Is Patentable Subject Matter a Statutory Defense?

Over in the main site, there's a post by Jason Rantanen about Whiteserve v. Computer Packages, here. He points out that Judge Mayer, sua sponte, would have held some claims invalid for lack of patentable subject matter.  

There's an argument that this is not a validity defense, which I find interesting.  Briefly, we're dealing with a statute, not common law, and so the statute matters. Under the statute, there are specifically enumerated defenses.  See Aristrocrat Tech. v. Int'l. Game Tech, 543 F.3d 567, 661-63 (Fed. Cir. 2008).  If a statutory requirement is not identified as an invalidity defense, then it's not.  Id.

Section 282 lists a number of things as defenses, but lack of patentable subject matter under Section 101 is not expressly listed.  You would have to argue that it's implicit, I guess, in "non-infringement" under 282(1).  But that seems to be a very loose reading of the statute (I wrote a book on statutory interpretation and won't bore you with a lot of the mumbo jumbo).

Wait, you say, it's long been recognized as a defense.  Maybe, but a lot of statutes are read wrongly for a long time.  E.g., Central Bank of Denver v. First Interstate Bank of Denver, 511 U.S. 164, 177, 191 (1994) (overruling 60 years of judicial decisions authorizing a statutory cause of action on the ground that Congress in fact had not authorized it).

What's the ethics angle in this?  Heck, I don't know, except that under our system, the statute matters.  Someone explain to me how we can get to an invalidity defense under the statutory language, based on 101…?


About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

73 thoughts on “Is Patentable Subject Matter a Statutory Defense?

  1. 73

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

  2. 71

    anon, the warehouse does not take a hit if one must also claim the new composition in a useful form. Lithium in the wild is not useful. Processed to remove impurities and matter to which it is bonded will place it in useable form. This is what is claimed. Isolated or metallic Lithium.

    I think, anon, there is no real problem in this — and it is consistent with both Parke-Davis and Merck.

  3. 68

    “keep validity separate from patentability”


    This is confusing. Patentability is not separate from validity per se (resting in 102/103) while patent eligibility is separate (resting in 101).

    I’ve noticed that many (including Prof. Crouch) ask the wrong questions on 101 related matters. Let’s NOT introduce more confusion by adding another term.

  4. 67

    Hmm…keep validity separate from patentability, one, because clearly the Court has the authority to interpret 101 in the context or patentability — no doubt about that.

    Managed to catch a summer cold, so going to go look at the other site later.

  5. 66

    “thinking of the product of nature exception. This would fall under 102”


    You are still trying to shoehorn timing into the Product of Nature exception.

    It doesn’t fit. Sorry, but that is the reality of the situtation. The rampant repeating just does not change this fact.

    The warehouse of all men does take a hit. That’s a pretty powerful item that the Supreme Court would have to surrender if they wanted to take their fingers out of the patent pie. But viewing Golan v Holder, it is also a logical hit, as in Golan, the Supreme Court has found that there is no right to the commons.

    However, you still have the Congressional “made by man” to deal with – the rationale in Chakrabarty may actually be pinned to the words of Congress.

    Never-the-less, if the patent gates were actually made wide open….

  6. 65

    I repeat this on this thread (since the other thread may not be read): give credit where credit is due: it was the posts by A New Light that broached the topic. I was merely captivated by the view.

  7. 64

    anon, read your post to state that the SC has no authority to create new exceptions to patentability/validity not set forth in the statutes. Clearly this is right. Even Bilski agreed that BMs were not categorically excluded because they were not literally excluded by Congress.

    But they then held that abstract claims were excluded — categorically. But abstract claims are not expressly excluded by any of 101/102/103. But they are arguably excluded under 112. See, O’Reilly v. Morse.

    That is why I think pinning the exceptions on 101 is wrong-headed. I think the excepts fall under 102/103/112, and always have fallen under these statutes or their predecessors.

    However, if an exception does not raise a clear problem under these statutes (102/103/112), then the SC may be without statutory authority to declare a claim unpatentable.

    I am now thinking of the product of nature exception. This would fall under 102, as I think it does. See, In re Bergstrom. If the product is known, the claim to it is not new.

    If the product was not known, then the claim is not excluded under 101. The claim still must be to something useful. Typically, this means the product must be isolated or purified to make it useful. This is sufficient in my view to render the claim patentable.

    Your views, especially about the product of nature exclusion. Where is this exclusion clearly set forth in 101? Under your own reasoning, the product of nature exclusion is non statutory, and therefor, ulta vires.

  8. 63

    Anon, Ill check your posts and reply in line.

    BTW, you have made some very good arguments about the Supreme Court authority to enact the exceptions. They do not have such authority. I agree. The statutes themselves must proscribe certain subject matter. If they do not, the subject matter may be patented.

  9. 61

    “I agree the SC disagreed”

    Ned, I know you agreed and so noted in my post. Dismissing the “carefully chosen words” of the Supreme Court (even if you label them dicta) needs a bit more of an explanation.

    Also, I asked you to notice though two of my other posts, one to you (but not in reply, so you may have missed as there was no email notificaiton), and the other to very interested.

  10. 60


    I was the one that reposted A New light’s post. I know too that he posted on the subject of music, and on Prof. Crouch’s main blog pages I recently asked you not to conflate music into the discussion as it is an obvious smokescreen.

    Another of your smokescreens is the “point of novelty.” The claim read as a whole is the point of novelty.

