The Green Bag at first appears as an oxymoron – known as an “entertaining journal of law.” The published articles often rely heavily on satire to make their points. Hastings Professor Robin Feldman has a new article coming out in the Green Bag titled “Coming of Age for the Federal Circuit.” Her article though is quite serious and which begins as follows:
This has been a watershed year for the Federal Circuit. The Chief Judge, who had gained a reputation for commenting publicly about pending legislation and cases, resigned after a scandal involving the appearance of favoritism towards a lawyer who appears before the court. The Circuit fared no better in the more traditional measure of approval from the court above. The Supreme Court granted certiorari in six patent cases arising out of the Federal Circuit this term—the largest number the Justices have accepted since the Circuit’s creation in 1982. Moreover, in case after case this year, the Justices soundly and unanimously rejected the Federal Circuit’s logic. . ..
Characterizing these struggles as a debate about rules and standards misses the heart of the conversation that is occurring. Rather, a strong message echoes through the six Supreme Court decisions. It is a message about restraint, about carefully constructed logic, and about coming into the fold of judicial decision-making. This is not to suggest that the Supreme Court itself is always successful in following these aspirational goals. Nevertheless, the message is clear. This is a coming of age for the Federal Circuit–or at least the Supreme Court seems determined to coax, cajole and, when necessary, club the Federal Circuit into coming of age.
This article examines the messages evident in recent Supreme Court decisions and evaluates whether the Court appears to be gaining ground. Although some indications are positive, others suggest that the Federal Circuit may not be entirely ready to relinquish its role as the judiciary’s enfant terrible.
Read it here.
I found Prof. Feldman’s throw-the-bums-out remedy for the mess she perceives interesting.
As I understand her dystopian view of the future is that if there is much more of this judicial nonsense, patent stakeholders will rise up with flaming torches and nooses, and run that whole CAFC lot out of town for good. Seems to me if one wants to exact a pound of flesh, it’s the authors of the 1952 Patent Act that should be tarred and feathered, but too late for that, so the judges/justices will do.
My remedy for reforming the system would be less destructive than throwing out the CAFC. I would refine it – or, rather, replace it with a body better trained to do the job. The problem with the FedCir is that it should have been restricted to patent cases, with a sound technical education as a criterion for sitting on the bench or clerking.
I would go for something more along the lines of the parallel bankruptcy system set up in 1984 – except with Article III courts and no appeal to USDCs. A specialty, parallel, stand-alone court system dedicated entirely to patent litigation from the trial court to the final appeal, with the possible exception that pure constitutional issues be heard by the normal USDC-CA-USSCt stream.
One patent trial court per federal circuit funneling into a single court of appeals just for patent cases. So instead of riding herd on 90 something district trial courts, there would only be 12. All cases from the PTO that now go to EDVA would be heard by the patent trial court in the applicant’s federal circuit. (Trademark and copyright cases can stay where they are – they don’t require years of technical training to sort through complex issues.)
The patent court judges, magistrate judges, and their clerks would have to be trained in science/technology, preferably to the PhD level, and in patent law. As has been noted in this thread a couple of times, and in this blog untold numbers of times, the judges/justices now deciding complex technical issues are not trained for it. Most of them have degrees in English lit and law, and that’s about it. How cretinous can it get: patent practitioners and examiners who are required to be trained in technology/science are over-ruled by those who wouldn’t know a USB from a BUS. Sure a lot of the issues are not technological, they are about policy, but a judiciary that is only trained to deal with policy, laws, and semantics is bound to fail eventually as the technology gets more and more complex and specialized.
KSR?? Justice Thomas, bless his heart, wouldn’t know an electronic throttle control from a fuel injector. Ditto that x9. Myriad?? Justice Ginsburg, bless her heart, wouldn’t know a deoxyribonucleotide if it fell off the chandelier and landed face-down in her soup. Ditto that x9, too. And yet we expect these people to be making calls on highly complex technology where the outcome could be worth billions to the litigants and hundreds of billions to an industry. No wonder patent stakeholders are soaking their torches in kerosine and fingering their BICs.
Don’t be fooled by all of these unanimous USSCt decisions. They only tell you the Oracles don’t have a clue – they are just a bunch of people going along because they don’t really get it. In order to dissent, they would have to write something that sounded like they knew what’s up. When they read the patents they adjudicate, their eyes glaze over and they long for the good ole’ days of Jacobellis v. Ohio cases.
