Judge Michel’s Brief in CLS

I’ve had the privilege of working with former Chief Judge Michel on a presentation or two, and his brief in CLS (here) does a great job, I think, of raising up the arguments that I’ve made (and I won’t make again — I promised) about how 101 is not part of patentability, but to do so in a very palatable way for the Court.  We’ll see.

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.

22 thoughts on “Judge Michel’s Brief in CLS

  1. 3

    Michel’s brief was, to say the least, pathetic. His brand of mechanical, procedural approach, is no different than Rich’s, and is, in the final analysis, unacceptable. It leads to the patenting of the ineligible because the important questions never get asked.

    1. 3.1


      Ned is so predictable. Anything (and quite literally anything) that agrees with Ned’s agenda is Einsteinian brilliant, while anything that disagrees is “to say the least, pathetic.”

      Ned, you continue to ignore the law. You continue to ignore what each of the three branches of the US government have indicates.

      Talk about your mechanical and procedural approach, you charge full steam ahead on your Crusade no matter what has happened in the real world. Final analysis? LOL – no thank you for the final analysis of “does it match Ned’s desired end state?”

    2. 3.2

      The “all elements” “claim as a whole” approach is little more than a determination whether a computer is recited.

      Move on to 102. There, see if what is claimed is obvious.

      Where is it asked, then, whether the new is even eligible?

      1. 3.2.3

        anon, Is there an eligibility determination in 102, Ned? (I presume you meant to say 102/103/112.)

        Not today. And that is why everybody who advocates removing the analysis for ineligible subject matter from 101 and simply moving on to considerations under 102/103/112 does nothing more than elevates form over substance for the very purpose of patenting ineligible subject matter.


          Wrong Ned – what you seek is a conflation and a re-writing of the actual law.

          There is no such “elevation of form over substance.”

          No one is advocating removing the analysis of ineligible subject mater from 101.

          No one is advocating any such purpose of patenting ineligible subject matter.

          What is being advocated is an analysis that is in line with the actual law of 101 as written by Congress – you know, the branch of the government duly appointed with the power to write patent law as determined by the Constitution.

      2. 3.2.4

        Yeah, Michel is a genius.

        “Software is way less dependent on patents—maybe not dependent at all except in certain areas … if software is less dependent on patents, fine then. Let software use patents less as they choose.”

        Yup, didn’t you know that you can simply choose not to be extorted and attacked by the patent system?



          You are too clever by half – if you do not want to use the patent system and still want to protect yourself from others who do want to use the patent system there is a very easy way: just share your invention in a publication.

          Oh wait, you mean that you do not want to use the patent system AND you do not want to share your invention?

          In that case, reap what you sow. Stop whining that someone else is willing to share and obtain the Quid.

  2. 2

    I thought his point was clear: don’t break the claim down because nothing is patentable if you do it that way; don’t let 101 start doing what it wasn’t intended to do — and what 102/3/12 were meant by Congress to do, and to come up with something objective and administrable (aka, 103….).

    There is no way they can do those things — perhaps that is his message.

    1. 2.1

      Fair enough, David. Thanks for the reply. And on reflection I suppose it might be thought presumptious or impertinent to suggest to the court how 102 and 103 might be bent to the task that 101 is at present called upon to perform.

      When I wrote my first comment I was just thinking 1) what Margaret Thatcher said of one of her ministers, David Young, namely that other ministers bring me problems but David is different; he brings me solutions and 2) nothing in the way the US Courts do 103 up to now shows any sign of being able to distinguish cleanly between non-obviousness in the useful arts and non-obviousness in all the other arts, including trading, taxation, accounting.

      1. 2.1.1

        Yes, a solution would be good. I have none, though I do believe Chief Judge Rader’s focus in CLS was pretty close to the mark for 101; perhaps courts/pto/congress need to also tweak 103-analysis.

