Random bit: Textualism, the Patent Act, and Section 101

I still need to post my view about how to predict the Supreme Court's view on 101 (it turns on two variables), but in preparing for class, I'm reading Pfaff.  Over and over again, the court talks about the text of the act, and how "nontextual arguments" should be rejected.

I can't wait to see this issue of whether 101 is a defense resolved…

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.

21 thoughts on “Random bit: Textualism, the Patent Act, and Section 101

  1. 21

    I’d have to go look. The word “patent” is singular in 103, so I am not sure why you’d ever get to 101 in the analysis, but I’d have to go look. But I also wonder if it is really a “litigation defense” as it is a limitation on patent term? It would be interesting to see the textual development. But, whatever it is, my point is not that.

  2. 20

    My understanding was that the basis for OTDP and DP in general was the text of 101, specifically that a person may obtain a patent (emphasis singular) for their invention. So DP and then OTDP were judicially created to prevent someone from obtaining a second patent on the same invention. But because OTDP is not based on a condition for patentability, and arguable is not a fact/act made a defense “by this title,” seems like it fails as a litigation defense for the same reasons as a subject matter eligibility challenge under 101.

  3. 19


    There is a soliloquy on that – check the congressional record.

    As to Pennock, are you sure you want to open that can if worms? You know we have very different understandings about what that case means (and you should understand that the AIA validates my views in large measure).

  4. 18

    anon, can you provide a decent explanation, then, why the new 102 reads like the old 102(b), leaving out only“in the United States” and adding the otherwise clause?

    The original statute, 1790 Patent Act, read, in Section 1, “not being before known or used” that was later, in Pennock v. Dialogue,construed to mean publicly known or used. Why in the world would this original phraseology notbe sufficient assuming universal prior art?

  5. 17

    Sorry Ned, but 102/103 was explicitly overhauled



    Even look at the titles of the sections and note the explicit deletions.

  6. 16

    anon, you behave as if the patent statutes ALL fundamentally changed in‘52. They did not. While don’t you read Ariad, just for example. That case traced the written description requirement to the early statutes and SC cases. Nothing changed in substance from those early days.

    That is why I am confident that ON SALE will mean the same thing in AIA. The meaning of ON SALE is not the same as PUBLIC USE, and does not require PUBLIC USE or PUBLIC KNOWLEDGE as part and parcel.

  7. 15

    Need I remind you that the pertinent Supreme Court parts you have relied in the past (in conversations concernign Judge Rich) were dicta?

    And no, Ned – the Supreme Court’s statutory reliance is not the same – that’s the critical part. The Supreme Court “couldq woulda should” relied on the same statutory section, BUT THEY DID NOT.

  8. 9

    Not sure how you view this particular point as a debate between you and I Ned.

    I have long (and repeatedly) corrected you when you try to conflate 101 and 102/103/112 – 101 is not driven by timing policies.

    That is part of the reason why I nailed the Myriad decision.

  9. 8

    David, it is not even a proper grounds to deny a patent in the first place.

    Prior to ’52, claiming laws of nature and principles in the abstract rather than applications thereof was thought to be a problem under 4888 (112). That is the statute (or its former incarnation in section 6 of the Patent Act of 1836) was the statutory basis of the holding of Morse.

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

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

    Indeed, if the eighth claim of the patentee can be maintained, there was no necessity for any specification, further than to say that he had discovered that, by using the motive power of electro-magnetism, he could print intelligible characters at any distance. We presume it will be admitted on all hands, that no patent could have issued on such a specification. Yet this claim can derive no aid from the specification filed. It is outside 120*120 of it, and the patentee claims beyond it. And if it stands, it must stand simply on the ground that the broad terms above-mentioned were a sufficient description, and entitled him to a patent in terms equally broad. In our judgment the act of Congress cannot be so construed.” 56 US 62, at 119-120.

  10. 7

    David, and if you have followed at all the long debate between anon and myself on this issue, you will note that Frederico did not understand 101 to be a condition for patentability and did not intend to create a new basis for denying patents or holding them invalid when he sundered 101 from former 4886/ and created an new 102, adding to it the prior art parts of 4886 and the defenses to validity set forth in 4920 that together created the substantive grounds for denying a patent or holding it invalid. (See also, 4888, the analog to 112).

  11. 6

    Check the proposed fix that adds an new 106 to the statute directed to obviousness-type double patenting. I think a lot of people agree that they do not want 101 being an independent basis for prior art.

    (Recall my discussion many times of 102(f). Kappos issued a decree that we do not need to bar patents filed on inventions of others under 102 because 101 makes such prior art. I think wiser heads have figured out that is a mistake, because if one can bar a patent because someone else invented the subject matter first under 101, what does that imply?

  12. 4

    My theory is that 101 is not a validity defense.

    To evaluate whether OTDP is, I’d have to do more analysis. As to your question, the text might support it (I wonder why the court originally found it a defense?), but I haven’t looked or given it a thought. Further, among other things, it may be that, regardless of the text, by acquiescing in the interpretation, Congress has allowed it to become one. The same cannot be true for 101: no court has addressed the issue, and only since 2009 has it even been applied as a validity defense.

    If your point is, “gee, other things have become defenses, so this can too,” that in my view raises courts above statutes.

  13. 2

    Also, the Court is extremely fond of its ‘implicit’ powers and will not give those up.

    (reference Prometheus and the dead letter comment being to the judicial exceptions)

  14. 1

    When it comes to 101, I would not hold my breath with the Supreme Court.

    Perhaps the best illustration of this is the warning about treating 101 as a nose of wax given by Justice Stevens – who nonetheless attempted exactly that.

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