Kalo on the main page, and some thoughts learned from Jonathan Turley

If you read the discussion on the main page, you’ll miss the key point:  when Funk Bros. was decided, there was no section 102 or 103.  There was (what is now only) 101.  For a long time, however, the courts construed the word “invention” to require more than just novelty, even though “new” and “useful” were the only words in (what was then) 101.

In 1952, Congress did its level best to destroy the word “invention” and replace it with 102/103.  Read Chief Judge Rader’s opinion in CLS Bank.

So, Kalo was deciding the substantive meaning of a word that, after 1952, should have   none.

I hate this mess the supremes have made by not reading the statute!

Which brings me to the next point, quite related.  I had the great pleasure of listening to Professor Turley speak on the Supreme Court the other night at our IP Inn here in Atlanta.  He made several wonderful points in describing why we should expand to 19 Justices (he persuaded me, but that’s beside the point).  Among them, he said that wherever he goes lawyers complain that they cannot implement the Court’s decisions.  That statement, of course, reverberated greatly with 101 “jurisprudence,” where we get silly things like the Court saying the rate at which the body metabolizes a man-made drug is a “law of nature,” or that the phrase “whoever invents or discovers” a new method using an old product doesn’t mean what it says.

So, there you go.  I’m looking forward to CLS Bank.  Maybe then Congress will say “we really did mean what we did in 1952.”

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.

15 thoughts on “Kalo on the main page, and some thoughts learned from Jonathan Turley

  1. 3

    There is a constitutional avoidance doctrine, but it is a rule of construction with its own rules that the courts are not following.

    This is just maddening to me because, for example in Octane, the Court — rightly — did what it is supposed to do and look at the text (and then to an extent, purpose and intent). Scalia bailed on the footnotes that went into purpose and intent.

    Where is that reasoning here?

  2. 2

    Prof., §103 says to compare the claimed subject matter with the prior art to determine the differences, and on that basis determine obviousness.

    There’s nothing in the statute that tells one to not include in the differences, subject matter that is not eligible under §101.

    In Judge Rader’s opinion, he quoted the portion of Morse case which actually says that one should exclude the principle, the law of nature, in determining whether the remainder was an invention. The Supreme Court in Kalo said in determining patentability that one would have to discount the law of nature in that assessment. The Supreme Court said the same thing in Flook with respect to excluded subject matter. But, I detect nothing in Rader’s opinion that would suggest that a repurposed §103 would, or should exclude ineligible subject matter in the assessment of invention.

    That is where Rader’s opinion, conceptually, breaks down.

    Now consider what Flook said at footnote 15,

    “First, respondent incorrectly assumes that if a process application implements a principle in some specific fashion, it automatically falls within the patentable subject matter of § 101 and the substantive patentability of the particular process can then be determined by the conditions of §§ 102 and 103. This assumption is based on respondent’s narrow reading of Benson, and is as untenable in the context of § 101 as it is in the context of that case. It would make the determination of patentable subject matter depend simply on the draftsman’s art and would ill serve the principles underlying the prohibition against patents for “ideas” or phenomena of nature. The rule that the discovery of a law of nature cannot be patented rests, not on the notion that natural phenomena are not processes, but rather on the more fundamental understanding that they are not the kind of “discoveries” that the statute was enacted to protect.[15] The obligation to determine what type of discovery is sought to be patented must precede the determination of whether that discovery is, in fact, new or obvious.

    Footnote 15: “The underlying notion is that a scientific principle, such as that expressed in respondent’s algorithm, reveals a relationship that has always existed.

    “An example of such a discovery [of a scientific principle] was Newton’s formulation of the law of universal gravitation, relating the force of attraction between two bodies, F, to their masses, m and m′, and the square of the distance, d, between their centers, according to the equation F=mm′/d[2]. But this relationship always existed—even before Newton announced his celebrated law. Such `mere’ recognition of a theretofore existing phenomenon or relationship carries with it no rights to exclude others from its enjoyment. . . . Patentable subject matter must be new (novel); not merely heretofore unknown. There is a very compelling reason for this rule. The reason is founded upon the proposition that in granting patent rights, the public must not be deprived of any rights that it theretofore freely enjoyed.” P. Rosenberg, Patent Law Fundamentals, § 4, p. 13 (1975).”

    It is clear from this passage that the newness requirement is absolute while the inquiry under §103 is only with respect to the prior art. The passage concerning §101 “new” from Rader’s opinion at 1294 fails to recognizes this, instead latching onto some dicta from Diehr that attempts to erase §101 “newness” from patentability considerations. But in point of fact, this aspect of Flook has been consistently followed by the Supreme Court, particularly in Myriad which rested its holding on the “newness” aspect §101.

    If §103 were deemed to include an exception such that the differences between the claimed subject matter and the prior art could also exclude from that consideration ineligible subject matter except to the extent that the ineligible subject matter was shown to be applied to produce a useful end, it would be workable two fold the entire 101 jurisprudence into §103. But the reason we do not is because the statute is not written that way. The Supreme Court noted this in Prometheus.