The patent judicial system no longer needs constitutional scholars making the final decisions. Occasionally cases come up that are pure constitutional issues. These cases can be easily identified and diverted from the patent court system to the standard USDC system. That Florida Prepaid case was one. The case over the meaning of “inventor” in light of F2F will be another if it hasn’t been filed already. Yeah, I would trust Kiki to figure out what an inventor is. I wouldn’t trust her to suss out a complex technology like gene design and synthesis.
BTW, I loved Moonbeam’s point about calling a dead duck “deceased” or “expired” – ‘specially the part about scooping it up. Brilliant. I think Dennis’ new PC P-O policies are starting to bring out the creative best in the regular crowd.
Babble, this idea has a lot to recommend it.
I would add that all appeals from the PTO should first be to a district court who could conduct a trial de novo. This would almost entirely solve the constitutional problems with reexaminations and IPRs. See, e.g., the district court decision in Patlex for more on this. Cf., Crowell v. Benson that upheld Art. I fact finding subject to a trial de novo. Cf. Stern v. Marshall.
Of course, the PTO does not like trial de novo’s.
Also, there would be no need for IPRs, given that the district court judges would have just as much technical expertise as an APJ. Perhaps the problem of compulsory counterclaims could be solved with a small change in the Rules that would except patent validity challenges.
Until our broken patent system is fixed, I don’t see why judges or patent attorneys or Examiners need to have “technical” backgrounds.
After all, this is the “Age of Information”, not the industrial revolution, right?
Seems like judges are in a great position to evaluate the sooper dooper awesome patent claims that we’ll be seeing on “methods of judging, on a computer” and “methods of managing a court docket, on a computer” and “methods of managing clerks, on a computer” and “methods of encouraging clients to settle, on a computer” and “methods of showing someone a picture of an judge, wherein the picture is modified on a computer to make the judge look angry, accompanied by an offer of attorney services”.
BB, I don’t agree with much of what you’ve said, but you really should post more often – your comments are a pleasure to read.
Thx yew, but careful what you wish for, the saying goes.
I’ve recently retired.
I’m going to take issue with all of this. I think the Fed. Cir. has been doing exactly what Congress asked it to do: set down consistent rules in applying the patent laws. The other circuit courts of appeals all disagreed with one another, creating an environment in which patents were too difficult to enforce, which resulted in US companies lagging behind their competitors in Japan and Germany by the 1970s. The Supreme Court’s approach is not much different, because just as before, nobody can predict whether a court will find a patent valid or infringed based on the facts of a given case. This is not the only area of the law in which the Supreme Court has muddied previously clear waters. Perhaps we should instead reform the Supreme Court? Although the other branches of government have grown with the country since 1787, the Court is still nine old codgers, trying to resolve the most difficult legal questions in the world largest economy. Perhaps decisions should be made by a panel of nine, drawn from a larger number of Justices, allowing the addition of Justices with legal experience in a wider array of subjects? That’s how they do it in France, for example.
Nick, regarding the other circuits and the Federal Circuit, higher validity, right? Some respect for the presumption of validity. Clearer rules on obviousness. Etc., Etc., Etc.
But now we have IPRs. BRI, preponderance, etc., etc., etc. Few, if any, patents survive intact. No real opportunity to amend. “Death squads” is a term bandied.
Sounds like we have to reform or do away with IPRs or else.
And whose bright idea was it to so undermine the patent system?
Bingo on the USSCt reform, Nick. Sign me up.
My dream USSCt:
1. At least 17 members. I think the panel idea for USSCt is very interesting.
2. No justice serves past the age of 75 or for more than 25 years. [Should apply to all federal courts.]
3. On the 30th day following each presidential inauguration the most senior justice is required to retire. President to nominate the replacement w/ consent of 40% of the Senate and no filibustering. This allows each president to appoint at least one justice for each term in office and help alleviate the ideological constipation the Court now suffers from. The Malox Amendment. That choice would be a part of the election dynamic, no doubt.
