Guest Post: TC Heartland and Statutory Interpretation

By: Michael Risch, Professor of Law, Villanova University Charles Widger School of Law

After the certiorari grant in TC Heartland, Dennis solicited a blog post from anyone who thought the case was not a slam dunk. Always the contrarian, I took him up on the offer. In a prior blog post at my own blog, Written Description, I detail some of the history of the statute and highlight why I think that Fourco does not necessarily answer the question. Colleen Chien and I flesh out the history and interpretation a bit more in our article, which we’ve blogged about here in the past.

I should note that the outset that I favor TC Heartland’s position from a policy point of view. I’ve long said in a variety of venues (including comment threads on this very blog) that there are significant problems with any system in which so much rides on where the case is filed. And I think that’s true whether you think they are doing a great or terrible job in the Eastern District of Texas.

Now, on to the interpretive issues. In general, I favor the application of longstanding original norms of statutory interpretation unless there’s good reason to depart from them (see, e.g., my new paper on reasonable royalties). I think this is doubly true where no one ever challenged the original interpretation (see, e.g. the ridiculous claims that common law copyright grants a performance right to sound recordings, despite the fact that no one ever thought so in the history of common law copyright). But in this case, I don’t think one can simply rely on the fact that no one challenged VE Holdings for 25 years. After all, the Supreme Court just overturned our understanding of design patent damages despite a tacit understanding that was more than 100 years old. As I noted here, this bothered me a bit given my general views, but I also think it was the correct statutory interpretation.

But, as I noted in my prior blog post, I don’t think one can just say “Fourco controls.” As I noted there: “Stonite and Fourco were statutory interpretation problems…. [T]his is a statutory interpretation problem. But the statute in Fourco is different from the statute today and has been amended twice since. We cannot rely on a supposed ‘rule’ about a statute that no longer exists.”

Instead, we have to return to first principles. In Stonite, the court clearly held that the patent venue statute was a special statute, to be specially applied differently than the general venue statute.  After Stonite, the general venue statute was amended. But let’s look at the statutes of the time. Right out of Fourco:

Section 1400 is titled “Patents and copyrights,” and subsection (b) reads:

“(b) Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.”

Section 1391 is titled “Venue generally,” and subsection (c) reads:

“(c) A corporation may be sued in any judicial district in which it is incorporated or licensed to do business or is doing business, and such judicial district shall be regarded as the residence of such corporation for venue purposes.”

The court ruled that not enough changed since Stonite: we still had two separate venue tracks, and the patent statute was separate. The question now: is there a way for Congress to have changed this? could it have done so unintentionally? Let’s look at the 1988 change to 1391(c):

“For purposes of venue under this chapter, a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced.”

There is a key change here: 1391(c) no longer talks about a “separate” track where corporations can be sued “for venue purposes.” Instead, it says that “for purposes of venue under this chapter…” the definition of resides has now been set (emphasis added). The question is whether the Fourco precedent means that Congress had to do more than this to change the meaning of 1400(b) (which is in the same chapter). In VE Holdings, the Federal Circuit said no, it didn’t – that the plain language modified 1400, and, essentially, that Congress had said there were no more tracks here.

And that, I think, is the core question here. This is not a Supreme Court policy. This is the Court interpreting the statute. What did Congress do? In Stonite and Fourco, the Court said that Congress intended two separate tracks. The Federal Circuit says that in 1988, Congress merged those tracks by changing the definition of “venue” “under this chapter.”

The only other information we have is that in 2011, more than 20 years after VE Holdings, Congress expanded 1391 again. Section 1391(a) says the section applies to all civil actions “except as otherwise provided by law” (and as we detail in our article, the legislative history is clear that this referred to a list of statutes compiled by the ALI, and 1400 is not among them.) Further, 1391(c) expanded from “under this chapter” to “all venue purposes.” In other words, knowing that the Federal Circuit had interpreted 1391(c) and 1400 to be in a single track, Congress further expanded 1391 even more broadly and did nothing to clarify that no, really, “resides” in 1400(b) was really intended to continue to have the narrow definition. We know from many other contexts, in patent law and otherwise, that Congress is fully capable of correcting erroneous court interpretations, and the agglomeration of cases in Texas was known in 2011. Indeed, the AIA was passed in close proximity, and it included special provisions to deal with filings in Texas, but never once attempted to clarify that VE Holdings interpretation was wrong. For Congress to have expanded the venue statute and pass the AIA without addressing this point is particularly salient.

I, frankly, have no idea how this statutory interpretation issue will or even should come out. I don’t think this is a statutory slam dunk either way. TC Heartland is represented by outstanding lawyers who make outstanding arguments to the contrary. And the Court even granting cert. says something. You could dismiss all I’ve written with a wave of the hand: Fourco stands for the proposition that 1400(b) is separate and the current 1391(c) is no different in structure than the 1391(c) that faced the court then. I am troubled by this argument, but I can see how others might reasonably embrace it.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

230 thoughts on “Guest Post: TC Heartland and Statutory Interpretation

  1. Ned: “And, if invention and discovers mean the same thing in the ’52 Act, what did Congress have in mind? The courts do not treat discovery and invention equivalently. One cannot get a patent on a discovery, but only on an invention, something created by man — even if that creation was accidental, as in the “discovery” that rubber placed on a hot stove vulcanized.”

    Inventions and discoveries don’t mean the same thing. Why would you think they do?

    The courts are ignoring the Constitution and the statute when they assert a judicial exception for laws and products of nature. Discoveries are explicitly protect-able under the Constitution and the Statute and as you appeared to agree below, there is nothing to discover, but products and laws of nature.

    The judicial exception is a farce. The King has no clothes.

    1. The courts are ignoring the Constitution

      The Constitution doesn’t require any patent system at all, much less one that allows entities to monopolize natural laws and products of nature.

      The courts are ignoring the statute

      The statute doesn’t state that natural laws and products of nature are eligible for patenting.

      The judicial exception is a farce.

      Not at all. More like a necessary and essential part of any sane patent system.

      The King has no clothes.

      Don’t talk about the Big Q that way. He tries his best. He’s just not very smart. He needs to hire a competent patent lawyer to explain the basics to him. You should consider that, too, but I doubt it will do any good.

      1. Article 2, Section 8:
        To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;

        1. Two points:

          1) You are quoting Art. I, §8, cl. 8, not Art. 2, §8. There is no Art. II, §8.

          2) If you are going to quote the IP clause, you really need to quote the whole thing to be read in context, to wit: “The Congress shall have power to… promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries,” (emphasis added). “Power to,” not “obligation to.” Congress can enact a patent law, but it is under no Constitutional duty to do so.

          Indeed, it would be positively dangerous to read the list of things in Art. I, §8 that Congress can do as if they were things that Congress must do. Clause 11 authorizes the Congress to issue Letters of Marque, but the Congress has not done so since 1815, and the United States is forbidden to do so under binding treaty obligations.

  2. Greg, Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969).
    Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S. Ct. 1532, 47 L. Ed. 2d 784 (1976).

    Fed Cir. refusal to follow: Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F. 2d 1563, 1566 (Fed. Cir. 1983)

    “There is neither a statutory distinction between “combination patents” and some other, never defined type of patent, nor a reason to treat the conditions for patentability differently with respect to “combination patents”. It but obfuscates the law to posit a non-statutory, judge-created classification labeled “combination patents”. Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 219 USPQ 8, 12 (Fed.Cir.1983). That the misstatement did not in this case lead to an erroneous application of the law, however, is indicated in part by the Memorandum statement that the “elements presumptively were combined in an inventive manner so as to render the combination patentable”. Though the record would have been more clear without the reference to “combination patents”, and “inventive manner”, it cannot be said that the appealed judgment was in this case so influenced thereby as to require reversal.”

    1. Greg, Product of nature revolt by Rich: Application of Bergstrom, 427 F.2d 1394 (C.C.P.A. 1970), link to scholar.google.com

      Products of Nature: The New Criteria, link to scholarship.law.edu

      Essentially, Rich said the “new” in 101 meant not new as in 102, which is plainly ridiculous when considering products of nature. They are unpatentable because they are not truly new, albeit, unknown. Myriad plainly held that products of nature were not new within the meaning of 101.

      But the PTO went off the rails in a wild goose chance for decades because of Rich.

      1. Ned, I am with you in disagreeing with the CCPA on this particular point. I think that the better reading of the statute is that “new” in §101 is different from “novel” in §102. That said, I guess that (1) I am not sure that it really makes a practical difference in this case; and (2) in any event your ascription to Giles Rich of the CAFC’s error on isolated DNA vastly overstates Judge Rich’s role in isolated DNA patents.

        Regarding (1), under Egbert v. Lippmann, 104 U.S. 333 (1881), novelty is destroyed by “public use” before the critical date. Public use includes use in which the public is not even aware of the invention’s presence (as when a woman wore a newly invented corset to a ball, even though the corset was under her dress and the ball-goers could not know that she was wearing it). Therefore, even if one reads “new” in §101 to be the same as “novel” in §102, it comes to the same end. A frog in the Louisiana bayou is still “in public” before the critical date, even if no one knew of the frog’s presence there until the “inventor” showed up and discovered the frog. Therefore, the frog would still not be “new” for §101 purposes even if “new” means the same thing as §102 “novel.”

        As for (2), I see no evidence that Judge Rich was some sort of wild-eyed radical in terms of the natural products exception to §101. I do not know of any cases where he held that a naturally occurring substance was §101 eligible. Bergstrom, incidentally, was Almond’s case, not Rich’s. Nor am I acquainted with any case in which Rich held for the patentability of isolated DNA. I think that you are sniffing up the wrong tree in ascribing to Rich the source of where the CCPA/CAFC supposedly went wrong with isolated DNA claims. Like I said before, if you really want to blame someone for asserting that isolated biomolecules are patentable, blame Learned Hand.

        1. Guys – we’ve been down this road already with the Congressional record in which the “new” of 101 is simply NOT some law all unto itself.

        2. Greg, Egbert is about use by an inventor himself and whether it falls under the public use/on sale exception originally recognized by Pennock v. Dialogue. There is little doubt that the inventor created the invention in that case.

          The real question for 101 purposes is whether the composition is new regardless of whether it was previously known or used by others. You have to consider the statute the way it existed at the time it “new” was first introduced.

          1. Egbert is about use by an inventor himself (emphasis added)

            Where are you seeing this limitation in the case? Public use can stand as a bar even when the invention is used by another, even without the inventor’s consent. Shaw v. Cooper, 32 U.S. 292, 322 (1833). In other words, the fact that something is out there in public defeats novelty, even if the public does not know of it, and even if the “inventor” does not consent to it being out there. If that is the case, then I do not see how “novel” differs from “new” as you and I are reading the word. I think that there is a good reason to suppose that “novel” should not be read so broadly as Egbert reads it, but once we grant that Egbert is the authoritative reading of “novel,” I do not see where you and I are left to quibble about a discrepancy between “new” and “novel.”

            I would prefer that there be a distinction (as befits the fact that Congress saw fit to use two different words). I would also prefer that public use that does not put the public in possession of the relevant know-how should not defeat patentability (unless possibly as against the one who consented to its public use without filing). My preferences, however, have very little bearing on the question of “what is the law?”. Where Egbert and Shaw control, why is the difference between “new” and “novel” of any practical concern?

      2. Myriad plainly held that products of nature were not new within the meaning of 101.

        Here I really disagree. Myriad was painfully careful to emphasize the narrowness of its own holding: “We merely hold that genes and the information they encode are not patent eligible under § 101 simply because they have been isolated from the surrounding genetic material.” Ass’n for Mol. Path. v. Myriad Genetics, 133 S. Ct. 2107, 2120 (2013). Nothing there about isolated proteins, or isolated hormones, or any other “natural products,” come to that.

        Nor was any of the holding founded on the alleged lack of “new”ness of the isolated biomolecules. Myriad quite definitely did not ground its holding in the statutory text: “Section 101… contains an important implicit exception… [for] natural phenomena… .” Id. at 2116.

        I wish that the Court had grounded Myriad‘s holding in the statutory requirement for “new” as you suggest. I think that this is much the better understanding of the “natural products” exception, but unfortunately it is quite explicitly not the Court’s understanding. “We have interpreted § 101 and its predecessors in light of this exception for more than 150 years. We have described the concern that drives this exclusionary principle as one of pre-emption.” Alice Corp. v. CLS Bank, 134 S. Ct. 2347, 2354 (2014) (internal citations omitted). In other words, the “exceptions” are not—in the Court’s way of thinking—the result of careful statutory constructions, but are rather judge made carve-outs.

