Cracks in the 101 architecture?

I read the Ultramercial opinion and the hand-waving.  Here’s what’s going on:  the court realizes that if you read the statute literally, 101 is not a defense.  On the other hand, if you reason that, somehow, it is a defense, then it is subject to the presumption of validity.  To avoid that, the court is reasoning that this judicial exception to 101 is “different” than everything else — including utility, which is in 101.

Read.  The. Statute.  Judicial activism at its worst by the Supreme Court is causing good judges everywhere to ignore the Constitution.

And let me be clear:  there are doctrines — constitutional avoidance being one of them — which a court might be able to use to come up with some sort of rational reading of 101 to be limited by the Constitution, but that tortuous path is very, very different than this nonsense.

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.

32 thoughts on “Cracks in the 101 architecture?

  1. 7

    David — as an ethical matter, should you be publicly commenting on a case that was at the Federal Circuit when you were clerking there? And if my math is correct, was decided the last time while you were clerking for the judge that wrote the opinion?

  2. 6

    Interesting discussion.

    May I suggest that all those who wish to constrain 35 USC 282 to facts only take the time to read the statute and the accompanying notes (see link to )

    Validity itself is a legal term. If Congress wanted only facts to be presumed, they would have said so. They said something different.

    Further, the logic of the presumption applies to the full examination process and the theory that ALL aspects of that examination are carried out by the Federal Agency charged with that examination – ALL aspects, and not just the factual underpinnings. The property grant -including the legal analysis by the examiner- in its totality is what is presumed valid.

    Judge Meyer is indeed wrong in more than one way.

    Lastly, I do wonder if Jane is the reemergence of Jane Curtain of SNL fame…

    1. 6.1

      Anon, but it is demonstrably true that the patent office has not had a correct view of 101 on business methods since it removed the reference to Hotel Security from the MPEP in the mid-90s – a decision that presaged State Street Bank.

      Furthermore, in its argument the Supreme Court and Bilski, the government said that the only thing wrong with the Bilski claims was that they were not tied to a computer or to an article of manufacture! What? This view is entirely consistent with State Street Bank and not inconsistent with State Street Bank.

      One can see that the government had it completely wrong for a very long time. How can one give a presumption of validity regarding patents that are claiming business methods when the patent office had a mistaken view of the law for very long time?

      The same can be said of isolated DNA patents. For 30+ years the patent office issued these patents thinking that there was no real product of nature exception that was applicable. Because the patent office did not disallow these claims, they were not tested in court. It took a group of doctors to complain before the issue went to the Supreme Court, where we know what happened. Thus if a patentee has a claim to isolated DNA and asserts it in court, are we going to really believe that the defendant has to prove invalidity by clear and convincing evidence when the patent is invalid on its face?

      Ditto any business method where machines and articles of manufacture are only nominally present.

      1. 6.1.1

        No Ned as even Prof. Crouch has told you, the Hotel Security case is not controlling law.

        As to business methods, sorry but 3, the new 4, is still not 5.

        As far as “how can” – well, Congress can – and did. It is not up to the courts to rewrite that law either.

        Patent law is statutory law – not common law. I wish that you would take that step back and realize that the judicial branch is not above the constitution.

      2. 6.1.2

        As to the “nominalist” argument, you cannot be a little pregnant, and allow the words of Congress to be ignored.

        As I have multiple times brought this to your attention when I note how you attempt to play fast and loose with a change in verbiage from “statutory categories” to “statutory.”

        Even your attempt to use Hotel Security fails the Court’s use of the “Gist/Abstract” sword because to the Court, meeting the statutory category means nothing (see Alice, wherein the stipulation was made by both parties – and thus the issue was not before the Court – that the claims there met the statutory category portion of 101.

        I wish that you would recognize what the Court has actually done, and how your contortions cannot repair or reconcile your desired view with the ends the Court has reached.

    2. 6.3

      David and anon,

      As the law is, the presumption of validity does not apply to section 101 (assuming it’s an actual defense in litigation) as it is an issue of law (and not fact). Similarly, it doesn’t apply to indefiniteness (or likely obviousness too) where there are no facts in dispute.

      anon, your view in the parent to this comment is an interesting one that I need to think more about. But, I’m not sure it can make sense to have presumptions when it comes to legal issues. The law is something or not, and the judge decides. It doesn’t make sense to say that a party has not meet its burden to show the law is something. I’m not articulating the concept very well though, and, as I said, I need to think it through further.