    Let’s keep this on topic and correctly on point.

  11. 59

    It’s less of a complete tangent than you might think. Patent eligibilty and patentability are two distinct concepts.

  12. 58

    Going off at a complete tangent here, but in the UK the term ‘patentability’ is understood as ONLY covering the sort of eligible subject matter issues that in the US are addressed in 101, and NOT novelty or inventive step (obviousness). OK, that’s foreign law, but who’s to say that congress excluded 101 by using the word patentability? That may not have been their intent.

  13. 57

    A short reply to A New Light.

    Read O’Reilly v. Morse. If one claims a principle in the abstract, a law of nature, or something even more abstract such as music, one cannot comply with the statutory requirement to describe in a specification how to make and use one. Morse implies, if it does not actually state, that the output of a process must be something physical that can be sold and/or subsequently used. Abstract concepts like music cannot be built and sold.

    Morse makes it very clear, IMHO, that practical, physical, applications of abstract concepts must be disclosed. The claimed subject matter is then limited to these embodiments and equivalents. The case actually says this.

    How can there be an embodiment of music? There cannot. If however there is a physical embodiment, such as a CD, and the point of novelty is the music, the problem is a combination of 102/112. If the only thing new in a claim is non statutory under 112 (it is abstract) then the claim is invalid under 102/112.

  14. 56

    The discussion continued on several thread in that time frame (including link to on which I made the comment:

    I still think the better perspective, the more interesting perspective, is that the Supreme Court has acted unconstitutionally in creating laws that are in addition to the laws created by the Congress when the constitution clearly sets who has that authority. The Court engages in doublespeak when it notes the “wide open gates” and then makes law to narrow those same wide gates. It simply does not have the authority to baldly assert an unproven – and unprovable – future subjective view as a foundational reason to change what Congress,in their full – and fully owned – authority can, and has done.).

    Unfortunately, at least four of the major threads (several hundred posts in give and take fashion have busted links preventing accessing of comments, typically over the two hundred mark)

  15. 55


    This may not be the earliest, but it is in the general timeframe. The original post is May 17, 2012 at 05:08 PM from link to (note that formatting does not carry over):

    A New Light said in reply to 6…
    Be forewarned: this post is long.

    As I wonder about the war of words and philosophies evident not just her on Patently-O, but in the courts (and Court), my mind keeps returning to one word: eligible.

    I think it comes down to an understanding of patent eligible versus patentable.

    From Merriam’s:
    Eligible: (adj) 1a: qualified to participate or be chosen

    To make matters less clear, eligible means “able” to participate in the patent process. But do not confuse “able” and “patentable.”

    What started me down this path is when I realized that the use of the word “categorically” by Ned Heller is such a strong word, while the word “eligible” by Anon is not definitive of obtaining a patent. I was thinking that if something is ineligible it is indeed categorically outside of the ability to obtain a patent. But if something IS eligible, it may still be outside the possibility of getting a patent.

    Thus, ineligible = categorically out is NOT the same as eligible = categorically in.

    Being eligible only gets you so far. It only means that you are qualified to participate.

    This does not mean a patent will ensue. There are many reasons why a patent may not ensue.

    But what, or who in the following example, gets to participate? Who is invited?

    Let’s say that patenting is like a track race (an analogy I think works well). The invitation to the race is meant to be wide open. It is a passé clause included by the Court in every decision, no matter if the Court is limiting patents or strengthening them. Indeed, at times the Court appears to use the phrase as a throw-away, saying it but ignoring it. The more runners in the race the better. The more participation, the better. Thus in this sense, “eligible” should be a very large set and “ineligible” should be a very small set.

    Given that there are certain categories EXPRESSLY INVITED to the race in 101, does anyone deny that anything in these categories are defined as eligible?

    Let’s take a closer look at the definition of “eligible.” There are two different factors at work: qualified and participate.


    There is (or rather, there should be) no doubt that participation in the patent system is a good and highly desired thing. There is a reason why the patent clause ranks a constitutional place, and one higher than many other things (including the Amendments e.g., free speech). Participation is the ground floor for promotion, as there can be no promotion by the patent system without participation. This distinguishes the argument (a false one) by many anti-patentists that advances and promotion can happen without the patent system. Such is a false argument, a literal non-sequitur because the true argument has a ground floor the fact that we do have a patent system, and it is the rules of playing within that patent system that we are concerned about.

    So to be clear, the law and policy is to have as broad a participation base as possible.


    This is where the real issue is. The rule of law laid out in the Constitution is for Congress to set out the patent system. And only Congress. Yet we have the Court making judicial law by choosing to “interpret” 101 where not only such interpretation is not required (there have been no actual cases and controversies demanding such), but that the result of such “interpretation” is actually the creation of controversy, ambiguity, and uncertainty.

    But if the Golan v. Holder case is any indication (and that case too dealt with the constitutional IP clause), the Court recognizes that Congress, not itself, is the arbiter of rules, the setter of boundaries. If, as in Golan, Congress determines that it can take things out of the public domain (long a critical no-no per the Court for patent matters), and the Court has blessed this power of Congress, then the Court cannot have an interpretation issue with the rules of Congress (the actual as written law of 101).

    So why the dichotomy?

