New PatentlyO Law Journal Essay: Is There Any Need to Resort to a § 101 Exception for Prior Art Ideas?

New PatentlyO Law Journal Essay by Jeremy C. Doerre.  Mr. Doerre is a patent attorney with the law firm of Tillman Wright, PLLC.

In the wake of Alice, many observers have suggested that the implicit judicial exception to 35 U.S.C. § 101 for abstract ideas is now sometimes being used as a judicial or administrative shortcut to invalidate or reject claims that should properly be addressed under 35 U.S.C. § 103. This article notes that “the concern that drives this exclusionary principle [is] one of pre-emption,” and queries whether, given the Supreme Court’s “standard approach of construing a statutory exception narrowly to preserve the primary operation of the general rule,” the implicit statutory exception to 35 U.S.C. § 101 for abstract ideas should be narrowly construed to not apply for prior art ideas because 35 U.S.C. § 103 already ensures that claims do not “’disproportionately t[ie] up the use of [] underlying’ [prior art] ideas.”

Read Jeremy C. Doerre, Is There Any Need to Resort to a § 101 Exception for Prior Art Ideas?, 2019 PatentlyO L.J. 10. (2019.Doerre.AnyNeed)

Prior Patently-O Patent L.J. Articles:
  • Colleen V. Chien, Piloting Applicant-Initiated 101 Deferral Through A Randomized Controlled Trial, 2019 Patently-O Patent Law Journal 1. (2019.Chien.DeferringPSM)
  • David A. Boundy, Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem, 2018 Patently-O Patent Law Journal 20. (Boundy.2018.BadGuidance)
  • Colleen Chien and Jiun-Ying Wu, Decoding Patentable Subject Matter, 2018 PatentlyO Patent Law Journal 1.
  • Paul M. Janicke, Patent Venue: Half Christmas Pie, And Half Crow, 2017 Patently-O Patent Law Journal 13. (Janicke.2017.ChristmasPie.pdf)
  • Paul M. Janicke, The Imminent Outpouring from the Eastern District of Texas, 2017 Patently-O Patent Law Journal 1 (2017) (Janicke.2017.Venue)
  • Mark A. Lemley, Erik Oliver, Kent Richardson, James Yoon, & Michael Costa, Patent Purchases and Litigation Outcomes, 2016 Patently-O Patent Law Journal 15 (Lemley.2016.PatentMarket)
  • Bernard Chao and Amy Mapes, An Early Look at Mayo’s Impact on Personalized Medicine, 2016 Patently-O Patent Law Journal 10 (Chao.2016.PersonalizedMedicine)
  • James E. Daily, An Empirical Analysis of Some Proponents and Opponents of Patent Reform, 2016 Patently-O Patent Law Journal 1. (Daily.2016.Professors)
  • Tristan Gray–Le Coz and Charles Duan, Apply It to the USPTO: Review of the Implementation of Alice v. CLS Bank in Patent Examination, 2014 Patently-O Patent Law Journal 1. (GrayLeCozDuan)
  • Robert L. Stoll, Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint, 2012 Patently-O Patent Law Journal 1 (Stoll.2012.estoppel.pdf)
  • Paul Morgan, The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act, 2011 Patently-O Patent Law Journal 29.  (Morgan.2011.AIAAmbiguities)
  • Joshua D. Sarnoff, Derivation and Prior Art Problems with the New Patent Act, 2011 Patently-O Patent Law Journal 12 (sarnoff.2011.derivation.pdf)
  • Bernard Chao, Not So Confidential: A Call for Restraint in Sealing Court Records, 2011 Patently-O Patent Patent Law Journal 6 (chao.sealedrecords.pdf)
  • Benjamin Levi and Rodney R. Sweetland, The Federal Trade Commission’s (FTC) Recommendations to the International Trade Commission (ITC):  Unsound, Unmeasured, and Unauthoritative, 2011 Patently-O Patent Law Journal 1 (levi.ftcunsound.pdf)
  • Kevin Emerson Collins, An Initial Comment on King Pharmaceuticals: The Printed Matter Doctrine as a Structural Doctrine and Its Implications for Prometheus Laboratories, 2010 Patently-O Patent Law Journal 111 (Collins.KingPharma.pdf)
  • Robert A. Matthews, Jr., When Multiple Plaintiffs/Relators Sue for the Same Act of Patent False Marking, 2010 Patently-O Patent Law Journal 95 (matthews.falsemarking.pdf)
  • Kristen Osenga, The Patent Office’s Fast Track Will Not Take Us in the Right Direction, 2010 Patently-O Patent L.J. 89 (Osenga.pdf)
  • Peter S. Menell,  The International Trade Commission’s Section 337 Authority, 2010 Patently-O Patent L.J. 79
  • Donald S. Chisum, Written Description of the Invention: Ariad (2010) and the Overlooked Invention Priority Principle, 2010 Patently‐O Patent L.J. 72
  • Kevin Collins, An Initial Comment on Ariad: Written Description and the Baseline of Patent Protection for After-Arising Technology, 2010 Patently-O Patent L.J. 24
  • Etan Chatlynne, Investigating Patent Law’s Presumption of Validity—An Empirical Analysis, 2010 Patently-O Patent L.J. 37
  • Michael Kasdan and Joseph Casino, Federal Courts Closely Scrutinizing and Slashing Patent Damage Awards, 2010 Patently-O Patent L.J. 24 (Kasdan.Casino.Damages)
  • Dennis Crouch, Broadening Federal Circuit Jurisprudence: Moving Beyond Federal Circuit Patent Cases, 2010 Patently-O Patent L.J. 19 (2010)
  • Edward Reines and Nathan Greenblatt, Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009, Part II, 2010 Patently‐O Patent L.J. 7  (2010) (Reines.2010)
  • Gregory P. Landis & Loria B. Yeadon, Selecting the Next Nominee for the Federal Circuit: Patently Obvious to Consider Diversity, 2010 Patently-O Patent L.J. 1 (2010) (Nominee Diversity)
  • Paul Cole, Patentability of Computer Software As Such, 2008 Patently-O Patent L.J. 1. (Cole.pdf)
  • John F. Duffy, The Death of Google’s Patents, 2008 Patently O-Pat. L.J. ___ (googlepatents101.pdf)
  • Mark R. Patterson, Reestablishing the Doctrine of Patent Exhaustion, 2007 Patently-O Patent L.J. 38
  • Arti K. Rai, The GSK Case: An Administrative Perspective, 2007 Patently-O Patent L.J. 36
  • Joshua D. Sarnoff, BIO v. DC and the New Need to Eliminate Federal Patent Law Preemption of State and Local Price and Product Regulation, 2007 Patently-O Patent L.J. 30 (Download Sarnoff.BIO.pdf)
  • John F. Duffy, Are Administrative Patent Judges Unconstitutional?, 2007 Patently-O Patent L.J. 21. (Duffy.BPAI.pdf)
  • Joseph Casino and Michael Kasdan, In re Seagate Technology: Willfulness and Waiver, a Summary and a Proposal, 2007 Patently-O Patent L.J. 1 (Casino-Seagate)