            1. The operative words there Night Writer are:

              “what actually happened”

              Yes, the Court merely was writing something else, but that something else was worse than dicta and has no force of law.

              Judge Rich (since he helped Congress write the law, was very much aware of this smoke and mirrors game of the Court.

              Let me repeat so that all attorneys (and non-attorneys reading the blog), there are ZERO state oaths that an attorney can take that places the judicial branch (including the Supreme Court) above the Constitution.

            2. Gosh, where are you seeing in Bilski that the Court regards the 1952 amendments as having codified the previous judge-made carve outs? I see exactly the opposite in Bilski?

              The Court’s precedents provide three specific exceptions to § 101’s broad patent-eligibility principles: laws of nature, physical phenomena, and abstract ideas. While these exceptions are not required by the statutory text, they are consistent with the notion that a patentable process must be “new and useful.” And, in any case, these exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years.

              Bilski v. Kappos, 561 U.S. 593, 601–02 (2010).

              Notice that “not required by the statutory text.” That says to me that they are quite explicitly refusing to ground the exceptions in the statutory text. They want to keep the exceptions as a matter of their own law, firmly within their own hold and control. I suppose that the “statutory stare decisis” bit stands as the barest concession that Congress could alter the exceptions if it chose to be very explicit about the change, but this is a darn site shy of saying that Congress “codified” the exceptions, such that the exceptions are now a matter of statutory law. Quite the opposite. The Court refuses to concede that the statutory text is really controlling on this point.

              1. Quite the opposite. The Court refuses to concede that the statutory text is really controlling on this point.

                That’s an odd way then of staying within its authority to interpret statutory law, eh?

                1. Actually I don’t understand why. How about ditching the riddles and explaining why the Supreme Court may not use maxims of equity to avoid injustice?

                2. Watch the movie The Paper Chase and pay attention at the hour and six minute mark.

                  What you may deign as “injustice” is merely your underappreciation of law and the separation of powers. Not “getting your way” simply is not the “injustice” that you would claim to be happening.

                3. No anon, injustice is being targeted from afar by rent-seeking racketeers and destroyed, win or lose, because a putative monopoly was granted by a government without reason.

                  So I’ll “chase” it down if I can but I doubt it will mean anything since your connotations are so attenuated from reality.

                4. As expected; no meaning. What became of the breakfast table and the dead lady who slipped on the ice cube?

                5. Wrong part – the professor lecturing the student about the limits of the judicial branch when it comes to statutory laws.

                6. injustice is being targeted from afar by rent-seeking racketeers and destroyed, win or lose, because a putative monopoly was granted by a government without reason.

                  Your feelings are noted.

                7. The scene immediately following the professor lecturing the student about the limits of the judicial branch when it comes to statutory laws has Hart telling the Professor about the Professor’s 1936 paper showing 17 different ways to defeat the statue.

                  So thanks for making my point. Maybe you need to rewatch it?

                8. You quite missed the point about the professors point.

                  Focus first on that.

                  Let me know when you get that point.

                9. It is not a matter of “equity being dead.”

                  You have failed to grasp the rather direct point that he directs at the student.

                  Can you identify what was the point that the professor is making?

                10. The point the professor was making was to bully the student, because newbs think the courts can only apply the statute as written, while the interplay with Hart and the existence of the paper detailing 17 ways to nullify the statute is to show that sophisticated jurists and lawyers will work to find justice, so the lady promised the house would get the house she was promised.

                  I’m kind of amused that the ideology you think was being supported was actually being rejected.

                11. The point the professor was making was to bully the student, because newbs think the courts can only apply the statute as written

                  You clearly have not grasped the point.

                  Bully? Maybe you should understand how law school works.

                  As to what you think was being “bullied,” you are exactly 180 degrees off.

                12. Returning to the original question put to you Mr. Snyder:

                  But they can’t (and won’t) say that.

                  Do you understand why?

                  Your wayward interpretation is clearly off, else the Court would have directly and explicitly called on “equity” in their decision.

                  They did not.

                  How do you explain that?

                13. Sure- why would they want to explicitly open the equity can of worms unless they absolutely had to?

                  No, it’s implicit, because their general approach is to add just enough to put across an opinion, and no more.

        1. “judge made carve-outs.” Right, which is outrageous. Because the only power they have for that is stating that something is unconstitutional if not for the carve outs. The SCOTUS does not have the authority under the Constitution to create common law that overrides Congress. That is the whole issue is completely out of control.

          1. A nice mixture of violating the separation of powers, void for vagueness and stepping beyond even their granted powers in being an “advisory opinion” – the conjectural “someday MAY impede some future event”…

            And the Court has the audacity to label attorneys as “scriveners”…

          2. I share your righteous indignation here, Night Writer, but I suppose I am not sure about the assertion “the only power they have for that is stating that something is unconstitutional if not for the carve outs.” The whole point of a common law system is that legislation can be less fully specified, because the legislature knows that the courts can fill gaps based on precedent. When one is talking about a system in which the courts can either apply-as-written or shoot-down-as-unconstitutional, it seems to me that you are talking about a continental civil law system, not a common law system. A common law system is supposed to allow for a certain “play” in the “joints” of the legislation, even fairly well-specified legislation.

            I want to agree with you here that the Court is going off the reservation, but I find that I cannot quite bring myself fully around to that conclusion without essentially arguing for a continental civil law system. I welcome your thoughts about why what the Court is doing here is not consistent with a common law system.

            1. without essentially arguing for a continental civil law system.

              You don’t have to throw out the baby with the bath water.

              All you need to do is recognize the difference between common law and statutory law and recognize which branch of the government was given sole authority to write patent law.

        2. Myriad, at Section A:

          “This would be at odds with the very point of patents, which exist to promote creation. Diamond v. Chakrabarty, 447 U.S. 303, 309, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980) (Products of nature are not created, and “`manifestations… of nature [are] free to all men and reserved exclusively to none'”).

          We must apply this well-established standard to determine whether Myriad’s patents claim any “new and useful … composition of matter,” § 101, or instead claim naturally occurring phenomena.

          B

          It is undisputed that Myriad did not create or alter any of the genetic information encoded in the BRCA1 and BRCA2 genes.

          1. Greg, it seems clear that the dividing line between a composition that is eligible and a composition that is not within 101 purposes is whether it was “created.” When something is created, it is new. When something is not created, it is not new.

            1. Hm, that is a good point, Ned. I like your citation of the sentence where the Court distinguishes between “new and useful composition[s] of matter… or… naturally occurring phenomena.” That reads almost as if the Court were using our preferred reading of the statute as the basis for the holding. One wishes the Court could be more thoroughly clear about their legal basis, but I certainly agree with you that there is evidence there for an interpretation of Myriad that favors our reading of “new.”

            2. Created does NOT mean “new” as you intend to use that word, Ned.

              Just the other week I provided yet another example of something created and then only after was it actually found in nature.

              The universe is not static, Ned.

        3. “We merely hold that genes and the information they encode are not patent eligible under § 101 simply because they have been isolated from the surrounding genetic material.” Ass’n for Mol. Path. v. Myriad Genetics, 133 S. Ct. 2107, 2120 (2013). Nothing there about isolated proteins, or isolated hormones, or any other “natural products,”

          Well, there is that pesky underlying logic thing. The Supremes reached their decision based on logic, presumably. Is there a reason that the “simple isolation” of naturally-occurring compositions of matter should become less “simple” when a protein is involved? Or when a leaf from a tree is involved?

      3. Ned – your curse -ade against Judge Rich continues – Almond wrote Bergstrom (not Rich)

        ps: “Having firmly established inherency to its satisfaction

        1. Also, from Bergstrom:

          The word “new” in § 101 is defined and is to be construed in accordance with the provisions of § 102.[8] Thus, that which possesses statutory novelty under the provisions of § 102 is also new within the intendment of § 101. We have found no evidence of Congressional intent to define the word “new” as used in § 101 in any different manner.

          Footnote [8] states:

          [8] That such is the case is clear, we think, from House Report No. 1923 and Senate Report No. 1979, 82nd Congress, 2nd Session, accompanying H.R. 7794 which became the 1952 Patent Act. Both reports state in identical language:

          Section 101 sets forth the subject matter that can be patented, “subject to the conditions and requirements of this title.” The conditions under which a patent may be obtained follow, and section 102 covers the conditions relating to novelty.

          Thus, see post 7.1.1.1.

          1. anon, Rich was on the panel and we all know who was behind the court?s interpretation of 101, given that this was the interpretation that Rich advocated.

            But the CCPA’s interpretation in this case is as reliable as anything out of the mouth or pen of Judge Rich. They went off on a lark never seriously considering the issue upon which they were judging. Had they looked at the origin of the word “new” in the statute, the patent act of 1793, they could not have come out with the opinion and judgment that did. It was well understood for a very, very long time by everybody that one could not patent a product of nature. It was probably this understanding that led Congress in 1793 to add the requirement that a composition be new in addition to being not known or used before when they added composition to the statute. The patent statute of 1790 did not have composition, just manufacture. A manufacture by necessity is created by man. Not so a composition.

            1. Ned,

              Again you seek to discredit the single most knowledgeable jurist as to what Congress passed as law – because that single most knowledgeable jurist HELP WRITE THAT LAW.

            2. anon, I acknowledge that Rich was a very able patent attorney. But he was not the stuff of a jurist. He was imprudent, rash, arrogant and far to full of himself.

              1. Rich… was not the stuff of a jurist. He was imprudent, rash, arrogant and far to full of himself.

                I am somewhat amused that you think that being arrogant and full of oneself disqualifies a would-be jurist. By that standard, not a person would be left of the current Supreme Court (especially the late Justice Scalia). Come to that, I doubt that more than 30% of the past Justices would be qualified to serve under your criteria.

                As for imprudent and rash, I would really like to see you cite an example of something that Judge Rich did that qualifies as “imprudent” or “rash.” These are not words that I would use to describe the late Judge Rich. I would be interested to see specifically what you mean by them.

                1. Application of Musgrave, 431 F. 2d 882 – Court of Customs and Patent Appeals 1970 (Rich, J.) link to scholar.google.com

                  “BALDWIN, Judge (concurring).

                  I feel compelled to speak out against the majority opinion. It is my position that the doctrine promulgated by that opinion, which constitutes a major and radical shift in this area of the law, is a serious breach with the time-honored judicial practice of resolving important questions of law on a case-by-case basis, a policy matter which I thought had been settled by agreement of the full court with the second Prater decision and which up to now the court has followed. In addition, I feel that the course which the majority opinion takes is not only unnecessary in order to decide this particular case (or any others in this area, for that matter), but also will probably create more problems than it is intended to solve. Finally, I must point out that the majority embarked on this course without having been asked to do so by appellant.”

                  Radical shift after radical shift, time and again with Rich. Time and again. This is not the work of a judge.

                2. A concurrence (in disguise, as the part you want to use disagrees with the majority) from Baldwin does not carry your point Ned.

                3. Dear Ned,

                  If you think that Musgrave is an example of “rash” or “imprudent” jurisprudence, fair enough. Those words are so subjective that they do not admit of contradiction. Evidently, we have very different ideas of what is “prudent.”

                  I would describe Musgrave as “well-considered” and “practical,” but I cannot disprove your characterization of the work. Chacun à son goût, as they say.

                4. I would really like to see you cite an example of something that Judge Rich did that qualifies as “imprudent” or “rash.”

                  State Street Bank leaps immediately to mind.

      4. It is NOT ridiculous. Your interpretation is uhworkable and therefore ridiculous. New cannot mean not naturally occurring. If it did, then no composition of matter would ever be patentable. The Universe (and we will overlook that it is looking more and more that our Universe is but a small fraction of a much larger multi-verse) is very large and very old. So much so that it is highly unlikely that any achievable molecule has not occurred naturally somewhere at sometime.

        Since, nevertheless, that statute says new compositions of matter are patentable subject matter, “new” MUST mean newly discovered, invented or known by mankind.

        1. I see the sense of the argument you are making, but I will try to press back a bit still. Section 102 says that “[a] person shall be entitled to a patent unless…” (emphasis added).