4. Chief Justice is the senior justice, meaning no one is Chief for more than 4 years.
5. Some provision for a minimum number of seats reserved for circuit court of appeals judges.
6. Return to powdered wigs and a constitutional prohibition of pant suits for USSCt bar (in honor of Sandy Day).
Is it me, or did Feldman entirely misstate the holding of Medtronics v. Mirowski on page 10? That case was about burden shifting for infringement, not validity.
Feldman at 10: Similarly, the Supreme Court’s decision in Medtronics v. Mirowski ensured an increase in challenges to existing patents. Ordinarily, a patent holder bears the burden of
proving that a patent is valid in an infringement case.
It’s an error. Should be “ordinarily a patent holder bears the burden of proving infringement in a patent case.” Good catch!
For some years the Supreme Court has been reversing any appellate court that creates a predictable, bright-line rule in any area of the law. When I was an environmental lawyer, the Court did the same thing to the definition of “waters of the United States” under the Clean Water Act, in Rapanos. This Court wants to empower the judiciary. The judiciary is empowered when the courts have the ability to rule in any way they please for a given set of facts. Unfortunately, it has created a situation in which the public can never be certain as to what exactly the law means unless the question is litigated in front of a judge. There is much less certainty now as to whether a claim meets the requirements of sections 101 and 103 then at any time since these sections were enacted.
It is very important that people can understand whether their behavior violates the law or makes them liable under the law. The entire function of the law is to create universally understood standards of conduct. This Court’s approach of consistently introducing vagueness defeats this purpose.
How do you have an exclusionary right without some pre-emption? A patent that doesn’t block anyone isn’t really a patent.
How do you have an exclusionary right without some pre-emption? A patent that doesn’t block anyone isn’t really a patent.
You’ve missed the point of the sentence, Scott. Patent claims that do not protect ineligible subject matter (e.g., information and other abstractions) do not generally “pose pre-emption problems.”
For example, a claim reciting a new machine in distinct, objective structural terms that distinguishes the new machine from the machines in the prior art does not “pose a pre-emption problem.”
On the other hand, a claim to a “new” machine that differs from the old machine only by the recitation of some “new” writing on the side of the new machine or the recitation of a “new” legal status for the old machine does pose “a pre-emption problem.”
That’s one of the many reasons that a simplistic test for eligibility like the Federal Circuit’s “machine or transformation” test was a massive (and predictable) failure.
I don’t think that we had sufficient experience with the FedCir’s Machine-or-Transformation test (circa 2008-2009) to know whether it was a massive failure (or even a failure at all).
I don’t think that we had sufficient experience with the FedCir’s Machine-or-Transformation test (circa 2008-2009) to know whether it was a massive failure (or even a failure at all).
The Federal Circuit majority’s decision in Prometheus v. Mayo applying their version of the test was a massive failure of logic and judicial integrity.
You’ll recall that the majority characterized the claims as a “method of treatment” in spite of the fact that the plaintiff’s own expert testified that nobody need ever be treated for the claim to be infringed, and in spite of the fact that the claims failed to recite any treatment step.
As an absolute test for screening out claims that protect ineligible subject matter, it was stillborn and worthless.
Do you really want to defend the test, Dennis? Now? After Alice?
After Alice even the presence of a machine in a claim isn’t a very good “clue” that the claim is eligible if the machine is a computer. On the contrary. And that’s as it should be.
MM, the transformation part of the MOT it is straight out of Cochrane v. Deener and reflects what the courts considered Art to be for a very long time. But the problem with the Fed.’s analysis in Prometheus is its failure to apply the test to the claim as a whole. They found that the old subject matter in Prometheus passed the test, and ignored the fact that the new subject matter, the correlation, was not integrated into that otherwise patentable subject matter as was the case in Diehr. The Supreme Court corrected this error, essentially adopting the Hotel Security test in the process.
On the whole, the lower court either did not understand Diehr, or if it did, it refused to apply it in an honest manner.
Their opinion in Prometheus was one more example of nominalism: If any subject matter in the claim was found to be statutory, move on to 102/103/113. That some subject matter in the Prometheus claim passed the MOT was enough in their nominalist view.
The massive failure of the test is evident in the reams of ridiculous “do this otherwise ineligible method on a computer” claims that were filed in reliance on the test — the same claims that are being tanked left and right now and should never have been granted in the first place.
Does this Prof understand the patent system at all?