106 thoughts on “New PatentlyO Law Journal Essay: Is There Any Need to Resort to a § 101 Exception for Prior Art Ideas?

  1. 9

    Down below at 6.2.3, Greg starts with:

    I think that the method that Random has in mind is more like “a method for petroleum extraction, the method comprising drilling at least 75 m sub-surface at a location within a 500 m radius of 134.0522° N, 18.2437° W.”

    IF one remembers that Random’s vector starts with the location and direction of being anti-patent, one can easily see that his example can be likened to a more robust version of his other cited canard of “method of taking a picture with a camera” or “method of shining a flashlight on a new object.”

    The “more robust” comes from his folding in a DIFFERENT aspect: to what extent does “discovery” fall into patent eligibility.

    As I noted to MaxDrei (who even has picked up that the example from Random does not lend itself well to MaxDrei’s follow-up questions), this different aspect is currently being probed by Knowles (see post 6.6.1)

    1. 9.1

      IF one remembers that Random’s vector starts with the location and direction of being anti-patent,

      I am not anti-patent. I simply want patents of appropriate size. The result of which would in fact generate more disclosure and more patents. When an overbroad patent exists (the greatest example of which is functionally claiming computer software) it chills superior development. If I have a patent over the function of providing an estimated trip time and support it only with a disclosure of a terrible algorithm and that patent is upheld, one chills the development of, the disclosure of, and the consumer usage of Google’s better, accurate algorithm. A superior patent system wants the disclosure of my algorithm, google’s algorithm and third party algorithms, not simply the disclosure of my algorithm and the fact that other algorithms could be made.

