My Rant on Versata: Non-existent Statutory Analysis Continues

by David Hricik

Over on the main page, Dennis has done a good job laying out the court’s “analysis” in Versata v. SAP of whether section 101 is a defense to invalidity.  The court recognized that, by the text of the statute, it is not.

But, it reasoned that because, today, section 101 challenges are a cottage industry, that that interpretation must be wrong.  It cites to dicta from old Supreme Court cases.  And, it says basically, “well, people are doing it so it must be right.”

Um, wrong:   See Central Bank of Denver v. First Interstate Bank of Denver, 511 U.S. 164, 177 & 191 (1994) (overruling six decades of case law implying a cause of action), superseded on other grounds by 15 U.S.C. § 78(t)(e). Whatever a court says a statute says, the Constitution makes paramount what the enacted text actually says.  Courts can get something wrong for a long time; a judge’s Constitutionally required job is not to continue the nonsense; it is to stop it.

The fact is that no court has ever actually analyzed whether 101 is a defense, particularly after 1952, when (I believe) Congress meant to get rid of this “inventive concept” and other nonsense that courts had, previously, read into the word “invention” in what was then 101.  Congress put all of those odd requirements into the objective section 103.  But… the point is:  no court has analyzed the text — about whether “eligibility” is a defense to any infringement suit (and obviously not in CBM proceedings), and when this court did, it recognized the text did not support Section 101 as an invalidity defense.

That should have been the end of the inquiry, absent (a) an absurd result; (b) ambiguity; or (c) some other narrow exception to ignoring the plain text.  But the panel went further, and suggested that some sort of history precluded giving the statutory text its plain meaning.  (I wrote a book on statutory interpretation; I won’t bore you with the details.)

Let’s go past the text and look for some strong reason to ignore its plain meaning.  What is this evidence?

Courts sometimes use the purpose of a statute to interpret it.  Likewise, they look at legislative history to discern meaning or to find purpose.  What if there was some huge committee report droning on about 101 and so on?  We should likely take that into account.

But it’s not there.

The legislative history shows that the purpose CBM was adopted to address shortcomings with the PTO’s ability in the late 1990’s to find prior art, and that was Congress’s intent.  The House report makes clear that the purpose was to deal with the perception that in the late 1990’s, the PTO had not found the best prior art to apply under sections 102 and 103:

A number of patent observers believe the issuance of poor business-method patents during the late 1990’s through the early 2000’s led to the patent ‘‘troll’’ lawsuits that compelled the Committee to launch the patent reform project 6 years ago. At the time, the USPTO lacked a sufficient number of examiners with expertise in the relevant art area. Compounding this problem, there was a dearth of available prior art to assist examiners as they reviewed business method applications. Critics also note that most countries do not grant patents for business methods.

The Act responds to the problem by creating a transitional program 1 year after enactment of the bill to implement a provisional post-grant proceeding for review of the validity of any business method patent. In contrast to the era of the late 1990’s-early 2000’s, examiners will review the best prior art available….

H. Rep. 112-98, at p. 54 (June 1, 2011) (emphases added).  Thus, the committee report shows that the purpose of the amendments adding CBM is consistent with the statute’s plain text:  to allow people to bring CBM to show that the invention was not new or would have been obvious in light of “the best prior art available.”  The report emphasized the lack of “a sufficient number of examiners with expertise in the relevant art area.” 

Conversely, nothing in the House report mentions the failure to recognize “abstract ideas” or the failure to properly apply Section 101.  Further, it is absurd to suggest that in the late 1990s lack of access to prior art or lack of sufficient examiners with familiarity with prior art had any impact on the ability to determine what is a “law of nature,” or “abstract idea,” or the like.  Indeed, courts are doing this now on 12(b)(6) motions based on their own “evidence”(?) of what is known, etc.

So, so far:  purpose and history, based on the “good” legislative history (committee reports and such usually get more weight than other stuff), 101 is  not a defense.

What about random statements of legislators?  Once you get into random statements, the legislative history of the AIA on this transitional program is, like almost all legislative histories in this granular level, murky.  I have reviewed the remarks made on the Floor of the Senate, and there is no doubt that a few members of Congress mentioned business method patents.  A fair reading is that at least some members of Congress thought the source of the problem to be addressed was with “abstract” patents, while others believed the failure to consider the most pertinent prior art was the source of the problem.

I have also considered other aspects of the legislative history that this panel didn’t cite.  For example, then-Director Kappos observed:  “a key House Committee Report states that ‘the post-grant review proceeding permits a challenge on any ground related to invalidity under section 282.’ H.R. Rep. No.112-98, at 47 (2011).” Yet, it is undeniable – and the Versata court held — that the text of the adopted statute points to only two subsections of Section 282, and so this sentence from that report flatly contradicts the enacted statute.  (It accurately reflects the text at the time Kappos spoke; but Congress didn’t adopt it.)  A sentence in a committee report that directly contradicts the enacted language does not control.  As with most bills, the legislative history of the AIA contains many statements that are not the law, and a few that contradict the enacted statute.

Others have pointed to this statement from a senator from Arizona, Senator Kyl:  “section 101 invention issues” were among those “that can be raised in post-grant review.”  157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011).  Relying on this statement for the proposition that eligible subject matter is covered by the text is doubly problematic.  Foremost, “section 101 invention issues” is not in the enacted text, as the Versata court correctly held. Further, the Supreme Court has long and repeatedly rejected relying upon one legislator’s statement as having been enacted into federal law.  Doing so jeopardizes the Constitutional requirements of enactment and presentment.  This is especially true where, as here, that statement contradicts the plain text as well as other more weighty evidence of legislative intent.  Those sources – which, if entitled to any weight — are entitled to more weight than one Senator’s floor statement – contradict Senator Kyl’s subjective interpretation of the statute.  Again, however, I believe none of this matters here.

So, at best, there is some slight indication that a few members of Congress thought that “abstract” patents (whatever that might mean”) is the problem.

But it is long-settled there has to be some reason, much stronger than a few random statements, to ignore the plain text of an enacted statute.  What controls is the language Congress enacted, not our speculation about the intent of a handful of elected representatives.

Let’s go further.

Sometimes courts interpret statutes in light of existing case law, and that’s what the Versata court relied upon.  Well, what about case law, and the notion this court adopted that there’s some sort of “long-standing” understanding that 101 is a defense.  This is weird:  despite the plain language, and despite Congress knowing that 101 should be a defense, it did not list it.  Think about judicial activism for a moment.

And let’s be real here.

First, post-1952 it was not until Myriad that there was a challenge in the Supreme Court to an issued patent based on 101.  All the others were fights with the PTO.  No one in Myriad litigated whether 101 was a defense in terms of section 282. It’s not, as even this panel recognized.

So, saying there’s some long-standing line of cases from the Supreme Court is simply wrong:  there’s now two cases, one just decided (Alice).  Further, we all know that 101 defenses were about as rare as a blue zebra until a few years ago.

But maybe there is some long-standing interpretation, even in dicta?

Wrong.  If you read the authority relied upon by the court, they don’t support the this “history” at all — instead they undermine it.

Foremost, the Supreme Court case relied upon is Graham v. John Deere Co., 383 U.S. 1 (1966).  That famous case about Section 103 had nothing to do with whether “eligible subject matter” was a condition for patentability, and did not decide that issue. Instead, in dicta analyzing the “condition for patentability” in Section 103, the court noted:

The Act sets out the conditions of patentability in three sections. An analysis of the structure of these three sections indicates that patentability is dependent upon three explicit conditions: novelty and utility as articulated and defined in § 101 and § 102, and nonobviousness, the new statutory formulation, as set out in § 103.  The first two sections, which trace closely the 1874 codification, express the ‘new and useful’ tests which have always existed in the statutory scheme and, for our purposes here, need no clarification. The pivotal section around which the present controversy centers is § 103 . . . .

383 U.S. at 12-13.

That statement actually undermines the argument that “eligible subject matter” is a condition for patentability.

Here’s why:

Graham explains that the Patent Act of 1793 had only two conditions for patentability:  utility and novelty (both of which were once in the same statute, a precursor to sections 101 and 102).  Id. at 10 (“Although the Patent Act was amended, revised or codified some 50 times between 1790 and 1950, Congress steered clear of a statutory set of requirements other than the bare novelty and utility tests reformulated in Jefferson’s draft of the 1793 Patent Act”).  The Graham Court recognized that in 1952 Congress had added a third condition, non-obviousness.  See id. at 14 (“Patentability is to depend, in addition to novelty and utility, upon the ‘non-obvious’ nature of the ‘subject matter sought to be patented’ to a person having ordinary skill in the art.’”) (quoting Section 103).

So… the Graham case suggests — if anything, as it is dicta — that “eligible subject matter” is not a condition for patentability.  If Graham stated that utility, novelty, and non-obviousness were the three conditions for patentability, then the Court’s statement that there are “three conditions” means “eligible subject matter” is not one:  if “eligible subject matter” were also a condition for patentability, then there would be four, not three, conditions.

The panel also cites dicta in a footnote in Aristrocrat Techs., Austl. PTY LTd. v. Int’l Game Tech., 543 F.3d 657, 661 (Fed. Cir. 2008).  Although the merits of a Section 101 issue was decided in Dealertrack, the patentee did not contend that Section 101 was not a statutory defense, and the court did not decide that issue.  Further, dicta in that case traces directly back to the dicta from Graham.  So, there is no long line of cases that, somehow, Congress knew about and intended to adopt.

Worse, there is loose language in other cases saying exactly the opposite, that only 102 and 103 are conditions of patentability (i.e., are consistent with the plain text.).  For example, the Federal Circuit has stated: “The two sections of part II that Congress has denominated ‘conditions of patentability’ are § 102 . . . and § 103 . . . .”  Myspace, Inc. v. GraphOn Corp., 672 F.3d 1250, 1260-61 (Fed. Cir. 2012).   The Supreme Court made essentially the same observation in Diamond v. Diehr, 450 U.S. 175, 190-91 (1981).

So… in fact there is no case law supporting this history, and instead the “case history” is, at best, split and unclear.

The important fact to me is that none of these cases parse the statutory text, or examine the purpose and legislative history of the AIA discussed here.  Ignoring the actual text in favor of what courts have said a statute says is obviously incorrect.  In that regard, the Supreme Court has overridden judicial interpretations of statutes that failed to adhere to the text, and has done so even after decades of having lower courts adhere to those incorrect constructions.  See Central Bank of Denver v. First Interstate Bank of Denver, 511 U.S. 164, 177 & 191 (1994) (overruling six decades of case law implying a cause of action), superseded on other grounds by 15 U.S.C. § 78(t)(e). Whatever a court says a statute says, the Constitution makes paramount what the enacted text actually says.

