Rader on 101 and the Statutory Text

By David Hricik, Mercer Law School

Over on Gene Quinn’s IPwatchdog page, former chief judge Rader has written an article about the Supreme Court’s 101 jurisprudence.  I clerked for then chief-judge Rader in 2012-13 (I think I have been the clerk’s oldest clerk, then 51 years old).  Alice was issued by the Federal Circuit during my tenure and of course I can’t talk about what I saw, but I can say that the article aligns with my own thoughts about 101: Congress in 1946 (and then 1952) did its level best to get rid of “eligibility” as condition of patentability. The fact that Section 101 is not a “condition of patentability” lends great support to that, as does the legislative history of the 1946 and 1952 act.

I blogged about the textual arguments 11 years ago (sigh) and you can find those comments here.

Tilting at wind mills but maybe this strongly textualist court will realize it has run astray from the text… And maybe I’ll win the Powerball…


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.

9 thoughts on “Rader on 101 and the Statutory Text

  1. 2

    Jeffrey Frey was older than 51 the second time that he clerked for Rader (in 2005).

    1. 2.1

      Dang it. My one claim to fame is gone.

  2. 1

    As I posted on Gene Quinn’s blog in response to Judge Rader, the 1952 Act did not get rid of considerations of “eligibility” (actually invention or creativity), as reflected by PJ Federico’s successful argument in Application of Ducci that held that Section 100(b) required a _non-analogous_ new use (restoring the law to the decision in Ansonia Brass & Copper v. Electric Supply) to be considered an eligible “process” (under Section 101) and not just any novel application of a known thing or process. Similarly, Jeff Lefstin’s Inventive Application shows that Congress during adoption of the 1952 Act specifically rejected (i.e. did _not_ adopt) amendments that would have expressly overruled Funk Brothers and eliminated an inventive application requirement, and other courts of appeals in the 1950s (after the 1952 Act) continued to require inventive application. Thus, you are right that this is a non-texualist interpretation (of both Section 100(b) and Section 101, except that 101 still used “invents or discovers” and those terms have to be interpreted according to contemporaneous meanings rather than novel ones that changed the meanings in the way you and Judge Rader are suggesting). But regardless of any desire for textualism, the requirement for inventive application was the definitive, contemporaneous interpretation of what Congress _intended_ by the 1952 Act. And it remained the definitive interpretation of the 1952 Act until Diehr implicitly overruled Flook, and now remains so again after Bilski, Mayo, and Alice implicitly overruled Diehr.

    1. 1.1

      ^^^ – this guy cannot be trusted, as he uses his academic perch to prescribe, rather than describe.

      1. 1.1.1

        I see you are back to ad hominem arguments again anon. I’ll let the readers look at Ducci and Lefstin and make their own judgments. But for your beneift, I’ll quote Geoffrey Widdison’s comment on “If ad hominem attacks are logical fallacies, why do lawyers use it against their targets?” on Quora: link to quora.com

        “An ad hominem attack, by itself, isn’t a logical fallacy, it’s just a non sequitur. If I make an argument, and you say “yeah, well you’re ugly”, you haven’t made any errors in logic, you’ve just said something that has nothing to do with the argument.

        On the other hand, if you use an ad hominem attack as a supporting argument, that is a logical fallacy. Such as “yeah, you make arguments about morality, but you’re a known glutton, so why should we listen to you?” That implies that my argument is undercut by my own gluttony, when it’s not. Even if I am flawed and hypocritical, that doesn’t make my argument wrong.

        It’s a bit of an academic point, because either way, ad hominems have no place in well reasoned debate, but it doesn’t necessarily fit the definition of a fallacy unless someone tries to use it as part of a logical argument.”


          I see that you are still prescribing instead of describing.

          Stop that and you might be surprised that the (appropriate) ad hominem dissipates.


          … you trip into a category error in wanting to label ALL ad hominem as inappropriate.

          But you be you.

    2. 1.2

      Hey, Josh,

      I spent a lot of time with the text of the statute and, frankly, case results that are inconsistent with the statute don’t mean much to me — especially if they did not (and correct me if I’m wrong, but I am pretty sure I’m right about those cases) address the text. The bottom line to me (and I’ve spent way too much time parsing the text) is that no court has addressed the text and there is no ambiguity whatsoever in it: 101 is not a “condition of patentability” and so is not a defense.

      1. 1.2.1

        Well said!

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