      Although this is a 112a example, the same logic applies to 101 – it prevents preempting things which one did not invent and freeloading on the inventions of others. If an inventor knows that disclosure of their discovery would allow another to patent their invention simply by shifting the field of use, the inventor is less inclined to disclose.

      one can easily see that his example can be likened to a more robust version of his other cited canard of “method of taking a picture with a camera” or “method of shining a flashlight on a new object.”

      Although I don’t think “more robust” is an appropriate descriptor of the relationship, I do agree that I have put forward this as another example. If one makes a new camera, but one cannot generate any revenue from the camera because everyone else’s patentable inventions are freeloading on the camera usage, one is less inclined to patent the camera. A claim to “using a camera in its conventional manner to take a picture of my new non-obvious widget” is not rewarding the widget inventor for inventing the widget, but is rewarding the widget inventor for having the nerve to steal the camera from the camera inventor. One would think an obstensively pro-patent person like anon would want to encourage the camera research and therefore void the camera-on-widget claim, but it appears anon’s view of promoting the progress is purely a mathematical question of how many claims are voided, rather than the result of what voiding the claims would achieve.

      1. 9.1.1

        No.

        My view is that the Ends do NOT justify the Means.

        As to the rest of your rambling, you again show that your feelings of how you want portions of law are in error and you confuse and conflate different areas of law. Classic two wrongs do not make a right.

        Your concern over “chill” is misguided and officious – just like the Supreme Court’s officious concerns about “scriveners” which leads to their ultra vires violation of separation of powers and usurping the role of exactly who gets to say what the invention is (the patentee) with the Court’s basing this over reach on the future, subjective, and mere possibility of “May” and turning around and scrivining their own Void for Vagueness Common Law version of patent law.

        YOUR feelings are very much part of the problem in that they excuse and thus amplify patent profanity and a lack of respect for the proper Rule of Law.

      2. 9.1.2

        Further, your feelings regarding “0h N0, functional claiming” have been ripped to shreds by David Stein and simply do not accord with the actual law as written by Congress (see the Act of 1952); and your “chill” obscures the fact that innovation is promoted with BOTH a carrot and a stick approach (think of the adage “Necessity is the mother of invention”). You fail to grasp that blocking is a GOOD thing (and is part and parcel of why the patent right IS as it is).

        Greg may be blinded by your more polite style of writing, but you are most definitely not well versed in the law of innovation protection or of the fundamentals of innovation itself. You have a severe confirmation bias and you “study” the law and cases only to the extent of seeking support for your feelings, which ARE anti-patent. That you think that you are not anti-patent is simply not inte11ectually honest. Not with those that you interact with and certainly not with yourself.

  2. 8

    Whatever one thinks of the argument, kudos to Mr. Doerre for responding to substantive comments. I may reply later if I have the time to look up a few things and translate my thoughts into coherent sentences.

    1. 8.1

      I agree – responding to counterpoints should be commended. Far too often (certain) people like to pretend that counterpoints don’t exist.

  3. 7

    A method comprising:

    obtaining an oil rig;
    relocating the oil rig from a first location to a second location, wherein the second location is within the state of New Hampshire;
    extracting oil from the second location with the oil rig.

    Eligible y/n?

  4. 6

    the implicit statutory exception to 35 U.S.C. § 101 for abstract ideas should be narrowly construed to not apply for prior art ideas because 35 U.S.C. § 103 already ensures that claims do not “’disproportionately t[ie] up the use of [] underlying’ [prior art] ideas.”

    Still waiting for anyone to put forward a reasonable attack on “A method for drilling for oil in a geographical location previously unknown to contain oil.”

    It’s not eligible for patenting. It’s pretty clear it can never be eligible for patenting. And yet people keep putting forward arguments that would make it patentable.

    1. 6.1

      The failure to address the most straightforward hypotheticals is a long-standing one among those who are happy only when the dial is turned to 11.

      What’s useful about this hypothetical is that it reminds everyone that 101 issues come in different flavors. It’s not an infinite variety of flavors, however, and there are shared aspects. But ultra simplistic “fixes” (e.g. “no consideration of the prior art allowed”) are non-starters.

      The elephant in the room is patenting computer logic. Congress could theoretically come up with a scheme or alternative to provide something broader than copyright but it’s safe to say the courts will never shoehorn a coherent lasting solution into the existing system. And quite frankly the effect of 101 elsewhere is barely noticeable or it’s a net positive that nobody except some professional crybaby/lobbyist types are worried about.