          In other words, the default state is that you get a patent after you file. In order for you to be denied a patent, someone must bring forth affirmative evidence of your lack of entitlement to the patent. Mere probability calculations do not count as sufficient evidence on this point. Hansgirg v. Kemmer, 102 F.2d 212, 214 (C.C.P.A. 1939). Therefore, it is not really true—as you contend—that “new” must mean “newly discovered.” The patent system can function just fine with “new” meaning “newly created” so long as the evidentiary burden rests on the challenger to prove that the claimed invention was certainly (not merely “most probably”) pre-existing in the natural universe.

          1. I respectfully submit that that goes to support my position.

            If it is not known by man, then the Office can’t meet the requirements under “unless,” even if the stuff is naturally occurring in a volcano on Enceladus, and you get the patent.

            New must mean not known by man.

            1. Sure, the default state implied by “unless” means that the system works regardless of whether “new” means “newly discovered” or “newly created.” My only point is that the system does not become “u[n]workable and therefore ridiculous,” as you say if we read “new” as “newly created.” The word “unless” saves us from the reductio ad absurdum that you propose, quite regardless of what meaning we give to “new.”

              1. Yes it does. Ned interprets new to mean patents are invalid if the compound is naturally occurring. The law of large numbers requires that any compound that can be made has occurred naturally somewhere in the universe and so none are patent eligible (according to Ned’s position). I left some wiggle room earlier by referring to probabilities, but still. All the Office would have to do to reject compositions of matter is to copy and paste my assertion above…ta da.. prima facie showing…Now Ned has to show that the compound does not occur in nature anywhere in the Universe and never did.

                1. Your law-of-large-numbers argument is an argument from probability. Under Hansgirg probability arguments are not legally sufficient to establish prima facie unpatentability. Therefore, your reductio ad absurdum will not work.

                  I am merely advancing this argument, for the moment, as a matter of law. I would note, however, that as a matter of chemistry the law-of-large-numbers argument is equally unavailing.

                2. Look. The purpose of the Patent system in to promote progress in the useful arts, etc. Does encouraging investment in discovering the cure for cancer qualify as promoting progress in the useful arts? I say yes. If the cure is chemical XYZ should we encourage its invention in a laboratory using the tools of microbiology? Should we not also encourage its discovery in the rain forest using the tools of epidemiology to find locations of low cancer rates and statistical analysis of the diets of the of the cancer free cohorts.

                  Of course we should.

                  Does the Constitution (and the statute) authorized exclusivity to inventors of their DISCOVERIES? YES Is there anything to discover other than natural laws and products of nature? No.

                  Can we know what has been invented or discovered or naturally occurred on other planets? Does it matter? Isn’t in progress on this planet that we want to promote?

                  Of course.

                  So, the measure of newness is whether something is newly KNOWN BY US.

                3. Les, ” Ned interprets new to mean patents are invalid if the compound is naturally occurring. ”

                  No I do not.

                4. If the cure is chemical XYZ should we encourage its… discovery in the rain forest using the tools of epidemiology to find locations of low cancer rates and statistical analysis of the diets of the of the cancer free cohorts.

                  Of course we should.

                  O.k., fine. No argument there. That does not ipso facto imply that we should allow a claim to “The compound XYZ.”

                  Imagine that instead of XYZ forms naturally, not only in an Amazon jungle plant, but also in white oaks. If you allow the compound per se claim, then everyone in the United States with white oaks on their property is infringing the claim. Is that a public policy outcome we want? No. Citizens who are free to grow white oaks today should not have that right taken away tomorrow because of a discovery about cancer.

                  The way you deal with this is that you say “the claim to ‘compound XYZ’ is ineligible as a natural product, but the claim to ‘a composition comprising at least 50 wt% compound XYZ’ is patentable.” As the late Judge Rich said, the name of the game is the claim.

                  The scenario you outline regarding rainforest biomolecules does not necessarily present a public policy conundrum if one read “new” as Ned & I propose. Rather, that scenario is merely a motivation for careful claim drafting.

                5. But a method of manufacturing and using the compound to cure cancer should be patentable, as we want to promote that sort of thing. This is so, even if people have been collecting and concentrating white oak sap and enjoying cancer free pancake breakfasts for hundreds of years, since no one knew that there was XYZ in the syrup nor that the XYZ in the syrup was killing cancer cells. That discovery and dissemination of same to the world should be encouraged.

                6. But a method of manufacturing and using the compound to cure cancer should be patentable, as we want to promote that sort of thing.

                  Definitely. I agree 100%.

        2. Les, consider the patent acts of 1790 and 1793 side by side for a moment:

          1790: …invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement therein not before known or used…

          1793: …invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used before the application…

          Now, excluding the improvement part, lets compare the two again:

          1790->1793: …invented [[or discovered]] any new and useful art, manufacture, [[engine,]] machine, or [[device,]] composition of matter … not before known or used the application…

          Now consider that one cannot discover a machine, engine or manufacture in the sense that we understand discover, is it at all puzzling that discover was dropped when composition of matter was added, because one can discover a composition of matter. Instead, the requirement for “new” was added as a prefix for composition of matter, but not known or used was retained.

          It is also clear also that new and not known or used cannot be the same thing because that requirement was present in both acts, while new was added to the second.

          1. No Ned, I don’t find that puzzling.

            Moreover, what I do find puzzling is why you have, for a very long time, been referencing a law from 224 years ago that does not include the word “discovers” when that word has long since been inserted back into the statute.

            Clearly, someone determined it was a mistake to delete it. Perhaps for the point I have been trying to make. We want to promote looking in the rain forest for cures.

            1. Doesn’t that argument lose some of its force when you consider that the act also explicitly defines “invention” to mean exactly the same thing as “discovery”?

              1. I’m not sure which act you are referring to. Perhaps a citation and quote would be helpful.

                In any event, these folks seem to disagree with such a definition:

                “Discovery adds to human knowledge only by lifting the veil and disclosing something, whereas an invention suggests an act resulting in a new product, result or process.”

                link to internationallawoffice.com

                1. Ooooh, I see the confusion. I don’t think that means the words have the same meaning. I think that means, look, this stuff is hard enough to read (and write) as it is and we are not gonna type “invention or discovery” a zillion times and have ano….. errr pickers of nits say “ah ha! gotta ya” at each instance we forget to type them both. Instead, we are only gonna type “invention” a zillion times. When we do, please understand that we mean “invention or discovery.”

              2. the act also explicitly defines “invention” to mean exactly the same thing as “discovery”

                That is not how to read that section of law (and I trust that you do know better, Greg).

            2. Les, the point here is to determine what “new” means. To do that, one determines what it meant at the time it was introduced.

              New was not surplus at that time, but required when composition was added; otherwise newly discovered (not known or used) compositions would have been expressly patentable.

              But, as we all know, Rich and crew at the CCPA tried to read “new” out of the statute by saying look to 102, when clearly that is not what Congress intended in 1793.

              Only, and might I say, not surprisingly, the modern Supreme Court understands that new to require creation by man as it always did so that compositions merely found could not be patentable.

              Now Les, if one creates a compound that is later found in nature, is that compound ineligible? I think not, because the inventor created it. But observe that harvesting a product of nature is not an infringement because such is not a making. Selling that which one rightfully owns also is not an infringement. So the patent may not be invalid. It just may not be enforceable if harvesting is easy.

              1. Ned: “New was not surplus at that time, but required when composition was added; otherwise newly discovered (not known or used) compositions would have been expressly patentable.”

                Not is wouldn’t. As you clearly explained, when “new” was added, discoveries were not patent eligible, only inventions. So, contrary to your assertion, new was not added to prevent discovered compositions from expressly patentable.

                1. Les, if new had not been added, then any useful composition not before known or used would have been patentable.

              2. [I]f one creates a compound that is later found in nature, is that compound ineligible? I think not, because the inventor created it.

                I disagree, but more fundamentally I am lost as to the position you are advancing. To say that a naturally occurring compound can be patentable so long as it has not yet been discovered in nature before the inventor synthesized it is to concede Les’ reading of the statute, i.e. that “new” means “newly discovered.”

                In other words, in the situation you are describing, the compound is old in the world, but new to human ken. I say that such a compound is “old,” not “new,” and therefore not eligible. To say that it is eligible, however, is to concede that “new” means “new to human ken,” in which case you are agreeing with Les, not disagreeing.

                [O]bserve that harvesting a product of nature is not an infringement because such is not a making.

                Huh? What do you mean it is not a making? If I set up a factory on my land to produce ibuprofen, I am making ibuprofen. It is not good saying “oh, no, I am not making the compound, it is that factory that is making the compound.”

                If I plant a tree on my land that synthesizes ibuprofen, then I am making ibuprofen just as much as if I built a factory to synthesize it. You cannot escape liability by shoving the agency off onto a non-sentient object. Your tree is infringing, and as the owner of the tree, with control over whether it lives or dies, you are liable for its infringement.

                1. “[O]bserve that harvesting a product of nature is not an infringement because such is not a making.

                  Huh? What do you mean it is not a making? If I set up a factory on my land to produce ibuprofen, I am making ibuprofen. It is not good saying “oh, no, I am not making the compound, it is that factory that is making the compound.””

                  I can help you here. He really means specifically harvesting. He is saying if XYZ is in your trees, collecting white oak sap is not infringement on your part because the trees manufactured it, not you, you are merely gathering it. I’m not sure what Ned would say about extracting XYZ from the sap… he might lump that refinement in with harvesting.

                2. [I]f XYZ is in your trees, collecting white oak sap is not infringement on your part because the trees manufactured it, not you…

                  That is the part I do not understand. What does it even mean to say “the trees manufactured it,” as if that somehow excuses the trees’ owner of the liability. As I said, if there is a factory on my property making patented compound K, then I am liable for the making. Why is it materially different if, instead of a factory, I have a tree on my property manufacturing compound K? In both instances, K is being manufactured on my property, and under my control. That is infringement.

                  Who cares whether I harvest, or purify, or sell compound K? Those might be additional acts of infringement, but the mere fact that it is being made at all is still infringement.

                3. Greg, there is a concept of novelty that momentary or on a appreciated presence is not negative invention. I think the same concept applies to products in nature. One can invent new compositions by creating them, and since patents are negated by the later discovery that the composition previously existed. What one cannot do is patent a pre-existing composition upon discovering it.

                4. Greg, there is a distinction that between making a new composition and discovering one that existed.

                  Now, if the inventor avers that he “made” the new composition and did not discover it, then he IS an inventor. In cases like Myriad, the “inventors” do not claim to have created anything, just located a gene known to have certain properties.

                  Generally, one cannot discover anything new. One can only discover that which is not new. But invention requires creation. 101 is consistent with invention and inconsistent with discovers. It is a wonder, truly, that congress put “discovers” back in to the statute in 1836. One is at a loss as to what they think they were attempting to accomplish.

                  And, if invention and discovers mean the same thing in the ’52 Act, what did Congress have in mind? The courts do not treat discovery and invention equivalently. One cannot get a patent on a discovery, but only on an invention, something created by man — even if that creation was accidental, as in the “discovery” that rubber placed on a hot stove vulcanized.

                5. Ned: [I]f one creates a compound that is later found in nature, is that compound ineligible? I think not, because the inventor created it.

                  Greg: I disagree, but more fundamentally I am lost as to the position you are advancing. To say that a naturally occurring compound can be patentable so long as it has not yet been discovered in nature before the inventor synthesized it is to concede Les’ reading of the statute, i.e. that “new” means “newly discovered.”

                  Greg (and Ned),

                  That is why I have provided examples of such – the mineral Putinsite awhile back and a new one just last month.

                  Funny how Ned always seems to go quiet when counter examples to his desired IMHO-Ned law “versions” are presented…

                6. If I plant a tree on my land that synthesizes ibuprofen, then I am making ibuprofen just as much as if I built a factory to synthesize it

                  You don’t even have to use a tree as an example – just try one of Monsanto’s products – do you catch the (wind) drift…?

                  😉

                7. there is a concept of novelty that momentary or on a appreciated presence is not negative invention.

                  Not so Ned – momentary presence is “negative invention” if that presence has the quality of inherency.

                8. Ned: “ 101 is consistent with invention and inconsistent with discovers.

                  Let me present a point – often presented to you Ned in the past:

                  What about 35 USC 100(a)?