    What the Court is doing with its treatment of 101 is actually setting up a gate before the gate. It is not enough to be eligible by being in one of the enunciated categories as explicitly provided for by Congress. There is a seemingly (if not literal) ultra vires eligibility that the Court has written above 101, because, as the Court notes, there is no legislative foundation for this judicial distinction of eligibility (see Bilski). This is why the Court’s writings on 101 leave such a bitter distaste in so many people’s mouths. The Court is not actually writing about 101. Congress gets to write 101. Congress has written 101. Rather, the Court has nowhere to peg its writing of patent law and merely chooses 101. An argument could be made that 100 would actually be a better place, defining, rather than applying law.

    The only other place (and the slender reed by which the Court might hang its legitimacy) is in the constitutional grant itself.

    Herein then, is what the Court is actually deciding, and specifically NOT deciding, that is, the Court is specifically NOT deciding 101 issues. A lazy Court calling such by the wrong name is one reason why matters remain unsettled when the law of 101 remains (largely) constant.

    So let us ask, what is eligible from a constitutional standpoint? IS eligibility a constitutional question?

    I have posted my thoughts on this on previous occasions. I cannot find the link and fear that it is a post on one of the longer threads with broken “See More Comments” javascripts.

    But to be brief (as I fear I have been too long already, and thanks to all those still reading) much of the argument turns on “useful arts.” I am unabashed as to applying a modern meaning to this term, as I feel that the subject matter itself (innovation) demands no less. But what are “useful arts’? Must they be synonymous with “technical arts?” Music, for example, is not able to be patented. It is not eligible. Contrast (especially for the immediate discussion) Business Methods, which are able to be patented. They are eligibile (as an enumerated category, they are expressly so). Consider too that the courts have ruled on the technical arts question and have determined that useful arts is broader than technical arts.

    At least that is, according to how Congress has written the law. But I would put it to you that the trouble, confusion and dilemmas evident in any of the so-called 101 cases arises because the Court has acted above Congress and have written into the law something that Congress simply has not included. The Court has basically written an asterisk into 101 to exclude some (theoretically uncertain and on a case by case non-brightline basis) items that otherwise are permitted by Congress. The Court states this as a 101 matter, but that is false. If a 101 matter, it would be a patentable matter. It is clear, however, that this is a patent eligible matter. This is a matter above 101. It is a matter of who even gets to show up at the track race. If a patentable matter, eligibility would not, could not be questioned. But since eligibility is questioned, and 101 is unambiguous (ruling out the NEED for the Court to provide an interpretation, it is clear that the Court has breached the Constitution and taken power from Congress in order to write patent law.

    It comes down to this: who sets the rules, any rules, all rules, for the patent game? The Constitution is clear on that. It is not the Court. By setting law of eligibility, the Court plays a dangerous game. Alas, who plays the watchdog over the Court when it oversteps its bounds?

  16. 54

    George is right on the weird distinction he has to live by, including that the purpose of his opinions reflects whether he can do them, which is strange, but it sort of makes sense.

    More when I have time.

  17. 51


    You state (without authority): “each and every one of the defenses which we now considered to be 101 defenses, each of them can be phrased as a 102/103 or a 112 defense.”

    You do note that the Supreme Court disagreed with you on this.

    See also my post at 12:07 AM today on this thread, as well as 2:12 PM on the 25th.

  18. 50

    I’m a patent agent – thank you David for your 2007 article “Patent Agents – The Person You Are”, I’m not sure I would have been comfortable hanging out my shingle without learning about the “odd ball” issues regarding the person I am.

    WCG, I don’t think the distinction between patentablity and invalidity is that one is a question of law and one is not. They are both questions of law. The distinction is that one involves an opinion regarding a proposed proceeding before the patent office, the only place I am admitted. Do I think a prior art reference might get a patent invalidated in court? No clue and can’t answer anyway. Do I think that same reference might get all claims canceled in a reexamination preceding? I can answer.


  19. 49

    Professor Hricik, I fully agree with you post that 101 was not considered listed as condition for patentability. But, what then does this imply?

    They did not consider the defenses we now consider the 101 defenses to be 101 defenses. Rather they considered them to be 102/103 or 112 defenses. If you pause and consider each and every one of the defenses which we now considered to be 101 defenses, each of them can be phrased as a 102/103 or a 112 defense.

    You pose the question above: Could section 280 to be unconstitutional construed in a manner as it has been. Clearly, the problem is not in section 282, but in the courts’ sourcing it statutory authority for the so-called 101 defenses in section 101.

    When Prometheus opined in dicta that the government was wrong in trying to shoehorn the defense against the claims in that case into 102, or hypothetically, even into 103 and 112, the Supreme Court itself was creating a problem it did not have to create.

    But now that Prometheus exists, it might be very interesting Teresa statutory construction issue regarding 282 in some future litigation where a 101 defense is raised. This might force the court either hold that the defense is nonstatutory, or find authority in 102/103 or 112 as apparently intended by Congress.

  20. 48

    Yes, you’re right and patent agents present a lot of odd-ball issues. There are also odd issues about assignments. You should buy the forthcoming edition of “Ethical Issues in Patent Prosecution! 😉

  21. 47

    I appreciate your keen awareness of the “patentability” and “validity” distinctions. Under Sperry v. Florida, a patent agent can provide opinions regarding the issue of patentabilty of claims but not regarding the issue of validity of claims because it is a question of law. When an agent’s client solicits his opinion, he has to be sure that he frames his answer as an issue of patentability — not one of validity (or even infringement).