Okay, my attempt at HTML flags was a complete failure.
Scott, I think she might be right, but if she is, the Supreme Court is wrong.
However, the Supreme Court is not making distinctions between preempting statutory subject matter, and claims to results. I think it might be important for the lower courts to start making those distinctions to clarify the law.
Based on what I’ve read of your comments so far, Scott, Professor Feldman understands patent law far better than you.
The Supreme Court and Professor Feldman understand that every patent “pre-empts” some subject matter. The Supreme Court shared their understanding of that fact with everyone, expressly, in Prometheus v. Mayo. Quite plainly, the pre-emption of subject matter by valid claims is not the pre-emption that the Supreme Court is concerned about.
The Supreme Court — and a lot of other people — are concerned about field-wide pre-emption of subject matter that is ineligible for patenting, e.g., information, information processing methods claimed as de facto mental steps performed “on a computer”, and other abstractions.
If there is an “enfant terrible” in the federal courts, it’s the Ninth Circuit. They routinely ignore Supreme Court and their own precedent in unpublished decisions.
The real message from the Supreme Court is to invalidate more patents. Having heard all the complaints, many of which are more loud than valid, about bad patents and patent trolls, the Supremes are on a Crusade to kill patents. We’re moving back in the direction of the “the only valid patent is one the Supreme Court hasn’t reviewed” days that preceded the CAFC and that it was created to end.
You might be able to put some noble spin on the Supreme Court’s decisions if they were logically consistent or well reasoned, but even when they get the right result, the way they get there can create more problems than they solve. Anyone remember the good ole days when we had a workable test for obviousness that didn’t grant examiners complete license to engage in hindsight reasoning?
Steve, “The real message from the Supreme Court is to invalidate more patents.”
Ugh.
The patent bar needs to grow up at some point.
The patent bar needs to grow up at some point.
Don’t hold your breath.
The march of the Dierhbots continues apace.
You can explain the basics to me them a thousand times and you’ll just get the same stock responses: “B-b-b-ut my daddy said there’s no such thing as c-c-c-laim d-d-dissection.”
But rest assured: they are very serious and important people.
If only they could do the same with the 9TH Circus Court of Appeals.
Don’t hold your breath waiting for a left coast law prof to recognize the problems with the 9th Circus. They’re too busy shaking their pompoms.
“This is not to suggest that the Supreme Court itself is always successful in following these aspirational goals.”
Understatement of the year.
Including the Court’s unconstitutional incursion into 101 subject matter eligibility.
They even explicitly refuse to define “abstract idea” — one of the core elements / tests in their own 101 analysis … leaving the courts below, the patent office, law firms and their 1,000’s of attorneys across the nation and throughout the world, and indeed the entire patenting / innovation ecosystem; in 101 confusion and disarray.
Because a standard based on an undefined, subjective phrase like this is no standard at all, it is unconstitutional.
If you want to do Congress’ job, may I respectfully suggest that you all give up your judgeships and run for elective office.
Including the Court’s unconstitutional incursion into 101 subject matter eligibility.
What is “unconstitutional” about the Supreme Court interpreting the scope of a Federal statute?
a standard based on an undefined, subjective phrase like this is no standard at all, it is unconstitutional.
Many of us don’t have great difficulty applying the Supreme Court’s holdings in a rational, reasonable way, Steve. It’s the Federal Circuit’s “standards” that were meaningless and unhelpful to everyone except for a tiny, tiny, tiny handful of so-called “stakeholders” in the system (primarily patent holders and speculators whose innovations lay primarily in wordsmithing and dreaming up “new paradigms” to protect with patents).
Perhaps your real problem with the Supreme Court is that you don’t like how the application of these cases affects your bottom line or that of your clients. In that regard, it’s worth remembering that “it’s not all about you”. The public interest in a fairly functioning patent system is paramount. That’s never going to change.
MM
In whose interests is it that a standard deciding the rights of men be undefined and thus be no standard at all? Certainly not anyone person that makes up the public.
If a standard is not in any way objective or defined, what replaces a principled analysis of what constitutes it, i.e. when can one decide something is “abstract”… what MM, could possibly replace *reasoning*?
oh yes, you said it: “reasonableness”
i.e. “intuition”, feeling, whim, perhaps political climate or political pull…
Whose interest does it serve when Rule of Law is usurped with the ever changing winds of sentiment and whim, not just the rule by (a few)Men/Women but rule by their most irrational and capricious elements at play within them.