To sum up, absent some good reason to ignore the plain text, in my opinion random statements from one or two legislators and dicta in cases does not control.  Dicta in cases that do not analyze the statutory text do not control.  A committee report that flatly contradicts the enacted text does not control.  And one Senator’s opinion is not enacted statutory text.

I understand why the panel did what it did.  But the Constitution is more important than judicial politics.

Finally, let’s be real again:  if you look at what Congress did in 1952, it was to get rid of this subjective nonsense.  I strongly believe that then Chief-Judge Rader’s opinion, and “additional views” in CLS Bank v. Alice (which, textually, this panel confirmed in holding 101 is not even a listed defense) need to be raised and litigated.  Statutes should matter.

(You can find the original version of this, with citations and footnotes at:

My exhaustive (and last, really I promise!) post about why 101 is not a defense, nor properly raised in CBM proceedings

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.

168 thoughts on “My Rant on Versata: Non-existent Statutory Analysis Continues

  1. 17

    Since we are discussing statutes and words and Constituional meanings, a different flavor from below is worth reposting here at the top of the thread. As should be noted, a “singular” focus when a plurality of intentions can often be seen as an attempt to NOT give full weight to the meaning of law.

    Enjoy:

    …and I would add as well that this harkens back to the constitutional understanding of what the word “promote” means. Only one of more than one meaning has to do with the idea of linear advancement. Another meaning is that of the “advertising” notion: a promotion being the gathering and dissemination of knowledge.

    I have addressed this subtle nuance in the past with my comparison of analogies of building a system of roads versus building a parking lot. A system of roads has more aesthetic appeal – especially when planned in advance. But innovation cannot be planned for in advance like roads. That is not how innovation works. Instead, take the analogy (that not without coincidence) mirrors more a sense of urban blight: the parking lot. Parking lots simply pave in every direction, allowing one to turn on a dime and go in any direction – as innovation does, so does (and should) thr patent system do. This is also a critical point as to why 101 is built – yes designed on purpose – to be a wide open welcoming gate. Forms of innovation (see the reference to Kondratiev) simply are not – and cannot – be known a priori.

    It is those clinging desperately to the past trying to prevent what the patent system ought to be that are the biggest enemies of patents. Sadly, this too is an area where your complete lack of objectivity prevents you from joining the dialogue fully.

    1. 17.1

      I’m not sure I follow you. Are you saying that the answer to the problem of urban blight is more parking lots?

      1. 17.1.1

        Only if those who only wish to be snide are paved under them.

        Maybe you want to discuss an actual point…?

        1. 17.1.1.1

          Well, yes. I want to discuss your point about parking lots. Since you made it twice, it seemed important.
          As I understand it, you’re saying that the patent system should be more like a parking lot. That’s a really good suggestion. But where does urban blight come in?

          1. 17.1.1.1.1

            Maybe you want to read the rest of the analogy…

            You pick the oddest things to lock horns with me over, DanH – it’s like you enjoy eating crow (or having the matador’s spear skewer you)

  2. 16

    “As an alternative ground for invalidating the ‘056 patent under § 101, the court relied on the judicially-created, so-called “business method” exception to statutory subject matter. We take this opportunity to lay this ill-conceived exception to rest. Since its inception, the “business method” exception has merely represented the application of some general, but no longer applicable legal principle, perhaps arising out of the “requirement for invention” — which was eliminated by § 103.”

    Rich, J., State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368, 1375 (Fed. Cir. 1998).

    Professor Hricik has, IIRC, echoed Rich in this. One of the purposes of the ’52 Act was to eliminate “invention” as a separate test for patentability. But how could they do that without amending 101 to remove its requirement for “invention.” Simple, and this reveals a possible, indeed likely, master plan of the crafters of the ’52 Act, remove 101 as a condition for patentability and as a defense to infringement leaving only 103. Thus anything useful that was non obvious was intended to be patentable. We see this sentiment often expressed here, and by many who cite to the statement to the same effect from Chakrabarty regarding anything made by man being patentable.

    Obviously, this plan was flawed as the requirement for utility, which even Rich agreed was a condition for patentability, remained in 101. But throughout his time on the bench, Rich treated 101 as a mere formality, and did his best to move considerations of patentability into 102/103/112. For example, the above quote from State Street Bank cited to Newman’s dissent in Schrader,

    “[The business method exception] is … an unwarranted encumbrance to the definition of statutory subject matter in section 101, that [should] be discarded as error-prone, redundant, and obsolete. … Patentability does not turn on whether the claimed method does “business” instead of something else, but on whether the method, viewed as a whole, meets the requirements of patentability as set forth in Sections 102, 103, and 112 of the Patent Act.”

    So, even though the original and primary purpose of removing 101 as a condition for patentability and as a defense to infringement was to address “invention,” it also swept in patentable subject matter as well. The crafters fully intended that anything useful should be patentable subject matter and patentable if it met the requirements of 102/103/112.

    What seems clear from this background is that at least Rich fully intended 101 to be excluded as a defense to validity, just as the statute states.

    Thus, if we construe the statute as written, is the ’52 Act even constitutional? But I will concede that Professor Hricik’s interpretation is not only literally correct, but was intended by Rich, at least, one of the crafters of the ’52 Act.

    1. 16.1

      I SAWS what you did there – quote State Street to impugn the content of the quote.

      You do realize that the notion you quote precedes that case and you do not need to recognize that case for the meaning of the Act of 1952 to be understood, right?

      1. 16.1.1

        So what, anon. You can see the consequences of what Rich did in State Street Bank.

        1. 16.1.1.1

          So what?

          So your actions violate your own posts about reaching back properly to the earliest controlling authority, that is “so what.”

          You play an inte11ectually dishonest game by such “subtle” manipulation.

          As I have pointed out, the better understanding is pinned directly to the actions of Congress itself – not to your treatment of ‘scape goating Rich.

    2. 16.2

      Ned,

      What does “subject to the conditions and requirements of this title” mean?

      You seek (still) to impugn flaws in what Congress did, at the same time that you refuse to recognize that what Congress did was to change the law (and not just in your previous views of “just codify” – at least it appears that you are not trying to ply that old trick).

      I certainly hope that it begins to dawn on you the vastness of the weapon of the “Gist/Abstract” sword. Your mention here of the statutory category aspect of 101 should draw critical attention to what the Court did in Alice: with a wave of their magic sword they eliminated part of 101 as if that part was not written by Congress. The extra-statutory and non-constitutional use of common law power is simply too much of a wax nose addiction and the Court just cannot seem to keep its fingers out of it.

      This too (the Court mashing) was noticed by Congress when Congress wrote the CBM portion of the AIA. As I have mentioned previously, Congress addressing a subset of business methods for review necessarily implies that business methods – as a larger category – ARE considered eligible subject matter by Congress (the actual branch of the government with authority from the Constitution to write patent law).

      Let me see if I can find the gem that I wrote on the Hricik side of the blog awhile back…

      1. 16.2.1

        anon, what Rich and crew did, you give congress to much credit for having intimate knowledge of patent law, was subtle so that most folk would not notice. Most patent attorneys never parsed 282 to determine what it actually said. I was one of the exceptions. So was Professor Hricik.

        But I finally figured out why 282 and 101/102 were structured the way they were. “Invention.” They truly wanted to get that out of the courts’ purview.

        1. 16.2.1.1

          Ned,

          It simply is NOT nearly as “subtle” or as devious as you want to paint the picture.

          I have previously provided the Cornell Law link to the congressional notes on 103 which explain that Congress (not Rich) was reacting to a then far too anti-patent Court and the out of control level use of common law authority to set the definition of “invention” – the veritable and original Nose of Wax.

          The notes are abundantly clear for anyone seeking to understand what happened in 1952.

          As you yourself though exemplify: those seeking NOT to understand, to have the Court hold onto a power (to use common law) that had been previously granted, but was str1pped away in 1952, will be purposefully ignorant of what Congress did.

          It does NOT rest on 282 to garner this understanding – and I have put these points on the table of discussion many many many many times.

          Are you beginning to see why I am adamant that these points of law and historical fact are understood and integrated into the dialogue? Why I take the time to point out the inte11ectual dishonesty of the monologuing Merry Go Round of Internet-style shout downs that merely wish to ignore what happened in 1952?

      2. 16.2.2

        Found the words of wisdom (from the Good Professor Hricik’s linked page):

        3.1.1
        anon
        February 28, 2014 at 1:18 am

        I suspect I know what it [AIA Section 18(e)] means – and Ned Heller won’t like it one little bit.

        Let me set the context: Stevens was slated to write a majority opinion in a patent case largely viewed to be the bookend to his career on the bench. The depth and structure of his “concurrence” is startling. But, one not so small problem. For his main thesis in his “concurrence” to hold – that business methods as a category are not a part of the Useful Arts and not patent eligible subject matter, he would have to explicitly rewrite the words of Congress. He lost his majority position on this very point.

        Now we know that a major overhaul in the wake of a Supreme Court decision can receive some pretty intense scrutiny. The majority in Bilski refused to hold that as a category business methods were eliminated as eligible subject matter. Congress – fully aware of this made a gesture for saving face by creating the CBM review section – but they did not want to disturb the holding that business methods as a category were patent eligible. Had they not included the section that explicitly said that they were leaving alone the existing meaning of patent eligibility for business methods as a category, they knew that a later court may take their action too far and claim that Congress was trying to eradicate business methods as a patent eligible item.

        Section (e) cements in place the defeat of Stevens and the anti-business method jihad as decided in Bilski. By explicitly stating that subject eligibility is to be left at the pre-AIA, post-Bilski understanding, the fact that a post grant review aimed at business methods could not be used by a later Court to pull a reverse-Stevens. Section (e) is an insurance against judicial activism.

  3. 15

    It would certainly help if the alleged [already rejected] statutory interpretation error here could be expressed in simple English.

    Is it that the lower case words “condition for patentability” in 35 U.S.C. 321(b) via its cited Section 282(b)* have only one meaning in the entire patent statute [or Sup. Ct. interpretations] and must exclude any other section of the patent statute that does not have a SECTION TITLE of “condition for patentability”? Namely the title of 35 U.S.C. 5 U.S.C. 102: “Conditions [with a capital C] for patentability; [and novelty]. Even though the subject new statute* does not mention 102.