      I can say that Justices Breyer, Scalia and Alito disagree with you, as is clear from their concurrence in Microsoft v. i4i (2011). Granted, that’s only three justices. But, my reading of footnote 10 to Nautilus v. Biosig Instruments is that all nine justices now agree.

      Footnote 10 does, however, leaves open whether the presumption applies to factual findings subsidiary to the ultimate issue of definiteness (but that didn’t apply in Nautilus since there were no disputed facts). Most cases have treated section 101 as a pure issue of law. People here have argued that it really is an issue of law based on underlying findings of fact — and Accenture v. Guidewire (Fed. Cir. 2013) said so, although I’m not sure other Federal Circuit decisions agree on that or the Supreme Court . If that’s the case though, then maybe the presumption can come into play.

      However, from my experience, most of the time parties in litigatin don’t put any disputed facts into evidence when arguing section 101, but instead only make legal arguments based the patent and intrinsic evidence. I’m not sure what the facts would be. Claim construction definitely comes into play, but that’s also an issue of law for the Court.

      I’m interested in others thoughts on this though.

      1. 6.3.1

        Microsoft is inapposite to this matter, as it only dealt with the question before it and the level to give as a function of evidence.

        The choosing of Congress as to law (validity, as well as eligibility) was not before the Court there.

        My points stand.

  3. 5

    David – I agree with you completely: in little more than a year we went from 101 is probably not a legitimate defense (because it is NOT listed anywhere in 282) to 101 somehow is imbued with super magical powers that make it not a “defense” but a new judicial fresh “eligibility review,” with no deference to anyone. So by judicial activism we have “written” 101 into 282 as a defense in (b), along with the new language in (a) which now apparently reads: “A patent shall be presumed valid, EXCEPT IN CASE OF A 101 CHALLENGE FOR ELIGIBILITY in which case you can use 103 as well, while pretending you are not”

    The CAFC needs to stop the charade, and they are going to tell the world that patents don’t enjoy a presumption of validity under 101 after PTO examination, they should immediately tell the PTO to stop ….doing any 101 reviews. If there is no agency benefit, then there is no reason to conduct the “eligibility review” until a lawsuit is actually filed, because 99.99% of patents are never litigated. I submit when enough folks with jobs on the line start to pay attention to the dementia over there in the geriatric ward at the CAFC we will see more pushback.

  4. 4

    I’m a little disappointed in this article. I come to PatentlyO to read well-reasoned arguments/opinions as to the state of patent law. I have found the insight here to be invaluable. Unfortunately, I don’t think the arguments presented here do PatentlyO’s reputation justice.

    If there is a point to be made, I would hope it would be made in a well-reasoned, cogent argument that does not resort to appeals to emotion (e.g. “Judicial activism at its worst by the Supreme Court is causing good judges everywhere to ignore the Constitution”). There may very well be an argument that the Supreme Court misapprehended the law, but this column does nothing to advance that argument forward.

    1. 4.1

      Jane, perhaps you are misunderstanding the point because you are not familiar with §282. It literally does not include § 101 as a defense to infringement.

      1. 4.1.1


        No, I understand that is the argument. However this column does not present that. It does not explain how/why section 101 is not a defense. Instead it screeches, adding nothing to the debate (not even a link back to earlier arguments re why 101 is not a defense).

        Discourse like this is not helpful for those who are trying to understand the law, rather than those who merely want outcome-oriented decisions. It only adds the patent version of partisan-rhetoric which has been so unhelpful to our legal system as a whole.


          There are much more detailed arguments on 101/282 that David has written in the past. I think sometimes bloggers forget that all readers are not serial readers. It might be good for David to link the other articles that support this argument in the current post.


            I agree. I think that would go a long way in providing support for the argument, although it wouldn’t remove the rhetoric.

            David has a well-articulated argument as to why he believes Section 101 is not a defense. He shouldn’t devalue his argument by resorting to inflammatory statements.

            It would also be helpful to see a well-reasoned argument as to why he believes the Ultramercial panel acted the way it did and why presumptions apply to legal questions, in order to support this post. The arguments may exist, but this post in its current form is unconvincing.


                If you know anything about the internet, you know I am the product, not the customer.

                Having less product to offer because the quality of the website has gone down does not seem to be a good way to get business.

                1. Most posts on this blog are detailed and reflect a fair bit of thought and deliberation. Not all of them. This one is a short, off-the-cuff, expression of frustration (“Rant over.”), and doesn’t purport to be anything other than that. The occasional one-off, short bit of unvarnished thinking doesn’t bother me.