I suppose you trust placing the public’s interest in the hands of those chaotic forces? Winds are always changing…
Perhaps that trust is misplaced…
Anon2: you said it: “reasonableness”
i.e. “intuition”, feeling, whim, perhaps political climate or political pull…
No, that’s completely wrong.
Reasonabless = agreeable to reason or sound judgment; logical:
I also said rational, a term which you seem to have happily ignored when you chose to cannonball into the warm, shallow pool of “usurpation”.
I’ve said it before and I’ll say it again: everyone is very much aware of the rhetorical “strategies” (to put it generously) that have been deployed — and will continue to be deployed — by people who don’t like these Supreme Court decisions.
The problems being fixed by the Supreme Court don’t go away because you call the Supreme Court names or because you capitalize “rule of law” or because you can stand on the hill and recite the Pledge of Allegience louder than anybody else.
If you are unhappy with the level of clarity being offered then present a reasonable, practical alternative that has a chance of surviving more than two or three years and that isn’t simply a set of “magic words” for attorneys to use.
MM, I agree. The patent bar has simply got to grow up.
Why do you pontificate like this?
One does not have to give an alternative to point out a problem. And there is no implicit agreement that there is a problem.
And again—please give me a claim that I can’t use 102, 103, and 112 to reject, but that only 101 can be used.
So far, what we have seen is the SCOTUS extend a judicial exception to trump legislation when the legislation was perfected adequate to deal with the claim.
please give me a claim that I can’t use 102, 103, and 112 to reject, but that only 101 can be used.
As has already been explained to you, the issue is not about the arbitrary numbers given to the patent statutes.
It’s about ineligible subject matter. You’ve already been given multitudes of examples of claims that you can’t reject unless you invoke subject matter ineligibility.
Any claim in the form [olddatagatheringstep]+[usefulnon-obvious thinking step] is an answer to your question. You can’t reject it under 103 because it’s non-obvious.
>given multitudes of examples of claims
You have now given me one example.
>[old data gathering step]+[useful non-obvious thinking step]
So, Prometheus.
So, MM is that? Is that the entire class of claims that you think need a 101 exception? A claim that includes a step of a person making a thinking step?
And, is it a thinking step or a determination for an action step?
[old data gathering step]+[useful non-obvious determination step] + [action based on the determination step]
Isn’t that really the claim?
Just because they call it “interpretation” doesn’t make it so. The “abstract idea” exception isn’t statutory, it’s purely judicial. It’s also entirely subjective. It’s nothing more than a conclusion phrased as an argument to invalidate a patent that the Court doesn’t think should be patentable, not because its non-statutory, but because the Court doesn’t like it. That most of the patents, perhaps all, that have been invalidated were probably invalid under 102 or 103 doesn’t make the doctrine valid.
Scott, if one is claiming results without including in the claim anything of the novel structure or methods, the problem is a section 112 problem, and the problem is preemption of too much. This is abstract claiming – and was discussed in Morse, which identified the problem to be a section 112 problem.
On the contrary, if one is claiming something that is nonstatutory, the issue is not preemption but the fact that the claimed subject matter is not statutory.
With respect to nonstatutory subject matter, the courts often dealt with claims with mixed statutory and nonstatutory subject matter. Needless to say, in analyzing these cases, the nonstatutory is not given weight unless it is functional with respect to the statutory in a manner so as to transform the statutory into a new state or thing.
I think the Supreme Court opinions are consistent with the above but in a manner which is clearly not well understood. Furthermore, they do not discriminate between claiming results and claiming nonstatutory subject matter, which only confuses.
The “abstract idea” exception isn’t statutory, it’s purely judicial. It’s also entirely subjective.
That’s competely false. “Abstractions” aren’t listed among the enumerated categories in 101 and there is no indication by anyone, anywhere, that Congress intended to make abstractions eligible for patenting.
And it’s certainly not “entirely subjective.” Not even close.
I claim “A process comprising thinking about [insert new obvious thought here].”
You think the ineligibility of that claim is a “subjective” call?
How about “I claim a process comprising drinking a cup of caffeinated coffee and thinking about [insert new obvious thought here].”
