Section 101’s Absurdities

Rant warning.

Over on the main page, Dennis has pointed out that a cert petition including citations to my posts here about why Section 101 is not a “defense” to infringement, and to the recent CAFC cases about why 101 includes factual inquiries.  This rant is about those issues.

Let me start there.  That 101 contains factual inquiries is the exact point Judges Rader and O’Malley made years ago, relying on Judge Lourie’s opinion from Alice five times:

[A]s is shown more fully below, the analysis under § 101, while ultimately a legal determination, is rife with underlying factual issues. For example, while members of this court have used varying formulations for the precise test, there is no doubt the § 101 inquiry requires a search for limitations in the claims that narrow or tie the claims to specific applications of an otherwise abstract concept. CLS Bank, __ F.3d at __, 2013 WL 1920941,  at *27-30 (meaningful limitations); Id. at *10 (opinion of Lourie, J.). Further, factual issues may underlie determining whether the patent embraces a scientific principle or abstract idea. Id. (opinion of Lourie, J.) (“The underlying notion is that a scientific principle . . . reveals a relationship that has always existed.”) (quoting Parker v. Flook, 437 U.S. 584, 593 n.15 (1978)). If the question is whether “genuine human contribution” is required, and that requires “more than a trivial appendix to the underlying abstract idea,” and were not at the time of filing “routine, well-understood, or conventional,” factual inquiries likely abound. Id. at *11-12. Almost by definition, analyzing whether something was “conventional” or “routine” involves analyzing facts. Id. at *12. Ultramercial II, 2013 U.S. App LEXIS 12715, at *6-7(emphasis added).

Ultramercial III.

In other words, every judge in Alice agreed that 101 requires factual analysis.

Yet, at the USPTO, people are getting rejections from examiners who just say asserting a claim is “conventional” without any citation to facts (aka evidence).  And despite binding panel precedent that seems in conflict, the CAFC seems now to disagree on whether 101 has factual components, and won’t address en banc that question. Maybe that is because  the questions asked in the 101 “analysis” are precisely the same questions asked in any section 103 rejection and which are plainly factual.  Maybe it is because 101 is 103 (and 112) “light.”

Which leads me to the second point. We’re spending thousands of hours arguing about what is an “invention.”  Regulations are written with flow charts to figure this out.  (And despite this, the Federal Circuit has said Alice did not change 101 law — even though the USPTO has had to write multiple new regulations because of it, and thousands of patents issued properly (presumptively) before it are “invalid” after it.  But, conversely, some courts hold in legal malpractice cases that lawyers did not need to “predict” Alice, and so can’t be liable for failing to raise it, or getting a patent that was worthless after it.)

Folks, those who forget the past are doomed to repeat it.  Patent law and America’s capacity for innovation were saved from this nonsense in 1946.  I have read and written about what Congress did in 1946 to rid of “inventiveness” and “invention” as requirements for patentability, and my blog posts above are about how Congress did exactly this in 1946.  The answers are in the statutory text.  Congress did not want us to argue about “invention” and instead put the conditions for patentability in 102 and 103 (and 112).

Where the judicial activism of the Supreme Court has put our country is is in a dire place.  We are in a time when innovation is king.  China has more patents pending than the U.S.  Around the country, I have heard executives from all types of industry state that our system has made patenting of dubious value.  The data shows that the Supreme Court’s rampant activist approach — undertaken perhaps in a noble effort to get rid of some (too many) stupid patents (and combined with IPRs) — has made our patent system weak, eliminated key incentives to innovate, and, most fundamentally, ignored the changes Congress made back in 1946 to stop this nonsense.

Rant over.


About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

16 thoughts on “Section 101’s Absurdities

  1. 7

    As noted wryly on the main blog page, US Patent 10^7 (10,000,000) may very well FA1L if challenged in a PGR under 35 USC 101.

  2. 6

    Censorship noted. Test comment did not appear. Prof. Crouch is as selective as to commentators, as ever. Actual, real life inventors, need not apply.

  3. 5

    This is a test. I have seen comments that are not either excessively anti-patent or written by a commentator already known to be patent-antagonistic, to be routinely, summarily censored.

    During the same, years-long period, patent antagonists such as “6” and “MM” have been given free reign to impugn, insult, demonize and generally calumniate without the slightest restraint.

    These are patent haters, in truth; whether according to their own personal sentiment, regardless of merit. Of course, their own ‘don’t be a hater’ rhetoric requires disingenuous posturing to cloak their own genuine attitudes and intentions.