    So where does that take us? It seems that the drafters of §103 back in the day either had another plan in mind, a one that was solely concerned with prior art, and that is the way the statute actually reads. For if they intended to also intended to exclude from the analysis of obviousness ineligible subject matter, they failed.

    1. 2.1


      How (if) are you including the ‘correction’ to Flook that Diehr presented? See Bilski.

      And please note that you (again) reference a footnote and leave out a critical direct quote from Flook. P. Rosenberg did not write actual law, and you seem to (again) over-read case law to make it fit your overall agenda.

      Any “fail” that you deem to be present may actually (and simply) be a fail of your own agenda.

      1. 2.1.1

        I am sure you must agree that if Diehr overruled Flook on 101 “newness” then Myriad overruled Diehr for the same reason.

        At best, it appears, the Diehr seems the outlier here, because the Court has consistently stated the reason that laws of nature, math, and products of nature are not the stuff of patents is because they are not “new” regardless that they are not known.



          Why would you use that word?

          You continue to struggle and kick dust.

          products of nature are not the stuff of patents is because they are not “new”

          The universe is not static. You appear to ignore this basic principle at every opportunity.

          At best, it appears, the Diehr seems the outlier here” You sound like Malcolm the Denier. Check his own favorite Supreme Court case of PrometheusDiehr is most on-point and is NOT changed (remember, the Court wanted no change in precedents in Prometheus).

          The Royal Nine have boxed themselves into a corner Ned.

          How will they write themselves out of it this time?

      2. 2.1.2

        I have, many times now, given you the direct quote from Mryiad. Should I again?

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

        Issue to be decided and a holding. This is no longer dicta.


          Once again Ned it is not the quote that I take issue with – it is your interpretation of the quote.

          I too have provided you the direct quotes from Benson, Flook, Bilski and even Alappat, and yet you refuse to accept what those quotes mean.

          Why is that?

          As to “new and useful” as a phrase – you do get that such is a phrase, to be taken together, right? You have played the “parse game” with your prior attempts at using the “useful” part of the phrase (forcibly – and wrongly) separated out, so why should I be surprised that you attempt to parse out the “new” part (also incorrectly)?

          But instead of getting on that same old merry-go-round, let’s see if we can contain your urge to run away, and hav eyou focus – here and now – on a singular concept:

          The universe is not static. You appear to ignore this basic principle at every opportunity.

          How about it Ned – care to address the fact that the universe is not static, and that the notion of 101 is not time-dependent? Care to address the hypothetical that I laid out with the mineral putinsite?

          Why so quiet?



            Go to 282. Read it. Where is 101 a defense?

            If you get past that…



              Prof. Hricik,

              In your mind, what exactly is covered in the scope of 35 USC 282(b)(4)?

              In particular, must any other section (of title 35) covered by such omnibus language particularly call out or identify itself as being “made a defense,” or is the possibility of any other section impinging on any notion of either elements of section (1) Noninfringement, absence of liability for infringement or unenforceability, or further elements of invalidity beyond those captured in sections (2) or (3)?

              If (4) is to be limited to what is ALREADY stated in 282, it becomes a nullity, which leads me to think that it must encompass a catch-all provision, and thus expand beyond a limited reading. The problem I readily admit to with this view is that such an expansive view also creates a risk of nullifying the words of the statute. Why bother with a detailed subset of (2) and (3) if the catch-all phrase of (4) sweeps in everything else in the title?

              (4) must mean something. It appears that it must mean more than just (2) and (3), but at the same time, does not “seem” to eliminate (2) and (3) by being all-encompassing.


              David, I have long agreed with your constructions. Before you joined us here, I was point it out to others. I even admonished Dennis at one time.

              I had to ask myself, what were the drafters of the ’52 Act really thinking when they restructured “101” into two parts, then added in the defenses to infringement to the new 102, excluded 101 from patentability/validity, and limited 103 to considerations of differences over the prior art? As a whole, the new structure seem to exclude any 101 based-defenses, for example, printed matter, mental steps and double-patenting, let alone law and product of nature, business method, music, training cats, or such. Could they have really intended that result?

              There is a doctrine – one must avoid reading a statute in an unconstitutional manner if possible. To read it literally in its restructure would lead to that result. Which is why I really wonder what they were thinking? Could it have just been a mistake?



              I will chastise you again for your mishandling of Useful Arts and attempted conflation with non-Useful Arts.

              You ruin any chance of being taken seriously by so injecting your own agendas into the discussion in such a slipshod manner.



              More misdirection and incompleteness from you (from points that I have presented to you many times over):

              Re: printed matter – it is the exceptions to the judicial doctrine of printed matter that are critical (noteworthy, not the judicial doctrine itself).

              Re: mental steps – Aside from Les (from whom I try to take his car keys every time he goes on his rant), NO ONE argues for claims that can be performed completely in the mind. Also, one of my favorite words comes into play: anthropomorpohication – machines really do not think.

              The absence of your response (and appropriate integration into the discussion) of these valid points that I have so often provided to you only makes clear that you are (yet again) running away. These valid counter points are not going to go away. They will be here waiting for you.


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