom onto it like it is some Holy Script tells far more of your inability to understand the concepts at play.

    And it is not the printed matter doctrine that is a favorite of mine (nice attempted spin, Malcolm) – it is the exceptions that rule the day – If you eliminate the judicial doctrine to begin with, then the exceptions would apply even more powerfully and you wouldn’t like that – at all. As you say, be careful of what you ask for.

    You are SO outclassed in this discussion. If you want to get into the substantive matters, you will need a sunblock of like 40 million.

  23. cased by the “mental steps doctrine”.

    LOL – the key is the word anthropomorphication.

    Machines (a perfectly eligible patent category) do not think.

    Machine components then, that are merely described in terms that resemble human thought are NOT to be (purposefully or otherwise) confused with actual thought.

    It is that simple.

  24. an equation represents a problem rather than a solution.

    An extremely odd way of phrasing that – and one any engineer would immediately bristle at.

  25. anon—I got on this board yesterday and I came to posts from different people than are here. Even Mark Lemley was posting. I think Dennis has an alternative members only comment section.

  26. The problem has an elegant solution:

    There is a difference between pure math and applied math.

    The minute you use math for a purpose – the minute you apply it – you jump to the realm meant to be protected by patents.

  27. for a mechanical engineer no software is technical.

    Untrue – real mechanical engineers readily recognize that software is every bit a machine component as wires and transistors. Real mechanical engineers are still engineers.

  28. RB,

    You ask if I am over-sensitive to the use of the word ‘trick’ to describe patents and my answer is firmly “no.”

    I am very much aware of the anti-patent crusades which include the battle of words – ‘trick’ is no accident, regardless of what you think you meant, and there is NO way for you to spin ‘trick’ to be some type of pro-patent sentiment.

    Your comment of “The action aspect is essential” is both accurate and inapposite to our conversation. No one is saying otherwise. Please stop the deflection of mixing in a truth and attempting to make half-truths of your overall agenda.

    As to the ‘math’ leanings – your wolf-skin is again peeking out. I am not your you want to go down that path in a legal discussion.

  29. You expect me to argue like I would have to argue in court. But this is an academic discussion

    No RB, this is a legal discussion.

    I fully understand the academic position you hold – you need to do more than just leave clues to your academic position.

    And yes, that is expected of you.

    Consistency of your academic position is clearly not what is being called for – in fact, that consistency is a problem because that consistency is directly what leads to the ignoring of valid counterpoints raised against your academic view.

    That said, we are in agreement that 101 has a purpose and that purpose is different than 102/103/112.

    However, your academic view of “The invention concept is – somehow – defined in § 100(a), but perhaps more importantly, it is no statutory criterion” needs some shoring up, as patent law is statutory – by design of the US Constitution.

    I would invite you to realize that the ‘test’ of 101 is the Useful Arts. In the U.S., this is given extremely wide scope and includes software and business methods. Many have philosophical issues with this type of inclusion and wish to annihilate whole categories – but to do so would require legislative change – NOT judicial change.

    What some here refuse to acknowledge is that the practice of business has become scientific.

    What some here refuse to acknowledge is that software is a manufacture, a machine component.

    These truths are plain to see and their simplicity survive all manners of obfuscations and dust-kicking.

  30. My explanation that inventions are soms sort of “trick” was not meant in an anti-patent sense. It could actually be construed as pro-patent. Are yu perhaps over-sensitive?

    The famous German patent textbook by Kraßer calls an invention “a technische Lehre zum Handeln”, i.e. a “technical teaching how to act”. The action aspect is essential.

    re right or wrong: I referred to the “abstract ideas” exception and its interpretation. It is impossible to argue whether a concept that has an unclear meaning in common parlance relates to a relevant criterion unless you know (or have chosen) a particular meaning in the given (legal) context. Otherwise you have – in mathematical terms – a single equation with two unknowns, and mathematicians know that they usually have an infinite number of solutions.

  31. In State Street, the CAFC explained that there is no (independent) “mathematical algorithm exception”, and that the patentability of any algorithms should be judged on the basis of the general patentability criteria.

    The idea that the general patentability criteria could be summarized in the requirement of a “useful, concrete and tangible result” was clearly a mistake (admitted in Bilski), but I do believe that it is appropriate not to adopt an independent “mathematical algorithm” exception. Even EU patent law ony excludes mathematical methods as such (emphasis added), which in practice moves the proble m to the question what the words “as such” are supposed to mean.

  32. for more patent tr0lls

    LOL – the lemming keeps marching, unaware that that ‘Tr011′ meme was yesterday’s script.

    Get up to speed Malcolm.

  33. hat describe som sort of trick

    LOL – ‘trick?’ the anti-patent wolf skin is showing.

    And there is no way to say whether you (or me) are right or wrong.

    Incorrect – as the choice of having patents shows that you are not correct in your underlying philosophy. Perhaps I can have you join several others in the search of a modern , advanced country that has ‘seen the light’ and forsaken all IP protection?