    So if the founder and moderator of this site is expressing opinions in articles that vary from the IP Pirates’ agenda, I would say that you are regarded with a most dubious eye, by actual real-world inventors, Prof. Crouch.

    Some evidence to dispute the notion I assert here, would be to see this comment actually allowed to appear and remain on this site. It does seem rather unlikely; however, I will make the attempt.

    1. 5.1

      Dennis doesn’t moderate the ethics page. I don’t know why sometimes I have to “approve” comments and other times, they just show up.

    2. 5.2

      I have noticed that “selectivity” does vary between the threads over here on the ethics side and over there on the main page.

      For what it’s worth, I have never had issues conversing with Prof. Hricik (or more in general, with conversations on this side of the blog – of course, this side does NOT see the level of traffic as the other side; and some of the editorial controls may be being set at a level more global than one segment or another of the blog – for example, the “George Carlin” list may affect both sides).

  4. 4

    David, this isn’t a rant. It’s the truth, spoken plainly. And if you get worked up thinking about it, you’re not alone.

    1. 4.1

      Nor should he be.

      As I have often postulated, one need only to look as far as the state oath that attorneys (outside of arguably the Commonwealth of Massachusetts) to see that attorneys SHOULD BE getting worked up when one branch of the government appears to set itself above the Constitution.

  5. 3

    The elephant in the room (naturally) is that “this nonsense” is PURELY a matter of the “scoreboard being broken” (the Supreme Court has run amuck).

    This is nothing more than what I have been stating for years.

    Those pushing selective agendas have simply refused to see (and subsequent to such “seeing” – to acknowledge and integrate) the plain facts of the matter at hand.

  6. 2

    Where the judicial activism of the Supreme Court has put our country is is in a dire place. We are in a time when innovation is king… [E]xecutives from all types of industry state that our system has made patenting of dubious value. The data shows that the Supreme Court’s rampant activist approach… has… eliminated key incentives to innovate, and, most fundamentally, ignored the changes Congress made back in 1946 to stop this nonsense.

    I agree with this 100%. In fact, I am not sure that 100% is enough agreement. I am inclined to agree 1000%, or 10000%. It cannot be said too strongly that the Court’s recent mucking about in patent law is doing real damage to innovation.

    China has more patents pending than the U.S.

    This line, however, brings me up short. What has this to do with anything? The point of the patent system is to incentivize technology, not to incentivize patents. I worry about how much R&D budgets are growing (or not) and how many new products are coming to market each year. I really could not care less about how many patents anyone has. Counting pending applications with no regard to what technologies are covered by those apps is a great way to lose sight of the forest for the trees.

    1. 2.1

      Fair enough about the number of patents. But if patents serve the function of innovation, the shift means something.

      1. 2.1.1

        [I]f patents serve the function of innovation, the shift means something.

        Maybe, or maybe not. Consider two extreme hypotheticals: (1) I plough $800 million into R&D, yielding 100 new, commercially plausible inventions, and I file one patent application on each; (2) I plough $8 million into R&D, yielding 1 new, commercially plausible product, and I file 100 patent applications, each claiming a minutely different aspect of that single invention. These are obviously different scenarios in terms of technological progress, but if all I do is count patent applications, I cannot distinguish between the two.

        You know how I can distinguish? By counting the R&D dollars invested, or the sum of new products invented in the two scenarios. Patents are merely a means toward an end (R&D investment), and R&D investments are themselves merely means toward yet another and better end (new product development). Better to look to the actual ends—or at least a more proximate means—when assessing whether the system is functioning well.


          Be careful of your “must make” “product as an ends” measure – that’s a clear – and mistaken – bias.


          I heard a fellow from J&J (I think) say that right now our system is at the worst possible place: his belief is that if you get a patent, and if. you assert it, it’s a 50% chance that you’ll get it out of IPR. So, whether to invest is a coin toss, and that’s the worst possible place to be: 90% kill rate, or 90% success rate, you know whether to patent, or not. 50%…

  7. 1

    I agree 100%. Lets move this over to the main page.

    David: I recall you were in attendance at the PTO last year for the UT conference. If you recall, there was a panel of VC/PE folks who unequivocally stated that all the money they were investing was being funneled outside the US to China. They also said that due to IPR that any company in possession of a patent in the US was a net negative value because of IPR. It was safer for the company not to have patents from a risk analysis standpoint.

Comments are closed.