                  What’s really odd is for commenters to get bent out of shape and argue that this one post has singlehandedly brought down the quality of the blog, and to assert–as any good overblown anonymous internet comment does–that the anonymous internet commenter is thinking of *never coming back.*

                  On the substance, “judicial activism,” of course, is a weak epithet, but the post still makes some good points. This is, on some level, the tension between Judge Rader’s views in Bilski and Research Corporation versus the Supreme Court. Reading the statute completely fresh, Judge Rader probably has the better of the argument.

                  35 USC 101 is phrased in extremely broad terms, and seems to say little more than that most everything is patentable. It’s certainly not the way one would write a statute if one was looking to set up rigorous substantive requirements.

                  The problem, though, is that neither the Federal Circuit nor the Supreme Court is looking at the statute completely fresh. For more than 150 years–going back to at least Le Roy v. Tatham (1853), the Supreme Court has said that a category of things including abstract ideas, mental processes, and laws of nature is per se unpatentable. That line of precedent has become tied to 35 USC 101, and courts have struggled to define the boundaries of that category. Hence, we have some justices willing to struggle with defining what an “inventive concept” is, and others willing to say that it’s not worth the candle and software and business methods should be off the table entirely. What no one on the Supreme Court seems to want to do is to start all over. Conventional wisdom is that Congress is in charge of fixing statutes that the courts get wrong and that it’s often more important for courts to construe statutes consistently than to flip-flop for decades in search of the “right” reading.

                  I presume that the reference to the constitution is meant to indicate that the author of the post disagrees (vehemently) with parts of Judge Mayer’s separate opinion in Ultramercial. I’d be interested to hear more about this. I don’t find Judge Mayer’s opinion persuasive on that point, but I don’t think it’s activism or hand-waving. Just sincere textualist instincts perhaps taken a bit too far. I think “promote the progress” is prefatory language, not substantive, and I don’t think violates the anti-surplusage canon to suppose that that clause of the Constitution is just stating its purpose along with its substance. If Congress thought that scrapping 101 entirely would best “promote the progress of science and the useful arts” (probably sic-I’m quoting from memory), I highly doubt that courts could say no on constitutional grounds. But Judge Mayer’s clearly thought about this more than I have.

                2. That “101” struggle has also been commented upon in greater detail (your advice to Jane reverberates).

                  The words of what became 101 and the carve out (and elimination of the grant to the judiciary to determine “invention” or “inventive gist” or any of a number of equivalents WAS changed in 1952.

                  Judicial activism is NOT the “weak epithet” you would call it, as the very point of introducing 103 was the reaction of Congress to the anti-patent Court (see the historical and revision notes at link to ).

                3. Satirist:

                  At no point did I assert that I was *never coming back* or make other hyperbolic arguments as you suggest.

                  My point was this: I like PatentlyO *because* it has such high quality arguments. Indeed, as I mentioned David has several such articles (which he could have linked to to illuminate his rant), which I think do him much more credit than a rant. One such article does not bring down a blog, as you suggest, but it definitely does it no credit.

                  My advice was kindly meant: leave the rants for social occasions, dinners, and other fora where appropriate.

                  Or satirist, perhaps you should write the column. Your post was much more illuminating and interesting than David’s hyperbole.


              Again, if you read this column, you know I’ve written lengthy exhaustive textual and purposive analyses.

              Not every column is the same.

              Next up (finally) the exhaustive look at the Reines matter.

    2. 4.2

      Jane — if you look you’ll see a huge number of thoroughly researched and documented articles on this that I’ve written here. I don’t repeat myself.

      Plus, I like emotion. I like persuasion. I’m a lawyer.

      1. 4.2.1

        David — a suggestion then. Link back to your posts. I know they exist, and as I said above, they are very thorough and well-articulated. Linking back to arguments you wish to form the basis of your “rant” is good practice for any Internet blogger. This post does not lend you any credibility without it, and is anything but persuasive.

      2. 4.2.2

        Also, as a side-note. If Dennis wants this forum to be more respectful and thought-provoking, your post does not help.

  5. 3

    David, the point Meyer made is a good one though. For years — dating back to the change date the PTO unilaterally decided to start issuing patents on DNA, to the date the PTO removed Hotel Security from the MPEP, to the date is began issuing patents on Beauregard claims, and to dates earlier when the CCPA instructed the PTO that there was no 101 novelty requirement thereby setting aside a rejection based on product of nature, the PTO all but stopped examining for 101. The CCPA/Federal Circuit long pushed for its “nominalist” views of 101 in light of the ’52 Act, never actually relying on 282 as they could have. But the presumption of validity in part stems from examination, which did not take place in the case of 101 as Meyer stated.