  22. 46

    Okay, I’ve asked Dennis if he’d post on the main page, but here is the text (hopefully it will be formatted). Tell me using the text of the statute why I am wrong:

    Are the Courts Correct in Their Assumption that a Patent Issued on Non-patentable Subject Matter is Invalid?

    By David Hricik
    Mercer University School of Law

    I forget when I first thought about this, but it’s been a while. With all the discussion of Prometheus (sadly, the case, not the film, which was great), I figured this was a good time to raise it. At minimum, there’s a litigable question here, and assumptions that a patent issued on non-patentable subject matter is invalid need examination. I’d love to be wrong about this, but I don’t think I am.

    Some History.

    I have not scorched the earth, but from what I can tell no court has squarely addressed the question of whether the Patent Act allows a court to deny enforcement (on any ground) of a patent granted on subject matter that is not within Section 101. Instead, what the cases showed me was that law developed in the context of challenges to the USPTO’s denial of a patent have been used to invalidate issued patents – without analyzing the statutory authority to do so.

    Let’s take a look at what most people assume is the law and see if we can get there: does the Patent Act allow a court to invalidate a patent that does not claim patentable subject matter?

    Section 282

    The starting point is 35 USC 282. It provides in pertinent part:

    The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:

    (1) Noninfringement, absence of liability for infringement, or unenforceability,

    (2) Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability,

    (3) Invalidity of the patent or any claim in suit for failure to comply with any requirement of sections 112 or 251 of this title,

    (4) Any other fact or act made a defense by this title.

    Federico’s commentary, often relied on to indicate Congressional intent, doesn’t help at all, but here it is:

    The defenses which may be raised in an action involving the validity or infringement of a patent are specified in general terms, by the second paragraph of section 282, in five numbered items. Item 1 specifies “Noninfringement, absence of liability for infringement, or unenforceability” (the last word was added by amendment in the Senate for greater clarity); this would include the defenses such as that the patented invention has not been made, used or sold by the defendant; license; and equitable defenses such as laches, estoppel and unclean hands. The second item specifies “Invalidity of the patent or any claim in suit on any ground specified in Part II of this title as a condition for patentability”; this would include most of the usual defenses such as lack of novelty, prior publication, prior public use, lack of invention. The third item specifies “Invalidity of the patent or any claim in suit for failure to comply with any requirement of section 112 or 251 of this title”; the first section mentioned would include the defense of insufficient disclosure, and the second sentence mentioned would include reissue defenses. The fourth item merely specifies “Any other fact or act made a defense by this title.” All the defenses usually listed in textbooks on patent law may be placed in one or another of the enumerated categories, except a few which are no longer applicable in view of changes in the new statute.

    Section 101.

    Section 101 is relied upon as the basis for invalidating patents. It states: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

    While clearly granting power to the USPTO to issue patents on “new and useful” processes, it obviously also limits the USPTO’s power to do so.

    The question here is not patentability, but validity. Simply, suppose the USPTO makes a mistake, and issues a patent on non-patentable subject matter. Is this a defense to infringement?

    In my view, the answer is “no.”


    Let’s start with the two specific subsections, because they make us focus on the text and show some very deliberate choices by Congress that easily could have gone the other way had Congress intended 101 to be a defense.

    The second subsection of 282 is probably the most important: “Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability.”

    Section 102 and 103 are “conditions of patentability.” They say so in their titles, and they are substantive legal conditions (technically, I’d call them “conditions of unpatentability” given the burdens of proof, but this works). The fact that 101 is not a condition of patentability is to me is very important: Congress chose in 282(2) to specify that only those things denominated as “conditions of patentability” are bases for invalidity. It then chose to label 102 and 103 as conditions, but not 101. Those are deliberate choices. In my view, a patent issued on non-patentable subject matter is not “invalid” under the second provision.

    Subsection 3 of Section 282 is easy to apply to this question, but it is important because it also adds to the evidence that 101 is not a defense. Patentable subject matter is in 101, not 251 or 112. So that part’s easy: 282(3) doesn’t list 101.

    But the important point, again, is that Congress deliberately thought about what should be invalidity defenses, and what should not, and left out 101 not just as a “condition of patentability,” but also in this specific paragraph, where it “caught” some strays. It left out 101. That says a lot.

    Two down, two to go.

    Now we’re left with arguing that, although it thought about what should be invalidity defenses in two different places, nonetheless we should imply that Congress meant to include it in some amorphous language in the other two subsections. We’re fighting uphill.

    Let’s go to the first catch-all type subsection: “Noninfringement, absence of liability for infringement, or unenforceability.” Logically, I can’t make patentable subject matter fit, at all. Before explaining why, let’s be clear on the consequences of saying that Section 101 is within this section: it would be that the patent is valid but there would be no infringement.

    “Unenforceability” is the easy one. The cases and legislative history I’ve read show this was designed to capture equitable doctrines like patent misuse and, arguably, inequitable conduct (long diversionary story there). We’d be straining to put 101 there.

    Federico’s statements that the defendant hadn’t made the product, or had a license to do so, show that “infringement” means what we think it means. A licensed patent is valid, but “not infringed.” A patent that the defendant never violated is valid, but not infringed. So, I can’t make “noninfringement” logically work or work without giving words a very unnatural meaning.

    Now the only arguable catch-all, subsection 4: “Any other fact or act made a defense by this title.” Here we are, trying to read it into the catch-all that, even Federico says, “merely” specifies things in the statute that are made defenses. But, section 101 is not made a defense by this title. Instead, it specifically points to other requirements and conditions. Again, if this were easy and clear, Congress would have put in 101 “it shall be a defense to patent infringement that…” or put 101 in Section 282.