    *(b)(2) Invalidity of the patent or any claim … on any ground specified in part II as a “condition for patentability.” [the key words are put in quotes here]

    If this is not a correct restatement of the legislative interpretation question, please fix it.

    1. 15.1

      I’m not sure I understand the snarky start, but, I’ll try:

      This court held, I think rightly and as I’ve said for years now, that in terms of 282(b)(2), section 101 is not a “condition for patentability.” The Versata court recognized this is the plain language of the statute.

      But, despite that, it basically reasoned that — because of dicta in Graham and few other cases — that plain meaning should be ignored.

      That violates statutory interpretation 101.

      I hope that helps.

      1. 15.1.1

        The Court did not NOT “hold ..that in terms of 282(b)(2), section 101 is not a “condition for patentability.”’ The Court actually said, in its entirety on this issue, [pp.44-45] that:
        “Versata is correct that a strict adherence to the section titles can support an argument that § 101 is not listed as a “condition of patentability,” but rather has the heading of “inventions patentable.” However, as noted by the USPTO, both our opinions and the Supreme Court’s opinions over the years have established that § 101 challenges constitute validity and patentability challenges. See also Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 453 (Fed. Cir. 1985); Aristocrat Techs. Austl. Pty. Ltd. v. Int’l Game Tech., 543 F.3d 657, 661 n.3 (Fed. Cir. 2008). It would require a hyper-technical adherence to form rather than an understanding of substance to arrive at a conclusion that § 101 is not a ground available to test patents under either the PGR or § 18 processes. Section 101 validity challenges today are a major industry, and they appear in case after case in our court and in Supreme Court cases, not to mention now in final written decisions in reviews under the AIA. The numerous cases in our court and in the Supreme Court need no citation; for a sample of PTAB cases, see, e.g., Search America, Inc. v. Transunion Intelligence, LLC, CBM2013-00037 (Feb. 3, 2015); U.S. Bancorp v. Retirement Capital Access Management Co., CBM2013-00014 (Aug. 22, 2014). It is often said, whether accurate or not, that Congress is presumed to know the background against which it is legislating. Excluding § 101 considerations from the ameliorative processes in the AIA would be a substantial change in the law as it is understood, and requires something more than some inconsistent section headings in a statute’s codification. We agree with the USPTO and SAP and we so hold that, looking at the entirety of the statutory framework and considering the basic purpose of CBM reviews, the PTAB acted within the scope of its authority delineated by Congress in permitting a § 101 challenge under AIA § 18.”

  4. 14

    David, 101 is not a defense

    If 101 is not a defense, then 101 was effectively repealed in 1952 – just like best mode was repealed in the AIA. (The statutory requirement for best mode, without any enforcement mechanism, does not exist in fact.)

    Assuming arguendo that Congress has the constitutional authority to repeal section 101, then it certainly has the constitutional authority to remove 101 as a defense.

    Assuming no 101, can one still obtain a patent on subject matter that has no utility; subject matter that clearly and unambiguously is neither a machine, process, manufacture or composition; subject matter that is a law of nature or product of nature; or subject matter that is so abstractly claimed as to prevent the progress in the useful arts in that field for the time of the patent?

    If Congress passed a law expressly authorizing the grant of patents that were inconsistent with the constitutional power given to it, then such a statute would be unconstitutional. But what if repeal of a statute effectively did the same thing?

    But what is more sinister here is that 101 remains on the books, yet according to your interpretation of §282, patents remain valid regardless that they violate 101 and also violate the constitutional grant of power to Congress in the first place. Such an interpretation of §282, I submit, would place the entire patent act into question.

    There seems to be a rule of construction that if a statute can be construed to avoid unconstitutionality, that that construction must be chosen.

    1. 14.1

      “There seems to be a rule of construction that if a statute can be construed to avoid unconstitutionality, that that construction must be chosen.”

      Pleased to see that very important point being made by Ned, no less, in view of all the wistful assertions on this blog by folks convinced that anything they don’t like about the AIA, the Sup. Ct. or the Fed. Cir. is going to get struck down as unconstitutional.

      1. 14.1.1

        Stop whining Paul – your cheerleading wrecks any credibility you think that you might have on the topic.

      2. 14.1.2

        The constitutional avoidance doctrine is a tool of statutory interpretation, but one of last resort.

        If someone — i.e., this court — wants to try to use it to get where they want to go, they can, but… this is not rigorous statutory interpretation, it’s result-oriented reasoning, to quote another post here.

        1. 14.1.2.1

          David, While you distinguish Graham, I think they assumed that the split of the former unitary statute would not change the status of 101 as a condition of patentability.

          Even you acknowledge that utility is in 101. If 282 excludes 101 as a defense, it excludes utility as a defense. How is that even possibly constitutional if lack of a defense effectively reads the requirement out of the statute?

    2. 14.2

      Interpretation cannot broach writing.

      Yes, there is a statutory construction premise that readings resulting in unconstitutionality should be avoided – but such is most definitely not a “clench tight your eyes and not see it” not is it an open invitation to rewrite the statute and remove or alter (or Gist away) a section that that the Court just does not like – no such “line item veto” capability to the judiciary.

    3. 14.3

      “If 101 is not a defense, then 101 was effectively repealed in 1952 – just like best mode was repealed in the AIA. (The statutory requirement for best mode, without any enforcement mechanism, does not exist in fact.)”

      This brings up an interesting distinction, between statutory sections governing the USPTO versus challenges that a litigation defendent can raise in court. The best mode requirement has not been repealed. It is still in 35 U.S.C. 112(a), meaning that the USPTO is bound to consider it, if raised during application pendency. However, 35 U.S.C. 282(b)(3)(A) expressly excludes best mode as a defense in litigation over alleged infringment of a granted patent.

      Could it be, that the Congress has intended to give subject matter eligibility under 35 U.S.C. 101 the same disperate treatment, allowing it to be used by the USPTO to reject an application but refusing to allow its use as a defense in infringement litigation? Is such a scheme prohibiting judicial review of the validity of an executive action granting a patent even constitutional (not just in the eligibility case being discussed here, but also in the best mode case)?

      1. 14.3.1

        If in fact deemed unconstitutional, what them my friend?

        I will point out (again) that the Court cannot write into law (separability) that which Congress explicitly contemplated and rejected – such simply is not “interpretation” under any reasonable view of that word (and under any view of statutory interpretation guidelines).

        There is but one remedy for the Court in such an instance.

        Better get to the front of the line for the limited number of lifeboats on the good ship AIA.

  5. 13

    Two important things are missing here:
    1. The statute itself did not expressly approve or expressly disprove whether or not 101 can be raised in a CBM, and thus
    2. “Chevron Deference” applies.
    [Cornell Law School website]> “One of the most important principals in administrative law, established by the Supreme Court in Chevron U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984). The case raised the issue of how courts should treat agency interpretations of statutes that mandated that agency to take some action. The Supreme Court held that courts should defer to agency interpretations of such statutes unless they are unreasonable.”

    1. 13.1

      See Tafas for a discussion of Chevren for the federal agency that is the patent office.

      Man, you are grasping at straws.

      1. 13.1.1

        Hardly. The statutory interpretation issue here has already been decided by the Fed. Cir., while Tafas is not a Sup. Ct. decision, and it was about a set of proposed new practice-restrictive PTO rules with no statutory rulemaking basis or authority, unlike this case.

        1. 13.1.1.1

          Unlike this case…?

          No Paul, you have assumed the conclusion that you need to prove. Brush up on your admin law – this question is driven by the agency charter. It is that part of the Tafas case that you need to pay attention to.

          Your desires for preservation are vastly outpacing your legal legwork.

    2. 13.2

      Paul, when the topic is the meaning of §282 which relates to defenses to infringement, the patent office views on the meaning of that statute might be given some consideration but definitely are not controlling and cannot be controlling unless one believes that we have no need of the court system anymore in the United States and that we should place all adjudications in administrative courts whose decisions are final and nonreviewable.

    3. 13.3

      Well, IF this court were to have used Chevron deference (I’m not sure it would be Chevron, but that other case whose name I can’t remember), that might be one thing… but it didn’t, and… once again you run into the problem of the plain language of the statute. Chevron (and that other case) kick in primarily in instances of ambiguity… there is none, as the court recognized: 101 is not a “condition for patentability.”

      So… (Skidmore is the other case!).

    4. 13.4

      Oh, and the first point is… circular. Because it expressly included only parts of 282 — by basic statutory interpretation it excluded others. Because 282(b)(2) does not include 101, it excluded 101. So…. your first point is simply wrong.

  6. 12

    David, since you seem truly obsessed with statutory construction “principles”, where do you stand on the Federal Circuit’s soon-to-be-reversed decision in Promega v. Life Tech where both the plain language of the statute and the clear Congressional intent (not to mention common sense) was shoved aside in order to create patent infringement liability for individuals and companies who cause a single staple item of commerce to be exported out of the US and incorporated into a product falling within the scope of a US patent (where that product is never sold in the US)?

    I assume you must be apoplectic about that decision as well but I don’t see where you’ve written a single word on the subject. It just seems odd given all the energy you spend touting these “principles” in a context that leads to results (if your logic is followed) that pretty much nobody agrees are correct or desirable.

    1. 12.1

      MM, after King v. Burwell, all bets are off on statutory construction. Intent, overall structure, trump seemingly unambiguous language to the contrary.

      I could only wish that King v. Burwell was around when Aro II was decided.

      1. 12.1.1

        after King v. Burwell, all bets are off on statutory construction

        Because nobody could have predicted how that case would turn out.

        Geebus you guys are unbelievable.

        1. 12.1.1.1

          MM, regarding King itself, the decision probably did shock a lot of people who thought the words of the statute controlled over some overarching “purpose.” After all, that is why Aro II came out the way it did when congress clearly had no intention to change the law, but the Court nevertheless held that plain words of controlled over expressed legislative intent.

          1. 12.1.1.1.1

            The Court was playing its “king with no clothes” role Ned – it is amazing that you still do not grasp the notion that the judicial branch (and the Royal Nine in particular) are NOT above the law – they are merely an equal co-branch under the law.

            Yes Ned – they can (and in fact do) do wrong.

            Let’s please STOP the “aw shucks they have spoken” claptrap – we as sworn attorneys have an oath to a higher law than the Court.

            1. 12.1.1.1.1.1

              Anon, King v. Burwell is enough evidence for me to begin to agree with you.