    It does seem to me that Meyer is right.

  6. 2

    Um, so it also doesn’t apply to 103? 103 is a question of law, based upon underlying facts. So… try again. Plus, where does the statute say that “legal questions of validity are not entitled to the deference in 282?”

    1. 2.1


      Saying that a legal determination is entitled to a presumption of validity is a nonsensical statement.

      Consider a tort. Whether or not something is an element of a tort (say, intent) is a legal determination. Whether or not the evidence (when understood in light of evidentiary presumptions) meets legal requirements is a legal determination. Section 101 is a legal determination. We haven’t yet decided if, like section 103, there are underlying facts entitled to deference. But the final decision as to whether what a patent claims is ineligible is entitled to no presumptions whatsoever.

    2. 2.2

      Put another way: the court does not defer to whatever the patentee says on legal questions (for example “does this meet the pleading requirements?”) just because there is “deference”. That would make the courts a farce.

    3. 2.3

      I would say so. How do you apply a “presumption” on an application of law to facts? Unless you apply something akin to Chevron deference, where ambiguity is found in the patentee’s favor, it’s hard to imagine how to fairly apply it.

      The subsidiary factual questions under 103 are:

      1) the scope and content of the prior art;
      2) the differences between the claimed invention and the prior art; and
      3) the level of ordinary skill in the prior art.

      I could understand, perhaps, applying a “clear and convincing evidence” standard to these factual questions when in dispute, but again, it is hard to say how that should be applied in determining the ultimate issue. The ultimate conclusion in 103 is a question of law, based on these factual findings. Thus, while a presumption of validity (that is, the “clear and convincing” standard) might apply to the underlying questions of fact (something that is, frankly, unclear under Microsoft v. i4i), no presumption of validity can be easily applied if the facts are undisputed or when, even if disputed, the dispute ultimately does not affect the ultimate legal conclusion. I don’t think the presumption of validity truly applies to a 103 defense either, although it’s ultimately a question that is going to be deferred until it’s raised in a proper vehicle.

      Under Section 101, there have not clearly defined subsidiary factual findings like the Graham factors. Given the Microsoft v. i4i holding that the presumption of validity is embodied in the “clear and convincing evidence” burden of persuasion, I’m not sure how you apply that holding to a 101 question. How do you administer a “presumption of validity” to a question of law?

  7. 1

    The reason the presumption of validity does not apply is that section 101 is a question of law. The presumption of validity, as interpreted in Microsoft v. i4i, is about the burden of persuasion – clear and convincing evidence as opposed to preponderance of the evidence. As it relates to factual questions, such as section 102 defenses and 112 defenses, this is easily applied. As for section 101 or 103 defenses, however, the ultimate question is a legal one, albeit one that may have underlying, subsidiary questions of fact that bear on the outcome. On these questions, there is no burden of persuasion because these are not entitled to a jury determination on the ultimate question. Based on the facts found, either one party or the other is entitled to judgment as a matter of law on a section 101 or 103 defense. Even when facts are contested, the Federal Circuit’s application of the presumption of validity to the subsidiary factual questions seems to be on questionable legal ground, because the ultimate question is one of applying the law to the found facts, not an ultimate question of fact.

      1. 1.1.1

        I think there are two aspects of 282 being discussed.

        (1) Is section 101 a defense.
        (2) If it is, does the presumption of validity in 282 apply to a 101 defense.

        I don’t comment on (1), but for (2), I think Nautilus (footnote 10), the concurrence in Microsoft v. i4i, and just how presumptions operate, mean that the presumption of validity does not apply to legal issue such as 101. David, anon and others have disagreed, but without discussing the case law (particularly Nautilus), so I look forward to any response to my more detailed post above.


          Even though Justice Breyer’s concurrence in i4i was only a 3-Justice concurrence, I think it is telling. The reason I believe that it was only a concurrence, rather than a controlling opinion, is because it addressed a question not necessary to the decision. The issue in i4i was specifically about whether the sold product practiced the invention – thus, it was a purely factual question of whether the on-sale bar applied, rather than a factual question that ultimately had to be analyzed as a matter of law.

          The Federal Circuit has applied it all in one way, but when the case is ultimately squarely addressed, I am not sure the Supreme Court will agree that the presumption of validity, an evidentiary standard (burden of persuasion) can apply to questions of law, even those where there must be subsidiary factual findings. i4i is quite clearly about the burden of persuasion on a contested factual issue. Nautilus was about a pure question of law with no contested facts, and the “burden of persuasion” issue was not raised on appeal.

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