    So, tell me why I am wrong.

    Let me get rid of some easy ones: no court I’ve found has ever addressed this issue. I think it’s pretty simple, but there you go. Second, don’t conflate patentability with infringement defenses. There are lots of things that can affect patentability that aren’t in 282. Third, 282 is exclusive: if you want so suggest that it’s not, you (a) have to say “Congress enacted a specific statute laying out defenses, but it’s just a guide” which is not in my view defensible; and (b) it says “shall be defenses,” not “may include” or somesuch. Third, this is a relatively new “defense.” I can’t say I’ve scorched the earth, but in looking at CAFC cases it has only been raised a few times.

  23. 44

    Anon, if you have that post, please post a link – in running a search on “a new light” I got a lot of stuff. I haven’t read it and so would cite to it. But, I’ve never seen it so I’ll ignore your snarky comment!

  24. 43

    WCG, too fun!

    Anon, I’ll have to read New LIght’s post… If I can find it. You got a link?

    I’ve sent a short piece to Dennis for the main page as this seems to belong there.

    BUt I’m only relying on text, guys, no canons, no nothing. If you want to get to 101 being an invalidity defense, you’re going to have to go there. I am just using the text. And that’s the problem.

  25. 42

    I see you employing the statutory constuction principle “expressio unius est exclusio alterius.” As I look in the book used in Professor Creswell’s class (yes, him) and I see in the 1973 case of Nat’l Petroleum v. FTC, the DC Circuit held that this maxim was increasingly considered unreliable.

  26. 41

    Hanging on David, but note:

    “that we don’t have (a) express statutory language covering it or”
    – just like the IMPLICIT radings of the judicial exceptions…

    “(b) a case squarely explaining why it’s covered.”
    – because patent law does not usurp other law (See eBay), and

    “And you read it here first.”
    – actually no, I read it on the main Patently-O blog first by A New Light – let’s give credit where credit is due.

  27. 39

    Well, that is a “I want this to be a defense and so I’m going to do it no matter what” approach. I’ve got no dog in this hunt, at all. But I think there’s a serious problem with using it as invalidity.

    But hang on.

    By the way, it’s like 4 am out there if you are a WCG!

  28. 38

    Then, forget the word “invalid.” Instead of invalidating the claims, just assert a lack of jurisdiction due to a lack of patentability. Lack of patentability divests the court of its jurisdiction due to a lack of a case or controversy because an infringement action would no longer be possible for the court to entertain.

    Interestingly, if a determination of patentability is made as a question of law, then the actions of infringement/non-infringement/validity/invalidity may not have to be addressed (until a further remand from the Fed Cir).

  29. 37

    WCG, I’d have a hard time with that, but hold on.

    Interestingly, this is actually a fairly “new” defense, and that, coupled with the easy confusion between patentability v. invalidity, and you can see how it would slip in without analysis.

  30. 36

    Maybe the defense is technically jurisdictional — a lack of case or controversy that is a defense outside the realm of the Patent Act per se.

    The presumption of validity may be rebutted if the claims do not meet the patentable subject matter standard. If 101 is not met, the invention is not patentable (i.e., the claims are invalid); since a claim of infringement cannot be maintained without valid claims, there is no case or controversy and no jurisdiction for which the court can entertain the matter.

  31. 35

    Hang on.. going to lay it all out.

    But, notice that we don’t have (a) express statutory language covering it or (b) a case squarely explaining why it’s covered.

    What we have, I think, is a litigable issue at best. I’ll explain why later today I think there is no defense for patentable subject matter. It’s a very simple argument; the counter-argument, well, it’s hard, very very hard. I’d say impossible based on the text, but I can think of some odd doctrines that might work, but you’d have to start off “I want this to be a defense, and so how do I do it” rather than “did congress enact text making it a defense.”

    And you read it here first.

  32. 34

    Very Interested,

    I will disagree with BOTH of your last two responses.

    First, you state “can only reasonably be read to mean ‘not infringing’,” but this violate a canon of construction because the phrase directly in front of this one deals expressly with non-infringement. Your proffered construction then would nullify one third of the list in (1). There is nothing that presumes a valid patent in the prhrase – you are inserting an assumption. There is a critical difference in statutory construction.

    Second, the claim in Bilski was ruled ineligible because it was abstract. Yet The claim is clearly a process (likewise with Benson). Further, claims that can be completely done in one’s mind are termed abtract, and yet, no one in their right mind would say that such are not processes. Also, natural phenomenon could in fact be new, and would still fail the judicial exceptions. You assume (there’s that word again) a steady state in the universe and that nothing new by nature can happen. You make this assumption with no support.

    In other words, the Supreme Court judicial exceptions (even the term “exceptions” itself indicates restrictions rather than elaborations) cannot be found in the language of 101. The Court has clearly acknowledged this and admits that their reading can only be taken as “implicit.” This is merely a politically correct way of saying “added.”

    I would also point out another canon of statutory construction in that when a statute lacks ambiguity, a Court does not GET to add elaborations. The statute of 101 is broad and inviting. It is not ambiguous. In proper construction then, A New Light was correct (his was the first writing I saw that put forth this) – all of the Judicial Exceptions are ultra vires.

  33. 33

    “Absence of liability does not necessarily mean a valid patent.”