You think the ineligibility of that claim is a “subjective” call?
Let everyone know.
Steve, I second MM’s take.
Wyeth v. Stone is a good example of what Alice is taking about. The claim there was essentially to all machines that were effective in cutting blocks of ice. Machines of course are statutory — but simply sprinkling the claim with gen eric machines cannot be enough. When the machines themselves are expressed in t0o high level of abstraction, the novel subject matter itself is itself little more than an idea and the claim as a whole is abstract. There really is no “application” of the idea to statutory subject matter. (Rubber-Tip Pencil is another case just like Wyeth where the idea of attaching a rubber tip to a pencil was stated without any details at all as to how to do it, where the ability of rubber to attach to tips through elasticity was known.)
In the end, the claim must recite a new or improved machine, manufacture or composition; or must be a way of making a thing or improving (transforming) a thing in to a new state or thing. You will object that the latter is the MOT and that the SC did not approve of it as the universal test for processes. But it is the best test there is, and it was not disapproved.
I think Rich did a fairly thorough job of debunking your notions Ned.
Application of Zoltan TARCZY-HORNOCH.
The way to think about what is going on at the SCOTUS and the Fed. Cir. is we now have judges that are about as educated about modern science as judges were back in 1850. So, what is happening is that patent law is devolving back to where it was due to the ignorance of the judges.
We can only hope that the judges will avail themselves of a modern education in science.
Night, I don’t think this controversy has anything to do with education sciences or lack thereof. I think there is some confusion in the Supreme Court precedent, and the confusion really got started, I think, in Benson which got to the right result, but it muddied the waters because relied on the so-called exceptions rather than fact that math itself was nonstatutory.
Ned, I think the lack of education of the judges is key to the issues related to patents. Benson came to the exact wrong result and evidenced a complete ignorance of the issues and was reviled by patent scholars at the time as perhaps the worst SCOTUS option ever penned.
I am hoping that Obama will stop appointing judges to the Fed. Cir. that are ignorant in patent law and science. And, let’s hope that the qualifications for the SCOTUS go beyond being good at twisting words and having done well in law school.
Night, had the claims in Benson required that the BCD->Binary be an executable instruction of the computer, the result would have been different as the machine would have been improved.
I don’t think the Supreme Court had a long at all.
I don’t think the Supreme court had it wrong at all.
(Another Dragon misrecognition that I did not catch.)
By the way Ned, I think that this touches on your core. You and MM continue to ignore science. The fact is that software/hardware/firmware are equivalent. You do not and cannot address that point. Please respond to Mano and tell us why he is wrong.
Last we left MM, he said that he believes that music is like software. He believes that his stereo is imbued with new functionality when he plays different songs. He is convinced that his stereo will drive his car if he can only find the right song. He hasn’t id’ed any new functionality, but that is my problem apparently.
Also, he won’t compare and contrast wheat with music. Music and stereo is to wheat and wheat processing machine as ____.
Night, since I know what I am talking about give my very long history in computer arts, I think I do not ignore the science of what is going on.
However, I have a different view of that matter when the issue of your understanding of the art is involved. You do not seem to understand that an old computer running software is not a new computer. Why that is it not certain.
Ned,
If you know the science, then you would have to agree that GPC + software is equivalent to a new computer.
And, the GPC + software defines a set of ROM/hardware solutions that are equivalent.
Night, I daresay I know what you are talking about from a technical point of view. I have a degree in physics from IIT, and helped develop intercontinental ballistic missiles (nuclear weapons) for a number of years before I went to law school. I only point out the latter because they do not put the incompetent to work on nuclear weapons.
That is a great school Ned. I went to the U of I, but you still didn’t answer my question.
You know as well as I do that every other argument is really just about the one question I asked.
And Ned in a world where judges are judicial activist, this issue hits the fan with the following claim:
a circuit configured to [functional description]
That has been determined to read on structure. But, is a physical circuit configured when software is then controlling the circuit? The science answer (Mano) is yes no doubt about it. The judicial activist answer (from people that could not even tell us what Ohm’s law is or what a Turing Machine is) is no.