  34. There is no “abstract ideas” provision, it is § 101 that represents the only absolute test (since 102 and 103 relate to the “state of the art”). I am referring to “abstract ideas” since that is consistent case law for decades.

    Having said that, it must be noted that the “abstract ideas” idea is abstarct by itself, it is little more than a restatement of the problem.

    Do you object against the perception that all inventions are abstract to some extent? Patents relate to document that describe som sort of trick. That makes them abstract for me. But perhaps you have a different view on the notion “abstractness”. And there is no way to say whether you (or me) are right or wrong.

  35. There is a long debate whether 112 can replace 101. IIRC the Supreme Court has said it can not. Which is logical since 112 is not in the chapter of substantive requirements but in the chapter on the formalities of the application.

    Still 112 can provide a clue for the interpretation of 101: alleged inventions that can not be described in the way required by 112 (sufficient for the PHOSITA) pobably relate to subjtect-matter that should not be considered patent-eligible to start with.

  36. The abstract test is not “nonsense”, it is just unknown how to to accomplish that test. The CAFC is struggling for decades with various interpretations (FWA-test, “useful concrete tangible” criterion, “machine or transformation” test).

    In any case, it is better than the European technology test, since that gives a false impression of concreteness, in particular for software. For a software engineer all software is technical, for a mechanical engineer no software is technical.

  37. Equations are not enabled per se For a mathematician, an equation represents a problem rather than a solution. A more interesting discussion is whether algorithms should be patentable. The very idea makes soms people very angry, actually an algorithm is what an patented invention should provide: a solution to a problem (See In re Iwahashi) If a device executing some algorithm is patentable, why shouldn’t its algorithm be?

    Here we meet another confusion, cased by the “mental steps doctrine”. Here the usual claim drafting of patents is confusing. In my opinion, an algorithm patent may cover the production of a device that performs the algorithm, but not the actual execution of the algorithm, let alone the execution of an algorithm by a human being. See In re Prater II (1969)

  38. You expect me to argue like I would have to argue in court. But this is an academic discussion. I am giving clues that – hopefully – are credible to at least some of you. I am not proving anything. But if you look carefully, you will appreciate the consistency of my argument. There is no place to add footnotes in a web log!

    Actually we seem to agree on 101: you too seem to reject the idea that it is merely a statement. It is actually a criterion, and that is in line with the constitution. The present perception of some writers that a “101″ test is not allowed at all is wrong for that reason.

    The invention concept is – somehow – defined in § 100(a), but perhaps more importantly, it is no statutory criterion. Unlike European patent law, where “patent eligible subject-matter” is synonymous with “invention”. The 101 “subject matter” test is the peer of the art. 52 EPC “invention test”.

    The idea that the “patentable subject-matter”(US)=”invention” concept should and can not be defined is widespread, but it is preposterous IMHO, in particular because these concepts relate to tests that should be made routinely by examniners in patent offices.

  39. Federico considered this lack of invention defense to be part and parcel with lack of novelty.

    Federico wasn’t really a very good writer of legislation, was he?

  40. the plain words of 101 that ANY new and useful process is entitled to a patent (subject to the qualifying provisions of 102/103/112 that follow, none of which mention “abstract ideas”.)

    Including novel, non-obvious and useful mental processes, right? And those aren’t addressable by 102/103/112, are they?

    So where does that leave us? Oh right: more patents, for more patent tr0lls, all the time. Nobody could have predicted.

  41. Collins?

    Your question was answered: the Federal Circuit says you can ignore steps during 103, regardless of how non-obvious those steps are in view of the prior art.

    Printed Matter theory

    One of your favorites, as I recall. Oh, wait, it’s the judicial exceptions to the judicial doctrine that you love so much. In other words, “legislating from the bench” is perfectly fine with you … as long as it makes it easy for you get more patents, all the time. Isn’t that right?

  42. 6, nice but for the testimony/commentary of Frederico that by extracting the conditions for patentability from 4886 and the validity defenses to infringement of 4920 and placing them together in 102 he was intending to put into one place all the grounds for patentability and validity.
     
    Frederico clearly did not intend that 101, which he carved out of 4886, to be a condition for patentability.  This is consistent with the actual language of 282.

     
     
     

  43. “As to the verbiage in 101, it was there from the beginning.”

    So then nothing about it changed (except method from art and even then no substantive change intended). Thus, it is still a condition for ultimate patentability, a part which we now call eligibility.

    ” But, the grounds for refusing a patent and finding it invalid are exclusively set forth in 102/103/112.”

    A nice assertion.

  44. Well said Tourbillion – from an angle of the discussion that I was not thinking of (but that dovetails nicely into the concept of ladders of abstraction).

  45. The “abstract idea” provision is the only “absolute criterion” but admittedly is hard to distinguish because all inventions are abstract to some extent? You’re too funny. Assuming you intended the irony and did not merely blunder into it.