    The actual language is “absence of liability for infringement.” 282 presumes that patent is valid. As such, the “absence of liability for infringment” can only reasonably be read to mean ‘not infringing’ (i.e., not within the scope of the claims).

  34. 32

    “Notably, you would be questioning the basis of ANY of the judicial exceptions, which depend on an implicit reading of a statute that arguably has no ambiguity which which to insert the Court’s ‘implicit’ reading.”

    I disagree. The judicial exceptions could be read as simply elaborating on what is found in 35 USC 101. For example, natural phenomenon and laws of nature are not “new” and an abstract idea, per se cannot be a process, manufacture, machine or composition of matter.

    The argument here is that 35 USC 282 specifically listed the defenses to infringment, and 35 USC 101 is not one of them. 102/103 are labeled as conditions for patentability, 101 is not. 112 has its own language in 282. Finally, 101 is not “made a defense by this title.”

  35. 31


    You’ve hit upon something that the Courts and most posters have overlooked (ignored). 35 USC 101 is written very differently than 35 USC 102/103.

    35 USC 102 begins “A person shall be entitled to a patent unless …” Similarly, 35 USC 103 begins “A patent may not be obtained …” As such, both patents explicitly describe conditions by which the grant of a patent is NOT permitted.

    On the other hand, 35 USC 101 merely describes what is considered patentable subject matter. Notably, 35 USC 101 does not state what is considered unpatentable subject matter (i.e., subject matter than cannot be patented). As such, to the extent that a claim is ostensibly directed to a process, machine, manufacture, or composition of matter, then that claim should meet 35 USC 101.

    Your comments on statutory construction are dead on. Statutory construction arguments are very powerful with the Courts. If I’m a litigator, I’m going to raise that issue, and no matter the outcome, I suspect that someone will take it to the Federal Circuit. As you noted in one of your posts, this issue hasn’t been addressed by either the Federal Circuit or SCOTUS (as far I know). As such, I would not be surprised if this issue gets raised to the Federal Circuit within a year and to SCOTUS within a year or two.

  36. 29

    “absence of liability for infringement” would mean the patent was valid, but not infringed. Ergo, it’s out, unless you think it’s a non-infringement defense? I can’t make that work but would love to hear the thoughts.

    So, you think I’m overturning case law? Which one held that the Patent Act authorizes the defense? I’ve looked, and everyone assumed it, but did not decide it. Read the Denver case. This happens all the time in state courts, etc., and in federal courts when people assume things without reading the statute.

  37. 27


    I’m not sure which thread it is on, but a poster named A New Light wrote a substantive post discussing Supreme Court authority and patent law. I believe it was in the last six months stemming from discussions of holding/dicta and the judicial exceptions, specifically related to a conversation as to whether Product of Nature was actual patent law.

    Your comment here reflects the tone of that post, albeit muted to the question of defense. But the same logic is being applied: patent law is not made up of judge-made common law.

    The repercussions of the logic are far greater than the single topic of this thread. If fully accepted, you would be overturning the concept of stare decisis in all court cases involving patent law (Europe style?). Notably, you would be questioning the basis of ANY of the judicial exceptions, which depend on an implicit reading of a statute that arguably has no ambiguity which which to insert the Court’s “implicit” reading. Quite arguably, just as the defense issue returns to the statute, so would patent eligible subject matter, and the Court-created exceptions would be considered ultra-vires.

    You have a goose and gander situation and the logic of one feeds the other. Thinking along the lines of Pandora’s box, is this something you really want to open?

  38. 26

    So here we go, one step at a time:

    A patent shall be presumed valid. Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim. Notwithstanding the preceding sentence, if a claim to a composition of matter is held invalid and that claim was the basis of a determination of nonobviousness under section 103(b)(1), the process shall no longer be considered nonobvious solely on the basis of section 103(b)(1). The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.

    The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:

    (1) Noninfringement, absence of liability for infringement, or unenforceability,

    (2) Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability,

    (3) Invalidity of the patent or any claim in suit for failure to comply with any requirement of sections 112 or 251 of this title,

    (4) Any other fact or act made a defense by this title.

    We can eliminate (3) easily, because 101 is not 112 or 251 (putting to the side whether patentable subject matter is not in 112).

    We can eliminate (2) because unlike 102 and 103, section 101 is not specified as a condition of patentability.

    It’s hard to say that it’s non infringement — makes not a whole lot of sense.

    So we’re left with 4. However, nothing in 101 says that it is “made a defense” by the statute. More on that later.

  39. 25

    No, Anon, not reading the last phrase out at all. But it doesn’t say “anything in the patent act” it says “J(4) Any other fact or act made a defense by this title.” I”m reading the act now, as I said I would, and some things are made defenses, and most aren’t. Read 101. It’s a very permissive statute that says nothing about validity, at all.

    Once you’ve written a book on statutory interpretation, you get a little sensitive to words — they matter. This is not the common law.

  40. 24

    No David, you are still stretching for an issue that is not there.

    In fact, YOUR way of reading eviscerates the plain meaning of (4) and makes that language superfluous – a big no no in statutory interpretation.

    The point is that the statute may be written poorly with the reference to part II, but it is not ambiguous at all that part II references the ENTIRE statute. The only clear takeaway is that having a patent “valid” entails more than patentability (it includes patent eligibility), and that while patentability may be a part II item, the whole larger picutre is STILL involved through the “implicit” and open invitation to the entire statute as mandated by 35 USC 282 (4).