          2. 12.1.1.1.2

            Ned: the decision probably did shock a lot of people who thought the words of the statute controlled over some overarching “purpose.” After all, that is why Aro II came out the way it did

            “Some overarching purpose”?

            LOL. If you want to compare the ACA (!!!) to the relatively arcane statute at issue in Aro II, go right ahead. Seems like a huge mistake to me but then … we already know the result, don’t we?

            Live and learn, Ned.

            The Republic isn’t crumbling. But the foundations of the software patentistas are looking weaker and weaker by the day. That’s a great thing! Also totally predictable.

              1. 12.1.1.1.2.1.1

                …just as some animals are more equal than others (as my pal George O would say)

              2. 12.1.1.1.2.1.2

                some statutes are more equal than others?

                More accurately: different statutes present different issues.

                I know it’s hard to believe.

                1. More accurately, what you post immediately MAY be true – it is just not true for the details under this discussion.

                  I know it is easy to believe that you would attempt dissembling on this point.

                2. No doubt the rules as applied to particular statutes may have different results, but the point I make here is different.

                  To many it seems the Roberts courts applies one set of rules for most statutes, and a different set of rules for statutes like O’Bamacare, which are of the social regulation type.

                  I think Roberts remembers how Supreme Court got in trouble during the Lochner era when it opposed the president and Congress when they attempted to pass social legislation such as the minimum wage law.

                  What the decision to punt on social legislation tells me is that the Supreme Court itself recognizes that in large measure its decisions are political. It has chosen not to oppose the political branches on matters of social policy.

                3. … and thus Ned, one more reason not to have adoration for the Royal Nine and attempt to place them above the law when it comes to them merely aligning with your desired ends (the “6-is-an-Einstein-because-he-agrees-with-me malady that you are afflicted with).

                  There really is a Nose of Wax addiction when it comes to the Court and patent law.

    2. 12.2

      Actually Malcolm, I have shared the statutory construction on that one – you miss quite badly then on this as well.

      Maybe you should read Hricik’s book on statutory construction?

      Heck, maybe you should read ANY book on statutory construction.

      1. 12.2.1

        I shared more than just an opinion, pointing out a court case that highlighted the statutory construction of the singular/plural nouns.

        It is in the archives. What a chump.

      2. 12.2.2

        Since my original comment was somehow disappeared, “anon”, I’ll make this quick:

        1) Everyone is aware of your awesome analysis.

        2) My comment at 12 is completely unrelated to your opinion about anything.

        1. 12.2.2.1

          My reply also disappeared so I will be quick as well: I gave you a Court case that explained the statutory construction regarding singular/plural.

          It’s in the archives.

    3. 12.3

      I haven’t honestly thought about it much. Sounds like I should, if I want to get angry.

      1. 12.3.1

        You do not have to get @ngry to dispel Malcolm’s nonsense.

        So very often, his views are just not tethered to law or facts, but instead merely pound the table of Opinion/policy/beliefs.

        An elementary rule of statutory construction is that the singular includes the plural.

        I pointed this out to him when he first kicked up dust on the matter, even supplying him with a case that explained the matter.

        He has chosen his usual path of not understanding and not integrating the counter point put on the table of dialogue, and merely hews to his pre-ordained short script.

        One does not need to invest any emotion to simply point out that the counterpoint is already on the table.

        Sure, some resiliency helps, given the ad infinitum, ad nauseum tactic of Internet style shout down of Malcolm and the echoes’ tactic of simply repeating their position over and over and over again as if this fora was ONLY for non-critical thinking.

        But there can be fun to be had at the expense of such buff00ns. Especially for lawyers who enjoy arguing and who KNOW the law and its history, and who know and are well versed in innovation.

        :-)

      2. 12.3.2

        I haven’t honestly thought about it much.

        Please do.

        It’s an important case currently before the Supreme Court.

        1. 12.3.2.1

          If it is so important to you Malcolm, please follow through on my suggestion that you read any (authoritative) book on statutory construction, as your singular/plural “premise” has been amply taken care of (and that is not just my “opinion” on the matter, no matter how much you want to dissemble and dismiss that point).

          There really are facts that are facts and are not “opinions” as you wish to dismiss any points that I put on the table for dialogues.

  7. 11

    the point is: no court has analyzed the text — about whether “eligibility” is a defense to any infringement suit (and obviously not in CBM proceedings), and when this court did, it recognized the text did not support Section 101 as an invalidity defense.

    The problem is that “the text” you are thinking about is 35 USC. But the salient “the text” is the US Constitution.

    Does the Patent Clause empower Congress to exclude the use of ideas? No. Would the first amendment deny Congress that power if they ever had it? Yep.

    A law that would entail civil or criminal liability for using one’s Constitutionally protected rights is unconstitutional. A law that empowers an agency to give to a third party the right to impose civil or criminal liability for using one’s Constitutionally protected right is still unconstitutional. Congress lacks the jurisdiction to make ideas patentable.

    The best reading of the 1952 act is that it does not attempt to make eligible that which the Court was saying cannot be eligible since Morse, and therefore there is an implicit exception. But if that implicit exception were ever to be countered with an explicit statement (i.e. Congress passing a law expressly identifying abstract ideas as patentable) then the court would either find 101 unconstitutional, or find the statutes which attach liability for use of the idea unconstitutional (it may let you have a patent, but deny you any right of recovery).

    As to whether Congress intended CBM review to include 101, that’s merely a question of whether the record evidences Congress’ intent for CBM to be all-encompassing or not. It’s not unreasonable to say that Congress intended CBMs to be a one-stop shop for adjudicating the validity of a patent. It may not be right, but it’s not so far out there to deserve a rant.

    1. 11.1

      You have missed the point of the rant, as well as put up a strawman on pure ideas.

      But hey, at least you were polite in your waywardness.

      (You do realize of course that if Congress is indeed off in its law for constitutional reasons, that such just is not an invitation for the Court to write its own statutory law, right? There is but one option and we just haven’t seen that option, have we?)

      1. 11.1.1

        (You do realize of course that if Congress is indeed off in its law for constitutional reasons, that such just is not an invitation for the Court to write its own statutory law, right? There is but one option and we just haven’t seen that option, have we?)

        The court isn’t writing its own law, it is attempting to delineate the bounds of the patent power. Everyone agrees that Congress’ actual 101 language is an attempt to reach “everything under the sun made by man” – in other words, they seek to utilize the full extent of the Constitutional grant. Conversely, there is no evidence that Congress seeks to explicitly claim more than what the Court has construed as the extent of their power. Thus the court isn’t “writing its own law” it is in the early stages of sketching the constitutional boundary.

        1. 11.1.1.1

          Sounds nice, but just is dead wrong.

          You need to read and understand the concept of statutory law versus common law.

          Your “just beginning to sketch the contours of Constituional limits” is simply wishful thinking. Read Golan v Holder – same clause, but in the application of copyright law.

      1. 11.2.1

        Sure, a well-stated strawman – for as much as that gets you.

        You really need to understand the terrain, Mr. Snyder. You keep on messing up with non-Useful Arts as well….

    2. 11.4

      Um… no. Even this court didn’t make that wild “well even though the statute excludes 101 it kinda shoulda been in there, maybe” analysis.

      1. 11.4.1

        The question you asked is “whether eligibility is a defense to any infringement suit.” The answer to that is unquestionably yes, because Congress doesn’t need to provide a forum for judicial review when the act is outside of their jurisdiction.

        Simple example – Congress redraws 101, 102 and 112 so that the following claim properly issues under the new rules: “Claim 1: A method wherein electricity is provided to the city of New York.” Congress then amends the statute to say that neither 101 nor 102 will be an invalidity defense once the patent issues.

        Can Congress choose who New York gets her power from by giving an exclusionary right to a particular party and calling it a patent?

        There are essentially two types of people on this board. One group points out that Congress is entrusted with the patent power, and if they issue a patent they issue a patent. The second group points out that the patent power grant in the Constitution inherently has limits, because the words “inventor” “discovery” and “promote” had meanings which impose limitations on the power. The former would uphold the claim so long as it comports with the statutory scheme. The latter would hold it invalid regardless of how valid the scheme makes it. The Supreme Court falls into the latter group. Even if Congress were to explicitly say “eligibility shall not be a defense,” guess what – it still would be a defense, because defenses arising under statute are not the only defenses one can assert.

        1. 11.4.1.1

          One problem Random with your “two types” is that you don’t understand the structure of US law.

          The Supreme Court is not above the law.

          Another wrinkle to throw your way: ever hear of “void for vagueness”…? Typically – but not exclusively – applied in criminal law settings, your version here of the Supreme Court setting a but NOT defining (e.g. “Abstract”), suffers its own f@tal flaw.

          One simply cannot say “interpretation” as an open-ended excuse to change (yes, that is re-write; even if you just want to put a different label on it) statutory law – for which, authority has been explicitly allocated to a single (and different) branch.

          You just don’t get to play semantics and arrive at the same ends.

          1. 11.4.1.1.1

            anon, congress may impeach supreme court justices only for high crimes and misdemeanors, not for misinterpreting the constitution.

            Thus, if the supreme court rules as a constitutional matter, only the nation can overturn them through a constitutional amendment.

            1. 11.4.1.1.1.1

              Um…? Who said anything about impeaching Justices? Certainly not I.

              As to your “corrections,” that view is simply false. I suggest that you do just a little research to see the literally hundreds of times that the Supreme Courts decisions have been overturned (in any number of ways, including straight up normal legislation – even that directly invited by the Court itself). It just is NOT as you portray.

  8. 10

    God damn, won’t this argument just die, already?! Jesus, man, the Supreme Court has held since at least Graham v. John Deere, 383 U.S. 1 (1966), that section 101 is in fact a “condition of patentability” under the 1952 Patent Act. To quote the language from Graham:

    “The 1952 Patent Act.
    The Act sets out the conditions of patentability in three sections. An analysis of the structure of these three sections indicates that patentability is dependent upon three explicit conditions: novelty and utility as articulated and defined in s 101 and s 102, and nonobviousness, the new statutory formulation, as set out in s 103.” 383 U.S. at 12.

    So there you have it, section 101 is, according to the Supreme Court, one of the explicit conditions of patentability. Game over. The fact that the section heading of 101 doesn’t refer to “conditions of patentability” is, as the Federal Circuit correctly found, an elevation of form over substance.

    It escapes me why the Federal Circuit did not quote from Graham on this point, but their ignorance of longstanding Supreme Court authority doesn’t make their ultimate holding any less correct.