      1. 6.1.1

        The elephant in the room is patenting computer logic

        The “elephant” is your constant diatribes and misrepresentations about innovation in that form.

        How goes your copyright project on “just logic?”

      2. 6.1.2

        Further, you do realize that Random’s point is a different point, and goes instead of to your hobby horse to the different notion of what “discovery” may entail under the patent statutes, right?

        His point is most definitely NOT any type of “earth-shattering” 101 question, especially if one remembers that as written by Congress, 101 merely has two (very low) bars to jump over:

        1) is the innovation written to be in claim form in at least one of the statutory categories?

        and

        2) does the claimed innovation provide utility within the Useful Arts?

        This is what Congress provided, and this is what will remain after (and if) the Supreme Court cuts through their Gordian Knot with the sharp implement of the holding of Schein coupled with the sharp implement of the oral argument exchange in California Franchise Tax Board v Hyatt.

        Does this scare you?
        Does this offend you?
        Does this confuse you?

    2. 6.2

      “A method for drilling for oil in a geographical location previously unknown to contain oil” isn’t a claim because it doesn’t recite a method. When you present a claim that recites an actual method – you know, one with method steps in it – we’ll explain to you why it’s patent eligible.

      1. 6.2.1

        A method, comprising the step of drilling for oil in a geographical location previously unknown to contain oil.

        Abstract Y/N? Eligible Y/N?

        1. 6.2.1.1

          So, MaxDrei, your posted method is a step for drilling for oil then?

          Is that the only step in the method?

          I ask this question because the phrase “in a geographical location previously unknown to contain oil” is an apparent crux of the hypothetical, and your claim – as written – may or may not have that crux as part of the claim.

          Without that phrase as part of the claim (for example, treating the phrase as an intended use), the claim is most definitely not abstract and is most definitely eligible. It also most definitely will not be allowed to issuance.

          With the phrase as part of the claim (for example, the phrase carries with it some inherent process step), then again, the answer is that the claim is most definitely not abstract, and is most definitely eligible. It becomes a different question as to whether it will be allowed to issuance, and that most likely will be the 112 analysis (scope, enablement, and the like).

          What would be the position such that the claim is “abstract?” that the claim is not eligible?

          1. 6.2.1.1.1

            What interests me is how, outside the chem/bio space, to draw the 101 line between eligibility and non-eligibility (because the line is so clear at the EPO and so unclear at the USPTO). My comment was a response to Atari’s promise to critique the claim as soon as it was expressed in the form of a method step. I can visualise arguments under 102, 103 and 112 to reject the claim but I want to know how to express a rejection under 101.

            But apart from that, I think that this hypo from Random is not the most fruitful, for teazing out why an eligibility filter is needed. Better, to my mind, is a claim that recites a new, useful and non-obvious medical data/disease state correlation and then makes thinking about it an infringing act.

            I have no idea what is a “prior art idea” but if anything is, then it is the idea of “drilling for oil” somewhere outside of an existing oil field.

            1. 6.2.1.1.1.1

              Thanks MacDrei.

              I agree with you that Random’s “pet” here is not the “most fruitful” eligibility question, and I trust that my return questions to you help point out why this is so.

              Look above as well to post 6.1.2. Malcolm’s point about there being different aspects to the eligibility question is certainly a truism. But is should be remembered that the larger point in all of the commotion here in the States is that our Supreme Court has overstepped their bounds and have created a Gordian Knot of a mess with their scrivining.

              As I have noted, pushback has now occurred in each of our three branches of Government, and even the Supreme Court itself has provided implements with which it may choose to extract itself (and thus return our statutory law to the direct words of the statute).

              Please read 6.1.2 and remember to keep in mind the respect of a Sovereign’s choice regarding Useful Arts being broader than ‘technical arts.’ That will help you in your attempts to “draw parallels” to the EP law that you typically operate under.

          2. 6.2.1.1.2

            A method comprising:

            obtaining an oil rig;
            relocating the oil rig from a first location to a second location, wherein the second location is within New Hampshire,
            extracting oil from the second location with the oil rig.

            Eligible y/n?

      2. 6.2.2

        1. A method for detecting a paternally inherited nucleic acid of fetal origin performed on a maternal serum or plasma sample from a pregnant female, which method comprises: amplifying a paternally inherited nucleic acid from the serum or plasma sample and detecting the presence of a paternally inherited nucleic acid of fetal origin in the sample.