    No, the “abstract idea” provision is sheer gobbledygook that releases software patent deniers into the general populace to wreak havoc by arguing every case from tautology, ignoring the plain words of 101 that ANY new and useful process is entitled to a patent (subject to the qualifying provisions of 102/103/112 that follow, none of which mention “abstract ideas”.) “Abstract idea” jurisprudence thus is a religion initiated by the robed Druids in a certain Court, not a legal doctrine. Do not blame the true believers like the chemist Lourie who don’t have the education to know better, blame the medieval English (major) priests who never met a simple statute they could not distort with aplomb or a technical concept they could comprehend.

    OK wait for it, I hear Pavlov’s dog barking in the distance…

  46. anon, I also quoted the relevant section of section 6. It is nearly word-for-word identical to today’s 112. The statutory basis for the court’s holding in Morse was based on section 6.

  47. 6, I have quoted the language in former 4920 and the gist of Frederico’s testimony and comments from his commentary. He wanted to put in the new 282 all defenses to patentability and validity that appeared in the prior act. These he labelled, “conditions.”

    As to the verbiage in 101, it was there from the beginning. But, the grounds for refusing a patent and finding it invalid are exclusively set forth in 102/103/112.

    Graham was the first Supreme Court case to suggest that 101 was a substantive grounds for invalidity. But that case did not discuss RS 4920 and Frederico’s plan.

    Brenner v. Manson, an appeal by the patent office of an adverse decision by the CCPA, was decided a month after Graham, and rested its utility opinion on 101. The CCPA had held that Section 112 does not require a disclosure of utility and that 101 utility can be presumed.

    It seems the Supreme Court could have rested its views on 112 just as much as on 101.

  48. Yeah, looks like a 101 issue to me. Perhaps, at best, perhaps a tiny bit intermingled with a WD issue from today. At best. Mostly just 101.

  49. Ned,

    Your “super-block-quotes” are not persuasive.

    Far too many differences have emerged between the time of that decision and current law for most anyone to be able to read the massive block quote and take direct meaning from it.

  50. Section 6, Act of 1837, ch. 45, Section 6, reads in part:

    “But before any inventor shall receive a patent for any such new invention or discovery, he
    shall deliver a written description of his invention or discovery, and of the manner and process of making, constructing, using, and compounding the same, in such full, clear, and exact terms, avoiding unnecessary prolixity, as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound and use the same….”

  51. All 101 problems can and should be framed as 102/103/112 problems, just like the statute says.

    NO Ned – please stop the WHATEVER conflation.

    Eligibility and patentability are distinct concepts.

  52. 6, in Morse, check p. 118-120, beginning right after the credit given Wyeth v. Stone.

    It concludes:

    “The 6th section directs who shall be entitled to a patent, and the terms and conditions on which it may be obtained. It provides that any person shall be entitled to a patent who has discovered or invented a new and useful art, machine, manufacture, or composition of matter; or a new and useful improvement on any previous discovery in either of them. But before he receives a patent, he shall deliver a written description of his invention or discovery, “and of the manner and process of making, constructing, using, and compounding the same,” in such exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same.

    This court has decided, that the specification required by this law is a part of the patent; and that the patent issues for the invention described in the specification.

    Now whether the Telegraph is regarded as an art or machine, the manner and process of making or using it must be set forth in exact terms. The act of Congress makes no difference in this respect between an art and a machine. An improvement 119*119 in the art of making bar iron or spinning cotton must be so described; and so must the art of printing by the motive power of steam. And in all of these cases it has always been held, that the patent embraces nothing more than the improvement described and claimed as new, and that any one who afterwards discovered a method of accomplishing the same object, substantially and essentially differing from the one described, had a right to use it. Can there be any good reason why the art of printing at a distance, by means of the motive power of the electric or galvanic current, should stand on different principles? Is there any reason why the inventor’s patent should cover broader ground? It would be difficult to discover any thing in the act of Congress which would justify this distinction. The specification of this patentee describes his invention or discovery, and the manner and process of constructing and using it; and his patent, like inventions in the other arts above mentioned, covers nothing more.

    The provisions of the acts of Congress in relation to patents may be summed up in a few words.

    Whoever discovers that a certain useful result will be produced, in any art, machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains, can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more. And it makes no difference, in this respect, whether the effect is produced by chemical agency or combination; or by the application of discoveries or principles in natural philosophy known or unknown before his invention; or by machinery acting altogether upon mechanical principles. In either case he must describe the manner and process as above mentioned, and the end it accomplishes. And any one may lawfully accomplish the same end without infringing the patent, if he uses means substantially different from those described.