    Get over yourselves. This is a dumb argument, always was. Let it go.

    1. 10.1

      Forgot to mention, author’s attempt to dismiss Graham as dicta is unpersuasive. Repeatedly calling something “dicta” doesn’t make it less persuasive. The overall structure of the statute, not rote mechanical adherence to section headings, supports the Supreme Court’s analysis here.

      And arguing that Graham supports 101 not being a condition of patentability, is laughable. “Utility” is one of the conditions of patentability in the Supreme Court’s summary, and the word “utility” is obviously used as a shorthand to Section 101, which encompasses the subject matter eligibility analysis.

      Let’s not forget, this argument rests on the differences in section titles, which just like section titles in contracts, are not binding and do not spell out the actual legal requirements of the section itself. Federal courts have long held that section titles are not dispositive, or for that matter, particularly useful by themselves for resolving an interpretation question. A more holistic and structural approach to the statute, which Graham provided, correctly found that Section 101 is a “condition of patentability” notwithstanding the title of that section.

      And the idea that Congress intended to insulate patents from invalidity challenges even where there is an egregious lack of patentable subject matter, would require more proof than simply the fact that Congress omitted the words “conditions of patentability” from the section titles. Under the author’s view, if the PTO was dumb enough to grant a patent covering a particular religion (or something else that’s equally lacking in any arguable level of subject matter eligibility), you’re saying that the courts could only invalidate it with prior art under 102/103, or 112? That does strike me as an “absurd result,” frankly, and something that Congress could not possibly have intended.

      1. 10.1.1

        Under the author’s view, if the PTO was dumb enough to grant a patent covering a particular religion (or something else that’s equally lacking in any arguable level of subject matter eligibility), you’re saying that the courts could only invalidate it with prior art under 102/103, or 112? That does strike me as an “absurd result,” frankly, and something that Congress could not possibly have intended.

        “You’re welcome at any time to stop practicing your improved religion if you think it’s not worthy of a patent.”

        Sorry. Couldn’t resist.

      2. 10.1.2

        Lode, Rich wanted to move every patentability consideration to 102/103 or 112. He said this often, and Prof. Hricik echoes his comments here.

        But Rich would not go to step 2 and give ineligible subject matter no weight in the 102/103 analysis. At least, I cannot recall that he ever did.

        102/103 is not designed to do the work of 101. It assumes that ineligible subject matter has been filtered out already so that we are not trying to determine the non obviousness of new music, for example.

        282 works only if 101 continues to be a front end filter.

        1. 10.1.2.1

          102/103 is not designed to do the work of 101. It assumes that ineligible subject matter has been filtered out already so that we are not trying to determine the non obviousness of new music, for example.

          Or it assumes that the judiciary has already taken care of this incredibly obvious problem, or that it will take care of it. But we all know what Rich did subsequently to the patent system and it’s not difficult to guess what his motives were.

          1. 10.1.2.1.1

            Again with the ‘scapegoat attacks on Rich when both of you need to understand that it was Congress that enacted the law (as duly authorized under the constitution).

        1. 10.1.3.1

          G.S. Rich was the Dred Scott of patent law. I think he was the patent bar leader that led the fight for 103 with the argument that Supreme Court had somehow gone amok by requiring “invention” when assessing the differences between the claimed invention and the prior art. His attack on A&P and Cuno Engineering was completely unwarranted, but then one begins to wonder what his real motivations were. Cuno Engineering had this quote from Atlantic Works, which I shall give in full:

          The design of the patent laws is to reward those who make some substantial discovery or invention, which adds to our knowledge and makes a step in advance in the useful arts. Such inventors are worthy of all favor. It was never the object of those laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures. Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention. It creates a class of speculative schemers who make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax upon the industry of the country, without contributing anything to the real advancement of the arts. It embarrasses the honest pursuit of business with fears and apprehensions of concealed liens and unknown liabilities to lawsuits and vexatious accountings for profits made in good faith.

          Atlantic Works v. Brady, 107 US 192, 200 (1883)(Bradley, J.)

          There is little doubt that the CCPA’s and Federal Circuit’s administration of the patent laws during the Judge Rich era saw the patent office issuing by the hundreds of thousands what we now know to be junk patents that have operated in the manner described by Justice Bradley in Atlantic Works. Judge Rich and Dred Scott. Their names should be linked because each brought disaster on this country in their own way.

          1. 10.1.3.1.1

            Except not, as the era brought about by Congress (which you continue to attempt to ‘scape goat Rich with) brought about this country’s greatest leap forward in innovation.

            Your curse-ade is simply misplaced.

            1. 10.1.3.1.1.1

              See what happens when a fox like Rich guards the hen house?

              Congress is too willing to change the patent laws to accommodate special interests. They listened to Rich in ’52 in any number of ways, each of which has caused endless problems since. There is not one single thing that Rich did in ’52 that helped patent law in any way, even a small way. Everything he did was wrongheaded, and has lead to a fundamental change in the wrong direction.

              We have the “objective” test of 103, which reduces to the opinion of some indeterminate person. Objective? Hardly. This truly is the seat of the pants test that Rich claimed he was getting rid of.

              KSR, which restores the pre-’52 test in large measure, has finally restored the balance and sanity to 103.

              We have 112(f) that permitted indefinite claims.

              We have 271(a)-(c) that have been interpreted each in ways that have wrought havoc – from divided infringement to mens rea of patent infringement for indirect infringement.

              Then we have his idea that 101 was not a condition for patentablity. Move on to 102/103, but give weight to non statutory subject matter.

              He saw no problem in functionally claimed inventions. See, e.g., in re Donaldson.

              His State Street Bank case enshrined a programmed computer as per se eligible, while “overruling” the landmark case of Hotel Security.

              What did he do that was not wrong in philosophy if not in execution?

          2. 10.1.3.1.2

            The Court has ebbed and flowed anti-patent throughout its existence.

            Taking a quote then on the heels of the sewing machine wars and pretending that it changes (somehow) what Congress did in 1952 – as a reaction against a later just as anti-patent Court – is more than a bit disingenuous.

            You continue your ‘scape goat treatment of the wrong entity. You just need to come to grips with the fact that patent law just is not Ned-IMHO law.

  9. 9

    David, if congress believed that 101 was included in the conditions for patentablity per the dicta in Graham, shouldn’t that prevail, per King v. Burwell, over seeming explicit language to the contrary?

    Prior to King v. Burwell, I might have agreed with you.

    Also, I don’t think you have ever addressed my point that “new” was added in 1793 along with “composition,” while not before know or used were retained from 1790. “New” cannot mean the same thing as “not before known or used.” Graham is dicta. The holding in Myriad found the claimed gene not a “new” composition, albeit that it was not know before its “discovery.”

    Regarding 103, the “opinion” of a POSITA is not objective and never will be. Rich sold everyone a subjective test to replace an objective test while stating he was doing just the opposite. The prior test originated in Hotchkiss. That test required some functional improvement. Later courts said the functional improvement must be different in kind, not degree. But functional improvement is something that one can actually prove through objective evidence. One can never prove what some hypothetical person thinks — except if we were to conduct surveys or the like of such identified POSITAs.

    1. 9.1

      Wrong on so many levels Ned.

      For instance, any engineer worth their salt will tell you that “improvement” is often a trade-off, sometimes with something as banal as cost.

      Further, if you had any working knowledge of innovation, you would be aware that the first steps in a breakthrough disruptive innovation (the best kind of innovation) are actually WORSE than status quo and not considered “improvements” in the “objective” sense you are using that word.

      1. 9.1.1

        “anon” the first steps in a breakthrough disruptive innovation (the best kind of innovation) are actually WORSE than status quo and not considered “improvements” in the “objective” sense

        That’s some of the most impressive shoveling I’ve seen in a long time. The cows thank you.

        1. 9.1.1.2

          MM, he or she actually has kind of a point here. The first steamboats were inferior to the best sailing ships…the first solid state hard drives were more expensive, hotter, shorter lived, etc. “Improvement” in some instances may involve viewpoint, i.e. be inherently subjective.

          1. 9.1.1.2.1

            It is more than just “kind of a point,” Mr. Snyder.

            I have explained in substantial detail previously the foundations of innovation understanding on this very point. It is well proven over many cycles of disruptive innovation, an it is equally well known that the “common man view” of purely linear “get better” is simply not anything more than a simplistic model of but one subset of innovation.

            The patent system is just not built for these one-off’s only. This too is reflected by the fallacies engaged by both Ned and Malcolm as it comes to claim forms, in which both have labored under falsities of singular optional claim forms as somehow being the ONLY legally viable claim forms.

            You will note that neither is willing to continue the dialogue when I point this out.

            Go figure.

            1. 9.1.1.2.1.1

              Anon, I don’t get the non sequitur on claim forms, but I fundamentally agree with you that true innovation is disruptive. It is the main threat to established businesses. Reducing the incentive to obtain patents by startups almost guarantees a reduction in innovative research that might disrupt their established business. Thus it is a very much the interest of established businesses to do what they are doing – to establish reexaminations, IPRs and the like that they might force up the cost of owning a patent.

              I had a call today from a small inventor who knew of me from these blogs. He was complaining bitterly about reexaminations, and particularly about broadest reasonable interpretation and a lower standard of proof. He said he had almost given up hope in the system and was thinking about not using the patent system at all in the future relying on nothing but trade secrets as best he could.

              1. 9.1.1.2.1.1.1

                My pointing out the fallacy of “the singular as the only in a land of options” is not a non seqitur Ned, but a part of the larger ongoing discussion here on patent law principles and the 1952 Act. Your desire for a mandatory-equivalent to Jepson style claiming reflects your view of patent law being a certain way (that it just not is).

                I also think that you have been – while more polite – too glib in your response here and miss the point that not all innovation – and certainly not the most important kinds of innovation are readily viewed as the common man may view “improvement.” It is not all that surprising to see the error of the common man and the thinking that innovation is an ever upward and steady march.

                This also is just not so.

                Innovation is far more mercurial, with fits and starts and retrenchments and “start-overs.” Protection for innovation does not – and in truth, cannot – rest on a common man view of improvement as a linear betterment of what was here yesterday.

                Malcolm outright dismisses this as “impressive shoveling” at 9.1.1 – but his lack of understanding of the nature of innovation is legendary. Instead of joining in on a discussion of the nature of innovation in an inte11ectually honest way, he merely does what he so often does when confronted with inconvenient facts: he C R Ps up a storm of dissembling and denigrating demoguagary.