                  Funny how Ned does not like to use the law – as the law defines itself – and especially when those definitions go against his “versions” that support his Windmill Chases…

                9. Repeated from this very thread – but fits this sub-string as well:

                  I really do not mind that we have different interpretations Ned.

                  I do mind that you truly do not discuss those differences.

                  Leastwise, in an inte11ectually honest manner.

                10. anon, “http://www.iflscience.com/chemistry/new-mineral-discovered-unique-composition/”

                  Interesting.

                  What I think is that one can get a patent on a new composition that one creates and finds a use for and that patent remains valid and enforceable against those who make the composition even if the composition is later found in nature. The point is, the patent cannot from the public access to the products of nature.

                  That is why it is important to understand that harvesting from nature is not making. Further, one has the right to use and to sell products one owns. (Actually, this issue is somewhat before the Supreme Court right now, not so?)

                11. It is a wonder, truly, that congress put “discovers” back in to the statute in 1836. One is at a loss as to what they think they were attempting to accomplish.

                  Now this is just special pleading. You are willing to scour the statutory history to ascribe a meaning to “new,” but you toss away the “discover” with an insouciant “who knows why they did it?”?

                  It seems to me that there are two ways of dealing with this word. One is the one I have advanced elsewhere on this thread, viz. that “invent” and “discover” are coextensive in their significance. They mean exactly the same thing. In evidence for this construction, I would adduce Samuel Johnson’s Dictionary. This was written in 1755, which is roughly contemporaneous with the 1790 Act. As you can see, the very first definition that Johnson gives for “invent” is “discover.” Remember, the word “invent” come from the Latin “invenire,” meaning “to find.” The other line of evidence for this construction, as I have mentioned elsewhere, is that section 100 defines “invent” to mean “discover,” although Les has made a plausible (albeit not conclusive) rebuttal to that line of argument.

                  The second way we can deal with “discover” is to say that Congress really did mean to allow patents on two classes of human activity: “invention” and “discovery,” where the two are not coextensive. If we are to go down that road, then I think we have to agree with Les that “new” must mean the same as “novel.” As evidence for that construction, we can rely on the legislative history embodied in the reporters notes from the 82 Congress on both the House and Senate versions of the 1952 act.

                  In other words, there is evidence for both of these constructions. The (invent=discover) construction has textual and philological evidence on its side, while the (new=”new to human ken”) construction has legislative history. I subscribe to a hermeneutic that says that statutory text beats legislative history 100% of the time, so I favor the (invent=discover) reading, but individual mileage may vary on that point.

                  One way or the other, however, we cannot just wave away the word “discover” any more than we can wave away “new.” Any construction that does not make sense of all the words is a wrong construction.

                12. Greg, there is a concept of novelty that momentary or on a appreciated presence is not negative invention. I think the same concept applies to products in nature.

                  The doctrine of accidental anticipation is an outgrowth of the doctrine of non-enabling art. That is to say, if it is clear that Dr. X accidentally generated compound Y while she was trying to synthesize compound K, but she does not know how she did it and cannot reproduce the Y synthesis, then her report of Y will not anticipate a later claim to Y that includes an enabling disclosure of a reproducible synthesis scheme.

                  This is not what you are describing, however. In the case where Dr. X synthesizes compound Q and files on Q, but Mr. P later finds great pools of liquid Q in caves below his basement, there is nothing non-enabling about his discovery. The Q was there inherently all the time. This is not at all akin to “accidental” anticipation, but it is very much akin to “inherent” anticipation, except in the sense of “new to the universe” instead of “new to human ken.”

              3. Ned – According to you, INVENTED compounds not known before ARE patentable even now (with new still in the statute). See your dispute of my previous distillation of your position and posts elsewhere above.

                The issue is with DISCOVERED compounds not known before and discoveries were not eligible in 1793 so prevention of patent-ability of old but newly discovered compounds was not the reason new was added.

          2. Les, Compare 1790 and 1793 once more:

            1790: …invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement therein not before known or used…

            1793: …invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used before the application…

            “Discover” was in the 1790 Act, but dropped in 1793 when “new” and “composition” were added. “Not before known or used” were retained.

            From this, we know that “new” and “not before known” are not the same thing.

            The mystery of “new” has to be connected with the addition of “composition” to the statute in 1793 and dropping of “discovers”. Clearly Congress did not want to allow the patenting of compositions that are discovered but not before known. I cannot see any other conclusion.

            Now if one believes that invention and discovery are the same thing, then the case weakens a bit. But it remains that “new” cannot mean “not before known,” at least in connection with compositions.

  3. From a policy point of view, I do not understand why corporations should have two different rules for venue depending on the type of cause of action. The original reason for passing the patent venue statute might explain it, and that is where I think we need to look for any explanation.

    But otherwise, on its face, the 1988 amendment seems very clear that Congress actually amended the venue for corporations in general, including the patent venue statute, by including the words “chapter” in determining the scope of the change.

    A simple way around patent venue statute would be to bring some other federal cause of action at the same time against the company. That might be easy or hard to do in a particular case, but it makes no sense to keep those cases in a particular venue while transferring others.

    1. Stonite Products Co. v. Melvin Lloyd Co., 315 US 561 – Supreme Court 1942 link to scholar.google.com

      “Section 52 permits suits, not of a local nature, against two or more defendants, residing in different judicial districts within the same state, to be brought in either district.”

      “Even assuming that R.S. § 740 [Section 52] covered patent litigation prior to the Act of 1897, we do not think that its application survived that act, which was intended to define the exact limits of venue in patent infringement suits.[7] Furthermore, the Act of 1897 was a restrictive measure, limiting a prior, broader venue. General Electric Co. v. 567*567 Marvel Co., 287 U.S. 430, 434-435; Bowers v. Atlantic, G. & P. Co., 104 F. 887; Cheatham Electric Switching Co. v. Transit Co., 191 F. 727.[8] Thus there is little reason to assume that Congress intended to authorize suits in districts other than those mentioned in that Act.”

      “The Act of March 3, 1875, c. 137, 18 Stat. 470, retained the provision allowing suit wherever the defendant could be found. The abuses engendered by this extensive venue prompted the Act of March 3, 1887, c. 373, 24 Stat. 552, which, as amended by the Act of August 13, 1888, c. 866, 25 Stat. 433, permitted civil suits to be instituted only in the district of which the defendant was an inhabitant, except 564*564 that in diversity jurisdiction cases suit could be started in the district of the plaintiff’s or the defendant’s residence. The substance of those provisions was reenacted as § 51 of the Judicial Code (28 U.S.C. § 112).”

      fn. 5:

      See H. Rept. No. 2905, 54th Cong., 2d Sess.

      The remarks of Mr. Mitchell who reported the bill for the House Committee on Patents are significant (29 Cong. Rec. 1900-1901):

      “Mr. Speaker, the necessity for this law grows out of the acts of 1887 and 1888 which amended the judiciary act. Conflicting decisions have even arisen in the different districts in the same States as to the construction of these acts of 1887 and 1888, and there is great uncertainty throughout the country as to whether or not the act of 1887 as amended by the act of 1888 applied to patent cases at all.

      “The bill is intended to remove this uncertainty and to define the exact jurisdiction of the circuit courts in these matters.

      “The committee have been extremely careful in the investigation of the matter before reporting the bill.

      “As the bill was referred to me, I wrote to a great many patent lawyers in different parts of the country, in order to get their views and objections, if any, and I find that they are all unanimously in favor of the bill as it is now reported, and state that it would tend not only to define the jurisdiction of the circuit courts not now defined, but also limit that jurisdiction and so clearly define it that in the future there will be no question with regard to the application of the acts of 1887 and 1888.

      …..

      “. . . The trouble has arisen in this matter that under the act of 1888 some of the courts were uncertain whether or not the law did or did not apply to patent cases, and therefore this special bill relating to patents solely has been brought up because of the indefiniteness and uncertainty arising from different constructions of the act of 1888 as applied to patent cases.”

      1. Who knows if you have edited the quotes. Given your history, I wouldn’t trust a thing you write without checking the cite directly.

            1. Night, I do not misrepresent holdings. What I do is discuss holdings and what I think the Supreme Court actually meant because they are seldom if ever clear. You have to look at what they do rather than what they say at times.

              1. Your “presentations” are typically skewed towards your anti-business method and anti-software Windmill chases.

                You do NOT discuss, as an actual discussion would take in and incorporate the (many) counterpoints presented to you.

          1. You do (often) misinterpret the cases though, Ned.

            Even worse, you repeatedly abstain from inte11ectual honesty when counterpoints are presented, and then turn around the next day and post again as if your “version” were still the law.

            1. That is the game MM, Ned, Stern, and Lemley play. They have no interest in real debate. They are pushing agendas and facts and the law don’t matter. As I pointed out below, Ned is saying it is terrible to criticize the justices for ignorance of patent law, and yet when he has done this before, I posted a list of some of the things they have said that are off the scale bad. Ned doesn’t debate the list, just moves on and says the same thing in the next post.

              It is the zeitgeist. They are all little Trumps. (Funny that MM rails against Trump and yet his behavior matches Trump’s behavior.) Ironic.

              1. Night, I am not sure you are right about Stern or Lemley, but certainly I know you that you are not right about me.

                I still invite you to give me one claim that you think that I think is ineligible and see if we agree or disagree. You might be surprised.

                1. Groundhog Day.

                  Ned, we have discussed claims that we differ on 101 on other blogs. Ned, I have in detail discussed with you your misrepresentations of case holdings and facts (i.e., real science).

                  Each time I do this you run away and then on the next blog post, it starts all over again. Click. “They say we’re young and we don’t know. I don’t know if all that’s true, but ….”

                1. Ned, your game is to run away and/or change the topic. Fact is Ned that you say things like “business methods have never been patentable,” and then run when challenged.

                  The fact is Ned that you cannot argue outside your narrow witch vocabulary.

                2. Night, I do no “run away.” I usually just turn to work.

                  Rather “convenient” of Ned to always have to do work when the counterpoints are on the table – but my, how he finds time away from work to post (ad nauseum and ad infinitum) the same initial “versions” of his Windmill Chases…

              1. I really do not mind that we have different interpretations Ned.

                I do mind that you truly do not discuss those differences.

                Leastwise, in an inte11ectually honest manner.

      2. From the above, it is clear that Congress in 1888 limited venue generally to districts where the defendant was an inhabitant. There was a separate statute related to diversity jurisdiction involving multiple defendants where a defendant could be sued in a district in a state where he was not an inhabitant. But with respect to the general venue statute, the patent venue statute of 1897 broadened venue effectively back to where was prior to the restrictions of the statute of 1888, allowing defendant to be sued either where he was an inhabitant, or where he was found – i.e. doing business. The only limitation on the latter was that there must also be an infringement in the district.

        Now when later Congress again broadened the general venue of corporations back to the situation found prior to 1888, i.e., where they were resident, had a principal place of business, or were doing business, the scope was broader than the patent venue statute only in the sense that a requirement for an infringement in the district was in the patent venue statute but not in a general venue statute.

        Now it seems to me, again, that if a corporation can generally be sued anywhere it is doing business under any federal cause of action, why is it required to limit venue in patent cases only to those districts where the Corporation is both doing business and infringing the patent? It makes no clear sense if the point of venue is fairness.

        Still, Fourco decided what it decided, and held that the patent venue statute still controlled under these circumstances. But, in 1988, Congress specifically broadened venue against corporations once again, and declared that it applied under “this chapter.” It is not clear to me that the Federal Circuit was wrong back in the day when it decided that Congress had clearly intended broadened the venue of corporations generally, inclusive of the patent venue statute.

        1. Your points here sound good (apart from how Night Writer might feel).

          I have noticed that your comments tend to stay more to the reasonable side as long as you are not on your anti-business method or anti-software Windmill chases, Ned

          Do you realize that those are the only topics that we clash on?

        2. Folks, rather than trying to recreate the wheel here, please take a look at our venue article. We lay out all of this history, the case law, the changes, and more. I say this not to sway your opinion, but rather to give you enough information to form it. link to papers.ssrn.com

  4. Greg DeL: A system where that “why” is unclear is never going to provide as much incentive to deploy capital in R&D as will a system in which the “why” is clear.

    Why is logic not listed as eligible subject matter in 101?