Night, the simple answer is that a computer loaded with software is not a new machine even though it might operate in the same way as a circuit mathematically. The only thing that’s really equivalent is that both computers and circuits can perform logic and math. They are not the same in other ways. The computer needs digital to analog converters to receive data from signals, digital analog converters to output signals from data, while the circuits need similar inputs and outputs to convert data into signals. Overall, the two are not equivalent from a hardware point of view. The equivalence stops at their ability to perform math. They are functionally equivalent in the context of a larger machine or process and that’s where their equivalence stops.
Rich, as he is wont, did a job on the Supreme Court precedent to determine that the “function of a machine” doctrine was not even followed by the Supreme Court.
But, the reason I cite the cases is that the Supreme Court is citing them today as examples of what it is talking about. That you and I would agree that claiming results really is a section 112 problem does not change the fact that the Supreme Court believes it is a 101 a problem. The author, Robin Feldman, also thinks the Supreme Court is focused on “preemption.”
But preemption is a 112 problem, but I would wish to point out that if what is being preempted is nonstatutory, that is a separate and distinct problem. As the Supreme Court pointed out in Flook, in the case of math which is clearly nonstatutory, it makes no difference whether the nonstatutory subject matter is preempted entirely or only partially. The problem is that the nonstatutory can’t be preempted at all – because it is nonstatutory. However, we learned in Diehr that if one applies the mathematics to transform an otherwise eligible process, the nonstatutory aspect of math is irrelevant.
In TARCZY-HORNOCH Rich brilliantly summarizes previous SCOTUS case law and illustrates why the doctrine of function of machine was not sustainable. I not that Lemley did not address Rich’s arguments in a substantive way. No doubt few of the new Google judges on the Fed. Cir. have even read the case. (or could even read it.)
But Night, do you even know what the function-of-a-machine doctrine was?
Please don’t be condescending.
OK, but just so others might know what we are talking about, it was a doctrine that a method could not cover the functioning of a machine. The law had developed that a method involving a machine must cover at least two different machines, not just the machine disclosed.
Rich toasted the doctrine when he showed the origins were in Wyeth v. Stone, that those cases merely held that one could not patent a result, and because the Supreme Court had held valid method patents where only one machine was disclosed that could carry out the method.
Also funny Ned that when I cite case law you ignore it or try to push by it with very general statements. When I don’t cite case law, you determine that all of my arguments have no merit.
Quite a racket you have going there.
Night, I don’t think that Rich disagreed that the basis for Morse was 112, just as you and I have previously discussed many times. He also traces the functional-of-a-machine doctrine to Wyeth v. Stone, which is one more example of claiming a result without any details which was the same thing that Morse complained about with respect to claim 8, i.e., a section 112 problem.
In the end, this CCPA case overturned the function-of-a-machine doctrine because it made no sense. But if you know what the doctrine was, you can see that Rich had no intention of overturning Wyeth v. Stone or O’Reilly v. Morse.
Regarding Lemley, I don’t think Lemley understands the functional-at-the-point-of-novelty problem. It really is a problem of claiming results as Rich concluded in Tarczy-Hornoch.
Night, also, when you cite case law, we have a basis for further discussion. We are not just stating our opinions about things.
Agree completely with you Steve.
Me too.
I imagine that if we had a blog back in the days of Jefferson and Marshall, that the matter of “just a silly little justice of the peace appointment” would also have been attempted to have been p00-p00’ed under the rug, and mislabeled as an attempt to be such things as “only about you” or “a shallow pool of ‘usurpation’ – with insults of “gee, that’s a four syllable word.”
Drawing attention to the means and stating that the ends do not justify the means is NOT a trivial point or something that we should close our eyes to. It is no small accident that there is a fairy tale that mirrors the sharp point made by the French term of “L’enfant terrible” – the parable of The Emperor’s New Clothes.
Hush child, your view is not welcome here.
L’enfant terrible (“terrible child”, also enfant terrible) is a French expression, traditionally referring to a child who is terrifyingly candid by saying embarrassing things to adults, especially parents.
LOL – Hush child, your view is not welcome here.
That’s one of the best summations of “what’s happening here” that I’ve read. Every Mr. (Mrs.) Jones with even a passing interest in patent law should read it (it’s short and very well written).