        In other words, “A method for locating fetal DNA in a location previously unknown to contain fetal DNA”

        My test, as usual, works perfectly here:

        Is it a process? Yes

        Does the process result only in an item of useful information? Yes

        Does the utility of the method arise from human consumption of that information? Yes

        Ineligible

        1. 6.2.2.1

          Your “test” is not moored in patent law understanding.

          “Works perfectly” then is NOT a patent law working.

        2. 6.2.2.2

          In what way is your test working perfectly?

          It clearly got the wrong result and dis-incentivizes progress in the medical field, the area where we need it most.

          1. 6.2.2.2.1

            Les,

            People like to celebrate broken scoreboards when a “desired Ends” is reached.

            Marty likes to think that his views “accord” with the Ends achieved, and strictly by that measure, have merit.

            It is well known that he is not interested in actually understanding the terrain of innovation, innovation protection, and patent law.

        3. 6.2.2.3

          Hi Martin:

          1. A method for inspecting silicone wafers to detect defective wafers, comprising the steps of capturing an image of a newly-manufactured wafer with a camera, transmitting the captured image of the wafer to a evaluation unit*, comparing, by the evaluation unit, the captured image of the wafer against a standard image of an acceptable wafer, and determining that the newly-manufactured wafer is defective if it deviates more than a predetermined amount from the standard image.

          (*e.g., computer with software capable of making such comparison)

          Ignoring the fact that I’ve not spent much time making the claim very patent speak elegant, does this claim end up “Yes, Yes, Yes: Ineligible” in your test?

          1. 6.2.2.3.1

            Mellow Marsher, that claim is eligible in my scheme.

            Obvious as can be, of course, but eligible. A judge should be able to toss that on “common sense” grounds, or on the grounds that all parts of the combined elements are doing what they are expected to do. But it should pass 101.

            1. 6.2.2.3.1.1

              Okay, thanks, but then I don’t think I quite apprehend the functioning of your test.

              Why wouldn’t the answers be Y/Y/Y=ineligible?

              1. 6.2.2.3.1.1.1

                It ends up yes yes no

                Is it a process? Yes

                Does the process result only in an item of useful information? Yes

                Does the utility of the method arise from human consumption of that information? The evaluation unit is the consumer of the information. No

                Eligible

                1. ALL utility “arises from” human consumption.

                  That’s the nature of “utility” in the patent sense.

                  Machines doing anything only have utility in this ‘ends’ sense. Be those machines traffic lights or computing machines or even sewing machines.

                  You appear to want to insert some type of “consumption proximity” notion, which — of course — has no tether to patent law.

                2. ALL utility “arises from” human consumption.

                  Fine. Consumption of information differs in character from consumption of mechanical, chemical, or nuclear change.

                  Consumption of information occurs in a human mind, which is entirely extraterritorial to the Constitution.

                  I understand utility just fine. I suspect that you do not understand liberty, inter alia.

                3. As I stated: you want to insert this odd “consumption” notion that is simply not tethered to patent law.

                  It just does not matter what other Ends you want to “advance” with your Means. You wanting to make this about “liberty” is a non sequitor.

                4. What does tethered to patent law even mean? Patent law is still law- subject to the Constitution entirely. If a form of utility occurs beyond the reach of the Constitution, that utility is simply not subject to the patent law. Abstractions are unique to persons- beyond the moral or practical reach of the law.

                5. Is your “moral utility” utility within the Useful Arts?

                  I know that you like engaging terrain with your eyes closed, but Marty, this should not need explication even for you.

                6. No it isn’t. The evaluation unit GENERATES the information.

                  Your test invalidates the claim if the generated information is given to a human who then discards the wafer but validates the claim if the generated information drives a solenoid that flicks the wafer into the same reject bin.

                  In your test, eligibility is predicated upon insignificant post solution activity.

        4. 6.2.2.4

          Martin, to better match your condensed-hypo-claim to the actual case on point, does it not need to read:
          “A method for detecting fetal DNA by using know DNA detection methods to detect fetal DNA in pregnant persons blood, a location previously unknown to contain fetal DNA.”
          [Isn’t “by using know DNA detection methods” essential to the ineligible outcome?]

          1. 6.2.2.4.1

            Paul if the detection method were unknown to the art, the new detection method would be the subject of the patent.