    Serious question. New ways of thinking about information and what to do with it are incredibly useful. Most of those new ways are “made by man”.

    And yet logic is not eligible subject matter and never has been.

    Why not?

    1. Why is logic not listed as eligible subject matter in 101?

      Your dissembling is monotonous.

      How is your copyright on logic coming along?

    2. So, the computer you are using now is logic? The chair you are sitting on is static equations. E=MC^2 is nature.

      Wow, without your Google bucks behind you lobbying your lame arguments would die on the vine.

  5. Another excellent written article. Thanks, Michael, for providing a coherent perspective.

    MR: I favor TC Heartland’s position from a policy point of view.

    And policy preferences may well carry the day here.

  6. After all, the Supreme Court just overturned our understanding of design patent damages despite a tacit understanding that was more than 100 years old.

    Not your main thrust, but the recent “clarification” on components for design patents is not the change that you think it to be.

    The better read of that decision (one that remains in line with the words of Congress) is that a component that itself is on the market (think, for example, of after-market parts and replacement parts) may ALSO serve as a basis for damages.

    “All” still means all.

      1. Michael, why does a design applicant choose to claim some component or element of a larger product as the subject of his design patent? If there is no advantage for doing so, I think it is clear that the future design patentees can adjust to the Supreme Court decision by simply claiming the larger product.

        1. Ned, a design patent to an entire product [actually, only the entire exterior] means solid line drawings of the entire product exterior. That adds numerous additional, avoidable, “claim” limitations.

        2. They do that, because they can protect that design, even if the rest is non-novel. See Zahn – the drill bit was not novel (and functional), but the shank design was distinguishing. More particularly, think of cool handles for pitchers, cool shapes for known products (Apple’s stretches this to the limit), designs applied to non-novel products (drawings on a box), etc.

          Thus, “If there is no advantage for doing so” is wrong. They can’t just claim the large product, because the larger product may be easier to design around, or may have functional issues that limit design choices, or may be less likely to be novel. This is a problem that is not going to go away.

          1. Do you (or would you) ever see a sale of a bit-less shank…?

            (after market or otherwise?)

            Thus – the lack of bi-directional incumbency necessary with the products to which designs are applied.

      2. Prof. Risch,

        I am not sure that I see your point about Zahn.

        The “logic” of Zahn does not have to be bidirectional. One can easily see Zahn as merely allowing a design patent on a portion of a larger item sold. This does not conflict with the fact that the design patent can ALSO be on a portion of a larger item that itself is sold in the aftermarket sense that I presented.

        One can fully apply the protection to the “less than all” when the separate item that is less than all is sold on its own (as in the aftermarket) without eviscerating what it means when the design is applied to something larger that is NOT sold on it own – and NOT give the full meaning of the words that Congress chose: All still meaning ALL.

        1. Yes, you can, in fact, do that. But the Supreme Court did not. The Supreme Court said that “article of manufacture” means the same thing throughout the statute, and that it means something that is either sold separately (your theory) or attached, but only partially claimed (e.g. dotted line v. solid). How do we know this? Because the case they cited for this point was Zahn, a dotted line case.

          And that’s my point – your view that the opinion can be interpreted to just mean those “aftermarket” products but not “less than the whole” products doesn’t fly because the Court in no way limited the definition that way, and cited a case that uses a broader definition.

          I’m not saying your view would have been wrong as an argument to the court – I’m just saying that it can’t be supported by the court’s opinion.

          1. Prof. Risch,

            You misstate this portion:

            your view that the opinion can be interpreted to just mean those “aftermarket” products but not “less than the whole” products

            The design is the design. The design can be applied to a whole item or less than a whole item (which is what Zahn speaks to).

            That though is simply different than the article of manufacture to which the design is applied to.

            You appear to be confusing yourself between the claimed design (and the use of dotted lines) and to whatever that claimed design is applied to separate from the design.

            The words of Congress still mean exactly what they appear to mean: all means ALL.

            1. I’m sorry, but I just don’t think you’re on firm ground here. You keep saying “the words of Congress” but then you say “all means all” when “all” is actually not in the statute. So, let’s look at the words of Congress and what the Court did with them.

              So, start with 171: “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor” – the claimed design IS the design for an article of manufacture.

              Zahn (cited approvingly by the court): says “the board erred in treating the claim as directed to a drill tool and only to the shank portion of a tool — the article itself rather than the design for the article. . .An article may well have portions which are immaterial to the design claimed. . . .While the design must be embodied in some articles, the statute is not limited to designs for complete articles, or “discrete” articles, and certainly not to articles separately sold. . . . Here the design is embodied in the shank portion of a drill and a drill is unquestionably an article of manufacture.”

              So, in this sense we are on the same page – the article of manufacture can be bigger than the claimed design.

              Now, 289 says: “Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale. . . shall be liable to the owner to the extent of his total profit”

              Finally, the Supreme Court (for better or worse – I’m not arguing the merits) holds that “design for an article of manufacture” (171) means the same thing as “apply a design to an article of manufacture” (289) – meaning that the article is the whole thing, but that the claimed design can be less than the whole article, and as such, the “full extent of profit” should be awarded in such cases to the application of the design.

              I think you and I may still agree on this point.

              And it cites to Zahn for support – noting that a “design for an article” can be a component that is not sold separately. And here is where we seem to differ. Your initial point was that this opinion wasn’t a big deal because it only dealt with separately sold components, not whole articles.

              So I return to my initial point – yes, you get the “full extent” of profits but only profits on the application of the claimed design and, important to our discussion, not just when the claimed design is embodied in a separately marketed or sold component.

              I don’t know where you get the limitation that you do. I don’t see it anywhere in either the language of the statute or of the court opinion, and I see the citation to Zahn as making clear that the interpretation goes the other way.

              1. Your initial point was that this opinion wasn’t a big deal because it only dealt with separately sold components, not whole articles.” (emphasis added)

                Not quite there.

                The added emphasis is YOUR take, not mine. You still seem to want to apply a bi-directional view that is just not there.

                1. Well, I’m obviously not understanding what you mean by “The better read of that decision (one that remains in line with the words of Congress) is that a component that itself is on the market (think, for example, of after-market parts and replacement parts) may ALSO serve as a basis for damages.”

                  What do you mean? And I don’t know what you mean by bi-directional. I’m saying that the court made clear that the same terms mean the same thing in different parts of the statute, and that “design [for/applied to] an article of manufacture” means a claimed design that can either be a part of an article or a whole article. Are you disagreeing with that? Are you saying that even if the design is less than the whole article, that the profits must be on the whole article unless the component is separately sold? I thought that’s what you were saying, but if not, then clarification would be helpful. And if so, I’d like to see where you get that in the opinion.

                2. The design can be whole or a part,

                  That is one facet of the discussion of designs and item that a design may be applied to – and that facet goes both ways – that is, the design (in whole) can be either applied to the whole of an item or a part of an item.

                  The item that a design is applied to has only on direction.

                  The item.

                  UNLESS – there is more than one market for the parts of the item (say, for example, a sub-part that itself has a market).

                  In that case, the total profits may have two distinct factors: BOTH the parts market (total profits there) AND the sub-parts market (total profits there as well).

                  You do not get the ability to take less than the parts market because there is also a sub-parts market. THIS is the aspect of “one-direction.” If you do that, then you violate the meaning of total profits.

                  The bit with a design applied to the shank will not have the direction that only the shank – as an item – will be “valued” in an “item determination” for total profit.

                  You want an item determination that does not exist.

                  Zahn is not saying what you think it says.

                  Quite the opposite in fact:

                  Zahn stands for the total profit of the entire sale-able item.

                  Your desired bi-directional application of Zahn would have resulted in a less than total profits.

                  All (profits) still means ALL (profits).

                3. OK, I think your view is a reasonable one. But I think it is definitely not what the supreme court did. I can find no language in the opinion that implies that it meant to EXPAND profits to ensure that you get total profits on both the whole item even if there are other parts for sale. That’s just not what was at stake nor what the opinion said.

                  What you are stating is essentially the Federal Circuit’s rule, and the court said that rule was too broad. I ask again where in the opinion you get your view that total profits for the entire manufacture is the measure, rather than total profits for the “design applied to the manufacture.”

                  Now, don’t get me wrong – where the only design aspect is the shank (Zahn) or the carpet design (Dobson), then it may well be that the design profits are the entire profits. But where the design is a small part of an otherwise complex product, I think the opinion is quite clear that ALL means ALL of the profits associated with the design applied to the article of manufacture.

                4. total profits for the entire manufacture is the measure, rather than total profits for the “design applied to the manufacture.”

                  Zahn.

                  Otherwise Zahn would have turned out differently.

                  Further, you are still confusing what the profit is related to. The profit is the profit of the sale of the item.

                  You appear to want to think that profit is profit of the sale of the design, but the design is only present as applied to the item.

                  There is NO “design only for sale.”

                  There is no “subdividing Profit,” when the only source of the profit is the sale of the item – as directly opposed to any sale of an “applied design.” You cannot buy “just the applied design” – you don’t have that option.

                  You still want a bi-directionality that is just not there.

  7. Michael, I like your analysis, but I don’t like how you straddle the fence and say that you “favor TC Heartland’s position from a policy point of view.” You either believe in your analysis, or you don’t. You devalue your own analysis with your favoritism. I see nothing wrong with a free market approach to the legal system where plaintiffs seek out venues that may favor their positions. Defendants certainly use this strategy as shown by the TC Heartland case and their infinite number of venue transfer motions to their home jurisdictions. Patent infringement defendants have long wanted their cases filed or transferred to the Northern District of California, their home jurisdiction, because that district statistically favors defendants more so than plaintiffs. The whole TC Heartland case is about forum shopping for defendants. Defendants have nearly ruined the entire patent system with lobbying for passage of the AIA; patents now are not worth the paper they are written on thanks to defendants’ lobbying. And now defendants want all patent cases filed in their home jurisdictions to the detriment of plaintiffs despite the fact, as nicely analyzed in your piece, that Congress passed the AIA and amended the venue statutes so that plaintiffs may file anywhere that a court has personal jurisdiction knowing full well about the allegedly awful Eastern District of Texas. Why aren’t academics defending the little guy? I find it bitterly ironic that liberal law professors, who in the past have notoriously championed the rights of individuals over corporations, are now lobbying in favor of those corporations to the detriment of individuals. See, for example, the amicus brief supported by dozens of law professors favoring TC Heartland’s position. But then, I am no longer shocked by the utter hypocrisy that our universities regularly display. Your analysis is correct. I hope that our Supreme Court sticks to statutory interpretation, overrules Fourco, and aligns the case with current law, leaving Congress to change it if desired.

    1. Why aren’t academics defending the little guy?

      I guess it is not clear to me that “the little guy” has a side in this fight. Sometimes the plaintiff is “the little guy” and sometimes the defendant is “the little guy.” TC Heartland is about plaintiffs vs. defendants, not “the little guy” vs “Big Corp.”

      1. Pro-infringer (which is what this aligns to) is almost always (albeit true that not exclusively) Big Corp.

        You really have to clench tight your eyes not to see that, Greg – leastwise when it comes to patent matters (and copyright infringement may have the opposite takeaway).

    2. You will find few advocates for the “little guy” more outspoken than me in patent law. See, for example, link to wired.com

      But, as Greg mentions below, venue is not just a big v. little problem. Someone will always have to pay for choice of venue. There are plenty of “little guys” who get dragged to Texas and wind up paying too much to settle cases because collective action keeps them from a decent challenge (an unintended gift of the single defendant rule). And there are plenty of “little guy” plaintiffs who pay more to sue in Texas (not their home areas) because they think it will be the only way to get a fair shake. Neither of these outcomes is acceptable. And so while there are many problems to deal with in patent law, those should be the target, not a venue workaround.

      As for waffling, one of the nice things about being an academic is that I don’t owe anyone my viewpoints. And if you’re familiar at all with my work, you’ll note that I disappoint most of the people most of the time. I’m cheered for a broad subject matter view, but booed because the tradeoff is that nonobviousness should be harder to prove.

      And one of the nicest benefits of being an academic is the freedom to analyze a statute without an agenda. Thus, I can divorce what I think the proper reading of a statute from whether I think it’s the right policy. See, e.g., this post (and the comments after): link to prawfsblawg.blogs.com

      1. Your statements, while pertaining to you, may be accurate, but one would be absolutely f00lish to believe that academics do not carry their own agendas.