                If you were ever able to get out of your own way and develop an ability to be objective despite the “align-with-Ned-so-must-be-an-Einstein” illness you have, you would be able to see how anti-patent Malcolm is, and how he drips in liberal-left disdain of the property right that is a patent.

                1. …and I would add as well that this harkens back to the constitutional understanding of what the word “promote” means. Only one of more than one meaning has to do with the idea of linear advancement. Another meaning is that of the “advertising” notion: a promotion being the gathering and dissemination of knowledge.

                  I have addressed this subtle nuance in the past with my comparison of analogies of building a system of roads versus building a parking lot. A system of roads has more aesthetic appeal – especially when planned in advance. But innovation cannot be planned for in advance like roads. That is not how innovation works. Instead, take the analogy (that not without coincidence) mirrors more a sense of urban blight: the parking lot. Parking lots simply pave in every direction, allowing one to turn on a dime and go in any direction – as innovation does, so does (and should) thr patent system do. This is also a critical point as to why 101 is built – yes designed on purpose – to be a wide open welcoming gate. Forms of innovation (see the reference to Kondratiev) simply are not – and cannot – be known a priori.

                  It is those clinging desperately to the past trying to prevent what the patent system ought to be that are the biggest enemies of patents. Sadly, this too is an area where your complete lack of objectivity prevents you from joining the dialogue fully.

                2. anon, on Jepson claims — the European format — I think they clarify claims. I think the PTO could by rule require applicants to put prior art elements into a preamble, just like they now require labeling of prior art figures as prior art.

                3. Anon, what I find puzzling about Malcolm is his bias in favor of big corporations vis-à-vis the startup. He seems to have a blind eye that almost all replacement technologies were invented by guys with a better idea, who founded companies that grew because they were protected by patents. Morse is just one good example. Bell is another.

                  The patent system is most important to startups and to pharma, where development costs can only be justified because of patent protection.

          2. 9.1.1.2.2

            The first steamboats were inferior to the best sailing ships

            In every aspect? I highly doubt that.

            Regardless, I’m not taking sides on this “improvement” question. I just find the assertion I copied in 9.1.1 to be ridiculous on its face, to the extent it isn’t circular nonsense. At the very least, it needs to be qualified more than a little bit. A quick glance at the wiki page on “disrpuptive innovation” shows examples of “disruptive innovations” that were always marketed as objective improvements (in some manner) over the existing technology.

            Most importantly, this subject matter eligibility debate has nothing to do with “disruptive technology” except in the minds of our armchair conspiracy theorists who think that blaming their failing public relations campaign on “Big Corp” — you know, those companies that “don’t innovate” except when they do — will make their patent maximalist philosophies more palatable. Of course it’s not going to work out that way but they will try everything.

            1. 9.1.1.2.2.1

              Move the goalposts back, Malcolm.

              There was never a “in every aspect” aspect.

              1. 9.1.1.2.2.1.1

                There was never a “in every aspect”

                No doubt. That’s why your assertion (which I copied out for you and everyone to read) was bogus and non-responsive to Ned’s comment.

                Thanks for playing.

            2. 9.1.1.2.2.2

              Steamboats even in their initial versions solved a major problem: no wind.

      2. 9.1.2

        Martin,

        “new” or “improved.”

        One might argue that a steamboat is a new form of ship.

        But, anon did ask me for a rule, and I cited Hotchkiss, gave an extensive quote. Very much KSR.

        The doorknob structure was known and unchanged.
        The method of attaching a knob was known and unchanged.
        The use of a clay knob with other doorknobs was known and their advantages.

        The combination produced nothing that was not known or expected. No synergy. No functional improvement that was difference in kind from that which was known and expected.

        And, since KSR, this is a test of obviousness. At least it is objective.

          1. 9.1.2.1.1

            “synergy” is an option, right

            So is not wasting everybody’s time with a junky claim to an obvious combination.

            1. 9.1.2.1.1.1

              Yet another FAIL for you Malcolm, as synergy being an option expressly places it in a different category than obviousness – for which non-obviousness IS a requirement.

              You really have some serious trouble with legal concepts when optional things are in play.

    2. 9.2

      Ned where does the SCOTUS get the authority to make these holdings you are referring to?

      I don’t see it in the text of the Constitution. I see it say Congress and they did in 1952 Patent Act. The Royal jelly 9 must be holding that it is unconstitutional for all these various things you are saying.

      Really? Unconstitutional? I don’t think so. I think Congress could —barring the Royal 9 doing whatever they please — revise the 1952 Patent Act to say that obvious means that unless you can find a TSM that is it non-obvious.

      The Royal nutty 9 are not supposed to be wildly proclaiming everything to be unconstitutional.

      1. 9.2.1

        I think Congress could … revise the 1952 Patent Act to say that obvious means that unless you can find a TSM that is it non-obvious. /i>

        I don’t see where Ned is arguing otherwise.

      2. 9.2.2

        Night, what is wrong with requiring something be completely new, or something that is a improvement. Being new or improved, after all, a requirement of the statutes prior to ’52. The requirement remains today. 103 is an “additional” requirement that may seem to approve of the patenting of something that is neither new nor an improvement. But, as we had that debate here some months ago, that really is a false notion. Something at least has to be an improvement.

        I think we could strike 103 from the law without doing much damage at all since new and improved is still there, in addition to novelty.

        1. 9.2.2.1

          Define “improvement” – and incorporate the proper understanding of disruptive innovation.

          1. 9.2.2.1.1

            Why don’t we consider Hotchkiss as a starting point:

            [K]nobs of metal, wood, &c., connected with a shank and spindle, in the mode and by the means used by the patentees in their manufacture, had been before known, and were in public use at the date of the patent; and hence the only novelty which could be claimed on their part was the adaptation of this old contrivance to knobs of potter’s clay or porcelain; in other words, the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter’s clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise; as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

            The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and none the less so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

            But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use; and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

            Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well-known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

            But this, of itself, can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one; or, in the sense of the patent law, can entitle the manufacturer to a patent.

            The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.”

            Known mechanical structure.
            Known method of attaching knobs to that structure.
            Known clay knobs and their utiltiy.

            KSR?

            1. 9.2.2.1.1.1

              How about instead of that we wipe all the Royal 9’s nonsense. The Royal 9 have a terrible record with patent law.

              How about instead of going back 150 years that we look to laws that will be effective in the modern era and facilitate examination.

              If Congress amended 103 to read that an invention is non-obvious unless a TSM can be found in a publication before the date of invention, would it be unconstitutional?

              I don’t think so. I think the entire Royal 9’s jurisprudence in patents should be wiped. They have no idea how to create a modern patent system and their authority should be limited to only holding unconstitutional a provision of the patent act.

              1. 9.2.2.1.1.1.1

                Night, I think a combination of TSM and KSR would do the trick. KSR seems to be directly based on Hotchkiss and provides a good summary of its holding.

                TSM prevents hindsight.

                1. Ned,

                  The record is exceedingly clear that 103 was NOT merely an addition.

                  Are you falling back to your errant “mere codification” mantra?

            2. 9.2.2.1.1.2

              You have not incorporated disruptive innovation as that term is understood in the art (note, this leaves out Malcolm’s cheap-arse spins, since clearly, he has no clue about the topic of innovation and innovation literature).

              1. 9.2.2.1.1.2.1

                he has no clue about the topic of innovation and innovation literature

                Innovation literature? It sounds so ivory towerist. Probably infected with all kinds of commie ideas.

                1. You are all full of FAIL today, as it is the opposite of the communist thingies – it is tied to the real world and – gasp – making money.

                  No wonder you have no clue about it – it is something you despise.

  10. 8

    Clearly what Congress intended when it wrote the 1952 patent act was that claims protecting ineligible subject matter (e.g., non-obvious and useful information) would be immune from challenge on that basis after being mistakenly granted by the PTO (which is the most perfect administrative agency in the history of the universe).

    Yes, that makes a lot of sense — particular given that such claims were historically favored by the patent system and exactly what “the Framers” were thinking of. As everyone knows, that’s why the PTO had to hire people like Einstein as Examiners: who else could handle the millions and millions of applications that were being filed by individuals seeking to own new and useful facts and new methods of reasoning?

    In all seriousness, academics and lawyers and judges on the losing side of history can wring their hands over “judicial usurpation” until the cows come home. It seems to me — and nearly everybody I know, which includes quite a few normal (non-attorney) people struggling to make ends meet — that our government is working pretty much like it always has. As alleged “assaults” on the Constitution go, a finding that an improvidently granted ineligible patent can be attacked on those grounds is some phenomenally weak sauce, as is a finding that subject matter eligibilty is more than a mere requirement for the use of particular verbiage in a patent claim.

    As I’ve pointed out before, if certain professors want to wrap themselves in the Constitution and blather on about “principles”, it’d be nice if they could show that they actually adhere to those “principles” in contexts where courts have arguably strayed “outside the statute” (or outside the bounds of reason and commen sense) in other contexts (whether to make patents easier to obtain, or not).

    As it stands, anybody who’s been paying even modest attention over the past few years can see that these “principled” patent folks started up with their ritual “Royal Nine” bashing only when their precious right to sue everybody with a junk patent started being diminished.

    Reap the whirlwind. You were warned. And there’s more to come. I’d suggest giving up or finding some better arguments but I understand that certain people with tons of money to spend to protect their wealth are prone to behave desperately and say ridiculous things (see, e.g., the Republican party candidates for President if you’ve any doubt about that).

    1. 8.1

      ^^^ lots of blathering, but nothing on point to the actual article here.

      Come man, try those short declarative sentences and write something on point.

      If you want to blather on about “better causes,” lead the way yourself and take up real auto accidents and not this “children-running-through-the-fields-of-rye” that you are obsessed with (and yet cannot get the law right about).

      1. 8.1.1

        take up real auto accidents

        But it’s so much more fun watching entitled and incredibly arrogant wannabe attorneys like you hoist yourselves on your own “principled” petards over and over again.

        The best part is that you can’t help yourself so I don’t need to do much except keep my popcorn bowl full.

        1. 8.1.1.1

          Empty prattle Malcolm, nothing more in your response.

          Once again, I invite you to say something substantive and on point.

    2. 8.2

      MM, in a sense, the programmed computer flummoxed, and of course, the knee-jerk response by the CCPA was to approve of programmed computers as per see eligible. Application of Bernhart. The Supreme said, slow down. Math is not patentable subject matter, and reciting a computer made no difference because the math was preempted. Benson. But Bernhart was never overruled directly. Along came State Street Bank which relied on the idea that a programmed computer was per se patentable subject matter.