    Indeed, if the eighth claim of the patentee can be maintained, there was no necessity for any specification, further than to say that he had discovered that, by using the motive power of electro-magnetism, he could print intelligible characters at any distance. We presume it will be admitted on all hands, that no patent could have issued on such a specification. Yet this claim can derive no aid from the specification filed. It is outside 120*120 of it, and the patentee claims beyond it. And if it stands, it must stand simply on the ground that the broad terms above-mentioned were a sufficient description, and entitled him to a patent in terms equally broad. In our judgment the act of Congress cannot be so construed.”

  53. “This has become today to be known as a 112 problem, not 101.”

    That so? Under which particular little tiny section of which part of 112? Enablement? WD?

    “Morse cited “112” as the STATUTORY basis for its decision.”

    Really? I missed that. Perhaps you can make a quote?

    “Frederico did not intend to change the law and make 101 a substantive basis for rejecting claims. ”

    I hear you blathering about that, but I’ve asked you what the point to all the excess verbiage is in the statute. And you’ve declined to tell me.

    Furthermore, I will ask you additionally why Frederico didn’t stand up and object to 101 cases in the 50′s, 60′s, and 70′s. I presume he was still alive and probably even active in patent lawl. When was Benson decided again? 1972? Why didn’t Frederico storm the USSC and let them know right fast that 101 simply isn’t a grounds of rejection or invalidity?

    ” All 101 problems can and should be framed as 102/103/112 problems, just like the statute says.”

    I hear your naked assertion. You really like to make em.

  54. mainly editors” = writers.

    Ned – you fight too hard on this point – a point you cannot win.

    Face it: you must give Judge Rich his rightful due respect.

  55. Nothing changed in ‘52.

    You keep on saying this and you keep on being wrong Ned.

    The common law power of the Court to define ‘invention’ through case law evolution was revoked in the 1952 Act.

    You need to accept this.

    We’ve been on this merry-go-round before.

  56. No, anon, Rich and Rose had contributions, but they were mainly editors from suggestions from the bar. 
     
    The bit at the end of 103 about “manner” of invention was added to overturn Cuno, 271(b),  (c) and (d) to overturn Mercoid; and, 112, p. 6, to “overturn” Halliburton.
     
    I don’t recall whether Rich and Rose had any other real contributions.  (IIRC, they may have had some input on 102(g)’s language.)
     
     

     
     

  57. LOL – And I would remind you Ned just who also wrote the ’52 Act and whose views should also be considered when interpreting what it meant.

    But for some (third party driven) reason, you hold that person in utter disdain.

    You cannot have it both ways my friend.

  58. Ned,

    Beware the latent problems with Story and his bias against method patents. Remember he liked the English system at a time that the English system did not allow method patents.

  59. RB,

    Notwithstanding your affirmed anti-patent views, let’s take a closer look at your post:

      The Supreme Court was right

    Conclusory with no legal foundation.

      since it is the only absolute criterion, unrelated to the ‘state of the art’

    True, but so what? 101 is present for a different policy reason than 102/103/112, that much is certain. But this does not tie into the conclusion you assumed.

      Would have an excessive scope for a small achievement

    Again mere conclusion with no tie to law. Also, it is a false conclusion as scope and achievement are simply mirror images of each other. Now if you want to discuss enablement of scope, well that’s a different legal argument to be made.

      Brenner v. Manson

    Nice quote, but (badly) misapplied to the present conversation. You do not do yourself any favors by misapplying case law.

      The legislator may have overlooked this aspect

    Again a conclusion without any tie to reality. This is not something for you to decide and it is certainly not something for the Court to step in and write law. Remember, in the US, the power to write patent law is explicitly provided in our constitution. The founding fathers were on to something in keeping this power out of the hands of a small select group of unaccountable people (this is the entire nose of wax addiction problem that the Supremes have).

      The Constitution clearly commands a restriction in patent-eligible subject-matter

    Perhaps – but that is not for you or for the Court to decide. Again, our Constitution plainly provides who has that power to decide. And that body has decided. Sorry but there is no possible legal authority that can sanction your view that they did not decide ‘well enough.’

      Give tnat all inventions are “abstract” to some extent.

    LOL – even an anti-patent protagonist recognizes the ‘ladders of abstraction’ concept. Which reminds me, 6 – when are you going to live up to your promise? Leopold, when are you going to give me my answers?

      An invention is not just a FACT, it is a teaching how to ACT, sufficient for the PHOSITA, not less (nor more).

    Invention is actually an undefined term. One the writers of the 1952 Act made a deliberate choice in avoiding. They did so for a reason.

    Think about it.

  60. 6, look at the structure of its predecessor, RS 4886.  That structure existed since 1790, mixing a description of new, useful, manufactures, and prior use or known in one sentence.  The defenses to infringement did not list the “new,” “useful,” or list of patentable subject matters. 
     
    When Story encountered the claim for all machines that could cut blocks of ice, he basically said that one could not claim such because one had not invented all such machines.  His opinion was cited in Morse as being directly on point.  This has become today to be known as a 112 problem, not 101.  Morse cited “112” as the STATUTORY basis for its decision.
     