        My own thought is: the court created this problem rather than letting Congress — who can hold hearings and consider policies, etc., — do its job. But I’ve made that point far too many times here!


          I disagree Prof. Hricik – you have not made that point too many times.

          The point needs to be made as many times as it needs to be made. Since the clouds continue to be spread, the point continues to be made.

  3. 1

    My appetite whetted by David’s encomium, I read the Brief with high anticipation but found myself totally disappointed because all it does is to beg the crucial question, namely whether a “business” as opposed to a “technical” process falls within the “useful arts”.

    In Europe, the UK sorts under its 101 provision, while at the EPO the sorting is accomplished under its 103 provision, Art 56, EPC. I can see that Paul Michel is with the EPO, in disapproving the UK approach, but in that case shouldn’t he offer the SC an alternative roadmap if he wants the SC to burn the one that the courts of the USA use at the moment?

    This Amicus tells the SC that it is hard to sort processes into business or technical, but offers no suggestion to the SC how that sorting might be accomplished other than as at present, under 101, by analysing the claim at bar to identify the “contribution” on which patentability is predicated.

    1. 1.1

      In the other thread we see Paul Cole posting today to the effect that Alice’s claimed contribution to the state of the art is arguably “technical” as understood at the EPO, and a solution to a technical problem of long-standing. So then, at the EPO, eligible and patentable, perhaps. Not easy there either, it seems.

      Note to the SC: clarity is needed now, to get inventors and their advisers, and not forgetting the USPTO, out of a spreading cloud of fuliginous obscurity.

      1. 1.1.1

        Or to fess up and say “wow, we’re making up stuff as we go and that’s not our job.”


          Each should do the “Job” allocated to it? The SC is quite good at delegating jobs to the Federal Circuit, I believe. But have not the Framers already told the SC what they want: patents (a restraint on free trade) confined to the useful arts and definitely NOT creeping beyond the useful arts?

          Seems to me it is exactly the job of the supreme amongst courts, simply to tell the lower courts to use their best endeavours, faithfully to execute exactly that specific instruction in the Constitution. Has it yet executed that very simple task? I don’t recall.


            You missed the point MaxDrei that Congress (whom the Constitution gave the job to – and not the Court) has already indicated that business methods are within the Useful Arts.

            If you want to stop spreading clouds, you might recognize some of the basics over here.


              We’ve been over this issue already, anon. Does the Congressional caveat tell us:

              1. For the avoidance of doubt (bearing in mind what the court said in SSB) directing a claim to a business method is not a sufficient reason to deem it per se ineligible;

              or does it tell us:

              2. Directing a claim to a business method is all you need to do to render it eligible;

              or neither of these?

              I ask because there is an ocean of yet to be navigated space between those two extremes, which I suggest Congress is delegating to the courts to explore.

              Meanwhile, as you know, the EPC started in 1978 to explore this space, and it still hard at work, on a job which, for as long as technology continues to evolve, will never be complete. Europe patents business method claims, whenever the subject matter of the claim uses technical means to solve a technical problem. Not all business methods get through, but quite a few do. I expect to see much the same happen in the USA, in the fullness of time, when the courts engage with the key question, what it means to allow patents in the Useful Arts, but not otherwise .


              which I suggest Congress is delegating to the courts to explore


              This also misses the point of what happened in 1952.


              Further, you also miss the fact (as recognized by Paul Cole) that Useful Arts is broader than technical arts.

              I am not sure why you have such a hard time accepting this difference in our laws.


              not a sufficient reason to deem it per se ineligible;

              (sigh) – again with the dust kicking and the conflation.

              Where is this notion of “per se” anything coming from?

              Look at 101 with some clarity.

              There is a statutory category aspect.
              There is a utility aspect.

              Take your time and step through each aspect on its own – with clarity.

              Just because you get through the statutory category aspect does not mean that you meet the utility aspect.

              All of this conflation is just smoke and mirrors to import philosophical nose of wax mashing.

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