      State Street Bank also “overruled” Hotel Security, the very case that introduced the mode of analysis that we now see in Mayo, Alice and for that matter, Bilski — calling business methods “abstract.”

      So, even though it should have been obvious that the Supreme Court would never agree with State Street Bank, the Feds did it anyway. But the source of the problem mainly was with Bernhart.

      Yeah, and Rich wrote State Street Bank.

  11. 7

    The only thing that remains somewhat comical to me about the Alice decision is the fact that people who would in other circumstances not bother to toss water onto the burning robe of Justice Thomas, suddenly believe that his logical and reasoning is impenetrable.

    1. 7.1

      Certainly Alice could have been written better (the same is true for Myriad). A big part of the problem — a recurring problem that has been discussed here many times — was that neither party wished to address the elephant in the room. Judges are generally stuck working with what the attorneys give them to work with.

      That said, Alice is a fairly straightforward application of reason and logic to the fundamental principles set forth in Prometheus v. Mayo — fundamental principles that will never, ever disappear from our patent system (at least not as long as people remain aware of them).

      1. 7.1.1

        Let me know when patent law writing has been authorized by our constitution to the judicial branch and any set of “principles.”

        Until you grasp that your rant is just not on point, all you are achieving is blowing smoke and kicking up dust. It is simply NOT on point whether or not the Supreme Court has reached the “right” ends, and very much on point – as this purports o be a legal blog – that thr appropriate means to whatever end have been utilized.

        1. 7.1.1.1

          Let me know when patent law writing has been authorized by our constitution to the judicial branch and any set of “principles.”

          Let me know which part of the patent statute authorized the PTO to hand out patents that protect new information.

          C’mon, Mr. “Principled.” I want to hear your super awesome arguments. Or maybe you’re too busy these days trying to shore up your “traditional marriage” after it’s been undermined by the “Royal Nine.” The Republic is crumbling! The Republic is crumbling!

          It’s a system of checks and balances, you see. If you don’t like the way things are being checked by one branch, you need to talk to the other branch.

          But that presents a wee problem for your “agenda”, doesn’t it, “anon”?

          Boo hoo.

          1. 7.1.1.1.1

            As so often told to you, your strawman of “protecting information” falls apart with the mere aggregation coverage existing in the claim as a whole doctrine.

            Maybe you should spend less time spinning and more time learning.

            1. 7.1.1.1.1.1

              Still waiting for an answer, “anon.”

              This:

              the mere aggregation coverage existing in the claim as a whole doctrine

              is a pile of hoohaw that even a third-rate patent agent like yourself should be ashamed of.

              Once again, please tell everyone: which part of the patent statute authorized the PTO to hand out patents that protect new information?

              1. 7.1.1.1.1.1.1

                Not sure what “answer” you are waiting for.

                Maybe you should ask an inte11ectually honest question first.

                Patents don’t protect information as you attempt to spin that notion. You yourself in the past admitted that elements of a claim – a perfectly valid claim – can very well include mental steps.

                Are you backing away from one of your prior admissions?

                Wouldn’t be the first time you tried to deny something you volunteered an admission to.

  12. 6

    I appreciate all the effort you’re putting into this bro but I think you hit the nail on the head with:

    “(a) an absurd result;”

    Which is what you’d have us led to.

    1. 6.1

      In the minds of these people, 6, a patent system where the governement hands out millions of patents per year on information and logic is less absurd than a patent system which allows completely skill-less people to hold skilled people hostage with patents simply because those skill-less people imagined a “new function.”

      It boggles the minds of most people that anybody could hold such values. But some grifters saw a way to compound their wealth and they don’t want their lollipop taken away. There was never any doubt about the screeching that would ensue, nor is it surprising that it would represent some kind of “Constitutional crisis” to those terribly persecuted wealthy folks who have to find another scheme to get richer via paper pushing and litigation.

      The ultimate answer, of course, is to stockpile tons of weapons and prepare for the inevitable battle for the future of our awesome patent heritage.

  13. 5

    And let’s not leave out, David, that judicial analysis of a statute in the absence of a challenge does not mean that future parties’ hands are tied. Mayo and Alice thus cannot be read to bar the Supreme Court or the Federal Circuit from issuing a correct ruling in a future adversarial context.

    NASA v. Nelson, 131 S. Ct. 746, 766 (2011) (Scalia, J., concurring) (“The Court’s sole justification for its decision to ‘assume, without deciding’ is that the Court made the same mistake before . . . . But stare decisis is simply irrelevant when the pertinent precedent assumed, without deciding, the existence of a constitutional right”); FEC v. NRA Political Victory Fund, 513 U.S. 88, 97 (1994) (“The jurisdiction of this Court was challenged in none of these actions, and therefore the question is an open one before us.”); Brecht v. Abrahamson, 507 U.S. 619, 631 (1993) (reaffirming longstanding rule that if a decision does not “squarely address [an] issue,” a court remains “free to address the issue on the merits” in a subsequent case); Will v. Mich. Dept. of State Police, 491 U.S. 58, 63 (1989), citing Hagans v. Lavine, 415 U.S. 528, 535, n. 5 (1974) (“[T]his Court has never considered itself bound by [prior sub silentio holdings] when a subsequent case finally brings the jurisdictional issue before us.”); United States v. L. A. Tucker Truck Lines, Inc., 344 U.S. 33, 38 (1952) (“[T]his Court has followed the lead of Chief Justice Marshall who held that this Court is not bound by a prior exercise of jurisdiction in a case where it was not questioned and it was passed sub silentio”); United States ex rel. Turner v. Williams, 194 U.S. 279 (1904) (“The rule of stare decisis only arises in respect of decisions directly upon the points at issue.”); United States v. More, 7 U.S. 159 (1805) (Marshall, C.J.) (“No question was made, in that case, as to the jurisdiction. It passed sub silentio, and the court does not consider itself as bound by that case.”); Special Devices, Inc. v. OEA, Inc., 269 F.3d 1340, 1346 (Fed. Cir. 2001) (Although a prior decision of this court ruling on an issue may have implied that the lower court issued a final decision with respect to the issue, the question of “finality . . . was raised neither by the parties nor sua sponte by [this] court. Because [the prior decision] did not confront and decide the same issue, it is not precedent on the question before us.”).

    1. 5.1

      Robert: Mayo and Alice thus cannot be read to bar the Supreme Court or the Federal Circuit from issuing a correct ruling in a future adversarial context

      I would like to say that I can’t believe folks are still beating this dead horse but we all know that zombie myths refuse to die.

      Please explain to everyone, Robert, how a granted claim to a method of:

      (1) gathering data using old technology and then
      (2) thinking a non-obvious and useful thought about the meaning of the data

      can be invalidated without invoking subject matter eligibility.

      Alternatively, please explain to everyone the “long established principle” that requires such claims to be enforceable in our patent system. Given that claims of this sort are far, far easier to conceive of and write than any other patent claim, why did it take so long for patent attorneys to start obtaining and litigating? Given the “long established principles” and such that your cohorts here are blathering on about.

      Thanks in advance, Robert. I know you’re a very serious person who thinks deeply about these subjects so I really look forward to your answer.

      1. 5.1.1

        >Please explain to everyone, Robert, how a granted claim to a method of:
        >(1) gathering data using old technology and then
        >(2) thinking a non-obvious and useful thought about the meaning of the data
        >can be invalidated without invoking subject matter eligibility.

        So, MM, you think it is unconstitutional to grant such a claim?

        1. 5.1.2.1

          Not really – mere aggregation is already taken care of with the Claim as a Whole doctrine. You don’t even need to get into any type of “mental steps” (which blows Malcolm’s pet theory out of the water). To wit: a claim of “a blue bicycle, an umbrella, a goldfish in a round bowl and a cat in the hat” fails – no messing with statutory subject matter whatsoever; no Belieb-driven anti-software patent hokyness at all.

          Please pay better attention.

    2. 5.2

      “Assume without deciding” is not the same issue as what undergirds the Supreme Court’s future, projecting (and purely conjectural) feeling of possible harm (key on the word “may”) that reveals that their intrusion and judicial activism violates the “current case or controversy” and “no advisory action” positions that constrain even the top Article III court.

      1. 5.2.1

        It is interesting too that the SCOTUS now invokes “abstract” with no constitutional mooring. It created this and it apparently has no bounds other than whatever public policy the Royal 9 wish to legislate.

        1. 5.2.1.1

          [The Supreme Court] apparently has no bounds

          Because the Supreme Court won’t allow you to patent abstractions such as information and logic — none of which are listed as eligible subject matter in the patent act.

          Sure. That makes sense. A tiny, tiny, tiny number of the most privileged people on the planet aren’t as empowered as they thought they were. Therefore, the Supreme Court has “no bounds.”

          Got it.

          1. 5.2.1.1.1

            Again with the duplicitous dichotomy as you impugn “most privileged” while you attack the form of innovation most accessible.

            Watch Malcolm run away yet again.

            What a chump.

    3. 5.3

      Yup. But my guess is this sucker will go en banc, at least if some of the more textual/strict construction judges get involved, like O’Malley or Moore. Or it’ll get swept under the carpet because it’s hard to openly, honestly, and rigorously get to where the Supreme Court has brought us all…. without thinking about anything.

  14. 4

    It would seem that the question “is this creative work eligible for patenting” has been around for a long time, but it did not have major economic consequences until creative works were being produced in the medium of software. Clearly the mania for patenting business methods sprung from patenting software, since both are essentially instructions to do something.

    If someone sued for patent infringement over a motion picture, wouldn’t the defense always have been “you cant patent movies” ? The statues seems self-executing to me….if the item ain’t a machine, composition etc. the factual questions of obviousness or anticipation can’t even be reached… There are nonobvious and novel but non-patent eligible creative works in the world. If you cant defend on 101, then what do you defend on? Why do those words exist at all?

    1. 4.1

      Your emphasis on “creative” is simply misplaced.

      We are simply in a different Kondratiev wave.

    2. 4.2

      Martin: It would seem that the question “is this creative work eligible for patenting” has been around for a long time, but it did not have major economic consequences until creative works were being produced in the medium of software.

      It was the possibility of “getting rich off the Internet” which lured many bottom feeding patent attorneys out from under their rocks and into the light. State Street Bank — easily one of the worst decisions in the history of patent law — turned the US patent system into a miserable joke, a virtual playground for the professional grifters in our society to get richer at the expense of everyone else.

      the mania for patenting business methods sprung from patenting software,

      The “mania” sprung from the unchecked perception that patenting information processing logic in the context of “selling stuff” was patent eligible. Once the door is opened, the grifters are going to rush in. Why? Because that’s what grifters do.