    Over the years, new uses of old machines and compositions were debated.  The debate centered on novelty, not “101.”
     
    While patentable subject matter debates occurred prior to ‘52, the statutory basis for invalidity was either lack of novelty or the then analog for 112.
     
    Nothing changed in ‘52.  Frederico did not intend to change the law and make 101 a substantive basis for rejecting claims.  All 101 problems can and should be framed as 102/103/112 problems, just like the statute says.

     
     
     

  61. Why don’t you address my point rather than raising a new point?

    Your point is that claims to abstract concepts can be handled under 112. The “new point” I raised is that they can’t.

    Whether the claim scope covers an abstract concept is not the same as whether the claim is syntactically abstract (unclear) or whether the claim is fully enabled (whether the specification is sufficient). It’s also not the same as whether the claim is novel or non-obvious.

    If your point is that abstract concepts should be okay to claim as long as they are clearly recited and fully enabled, then say so. And I’ll disagree with that too. But at least we’ll all know where you stand.

  62. Yes, Fish.  Frederico.  Frederico wrote the ‘52 Act.  What he had to say about it should be considered when interpreting what it meant.

     
    Sent from Windows Mail
     

  63. Now IANAE be honest. Are you trying to actually have a discussion or did you intentionally pick a question that clearly comes under a different SCOTUS exception?

    Why don’t you address my point rather than raising a new point? It seems to me that you are being disruptive whether or not it is intentional I am not sure.

  64. “if the claim was so abstract then there would have been lots of systems that pre-dated the claim that would have been a basis for 102. If the claim scope was too broad, then there would have been systems that would be captured by the claim, but were not enabled by the claim.”

    Good points!

  65. That I said, “The abstract test is nonsense.”

    Okay then, the equation represents a previously unknown abstract concept. Just in case “equation” isn’t enough of an abstract concept already.

    Gosh, it’s almost as if your wacky theory doesn’t hold up to even the gentlest of questioning.

  66. Do you realize that your equation is covered by a different exception. That I said, “The abstract test is nonsense.”

    Must you soil all my posts.

  67. The questions are all within 112.

    You discover an equation that represents a previously unknown law of nature. You disclose it in a patent application. The equation is inherently fully enabled. You claim the equation. Very, very clearly. How does the 112 analysis go?

  68. LizardTech provides a very good framework for policing claim scope. The questions are all within 112. Did the application enable the full scope of the claims? Are there methods/devices read on the claims, but are not enabled by the claims?

    The abstract test is nonsense. There is a foot soldier way to deal with broad claims that is how it should be done.

  69. The Supreme Court was right in deciding that “abstract ideas, natural phenomena and laws of nature” are not patent-eligible under § 101. This provision is indispensable since it is the only absolute criterion, unrelated to the “state of the art”. Patenting mere (abstract) ideas would have an excessive scope for a small achievement. In Brenner v. Manson, the Supreme Court rightly noted that “a patent is no hunting licence”.

    The legislator may have overlooked this aspect, but the Constitution clearly commands a restriction in patent-eligible subject-matter.

    Having stated this, the really difficult question is how to distinguish unpatentable “abstract ideas”, give tnat all inventions are “abstract” to some extent. An invention is not just a FACT, it is a teaching how to ACT, sufficient for the PHOSITA, not less (nor more).

  70. Is Malcolm really focusing on the pedantic man/woman speech thing?

    Really? Isn’t his English as a first language skills better than that?

    Oh, the inhuMANinty of it all.

    /sardonic bemusement

  71. MM: “I must have missed that key part of the patent statute.”

    Okay, evidently you are always this silly. Look, the statute does not say you can patent a thought, new, old, or otherwise. And it does not need to since patenting a thought is impossible. But the statute does say you can patent a process. Grow up!

  72. Ned under your reading of frederico what is the point in having all the excess verbiage in 101? Why not just say: whoever invents something may acquire a patent therefor! WOOT!

  73. “under section 101 a person may have invented a machine or manufacture, which may include anything under the sun that is made by man.”

    What about women? Surely Federico understood the difference between man and woman? And yet he plainly chose to use the word “man.” I guess that means all the patents by female inventors were wrongly granted. In any event, it’s not for the courts to decide. Congress must act, lest the Constitution be exploited and tarnished by corrupt socialists who don’t believe in private property. First they come for your slaves, then they come for your intellectual property. It’s always the same story just before the greatest civilizations crumble.

  74. if you can’t see it you certainly can’t file a patent on it.

    I must have missed that key part of the patent statute. Surely Federico or Giles Rich must have addressed this, however, in all of their fantastic wisdom. Maybe it was in the section of 35 USC that discusses product-by-process claims?

  75. exactly who is saying that you can ignore steps

    The Federal Circuit in King Pharmaceuticals.

    /media/docs/2011/10/Collins.KingPharma.pdf

    Read and learn. The article explains why arguments such as “Federico would have said so!” are just rearrangements of the deck chairs. And of course there’s only three reasons why people bother rearranging the deck chairs: (1) they are clueless about the real issue; (2) they want to distract people from the real issue and/or buy time; or (3) they just like rearranging deck chairs.