        That statement – as applied “gen erally” is not defensible.

      2. What would you recommend as your best (or, if you cannot easily make that determination, your most recent) work arguing for tougher standards for proving nonobviousness?

      3. Re: [with separate suits against separate defendants the absence of] “collective action keeps them [small defendants] from a decent challenge.”
        In my limited observation the AIA anti-joinder legislation is not nearly the obstacle to billing-saving-cooperation between defendants as is the reluctances to cooperate, even share prior art information, between the respective defendant’s law firms, even as to making rational IPR decisions.
        But in some cases that is due to one defendant hoping to cut an earlier and better deal than the others in which the patent owner will let them off cheaper. That can occur irrespective of whether or not there was joinder.

    3. Re: “..favor TC Heartland’s position from a policy point of view.” You either believe in your analysis, or you don’t. You devalue your own analysis with your favoritism.”
      On the contrary [unlike far too many commentators on this blog] the Author is clearly and distinctly separating personal policy views from valid legal arguments to the contrary, thus not misleading lay readers.
      Separating personal opinions of what one thinks the law should be from objective views of what the law is, is and what a court is most likely to decide [in order to to give objective legal advice] is what one is supposed to learn in law school, if not earlier.

      1. Not sure that your correct take away (what one learns in law school or earlier) is congruent with the criticism of straddling the fence.

        There should be a separating of “feelings” in the objective analysis – no doubt.

        But that does not mean that the “correct result” from that objective analysis should be something that is so meekly embraced. One can very well still embrace a correct (and objective) result fully, and still want a change in the law (and pursue that change just as ardently).

        Being all “lukewarm” to an objectively correct result and (over) exuberant to a desired Ends can only too easily – especially in this type of forum – lead to confusing the actual law with one’s desired state of law (prime example being Ned Heller and his Windmill chases).

        1. This may be true, but I’m not sure that’s how I would describe this post. I’m pretty sure I’m right, and my policy view, if anything, waffles as I don’t take a view on whether e.d. Tex. is bad or good

    4. Peter Corcoran: I find it bitterly ironic that liberal law professors, who in the past have notoriously championed the rights of individuals over corporations, are now lobbying in favor of those corporations to the detriment of rent-seeking b0ttom feeders like me who are struggle enough already with concepts like basic human decency

      Fixed for accuracy.

  8. >I’ve long said in a variety of venues (including comment threads on this very blog) that there are significant problems with any system in which so much rides on where the case is filed.

    The problem is that the SCOTUS has turned patent law into equity. It is impossible to have laws consistently applied in different districts when there is no law. Alice is not a law, but an equitable solution the SCOTUS fabricated for a perceived problem according to the amicus briefs.

    The problem is that we have stopped being a country of laws. And, the reason this is being pushed so much is that the big corporations can pick their venue.

    1. As I pointed out previously (which also applies to the same comment of Prof. Risch), the “trend” of the Court has been away from bright-line rules and towards more “discretion” in the lower courts.

      One cannot escape MORE of what Prof. Risch finds unsettling with such a trend. Such is a necessary outcome.

      If in fact any one lower court is acting within their discretion, and such action creates “a system in which so much rides on where the case is filed,” the result – as here – is inevitable.

      If on the other hand any particular court is misusing its discretion, then the answer is NOT to “creatively” “interpret” (read that as legislate from the bench) what the plain words of the statute provide – but rather, to fix the problem of that particular court and then promulgate that fix to all courts.

      1. anon is right about standards and discretion. I noted at the Penn symposium on patent reform several years ago that patent reform is all about the problem that judges just won’t do what people want them to do – especially procedurally, where courts own their own domain.

        But, alas, anon (and Greg below) are wrong on the history. The Supreme Court for 100+ years treated patents as standards based. That the CCPA and then Fed Cir ignored this was at their peril, but it comes as no shock to someone who has written about the patent system since 1789 that the outcomes we have are what they are — for better or worse.

        1. The Supreme Court for 100+ years treated patents as standards based.

          I do not really disagree with this. I also do not see how that makes my earlier remark “wrong on the history.” I will freely concede that the SCotUS has long preferred standards-based patent law to a rules-based patent law.

          The SCotUS has been writing self-contradictory and incoherent patent opinions for over a century. Some of them are very good, some quite a bit less so, many a mixed bag of good and bad. The regional circuits, unable to make sense of a welter of confused contradictions, tended to make even a bigger hash of it, some worse than others (the CA2, under the direction of Learned Hand managed to contain the SCotUS’s worst damage, while the CA8 and CA9 compounded the rot).

          Finally, in 1952 Congress tried to restore a modicum of order by recodifying the welter of law, so as to keep the SCotUS’ better work (e.g., Milburn Co.) and dispense with the excesses (e.g., Great A&P). This was, itself, a move away—not completely away, but away—from standards and toward rules. Then, to see that the new statute be implemented as intended, Pres. Eisenhower appointed one of its chief architects to the CCPA. These two moves displayed an intention by the political branches that a balance more toward rules and less toward standards (not a move all the way to the end of the spectrum, but along the spectrum toward rules) was preferred.

          There was, at that point, no reason why the SCotUS had to resist the expressed preference of the political branches. Constitutional prohibitions were not at stake merely for a move along the spectrum.

          Meanwhile, the Congress expressed this preference even more clearly in the late 1970s, when it removed jurisdiction over patent appeals from the regional circuits and entrusted all patent matters to the CCPA (rechristened the CAFC). That is to say, although the Congress could have given this consolidated patent jurisdiction to any court, Congress chose the one court that had developed the most notably rules-based jurisprudence.

          Once again, this was a clear expression of preference by the political branches, and one that was not intrinsically offensive to the Constitution. There was no reason why the SCotUS should necessarily resist this move.

          And yet it does. Why? No good reason that I can see. As I said, the justices themselves admit that they really do not understand either technology or patent law. So why insist on trying to drag it back to a place from where the political branches had removed it? Why this slavish obsequiousness to a body of jurisprudence that was never more than a mixed bag, and which is largely unnecessary in view of statutory revisions. They have a ready made excuse for not insisting on most of their pre-1952 precedents (the words “although some of our earlier cases might suggest X, these have been superseded by statutory revisions” practically write themselves).

          It just seems sheer cussedness from where I am standing.

          1. Fair enough, and sorry if I misconstrued. My only point was that whatever rules might have been in place were never to be. I’m not as convinced as you are that the 1952 Act was supposed to somehow reign in the standards of the past. It’s not like 103 gave us a clear rule to go by. Indeed, it’s not clear to me at all that Great A&P was in any way affected by the 1952 Act (though Cuno obviously was).

            1. Indeed, it’s not clear to me at all that Great A&P was in any way affected by the 1952 Act…

              As a practical matter, I am sure you are correct. The SCotUS certainly does not treat Great A&P as even a little bit doubtful in view of statutory revisions.

              It seems to me clear enough, however, that the statute was intended to constrain what even the Great A&P court admitted (340 U.S. at 151) to be the “inherently elusive” “concept of invention” to one particular focus: obviousness. Certainly that is how the 103 drafter and commentators saw it at the time (see, Judge Rich’s “Laying the Ghost of the ‘Invention’ Requirement,” 41 AIPLA QJ 1, 13). Similarly, the statutory insistence on “the claimed invention as a whole” adds a constraint that had not been always and necessarily present in the pre-1952 jurisprudence.

              As I said, however, I agree that the 1952 act does not appear to exert any particular constraint on the application of Great A&P any more, at least not since KSR.

            2. Incidentally, notice that the requirement “the claimed invention as a whole” is a rule, not merely a standard. It tells the reader not only what is to be assessed (obviousness, which is probably more a standard than a rule), but also how it is to be assessed (by considering the invention as a whole, not merely as a collation of separately evaluated elements). This is not nearly so coherent and formal a rule as the TSM, but it provides the germ and statutory foundation of the TSM rule.

              Once again, I do not mean to argue that Congress meant to shift completely down the rule/standard spectrum to the rule end. The statutory text evidences, however, an intent to move somewhat along the spectrum toward the rule end.

              1. If you read my everything is patentable article, you’ll see my treatment of great a&p. I agree with you on most counts here (though the rule of treating the invention as whole doesn’t get you very far). I read that case as simply being highly skeptical of combinations, and I think that never changed.

                1. But is that skepticism misplaced?

                  Just because the Court may feel a certain way does – in no way – make action by the Court proper.

                2. My point is that the 1952 law didn’t change that skepticism. People can argue all day about the proper level of non Obviousness

                3. the rule of treating the invention as whole doesn’t get you very far

                  I agree that this is true in practice. Neither Graham nor KSR makes much use of this particular statutory requirement.

                  I get the impression from reading post-1952 CCPA opinions and Judge Rich’s law review writings that the words were meant to do quite a bit. The SCotUS gets the last word, however, and they do not seem to set much store by the CCPA or Rich’s commentaries.

                  For better or worse, however, the word from on high is that it is perfectly fine to dissect the claim into its separate elements and consider them individually when assessing patentability.

                4. And my point is that acting on an emotion is especially dangerous when what you are acting on happens to be clearly designated as to its authority belonging solely to a different branch of the government.

                  There really is a difference between statutory law and common law.

                  A certain scene from The Paper Chase** (at the hour and six minute mark) comes to mind.

                  **the John Houseman version

                5. The SCotUS gets the last word, however, and they do not seem to set much store by the CCPA or Rich’s commentaries./i>

                  Why should they? Rich, in particular, was a habitual patent maximalist w@nker who couldn’t see past the nose on his face.

                  the words were meant to do quite a bit.

                  All they were meant to do, plainly, was prevent jurists from categorically declaring a claim obvious merely because of the presence of old elements in the claim, or merely because the claim belonged to some class of old — and “probably obvious” — subject matter.

                  It’s easy for patent attorneys to get confused about this because of the degree of misinformation that’s been relentlessly peddled by certain “players” in the game. Shall I name some for you?

                6. Greg, I believe “as a whole” is intended as a method of saving combination claims where the combination provides new functionality not enjoyed by the exercise of the elements separately and sequentially. Thus, synergy is what is expected of a combination of old elements.

                7. Greg, “I agree that this is true in practice. Neither Graham nor KSR makes much use of this particular statutory requirement,” referring to “as a whole.”

                  In the portion of Graham that actually referred to this statutory requirement, even though larger combination was claimed, the course of prosecution history and limited the claim to particular elements. Thus the Supreme Court identified this subject matter to be analyzed “as a whole.”

                  In KSR, the Supreme Court identified Anderson’s BlackRock and Sakraida v. Ag Pro as setting forth a requirement for “synergy” were combination of all elements is set forth. This is the same concept that the combination as a whole must provide something new.

                8. Thus, synergy is what is expected of a combination of old elements.

                  Still awaiting that pin cite from you Ned to establish your view as anything more than just your version…

              2. No conversation about what the 1952 Act was meant to incorporate or replace in terms of the SCOTUS common law is complete without looking at what the SCOTUS.

                Their opinion (the Supreme Opinion of the Land) is that the 1952 “codified” their common law (they do not even acknowledge that “flash of genius” was overturned. They discus this in Bilski (I think it was this one.)

                1. Not everything that the Supreme Court writes has the force of law.

                  This is expressly why Judge Rich was (rightfully) able to challenge the Supreme Court’s Benson case that led to the Diehr and Chakrabarty decisions.

                  Of course, Ned will rail against Judge Rich and attempt to besmirch his name, but as I put to Ned, even his own State Attorney Oath places the Constitution above the Supreme Court and not the other way around.

                  We as attorneys have a duty NOT to blindly follow what the Court may write.

          2. This is what I find every time I have the temerity to wade into SC patent law: “The SCotUS has been writing self-contradictory and incoherent patent opinions for over a century.” Often, I’m more confused after reading them than before. At least the CAFC had some rules (“concrete, useful, and tangible result”, “machine or transformation”) that made some sense. I currently have no freaking clue as to what’s patentable and what’s not, and — more importantly — WHY they’re patentable or not. The WHY part really bothers me.

            1. The WHY part really bothers me.

              You and me both.

              A system where that “why” is unclear is never going to provide as much incentive to deploy capital in R&D as will a system in which the “why” is clear.

