Procedure and 101: I haven’t ranted in a while.

I teach Civ Pro and have even written a book on it, so…

1.   A defendant has to plead 101 as a defense (if it is one, and you all know how I feel about the plain text of 282, but let’s not go there).

2.  The patent is entitled to a presumption of validity.

3.  If we get into “preemption” or “conventionality” or “inventiveness” the facts pop up pretty quickly (how do we know if it preempts a lot without knowing what non-infringing alternatives there are; isn’t ‘conventional’ and ‘inventiveness’ like obviousness? What time are they measured from — from just before the invention?)

4.  “Enough” and “invention” are not legal doctrines.

 

Rant over.

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.

4 thoughts on “Procedure and 101: I haven’t ranted in a while.

    1. 1.1

      Yeah, I know… so a judicial exception to a statute that, is itself, not a condition of patentability, is a condition of patentability that is not a defense in the statute… Oh, my.

    2. 1.2

      At least one Federal Circuit judge does not agree with the premise that 101 must be raised as a defense.
      I skimmed through the opinion and I don’t see where Moore directly (or even indirectly) addressed the issue raised by Professor Hricik.

      Moore cites the Supreme Court’s decision of Alice as standing for:
      Section 101 mandates not only that claims disclose an advance in science or technology—as opposed to an innovation in a non-technological discipline such as business, law, sports, sociology, or psychology—but also that this advance be both significant and well-defined.

      Ask a 2L in any law school where to find that in 35 USC 101 and they would all scratch their collective heads. I say a 2L because they (should) know the difference between statutory law and case law and they should be able to construe a statute. Judge Moore’s comments are an example of where a judge says “this is what Congress should have wrote, but they didn’t, so I’ll say it for them.” This is Moore substituting Moore’s policy position on the subject matter into the broad language of 35 USC 101.

      I find Moore’s statement requiring that the invention be both significant and well-defined to be very interesting. A significant invention, IMHO, represents a large leap over the prior art. As a claim drafter, those types of inventions can (and should) be claimed very broadly (i.e., with little verbiage). Moore’s “well-defined” comment appears to be requesting that the invention be limited to very specific embodiments, which you get by putting lots of words into your claim language. Thus, Moore is asking for broad inventions that are narrowly defined. If you are left scratching your head on that one, join the crowd.

      The problem with 35 USC 101 jurisprudence, as Hricik identified (although perhaps not specifically label), is the overreliance upon terminology that has little definite meaning. Take, for example, the term “an abstract idea.” If you asked me to draft a claim to an abstract idea, I definitely could come up with one. However, when someone tells me a computer is an abstract idea, I wonder if the term “abstract idea” has any definite meaning.

      As another example, when the Supreme Court writes “a court must first “identif[y] the abstract idea represented in the claim,” and then determine “whether the balance of the claim adds ‘significantly more.’” I ask what is “significantly more”? If I put that language in a claim, an examiner would reject it under 35 USC 112 2nd paragraph as being indefinite. Also, what is “the balance of the claim”?

      Another great example is the phrase in applying the §101 exception, we must distinguish between patents that claim the “‘buildin[g] block[s]’” of human ingenuity and those that integrate the building blocks into something more

      Building blocks of human ingenuity? You ask 100 people what are the building blocks of human ingenuity and you’ll 100 different answers. Ask that same question of the same 100 people 6 months later and you’ll probably get a substantial portion changing their mind. As such, who can really say what is a building block of human ingenuity and what is not.

      Until the Supreme Court realizes that 35 USC 101 was always intended to be a very coarse filter to be applied at the USPTO, this debate over what is patentable subject matter will never end. Businesses need to know what they can patent and what they cannot. Moreover, they need to know that if they get a patent that the rules of the game don’t change midway such that their technology is no longer patentable. Businesses can plan accordingly if they know the rules upfront (regardless of what those rules may be). However, this constant shifting of the (fuzzy) line serves only adds to the transaction costs (e.g., the lawyers).

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