    This IS the “show me” that you are asking for. I cannot make you open your eyes to see it. That is up to you.

  41. 23

    I’ve thought about that, too, but you run into a number of counter, settled, statutory interpretation issues. Most especially if you read it that way, then it eliminates the phrase “condition of patentability in part II” out of the statute. Congress deliberately labeled only some things as conditions of patentability (102, 103), and didn’t label 101 that way, and deliberately said in 282 that only “conditions of patentability” were invalidity defenses.

    That language becomes superfluous –a big no no in statutory interpretation. I understand I can strain to make it a defense, but I’m still left with “show me” but I need to read the posts in detail, tomorrow, and lay it out a bit more. i’m also really curious if Federico said something.

  42. 22


    Another avenue: you might consider the sentence of “(4) Any other fact or act made a defense by this title.” to be an open ended tie to 101.

    Just as with the judicial exceptions, the Court does not say that it itself is writing law, but that the Court is finding the authority IMPLICITLY written in the words that Congress used.

    As you say, the statute matters, but the courts have tied the authority to the full statute and not just 35 USC 282 (1), (2), and (3).

  43. 21

    Show me in Prometheus where a party raised the question. It’s like saying “someone sued for fraud and won ten years after the fraud occurred, so how can you say there’s a 4 year statute of limitations.”

  44. 20


    I simply don’t understand how, after Prometheus, you can say that patentable subject matter is not a defense to an infringement suit. The express holding of the case was that the patent was invalid under 101. That was not dicta and it was a decision on validity not patentability. I would further argue that the outcome of Prometheus implies that the Supreme Court considers section 101 to be emcompassed by 282 and I don’t see how it would be if it does not set out conditions of patentability.

  45. 19

    Sorry not “doesn’t make double-patenting” a defense, but doesn’t make patentable subject matter” a defense.

    Need coffee!!

  46. 18

    I’ll read through, later, but so far, (1) the statute doesn’t make double-patenting a defense; (2) those who want it to be have to show it is.

    What I may not be explaining very well is that in a statutory context, the latter point is very, very hard. There are many things that affect only patentability, not validity. This could be one of those.

    I”ll note that I think the notion that ownership isn’t express in the statute is wrong, though – the statute gives a cause of action to a “patentee.” A patentee is defined term. That’s how standing got developed. Courts have run with what “patentee” means, but the requirement is built into the statute.

    But, let me deal with the big picture: 282 doesn’t list 101 as a defense. it doesn’t. Congress chose to list “conditions of patentability” and 101 is not one — 102 and 103 are. It chose to list 112, not 101. So those who want to read the defense into the statute have, under LONG settled US Supreme Court decisions, a very hard argument. Saying “well courts have read it that way for along time” doesn’t cut it. And, be sure you keep validity — a defense to infringement — distinct from patentability. The patent act does that; we need to, too.

    What I wonder is what federico says about the “conditions of patentability language.”

  47. 17

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    I would have ordered those “101 type defenses” a bit differently:

    1) Judicial Exceptions
    2) Utility
    3) True Owner

    In the words of Justice Breyer, The Big Three underneath the judicial exceptions:

    The Court has long held that this provision contains an important implicit exception. “[L]aws of nature, natural phenomena, and abstract ideas” are not patentable. Prometheus, slip op 566 U. S. ____ (2012) at 1.

    So under 1) we have:
    A) Laws of Nature
    B) Natural phenomena (herein lie Products of Nature)
    C) Abstract Ideas

    Under 2), the actual phrase is a compound phrase: “new and useful,” and so does have shades of meaning different from (albeit possible to overlap) the novelty meaning of “new” alone.

    Of course, this phrase as to do with substantial utility (for example, the utility of a thing must be more than just an anchor). I would point out too that the separation of this item from the judicial exceptions is where several vocal people are confused in their efforts to implement a time-dependency, or “state of being known” in the judicial exceptions. Clearly, trying to do so is legal error.

    Under 3), there are at least two interesting concepts: inchoate rights and multiple inventorship (the analogy of several inventors gathering at the starting line of a race is apt); and exactly who FIRST owns an invention.
    A) interesting questions have circulated over possibility of multiple inventors and the AIA first to Invent set-up. The easy way to think about this is that an inventor (even multiple inventors) has an inchoate right upon inventing. The inchoate right must be developed into a full true right and this is done by whatever rules Congress decides to implement. An inchoate right on its own has no force of law. Under the AIA, inchoate rights can lead to patent rights. Inchoate rights can also lead to Prior User Rights.

    B) Who first owns an invention. As the Stanford v Roche case illustrates, inventorship first inures in the actual inventor (note Ned, this is different than the NAMED inventor). Standing can be defeated if the chain of inventorship can be broken and the party seeking its place in court is not standing on the correct side of the broken chain. Such a party simply has no right to enforce the patent in concern. What the AIA did in this instance was to merely say that any such patent is not automatically invalid. The AIA did not create a condition that an improper holder of a valid patent has a right to be in court to enforce the (still valid) patent.

    The Minor One:

    1) Double Patenting (minor, as this is more a procedural item as the first patent (over which the double patenting is based) does contain the allowable rights, and double patenting is more in line with simply making sure the “limited times” aspect is kept.