These two paragraphs also provide a nice summation (citations omitted):
Most importantly, the cases this year reflect an impatience with the type of nice distinctions that patent lawyers have grown accustomed to falling back on to justify a client’s behavior – ones that the Federal Circuit has readily accepted. Over and over again, the message from the Justices essentially has been, “forget the clever drafting and technical workarounds, what is really going on here,” while the message from the patent bar and the Federal Circuit has been “but this is how we do things.” Consider the patentable subject matter case Alice v. CLS Bank. In five diferent places, the Justices referred to “draftsman’s art” or “drafting efforts,” signaling loudly and clearly that the Federal Circuit’s legal doctrines must rest on more than such tenuous grounds.
The problem of relying on ever-fining distinctions, at the expense of a coherent logical base, has plagued the Federal Circuit for some time. I have described this problem as “death by tinkering.” The Circuit changes a little piece here and little place there until the doctrine threatens to collapse under its own weight. In Alice, the Justices pointedly directed the Federal Circuit to construct legal doctrine that did not rest on these types of drafting discussions.
Indeed. That’s why the Federal Circuit’s so-called “machine or transformation test” for determining eligibility was such a miserable failure, as a matter of fact and also in the view of the Supreme Court. It was simply an invitation to discover the next set of “magic words” that would allow applicants to protect “new functionalities” for old machines or to protect information itself.
Ultimately patent law is headed “back to the roots” where it always belong before it was unmoored by courts (mainly the Federal Circuit) who looked no further than the interest of the patentee when deciding cases. If the operating assumption is a misguided and false one (“denying a patent on X means no innovation in the field of X”) then the doctrines flowing from that assumption will be equally misguided. The result is an overburdened patent system that functions primarily to enrich the bank accounts of patent lawyers, speculators and “land grabbers.”
There is one very clear, easy to apply and objective test for determining subject matter eligiblity that is consistent with most of the long history of our patent system and keeps a perfectly weighted lid on things: all claims must recite either a new composition/machine in distinct, objective structural terms that distinguish the new composition/machine from the prior art machines, or a new step (or combination of steps) that results in a physical transformation that was previously unachieved by the prior art.
From that starting point — the “roots” I referred to above — if there’s compelling evidence that some other “new technology” needs to be shoe-horned into the patent system or else it won’t be developed, that shoe-horning should occur only after a careful consideration of the exceptions being made and how those exceptions will inevitably be exploited by patent lawyers. With a few exceptions, this is pretty much the opposite approach than that taken by the Federal Circuit in recent years.
Regarding this easy to apply objective test, if one claims a composition (or machine, or article of manufacture), and it is rejected under 102 as lacking novelty, does that also mean it is not patent-eligible? If it is novel but obvious, it is patent-eligible – just obvious? Or are we just talking about the gist having to be new?
if one claims a composition (or machine, or article of manufacture), and it is rejected under 102 as lacking novelty, does that also mean it is not patent-eligible?
I’d love to hear an explanation as to why this matters to you or anybody else. Just for the sake of argument, let’s say an anticipated claim is also ineligible beause 101 applies only to people who who invent new stuff. Why does this matter? It’s like quibbling over a whether we call a dead duck “deceased” or “expired.” Either way it needs to be scooped up and taken out of the barnyard.
If it is novel but obvious, it is patent-eligible – just obvious?
“Just” obvious? If your recited combination of new, distinct objective physical structure is obvious, then the claim is invalid. If the additional elements in the claim are non-obvious but ineligible for patenting on their own terms (because they are abstractions like information, labels, etc), then the claim is ineligible.
are we just talking about the gist having to be new?
Depends on what you mean by “the gist”. That’s neither a legal term nor a technical term that I’m advocating is of much use to anybody.
What can’t be the only “new” or “non-obvious” limitation in the claim is the recitation of an abstraction, e.g., information (whether factual or not) , a non-physical relationship between elements or actors (e.g., a legal relationship), or an abstract status/label applied to an old element (e.g., “copyrighted”; “offered for sale” etc) — or –the mere recitation of a desired “functionality” to be innovated by others (with or without guidance provided in the specification).
A minor correction perhaps, but “gist” is in fact a legal term.
From Black’s Law Dictionary:
1. The ground or essence (of a legal action).
2. The main point.
And perhaps ironically:
This noun derives from the Law French verb guest “to 1ie.”
“guest” should read giser – autocorrect error…