          3. Greg, “As I said, the justices themselves admit that they really do not understand either technology or patent law.”

            How glib.

            I have heard them comment that it is the Federal Circuit that does not understand patent law, and, given the large number of times that court has been unanimously reversed in recent years, I fully agree with the Supreme Court.

            Greg, where do you get off with such an awful statement?

            1. Ned, you regularly misrepresent case law and facts. You are called out on this and back down, and then do the same thing on the next blog post. Groundhog Day.

              You are clearly an unethical person and you calling out someone else is ridiculous.

              Moreover, the Justices’ own statements speak for themselves. They are right out of medieval times where “laws of nature” are somehow part of nature or direct from G** and not constructions of our information processors. I’ve have posted lists of their misstatements before. You do not refute them when the lists are published, but instead take cheap shots deep in threads.

              Ned, you are intellectually dishonest and you misrepresent case law and facts. You are unethical.

            2. How glib… [W]here do you get off with such an awful statement?

              Pfaff v. Wells, oral argument, Justice O’Conor: “You know, this may reflect a fundamental misunderstanding on my part, which could be the case. I’m not an expert on patent law.”

              Myriad Genetics v. ACLU, oral argument, Justice Breyer: “Now, that’s my understanding of what I’d call hornbook patent law, which you, I confess, probably understand better than I.”

              Myriad, Justice Scalia concurring: “I join the judgment of the Court… except… some portions… going into fine details of molecular biology. I am unable to affirm those details on my own knowledge or even my own belief.”

              KSR Int’l. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (Kennedy, J., writing for the court): “A person of ordinary skill is also a person of ordinary creativity…” [This howler ought to have gotten him laughed off the bench. Clearly he does not know the first thing about patent law. Compare this with a real statement about the person of ordinary skill in Beloit v. Valmet Oy (1986), C.P.R. (3d) 289 (“The classical touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination,” emphasis added).]

              These are just a sampling. I could produce many more such quotes. For a laugh some time, you should download and listen to the oral argument in Brenner v. Manson. The justices seemed to think it a tremendous joke that they should be deciding a patent case, given how little they all knew of patent law.

              1. That summary does not c0rrespond to your statement, Greg. The Justices follow their own cases, and are briefed as well as any court can be.

                Now to those who follow Federal Circuit law as if it were gospel, it is a shock at times to find that is these petty gods are not all-powerful. I actually heard a Federal Circuit judge say at the AIPLA one time that the problem the Federal Circuit had with the Supreme Court was that the Supreme Court followed their own cases and were not citing Federal Circuit cases.

                And this is exactly where the Federal Circuit gets into trouble. When it ignores fundamental Supreme Court law and goes off on a lark, it is only a matter of time until their misadventure is reined in by the Supreme Court. The attitude of defiance of the general law and of the Supreme Court by the Federal Circuit makes Federal Circuit law extremely unreliable. They are getting a very bad reputation.

                1. Ned,

                  Your denial is bizarre.

                  As for “briefed as well as any court can be” you blindly parrot that and mistake high-powered “friends” as somehow being “best-briefed,” when the two are NOT synonymous.

                  As for “it is a shock at times to find that is these petty gods are not all-powerful” AND “They are getting a very bad reputation– turn your own statement to those following the Royal Nine.

                  As for “When it ignores fundamental Supreme Court law and goes off on a lark” – you continue to ig nore the very point that I presented at December 30, 2016 at 9:45 am (repeated here for your convenience:

                  Not everything that the Supreme Court writes has the force of law.

                  This is expressly why Judge Rich was (rightfully) able to challenge the Supreme Court’s Benson case that led to the Diehr and Chakrabarty decisions.

                  Of course, Ned will rail against Judge Rich and attempt to besmirch his name, but as I put to Ned, even his own State Attorney Oath places the Constitution above the Supreme Court and not the other way around.

                  We as attorneys have a duty NOT to blindly follow what the Court may write.

                2. Make no mistake, Ned – had Judge Rich had made a mistake in his view of the Benson case, the Court most assuredly would have explicitly stated so.

                  They did not.

                  His view was – and is – correct.

                3. Your adulation of the Royal Nine in this matter merely aligns with your Windmill Chase.

                  Review again the immediate point here: according to your own State attorney oath, do you place the Supreme Court above the Constitution?

                4. And this is exactly where the Federal Circuit gets into trouble. When it ignores fundamental Supreme Court law and goes off on a lark, it is only a matter of time until their misadventure is reined in by the Supreme Court.

                  Gosh, I really have to disagree. Before the Court handed down Myriad, what Supreme Court case would you point to as evidence that the CAFC should have known that they were getting it wrong? It seems to me that the CAFC’s Myriad opinions were perfectly consistent with Chakrabarty, or Morse, or Cochrane, or any other case you might name. It was not that the CAFC had ignored the cases. It was simply that there really was no case that spoke to the issue, and so the CAFC had crafted a jurisprudence of first impression.

                  Likewise for KSR. Before KSR came down, what was the salient evidence that the CAFC should have looked to and known that they were getting it wrong? There had only been one SCotUS case on §103, and I just do not see what in Graham should have told a person who was trying, in good faith, to implement Graham that the TSM test was wrong. Once again, the CCPA/CAFC was not ignoring the SCotUS, they were simply giving life to the statute in places where the SCotUS had never bothered to address it in the first instance.

                  Once they did that, however, then their cases were the law in these United States. The SCotUS job is to apply and clarify the law, not to upset and confuse it. I think that Judge Moore understood the Court’s own law better than the Court itself understands it when she quoted Festo to the effect that “courts must be cautious before adopting changes that disrupt the settled expectations of the inventing community.” AMP v. Myriad Genetics, 689 F.3d 1303, 1344 (Fed. Cir. 2012) (Moore, J. concurring).

                  I actually heard a Federal Circuit judge say at the AIPLA one time that the problem the Federal Circuit had with the Supreme Court was that the Supreme Court followed their own cases and were not citing Federal Circuit cases.

                  Was this Judge Michel? I heard him say much the same once, and I agree. The SCotUS once upon a time understood that the circuit cases are U.S. law just as much as the SCotUS own precedent. Westinghouse Co. v. Formica Co., 266 U.S. 342, 349 (1924) (“There are no cases in this Court in which the application of the principle of estoppel as by deed to the conveyance or assignment of patent property has been fully considered. But … [i]n view of the usual finality of patent decisions in the Circuit Courts of Appeal, this Court will not now lightly disturb a rule well settled by forty-five years of judicial consideration and conclusion in those courts.”). Both justice and the American public would have been better served if the SCotUS had the humility to recognize that the law laid down by the CCPA/CAFC was the law of the United States, and applied it as such.

                5. Greg,

                  But it was not the “law” that they – the Royal Nine – had scrivened.

                  Humility? Not one of their attributes.

                6. (And that is precisely why Congress should exercise its rightful Constitutional power to employ jurisdiction stripping and remove the non-original jurisdiction of patent law appeals from the Supreme Court and place it in a new (untainted) Article III court (thereby preserving the actual holding of Marburg).

                7. Greg, prior to KSR, there were Graham, Anderson’s Black Rock and Sakraida v. Ag Pro. The Federal Circuit when it was formed deliberately refused to follow these latter cases.

                  Regarding product of nature, there were two Supreme Court cases in the 1800s (I will look them up if you want me to) so that it was well established law that products of nature were not patentable subject matter even though not previously known. It was Judge Rich who led the charge in the opposite direction and basically said that 101 contained no such doctrine. Of course the patent office had to follow the C.C.P.A./Federal Circuit, which led to the issuing of DNA patents.

                  All this is pretty well known Greg.

                8. Ned attempts to deride Judge Rich, yet again simply misunderstands what happened in 1952:

                  It was Judge Rich who led the charge in the opposite direction and basically said that 101 contained no such doctrine

                  Ned – 101 did not exist prior to 1952, and it was Judge Rich who helped write that section that CONGRESS passed.

                  No other court (or Court – no matter how “briefed” by whatever friends) could know more about what that meant than Judge Rich.

                  However, your views – aligning as they do with your own personal anti-patent (anti-business method and anti-software IS anti-patent) Windmill Chase, continues to denigrate that which you merely do not like philosophically.

                  This action by you is a stain on your name.

                9. [P]rior to KSR, there were Graham, Anderson’s Black Rock and Sakraida v. Ag Pro. The Federal Circuit when it was formed deliberately refused to follow these latter cases.

                  Hm, a couple of responses here:

                  (1) I am not sure what you mean by “refused to follow.” If you mean that there exists some case here or there in the CCPA/CAFC opus that would have turned out differently if the court had thought more seriously about Anderson’s Black Rock or Sakraida, you could be correct for all I know. I was thinking more in terms of the KSR saying that TSM is not the test for obviousness. There is nothing in Black Rock or Sakraida which would tell the good faith reader that TSM cannot be the test for obviousness. TSM was always a formalized mechanism for preventing recourse to hindsight. There is nothing in Black Rock or Sakraida that says “you must not employ formal rules to prevent a recourse to hindsight.”

                  In other words, one could not have know that TSM is not the test for obviousness until the SCotUS said so in KSR. The pre-KSR case law from the CCPA/CAFC on this point was not obviously inconsistent with any clearly controlling pre-KSR SCotUS case.

                  (2) I would also note that Black Rock and Sakraida are both pre-1952 cases. Therefore, to whatever extent you think that the CCPA/CAFC were not applying these cases with sufficient rigor, I would argue that it was not crazy for the CCPA/CAFC to question their continued validity post-1952. Graham does not cite either Anderson’s Black Rock or Sakraida.

                  The SCotUS did not really make the continued applicability of these cases clear until KSR, so I do not see how one can say that the CCPA/CAFC was ignoring the SCotUS by neglecting to apply Anderson’s Black Rock or Sakraida with the sufficient vigor.

                  (3) It is not as if the CAFC treated Sakraida as a dead letter. See, Merck & Co. v. Biocraft Labs, 874 F.2d 804, 808 (Fed. Cir. 1989).

                  Regarding product of nature, there were two Supreme Court cases in the 1800s (I will look them up if you want me to) so that it was well established law that products of nature were not patentable subject matter even though not previously known.

                  Do you mean Cochrane and Wood Paper Patent? If so, then I stand by my assertion that there was nothing in those SCotUS cases that is necessarily inconsistent with the idea of allowing patents for isolated DNA molecules. If you have different SCotUS cases in mind, however, then I cannot comment until I know which cases you mean.

                  It was Judge Rich who led the charge in the opposite direction and basically said that 101 contained no such doctrine.

                  Learned Hand was leading that charge at least four decades before Judge Rich. Parke-Davis & Co. v. H.K. Mulford Co., 189 F. 95, 103 (C.C.S.D.N.Y. 1911).

              2. Greg, just listened to the oral argument in Manson — two hours over two days?

                The problem was that the case involved minutiae in PTO rules and procedure in addition to the big issues. The patent owner kept saying odd things about the facts trying to flummox the court.

                Didn’t work.

                The Supreme Court got it, and then, got it right.

                1. Hm, once again we disagree. I think that the doctrine of substantial utility does useful work in the law, and I think that Manson is full of useful dicta that we would all do well to study and understand. That said, I think that the actual case arrived at the wrong outcome, and that the CCPA had gotten the case right below. The errors of Manson were merely compounded and confirmed in Fisher. As the dissent in Fisher wisely observed, “research tools are similar to a microscope; both take a researcher one step closer to identifying and understanding a previously unknown and invisible structure…” In re Fisher, 421 F.3d 1365, 1380 (Fed. Cir. 2005) (Rader, J. dissenting).

                  Incidentally, N.B. that Fisher followed Manson. That is because there really was a SCotUS precedent to follow. Most of the CCPA/CAFC’s reputation for ignoring the SCotUS is vastly overstated. As I said above, for the most part, the incidences of CAFC reversals concern matters where there was no precedent clearly to follow, or else an ambiguous precedent where the CAFC chose one reading and the SCotUS preferred a different reading. This is hardly defiance; merely confusion.

    2. The problem is that the SCOTUS has turned patent law into equity.

      Exactly. The CCPA and CAFC spent six decades building an intelligible, rules-based patent law (which is the only kind worth having) and the SCotUS has spent the last ~15 years (starting, perhaps, with Festo) unweaving all that law, to replace it with a bunch of unintelligible balancing tests.