  76. “Federico is credited for providing the quotation underlying the scope of patentable subject matter under United States law when he testified before a House subcommittee in 1951 that “under section 101 a person may have invented a machine or manufacture, which may include anything under the sun that is made by man.” ”

  77. “Did Frederico believe that purely mental processes should be patentable? ”

    Are you always this silly? I mean that’s a ridicules question since you can’t see a thought, new, old or otherwise. And if you can’t see it you certainly can’t file a patent on it. How would you even complete the drawings of a thought???? You might as well ask do you believe invisible magic fairies should be patentable!

  78. anon, when Rader said that “putting an abstract ideas on a computer” was not likely to be eligible under 102/103, what did he mean?

    I think I know what he meant. But can you even accept that he said it?

  79. Come Ned, recognize that controlling law regarding the exceptions to the printed matter doctrine clear software (even Malcolm has volunteered the admission that he recognizes the controlling law for this).

  80. Are you saying, Ned Heller, that software programs are patent eligible under 101 as manufactures and machine components?

    Point blank: yes or no.

  81. Tell me Ned, why have you never discussed the exceptions to the printed matter doctrine and how anthropomorphication destroys the mental steps doctrine as attempted to be applied to machines?

  82. anon, I think we agree that if what is new in a machine claims is programming, that the issue should be determined under 102/103. I am agreeing with you in principle because Frederico’s intent in limiting the defenses of the new 282 was unmistakable.

  83. I daresay again, that using an old player piano to play new music

      CANARD ALERT

    Ned Stop with the canards – they wreck ANYTHING that you are trying to say. You instantly lose ALL credibility. You can discuss these legal principles using examples from the Useful Arts. I suggest that you do so.

  84. MM, I daresay that Frederico may not have thought any of these as patentable. However, he did believe looking first to determine what was new and then determining whether that was patentable. To him, I daresay again, that using an old player piano to play new music would have been obvious. Ditto using an old mechanical calculator, unchanged in an feature, to calculate an new set of numbers.

    I think you and I have agreed in the past that this was the right approach all along, and that Prometheus finally got it.

  85. (I have previously agreed as well that it can be.)

    The problem Ned is that you create things out of whole cloth in your attempts to deny patent eligibility to manufactures that are machine components.

    The problem is that you import new restrictions into the equation, restrictions I have asked repeatedly that you ground in some (any) law.

    You.
    Never.
    Do.

    We need to clear this serious misconception of yours before we even get close to a discussion on abstract ideas.

  86. Malcolm baldly states:

      never thought about these issues very deeply and was, on a certain level, a bit of a hack.

    Are you F’n kidding me? The men who actually wrote the law are ‘hacks.’ LOL – leave it to Malcolm to set them straight. Oh, how very Carroll of you.

    Malcolm also states:

      A book is an article of manufacture

    but only too quickly *clicks* away from the critical distinction – a distinction he has volunteered knowing as controlling law – in the exceptions to the printed matter doctrine.

    Why the dissembling Malcolm?

    LOL – it seems that you have fundamental [pun intended] problems with what the law actually is.

    I suggest that you return to your planet, shine up that metallic headgear and try again.

  87. Anon, referencing CJ Rader’s opinion in Alice, he argued that a computer with new programming can be a new computer. (I have previously agreed as well that it can be.)

    Then he adds,

    Taking … an abstract idea and simply
    putting it on a computer is likely not entitled to patent protection. Section 102’s novelty or § 103’s nonobviousness requirements are the means to challenge a system claim that does no more than take a familiar, well known concept and put it on a computer.

    Is he saying, in effect, that an abstract idea is deemed “old” within the meaning of 102/103?

  88. LOL – you tell me Ned – are you ready to give up your crusades against patent eligibility for software and business methods?

    Remember: there is a very real difference between patent eligibility and patentability.

  89. Ned – then speak of it without the canards. You can do so without trying to kick up dust with examples of music.

    Why don’t you try that?

  90. Ned,

    Patent eligibility still exists.

    You need to recognize the critical difference between eligibility and patentability.

    You keep on trying to conflate the two.

  91. This sentence, then:

    Frederico stated that he fully intended to have “lack of invention” embraced in 102/103 and not in a separate 101 defense.

    Presumably that’s because when Frederico used the term “lack of invention” he meant lack of novelty and/or obviousness. Perhaps Frederico, like Giles Rich, never thought about these issues very deeply and was, on a certain level, a bit of a hack.

    Did Frederico believe that purely mental processes should be patentable? Is he on the record, anywhere, saying anything about the subject of granting patents on new thoughts? Nobody bothered to ask him?

    If not, then how can we assume what he “intended”? How did he “intend” 102 or 103 to deal with claims to novel and/or non-obvious mental processes?