      If someone sued for patent infringement over a motion picture, wouldn’t the defense always have been “you cant patent movies” ?

      First, let’s remind everyone that it wasn’t too long ago that some genius sued a movie distributor because (try to believe this) the movie included a scene where a character allegedly used an infringing device. Better yet: the same “expert” commenters who never saw a patent they couldn’t embrace turned up here and tried to defend the actions of the patentee! That’s the world those people want everyone to live in: patent litigation is just a way of life if you are selling anything to anybody. Sound great if you have the money to buy patents, doesn’t it? Or if you’re a patent attorney.

      Second, the defense that you stated is correct but the immediate question that should be asked is: why is it correct? I know the answer to that question. It’s easy.

      I also know the name of an “expert” who either can’t answer that question without tripping over his own feet, or who would sit here and tell you that “of course new movies are eligible for patenting as long as the claim recites an article of manufacture.”

  15. 3

    Really a great post!

    You forgot in your analysis, though, that the SCOTUS completely re-wrote the 1952 Patent Act with Alice and overturned Graham. (What are these judicial exceptions? I don’t see them in the text of the Constitution. So, they are fabricated from what? The only plausible explanation is that the Royal 9 have held that it is unconstitutional to grant a patent for an abstract idea. And, then they feel free to define abstract idea unmoored from the Constitution to be anything they like for public policy purposes. The Royal 9’s path to become the legislative and judicial branch.)

    1. 3.1

      By the way, as a thought experiment, what if the Congress amended the 1952 Patent Act with abstract ideas are patent eligible.

      What then?

      1. 3.1.1

        NW what if the Congress amended the 1952 Patent Act with abstract ideas are patent eligible.

        What then?

        Absent any other major changes to the statute, what happens is that there is immediate and intensse public pressure forces Congress to reverse the act. That happens almost immediately, well before the inevitable Supreme Court case that finds the act to be unconstitutional under the First Amendment (at least).

        Mind you, I’m assuming that your hypothetical relates to planet earth where only a tiny, tiny, tiny portion of the public worships the idea of patenting information and logic.

        1. 3.1.1.1

          MM, the point is the law. There is a line of cases that Congress can’t pass a statute to overrule something the SCOTUS held as unconstitutional.

          So, what is that abstract thing they created out of thin air? Under what authority did the Royal 9 first generate abstract and then redefine it in Alice?

          1. 3.1.1.1.1

            the point is the law

            The point is that I answered your question directly. You should have been able to answer it yourself because it was a really easy question.

            what is that abstract thing they created out of thin air

            Well, at the very least it includes information and information processing logic. That would seem to go without saying. Of course, you don’t like where that leads so you either pretend that it’s too difficult for you to understand or you simply lack the intelligence to take the baby steps even when you hand is held for you.

            It’s been a while since I’ve come right out and said this but here it is again: the most vociferous proponents of software patenting are invariably the most ignorant, dishonest and self-absorbed patent attorneys in the room. I could tell stories about the table pounding I’ve encountered and someday I certainly will. Until then, I’ll just keep collecting them here and elsewhere where the fruit tends to hang really, really low.

            1. 3.1.1.1.1.1

              Wow, this blog post must have been targeted by your masters MM to mitigate by blowing smoke and ad hominine attacks. You are frenetic and mean. You’ve earned your pay.

              1. 3.1.1.1.1.1.1

                You are frenetic and mean.

                This from the guy who compared people who disagreed with him about patent law to “fundamentalist rapers and killers”.

                And now, apparently, wishes to pretend that he didn’t say that so he can ride on his high horse and label other people as “mean.”

                Thanks for proving my point, NW. I knew I could count on you.

                1. I will ride the white horse you give me and tell you that you are nothing but an arse.

                  You have blown smoke and pounded your table of emotions/Beliebs/policy and have not addressed a single point of law or history or statutory construction that the article is written upon.

                  Not one.

                  You sir, are nothing but a blight on any attempt at legal discourse. And only too sadly, this has been going on nine years and running.

                2. You have … not addressed a single point of law or history or statutory construction that the article is written upon.

                  Meanwhile, back on planet earth I’ve addressed all those things.

                  Nice try, Billy.

                3. Your “flapping by” does not count as “address.”

                  I am talking about about addressing in an inte11ectually honest manner, with law and facts, not your Beliebs/opinion/policy table pounding.

                  You profess to be a lawyer – try making a legal argument.

  16. 2

    Overall, David, the biggest flaw with your analysis of the legislative history is that it ignores the easily demonstrated fact that lawyers and jurists at all levels use the term eligibility and validity interchangeably. But there are other problems …

    David: The report emphasized the lack of “a sufficient number of examiners with expertise in the relevant art area.”

    That’s perfectly consistent with the application of 101 in CBMs. That’s because addressing subject matter eligibility in most instances will require understanding the relationship of the claimed innovation to the prior art (a requirement that applies to nearly patent statute).

    David: an intellectually honest position would be that there are too many bad patents that issued (in terms of 102, 103, and 112), but 101 is not the way to address them.

    That’s probably the least intellectually honest statement I’ve read about subject matter eligibility in a long time. It’s 2015! Do have any idea what an ineligible claim looks like or how to identify one? It would appear that you don’t but … that seems a bit surprising given the nearby existence of some intelligent and honest friends who are surely willing to help you learn.

    In any event, David, your solution is simply to lobby Congress to fix the court’s error and make it clear that (1) subject matter eligibility is not a condition for patent eligibility and (2) is nothing more than a technical requirement requiring that the words “process”, “machine”, “composition” or “article of manufacture” appear in the claims. Surely you’ll have no problem getting the public on your side because, hey, 103 and 112 can take care of everything. Right? After all, you told us so!

    1. 2.1

      Correction: I should have written “make it clear that subject matter eligibility is not a condition for patentability” in my final paragraph.

    2. 2.2

      >>eligibility and validity interchangeably

      Where is at least some evidence for that?

    3. 2.3

      The guy who uses ‘logic and reason’ to conclude that 112(f) doesn’t allow functional claiming is attempting to chastise another for not being ‘intellectually honest.’

      You can’t make this stuff up, folks!

  17. 1

    Fantastic post. I have echoed many of these arguments for the last year with respect to the history of 101 challenges.

    Those who believe that the Alice standard is in keeping with 101 jurisprudence prior to 2000 are simply and clearly wrong. Anything else is revisionist history.

    1. 1.1

      I agree. The challenge is that an intellectually honest position would be that there are too many bad patents that issued (in terms of 102, 103, and 112), but 101 is not the way to address them. See, e.g., Sequenom…

      1. 1.1.1

        I couldn’t agree more with you. There are bad patents out there, but the law of unintended consequences is in full effect at this point (maybe it wasn’t unintended).

        1. 1.1.1.1

          maybe it wasn’t unintended

          You’re getting warmer!

          How difficult it must be for the proponents of the worst patents ever to realize that they are not as universally loved as they once believed they were.

          1. 1.1.1.1.1

            I wish you could get this through your thick skull. I am not opposed to killing off bad patents. I am, however, opposed to anyone circumventing long established legal principles to serve an agenda, however benevolent it appears to be from the outside.

            1. 1.1.1.1.1.1

              I am, however, opposed to anyone circumventing long established legal principles to serve an agenda,

              Show everyone your deep thoughts about the claims in Prometheus v. Mayo, Bluto, so we can see how “principled” you really are.

              1. 1.1.1.1.1.1.1

                Thanks for proving my point. Moving the goalposts from discussing the poor reasoning in Alice to a phantom review of the claims at issue in Prometheus is par for the course for you.

                Just be thankful that SCOTUS is as disinterested in the law as you are. The pendulum will swing the other way eventually.

                1. Moving the goalposts from discussing the poor reasoning in Alice to a phantom review of the claims at issue in Prometheus is par for the course for you.

                  Alice flows directly from Prometheus. If you don’t understand what Prometheus was about, then of course you’re not going to understand Alice.

                  Show everyone that you understood what Prometheus was about in real time, Bluto. You must have been all over that case because you’re sooooooo “principled.”

                  Right?

                2. Whether Prometheus was correctly decided or not is irrelevant to the points being made (it likely was incorrectly decided based on the actual history of 101). Prior to this current incarnation of SCOUTS, 101 was NEVER raised as a defense in litigation. 101 was an obscure ten minute section of a basic patent law survey course. These are objective and indisputable truth.

                  Once you explain how courts have mysteriously misunderstood section 101 for the last 60 years I’ll listen to your rants.

                3. Prior to this current incarnation of SCOUTS, 101 was NEVER raised as a defense in litigation.

                  So what? Is there some “longstanding legal principle” that forbids lawyers from identifying previously unrealized defenses? If so, tell everyone about it.

                  Once you explain how courts have mysteriously misunderstood section 101 for the last 60 years I

                  That’s already been explained to you, Bluto, right here in these threads. It’s really not worth explaining it again for the thousandth time when you lack the intelligence to process the information.

                4. the actual history of 101

                  Yes, let’s listen to the guy who can’t demonstrate that he understood the issues presented in one of the most important patent cases in history. He’s going to tell us about “actual history”! He’s a real expert. Deep. Serious.

                5. Bluto, Given that “programmed computers” were considered to be per se eligible since Bernhart, and further given State Street Bank, why spend the money fighting lost causes? I think that is why 101 defenses were not raise in court to often.

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        I think too that —in fact–Graham is overturned. No one has come to grips with this. But as some that actually works in this field, the reality that Graham is no longer good law for a practical analysis of an invention disclosure.

        Moreover, Phillips is becoming more and more overturned as the Fed. Cir. is building their line of cases on functional claiming that ignores analyzing a claim as one skilled in the art would.

        So, what in the world are we left with? I’d say no law. The judge just does whatever he/she wants. Just like this panel did. Don’t be surprised if this gets much, much worse.

        1. 1.1.2.1

          the Fed. Cir. is building their line of cases on functional claiming that ignores analyzing a claim as one skilled in the art would.

          That’s not what’s happening at all.

          It’s hilarious (but not surprising) that you think so, however.

    2. 1.2

      Hey David,

      I agree completely with BB: your article and analysis of this “Section 101 must be a defense in a patent infringement action because other courts (including the Royal Nine), in dicta, mindlessly say so” fiasco is spot on.

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