    And finally, in a nod to another ongoing conversation, a person’s place in court can be defeated if a patent fails to actually be a patent (outside of the Section 282 listed validity defenses). Since 101 envelopes the entire title in its last line, one has no true patent to enforce if the patent is granted on ineligible subject matter. Any such patent is a nullity, so invalidity as that legal term entails, doesn’t even get out of the starting blocks.

  48. 16

    And, Professor, I have heard the PTO believes that despite the repeal of 102(f), the condition of patentability related to inventorship, a patent that does not have the right inventorship is invalid…. drumroll please ….under 101!

  49. 15

    Professor Hricik, can you think of a 101 type defense that cannot be structured as a 102/103/113 defense? Here are the recognized 101 defenses:

    1. Double patenting
    2. Lack of utility
    3. Law of nature or abstract
    5. Product of nature

  50. 14

    “Anon, standing is constitutional and is built in to the statutory definition of patentee.

    Courts aren’t free to make up statutes.”

    David, that’s exactly my point – there are things above the statutory rendtions (no matter how you read them).

    In a sense, you are rearranging deck chairs on the Titanic by focusing so closely on validity and section 282. Section 282 simply is not the be all and end all and cannot conquer other reasons for challenge – even reasons that tie back into the other parts of the statute. It seems a bit obtuse to ignore the fact that the 282 statute cannot override basic law, yet more than one person seems intent on clsoing their eyes to the bigger picture. Can I convince you to open your eyes to see the bigger picture?

  51. 13

    So, to tie it all together: congress could have said the entirety of the patent act, or a part of it, were defenses to invalidity. Instead, it cited very specific portions — “conditions of patentability” (read 102, 103); and a few specific others. No 101, and 101 is not a “condition of patentability.”

    While some think judges should make up statutes as they go, the Supreme Court strongly says otherwise. And there is not “but not in patent cases” exception.

    So, where is the defense here? Ya’ll need to try harder. I’m still not convinced.

  52. 12

    Anon, standing is constitutional and is built in to the statutory definition of patentee.

    Courts aren’t free to make up statutes.

  53. 11

    Btw, remember that a lot of the older cases were patent ability questions, not validity cases. Different statutes.

  54. 10

    Old in house, there were sixty years of cases like that which the supreme court rejected. When dealing with statutes the language matters not dicta in a case

    Ned, that’s a reason why I think this matters–if it is a 102 issue it hangers ow you read it

    So far, I don’t think 101 is a defense. Maybe it gets pulled in under 102 or 112 somehow. But show me text of the statute….

  55. 9

    In the beginning, O’Reilly v. Morse, premised its holding regarding the ineligibility claim 8 on the requirement of the statutes to provide a written description of the invention and of ways of making and using. Since this was not required when claiming principles in the abstract, the Court held the claim 8 non statutory.

    For some reason, the Court now believes the exception to eligibility arise under 101, when they arguably arise under 112, p.1, and p.2 in the case of abstract concepts and laws of nature; and arguably under 102/103 in the case of known products of nature.

    Now, if one looks at 282, one sees that 112 (as well as 102/103 and 251) is specifically included as grounds for invalidity, but not 101. Perhaps this was an effort of the drafters of the ’52 Act to focus the Supreme Court back on 112 (or 102 or 103) rather than 101 (that had been intentionally split into four section (101, 102, 103 and 112 in the ’52 Act), but it seemingly failed.

    Now we have Prometheus. The government made a strong case, in my view, that the problem with the claims in that case was a problem under 102, not 101. The court rejected that notion, saying patentable subject matter had long been a 101 problem.

    But, they were wrong in that assertion, demonstrably wrong. Simply read O’Reilly v. Morse for the right statute.

  56. 8

    Here is a direct quote from the Federal Circuit in the Aristocrat Tech case that you cite in your post:

    “It has long been understood that the Patent Act sets out the conditions for patentability in three sections: sections 101, 102, and 103.”

  57. 5

    The Aristicrat Tech. case specifically mentions “patent eligibility” under 101 as a “condition for patentability” to be considered under 282.

  58. 4

    Does 282(2) not support a defense of invalidity as not meeting the requirements of 101? 282(2) mentions the entirety of Part II (Sections 100 through whatever).

  59. 3

    Sorry, I don’t understand the way you are trying to read the patent act. I think you are trying to read more into it than is there in order to arrive at a constitutional question (and we both know that courts will run in the opposite direction – avoiding constitutional questions even if they have to resort to tortured statutory constructions).

    My point was that there is more to beng able to be in court than having a valid patent, or conversely, defending with only the statutory validity defenses.

    There is more “defenses” available (and those arise outside of patent law) to a defendant (for example – and the subject of my side comment above – standing).

    Yes, a 101 “defense” does arise from the the patent law, and yes, the 101 “defense’ may not be one of the statutory defenses, but I would posit that you do not have a case or controversy if it can be shown that the subject matter of the patent does not pass 101.

    There is nothing in patent law that says that traditional defenses are not allowed in a court case. The statute does not exclude all other defenses.

  60. 2

    If you have a patent, you and if patentable subject matter is not a defense, then you have a case or controversy even without patentable subject matter, I think. If it’s not a defense under the statute, it’s not a defense, in other words.

    Query: is the patent act constitutional if read this way?

  61. 1

    At the risk of driving this thread off the road (with particular responses in mind), might a violation of 101 raise other legal positions outside of the typically considered and specific to patent invalidity defenses?

    Do you have a case or controversy if in fact you have no patent to enforce (based on a failure under 101 to include patent eligible matter in your claims)?

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