    What about new books that differ from old books based on the non-obvious useful information disclosed therein? A book is an article of manufacture. What was Frederico’s “intent” by including such articles “expressly” within the statute? What was Frederico’s
    “intent” when he (apparently) disallowed people from ignoriing the non-obvious information printed on the old book when conducting an obviousness analysis?

  92. You come so close Ned, then for some inexplicable reason (no doubt when software and business methods enter the conversation) you veer deep into the weeds.

  93. anon, I would agree with you in principle that by codifying "invention" in 103, the drafters intended to stop the Supreme Court from inventing any new requirements for patentability/validity other than as specified in 102/103/112.

     
    Sent from Windows Mail
     

  94. Your attempt to shoehorn Product of Nature likewise has been debunked many times – including the 9-0 Prometheus decision that said no to your attempted conflation of 101 and 102.

    Plain and simple Ned (again), 101 has different policy drivers than the timing involved in 102/103.

    Why do you ignore these points of basic understanding of patent law?

  95. because of new music for example

    For the LOVE OF GOD Ned, stop with the canards of examples outside of the Useful Arts.

    How many times must I tell you that such an example is dead on arrival – that you don’t even get to get to the point of law you are trying to talk about?

  96. I think you both should remember that “invention” was a term deliberately avoided in 1952, with the writers opting instead for non-obviousness.

    I will also remind Ned that these actions are explicitly what removed the common law ability of the judiciary to define ‘invention’ that Congress had punted on way back in 1873.

  97. Fish, the Supreme Court only get the statutes wrong, not the basic principles. Patentable subject matter is an aspect of 102/103/112.

    If one claims a machine that is new because of new music for example, this is an aspect of novelty and obviousness.

    If one claims a new machine that has no utility, this is a section 112 issue.

    If one claims all machines that produce an end result, this is an aspect of 112.

    If one claims an abstract idea not tied to an application, this also is a 112 matter.

    If one claims a product of nature, this is a matter for section 102 which formally included, but which does not now include, a prohibition on patenting things one did not invent.

  98. It also needs to be pointed out that the general pleading that the patent was issued without the authority of the law was a pleading in so-called “scire facias.” This pleading was repealed in 1870, IIRC, leaving only the statutory defenses set forth in RS 4920. RS 4920 did not include a lack of invention defense or a lack of statutory subject matter defense.

    It is true that the Supreme Court also created the ephemeris lack of invention defense which was nonstatutory. Frederico believed that lack of invention was an aspect of novelty. The Supreme Court may not have agreed with that when it issued its Graham decision in the mid-60s, where it discussed section 101 is a defense to validity.

    Regardless of Graham, Frederico stated that he fully intended to have “lack of invention” embraced in 102/103 and not in a separate 101 defense.

  99. Section 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, 30 days before, may provide trial any one or more 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 a patent for which was in fact invented by another, who was using reasonable diligence in adapting and perfecting the same; or,

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

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

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

  100. Here is RS 4290 (next note). It covers the defenses to infringement including prior invention of others, and lack of novelty. Notice that eligible subject matter is not listed and therefore was not a statutory defense prior to 1952. The Supreme Court had created the ephemeral lack of “invention” the cover such things prior to 1952. But it is clear that in codifying and reconfiguring the prior statutes, creating a lack of patentable subject matter defense would have create something NEW. Frederico would not have done that unintentionally.

  101. David, you need to read why Federico reformed “282.” Professor Hricik does not cover that, but the Revised statutes pertaining to defense to infringement, RS 4920, included a number substantive defenses including prior invention and the fact that the inventor was not the first and original inventor, that did not appear among the Conditions for patentability set forth in RS 4886. Frederico testified that his purpose in refining section 282 was to put the defenses of RS 4920 into 102/103/112 to align patentability and validity.

    It is worthy of noting that patentable subject matter is not listed as among the defenses to infringement set forth in RS 4920. Furthermore it is worthy of noting that even though the Supreme Court had created the ephemeris “lack of invention” defense, Federico considered this lack of invention defense to be part and parcel with lack of novelty.

  102. I cannot help but think about it.

    Heh.

    it seems way out of whack.

    “You never know who’ll get one.” – Kurt Vonnegut

  103. Sorry Leopold, but your silence is so loud that I cannot help but think about it.

    You might want to work on that ‘you think appropriate’ thing, as it seems way out of whack.

  104. I get that you and Lourie seem to think that if you can think it and describe it then it is possible and easy on a computer.

    But, that is not how the art works.

  105. While I’m sure that my maturity arrow is capable of blocking the view of lots of things, I don’t think it is an appropriate topic for this blog. I would appreciate it if you could refrain from even thinking about it again.

  106. ” The Supreme Court approach makes sense then only by ignoring the statutory language and legislative history. ”

    Well, THAT is certainly the case. Either they ignore the bit about methods being eligible OR they come up with nonsense that says methods aren’t methods if the methods are described broadly or if the methods are known methods or if the methods are obvious methods.