      This would make sense if the SCotUS displayed much understanding of patent law, but they do not understand it and freely admit that they do not understand it. I have been working my way through the oral argument archives at Oyez, and the consistent theme you hear again and again (Graham, Manson, Chakrabarty, Diehr, Pfaff, Mayo, etc) is “I do not know anything about technology” and “I do not know anything about patent law.” If that is the case, then why do they insist on repeatedly barging in and upsetting an apple cart that—by their own admission—could already be rightly placed for all they know?

      1. Greg, I think you greatly exaggerate and overestimate both the CAFC’s understanding of both “patent law” and technology. Perhaps the better take-away from your listening adventure is that most of the Justices speak with greater candor and humility, not just about patent law and technology, but about everything, at least relative to the judges on the Federal Circuit.

      2. Greg, with posts like this, you’re my hero! You’re directly on point in my opinion.

        Furthermore, should we be basing patent law on SC cases that are over 100 years old? Or even 40+ years 0ld? Or even 10 years old, considering that technology is advancing so quickly? Ever think that maybe — just maybe — the reasoning used 100 years ago for a light bulb (or some other mechanical device) might not be applicable to modern technology? I now have the power of a supercomputer in my pocket. I talk to a speaker and ask her (Alexa) questions and she answers them. We need rules that value and understand that technology. If we want to eliminate patents for “software” (whatever that is), then Congress should do that, not the SC.

        1. [S]hould we be basing patent law on SC cases that are over 100 years old? Or even 40+ years 0ld?

          Hm, here we disagree. I do not believe that patent law needs to change very much to accommodate new technologies. The same incentive systems that incentivized Whitney or Edison can incentivize today’s and even tomorrow’s innovators. Meanwhile, our justice system is built on precedent and really cannot work without it.

          All other things being equal, I am inclined to regard old SCotUS cases as still good for whatever they say. However, where Congress has spoken more recently than the SCotUS precedent, one really should think harder about applying the statute than the older precedent.

          Incidentally, for the same reason that we should not want to throw out old SCotUS precedents too hastily, one should also respect old CCPA cases. In a sane world, the SCotUS would be very chary of uprooting CCPA and CAFC doctrines. Stare decisis is a good motto for all rungs of the appellate judiciary, not just the SCotUS.

    3. That’s a good insight Night. Your values are backward, but ISTM the existing three judicial exceptions are, in reality, expressions of aequitas est quasi aequitas, (equality is equity), because each of the exceptions are concerned with the substantive proportional contribution of the inventor to a purported invention.

      Equity never went away: the Constitution demands it.

      In a mixed system, the equity issues are handled first, then the remaining issues of law go to a jury. Applying Alice as an equity step prior to application of the statutes is perfectly appropriate because you can’t apply statues about inventions to a non-invention.

      Doing it with a 12(b)6 is plainly wrong on a procedural and rational basis; the Markman procedure should be expanded to construe the nature and result of any method patent, at a minimum, because it already serves as a quasi trial with mixed issues of law and fact and enough of a record for a jurist to understand the stakes, the actors, and the story.

      In Re: Prof Risch’s take, I just have one question. What work is 1400(b) doing in the law and if Congress had intent to nullify it, whey didn’t they strike it?

          1. Sure, lots of times. Wahpeton Canvas Co. Inc. v. Frontier Inc., 870 F.2d 1546 (Fed. Cir. 1989), just for one. Do a Google scholar search for CAFC cases with “d/b/a” as your search string and you will turn up dozens.

            1. Thanks Michael and Greg for that additional argument as to why 1400(b) was retained [for non-corporate defendants] when “corporate residence” was broadened for the general venue statute.

              However, is there is anything in the Congressional Record to support that, or anything else other than oversight and unintended consequences?

                1. Michael, I believe the dispute is what was intended by Congress at the time that 1391(c) was amended, twice, not when 28 USC 1400(b) itself was enacted.

                2. But your question is whether this was some oversight that makes 1400b superfluous. My point is that from the beginning dbas were contemplated, so there was nothing to separately address when expanding corporate venue.

              1. As to unintended consequence: does that mean that 1400(b) advantages DBA/ individuals over corporate defendants in terms of their venue options?

                Night, to consider the rise of Trump as having anything to do with patents seems like distorted thinking. Maybe his rise is coincident with the general rise of nihilism? Possible- but the simplest answer is likely the best: information inventions broke the system, and the response has basically been a turn to principles of equity in order to control the problem.

                Its possible to substantially solve the information invention problem with a simple change to 100(b), and to fix the equity balance by acknowledging that the so-called judicial exceptions are really equity findings, and providing a formal adversarial step (such as an expanded Markman procedure) to construe inventions before they are subjected to the statutory tests of 101/103/112.

                My 100(b) addendum: “a process which results in information consumed by human beings may not be patented, excepting processes that improve information processing without regard to the particular content or meaning of the newly processed information”.

                I believe that even without a change to 100(b), a reasonable understanding of “abstraction” means that information consumed by people should not be patentable subject matter, because the value of any alleged infringement can never be fixed because utility, if any, of information to a person is always sui generis.

                1. Martin: My 100(b) addendum: “a process which results in information consumed by human beings may not be patented, excepting processes that improve information processing without regard to the particular content or meaning of the newly processed information”.

                  Martin, your statement could be more generalized to include the kind of process found ineligible in both Mayo and Sequenom, a process that uses conventional technology to determine the presence of newly discovered laws of nature or phenomena of nature. The people over at Gene’s site do not agree with this fundamental proposition, and strongly so.

                2. Ned: your statement could be more generalized to include the kind of process found ineligible in both Mayo and Sequenom, a process that uses conventional technology to determine the presence of newly discovered laws of nature or phenomena of nature. The people over at Gene’s site do not agree with this fundamental proposition, and strongly so.

                  Ned, I don’t see Sequenom’s invention as needing to get to the nature exception. It’s an information invention. The information is the whereabouts of fetal DNA. Beyond that information, nothing in the claims is novel or tangible. Since human patients use that information in vastly different ways to vastly different effects, that information can never be fairly adjudicated as property.

                  A steam-shovel saves X ergs of labor in Y time, and we can reasonably consider the value to all steam shovel users as a similar enough value (i.e. anon, Utility) to handle it as property.

                  An entirely conventional method that produces a fact that a fetus may be a wee bit downsey cannot be Constitutionally treated as property without a measure of aequitas est quasi aequitas, which simply cannot exist with a claim that amounts to “there is gold in them thar hills”

                  As to what is conventional and what is not, many a 12(b)6 motions have foundered when a plaintiff simply says “what we are doing is not conventional” and there is not enough of a record to say what is “conventional”or not.

                  “Conventional” and “generic” have two lenses that are constantly mishandled.

                  One meaning relates to obviousness in the eyes of PHOSITA, the but you can’t model PHOSITA until you have construed which art and which endeavor is pertinent, which is another huge issue with information inventions. Information inventions may involve hundreds or thousands of separate combination components to achieve their result.

                  There is a meaning to “conventional” and “generic” that does not require PHOSITA. This view is important at the construction phase- it’s the viewpoint of the designers of the elements of the combinations. Would they have considered some given use future use of their element in combination with another element to be inventive?

                  If an inventor of a router sees an invention that uses, in part, her router to route packets, would she consider that use of the router inventive? She may know nothing of the art field of the invention, so she would not be a PHOSITA for a 103 inquiry, yet her understanding is important to the basic construction of an invention.

                  With Alice we now imperfectly and randomly try to gist it, but instead, the PHOSITA should be construed adversarially in a case prior to a 103/112 inquiry. It’s not something that could or should happen at prosecution either, because there is no specific infringer at hand.

                  If the IPR system were to have any value, it would serve as an adversarial adjunct to prosecution and a mechanism to tee up the construction of the invention for consideration by a jury- a nice little patent chancery to make sure nobody is suffering real abuse.

                  Placing basic boundaries on the purported inventor’s contribution is an equitable requirement- by judge, IPR, or whatever legitimate democratic means.

                  With machines, compositions of matter, and manufactures, it’s almost pro-forma, but with processes, it’s a different story.

                3. You cry for “legitimate” in the face of one branch of the government exceeding its Constitutional authority…

                  You remain unaware of the terrain upon which you would do battle.

          2. As Greg notes, all the time. Several cases in our random set in our venue article were individuals, many doing business in multiple states

      1. Greg: Doing it with a 12(b)6 is plainly wrong on a procedural and rational basis;

        It depends on the claim being asserted.

        Start taking a closer look at the junk that’s being filed. The entire profession should be ashamed of itself. Of course, we know that some patent attorneys are shameless and they will do and say literally anything if they think they can make a buck. Some of them are commenting in this thread right now.

      2. OK, Martin that was a rational post from you. The only problem is that as you allude to is that the SCOTUS is not claiming it is equity and the SCOTUS does not have the power to offer up an equitable solution to district court judges and the PTO.

        Alice basically says that anything that fits the Alice test was unconstitutionally granted because it tends not to promote. I think the SCOTUS making such law is probably a threat to our democracy. I know that sounds strong, but then I have been saying that someone like Trump would rise to power if ethical violations weren’t punished.

        Ask yourself, would it be out of the question for the Congress to impeach all the liberal judges? Could it happen. I think we are a half step from that right now. And, decisions like Alice push us closer.

        So, ask yourself, can the SCOTUS actually create laws like Alice? They can because they have the power, but are they breaking the Constitution by doing so. I think they are.

        1. Slight – but important – correction to Night Writer’s comment of:

          was unconstitutionally granted because it tends not to promote

          is

          was unconstitutionally granted because it MAY tend not to promote

          Those who understand the limitations of power for the Judicial Branch will appreciate exactly why this correction is important.

        2. …as to being a half step from impeachment, we are nowhere near that point.

          Congress is simply unaware that its statutory power has been absconded with by the Supremes.

        3. Alice basically says that anything that fits the Alice test was unconstitutionally granted because it tends not to promote.

          So you think that Alice is articulating a constitutional limit to the reach of §101? I guess I do not read Alice as going that far. For one thing, Alice never actually uses the word “constitutional.” The closest Alice comes to asserting a constitutional limit is to cite Art. I, §8, cl. 8, but even then Alice only says that “a monopoly over an abstract idea… might tend to impede innovation more than it would tend to promote it, thereby thwarting the primary object of the patent laws,” (emphasis added).

          I emphasize “primary,” because it appears to me to stop short of saying that such a grant would be entirely unconstitutional. The relevant passage in Alice reads to me as if to say “we think that granting patents on abstract ideas would be unwise, and therefore we will not read the statute to go that far unless Congress makes very clear that such is their intent.” In other words, I do not read Alice as making its holding an issue of constitutional limitations on Congressional power, but rather a prudential limit on statutory construction in view of the constitutional axiom that patents are meant to promote advances in the art.

          Incidentally, although Alice does not discuss this point, I do not see how one can square the idea that IP clause prevents Congress from granting a patent on abstract ideas with the assertion in Wickard v. Filburn, 317 U.S. 111, 122 n.21 (1942) that Congress has the power to promulgate trademark laws throughout the U.S. based solely on Congress’ commerce clause power. It seems to me that even if Congress lacks the power under the IP clause to grant patents on natural products, etc., Congress still could authorize such patents under its commerce clause powers.

          I expect that a patent on a purely abstract idea might (as Judge Mayer suggests) run afoul of the First Amendment. Alice never cites the First Amendment, however, so I do not think that we can read that sort of thinking into Alice.

          1. a prudential limit on statutory construction

            Except they themselves turn around and botch the statutory construction with their “Gist/Abstract” sword play.

            You then seek solace where none is to be found – the commerce clause and the patent clause are not as interchangeable as you indicate. Congress may decide to grant something under the commerce clause, but hat something – by definition – would not be a patent, and the patent clause would remain as it is.

            First Amendment. Alice never cites the First Amendment, however, so I do not think that we can read that sort of thinking into Alice.

            That part is correct. But that part appears to constantly confuse the likes of Mr. Snyder and Malcolm, and is simply not a part of the discussion (for at least the reason that an idea – in and of itself – is not a statutory category). This can be seen in the idea – mistaken idea to be more precise – of “conception only” as somehow “enough” for invention.

            Of course, some will confuse themselves on this point as well and forget that constructive reduction to practice is more than conception only.

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