    All are Judicial paths through the looking glass.

  107. Leopold’s ‘maturity’ arrow

    Anybody know what Tr0 llb0y is talking about? Seems like he’s on one of his medieval fantasy trips again.

  108. Your.
    Own.
    Words.

    LOL – defeats your trite, banal and overused ‘script’ of a game every time.

    As they say, svcks to be you, Malcolm.

  109. LOL – What? What, didn’t hear you Malcolm, what?

    I’m sorry – Leopold’s ‘maturity’ arrow was blocking the view of your post.

    Please try again.

  110. you have to live with your words and actions regarding the “N” word.

    Likewise, you’ll have to live with your relentless wife beating.

    Fun game, Tr0 llb0y. You’ll start the next round, as usual?

  111. do you not recognize whose words I simply reposted from one of many threads wherein such posts are allowed to remain?

    Do you not recognize that nobody really cares when a quintessential bl0gtr0ll such as yourself is justifiably told to take a flying —- at a rolling donut?

  112. Here, let me help you get this straight:

    LOL – Hey Malcolm you have to live with your words and actions regarding the “N” word.

    All I did was state a truthful statement – the rest, well, that is your problem that you created.

    Glad to help you out Malcolm.

  113. All I did was state a truthful statement

    Really? That’s all you did, Tr0 llb0y? You just made a “truthful statement”? And then what happened, in your little fantasy world?

    that is your problem that you created.

    Let’s get this straight. You accuse me of being prejudiced against black people based on an alleged comment that you refuse to reproduce. And that’s my problem?

    Nice try, Tr0 llb0y. And the best part is that you want to rely on the reactions to your psych-O behavior to make some “point” about … what exactly? Some “unfairness” in the way that Dennis treated a nutty comment about Obamacare? That’s rich.

  114. The post-delete hammer 6?

    LOL – do you not recognize whose words I simply reposted from one of many threads wherein such posts are allowed to remain?

    Time for you to get a clue, son.

  115. LOL – Hey Malcolm you have to live with your words and actions regarding the “N” word.

    All I did was state a truthful statement – the rest, well, that is your problem that you created.

  116. Just checking to see what is deemed permissible to post here.

    Maybe you should try accusing someone of being prejudiced against blacks based on a comment that you refuse to reproduce for anyone. Oh wait. You did that already.

  117. Test:

      Maybe Tr0 llb0y will go f*k himself again.”
      Or
      “your tr0lling axxh0lery”"

    Just checking to see what is deemed permissible to post here.

  118. here is no difference between a processor that can execute four instructions and the Google machine that can drive a car–according to Lourie.

    Are those the claims in question? I don’t see much difference between them either.

  119. You know, consider, if the claim was so abstract then there would have been lots of systems that pre-dated the claim that would have been a basis for 102. If the claim scope was too broad, then there would have been systems that would be captured by the claim, but were not enabled by the claim.

    But, what we have is a fiat by a circuit court judge–in other words the grand hunt for a nuclear bomb to take out all information processing patents.

    So, there is no difference between a processor that can execute four instructions and the Google machine that can drive a car–according to Lourie.

  120. That says 101, not 103, FYI.

    What does 103 have to do with this?

    Oh, right: 35 USC 103 says that you can ignore new, non-obvious mental steps when you are evaluating obviousness. Sure. I see that. It all makes sense now.

  121. Certainly, the 1952 patent act did not intend for a circuit court judge such as Lourie to declare a claim abstract and walk through a list of technical elements and with no regard for any factual evidence disregard each element as not adding structure.

    And, I will note that no one ever took me up on the challenge to add an element to that claim that would be safe from J. Lourie’s method of eliminating the elements.

  122. I understand the appeal of the argument (pardon the pun) but isn’t there always a right of “review” if you will of an incorrect administrative agency action if it affects you personally? In that instance why wouldn’t improper 101 determinations be fair game?

    Curious about the defense here.

  123. ” The Supreme Court approach makes sense then only by ignoring the statutory language and legislative history” and by making up 101 conditions like abstract idea.

  124. “The Supreme Court approach makes sense then only by ignoring the statutory language and legislative history.” As it seems wont to do with everything pertaining to patent law.

  125. “The Supreme Court approach makes sense then only by ignoring the statutory language and legislative history.” As it seems wont to do with everything pertaining to patent law.

  126. DH I honestly can’t make 101 work as an invalidity defense.

    I’m pretty sure you could come up with something, David, if you were sued for thinking a new thought while practicing the prior art.

  127. The problem with the “off the book” argument is a basic canon: it renders 282 superfluous. Most specifically, why on earth would Congress make only “conditions of patentability” in Part 2 of Title 35 defenses when all are? The language Congress chose is meaningless.

    I honestly can’t make 101 work as an invalidity defense. I’d love someone to use the plain text of the statute and basic canons of interpretation and do so!

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