            1. 6.2.2.4.1.1

              Paul’s thrust is expressly NOT that the detection method is itself new (or subject to patent in and of itself).

              Not sure why Paul is asking this of you though, given as you have not as yet grasped 35 USC 100(b) – which controls the answer here.

      3. 6.2.3

        I think that the method that Random has in mind is more like “a method for petroleum extraction, the method comprising drilling at least 75 m sub-surface at a location within a 500 m radius of 134.0522° N, 18.2437° W.”

        For my part, despite his assertion that he is “[s]waiting for anyone to put forward a reasonable attack” on his putative reductio ad absurdum argument, I have addressed his hypo many, many times. I take it that he does not consider my refutation to be a “reasonable” refutation, but his rejoinder to it inevitably reduces to “well, I have never seen such a claim granted,” as if that proves the legal impossibility of such a claim.

        I invite the interested reader to consult the archives and decide for him or herself whose argument is the more “reasonable.”

        1. 6.2.3.1

          Greg,

          This was my suspicion as well. My response was just to suggest that the presence of oil at the particular geographical location is just a newly discovered natural phenomenon, and that steps of drilling for oil there are conventional and cannot supply an inventive concept sufficient to render the claim eligible.

          1. 6.2.3.1.1

            The point is, how do you know that “steps of drilling for oil there are conventional” without getting into the prior art. In which case, we are back where we started, with prior art analysis (i.e., 102/103 issues) getting mixed into the question of 101.

            1. 6.2.3.1.1.1

              The point is, how do you know that “steps of drilling for oil there are conventional” without getting into the prior art. In which case, we are back where we started, with prior art analysis (i.e., 102/103 issues) getting mixed into the question of 101.

              “Getting into the prior art” and a 102/103 analysis are not the same thing. The function of the prior art analysis during a 101 analysis is to determine 1) what the claim is directed to and 2) if the additional features are just a drafting effort to hide any claim to ineligible subject matter.

              Claiming a, e.g. book, in a world that had not developed book making technology is significantly different than claiming a book where books ubiquitously exist. A disclosure that teaches people who don’t know how to makes books how to make a book and then states “by the way, you could write stories in this book” is a different invention than a disclosure to people who already know how to make books that this particular story could be written in one. The former is a utilitarian advancement in bookmaking and would be patentable absent any limitations about stories. The latter is a creative expression not protectable by patent and is ineligible no matter how many limitations about tangible mediums are applied to it. The state of the art informs upon what the alleged advancement is.

              In short, a claim to “a device comprising a book and a particular story written therein” may be a claim akin to “A method of improving a known book with a particular story” which is ineligible, or it may be a claim akin to “A method of improving communications, such as the telling of a story, by transfixing it in a storage medium device I call a book”, which would be eligible. And we need the state of the art to inform us which situation we have.

              1. 6.2.3.1.1.1.1

                There is akin going on with Random alright, just under a different spelling.

                I continue to wonder how the F you operate as an examiner with such p00r grasp of innovation and innovation protection law.

          2. 6.2.3.1.2

            [I]… suggest that the presence of oil at the particular geographical location is just a newly discovered natural phenomenon, and that steps of drilling for oil there are conventional and cannot supply an inventive concept sufficient to render the claim eligible.

            Fair enough. For my part, I believe that the claim to the method of drilling in which all of the novelty resides in the specification of drilling location should be eligible (who knows whether it is, under this cockamamie Mayo test?), and should be patentable provided that the specified location really is novel, nonobvious, and adequately disclosed. I just do not buy, in other words, that Random’s putative reductio ad absurdum really does reduce to an absurdity.

          3. 6.2.3.1.3

            This was my suspicion as well. My response was just to suggest that the presence of oil at the particular geographical location is just a newly discovered natural phenomenon, and that steps of drilling for oil there are conventional and cannot supply an inventive concept sufficient to render the claim eligible.

            And I agree.

            But you draw a distinction between that preemption and the preemption of an abstract idea, without really giving any reason for doing so (see, e.g. page 13).

            Your argument appears to be (and correct me if I’m being improperly general here) that any claim that should not properly have a 103 rejection would also inherently meet Alice/Mayo Step 2.

            But 103 is applied over the sum scope of the claim and Alice/Mayo Step 2 is applied only over the non-judicial exception part of the claim. You account for this by limiting your statements to “known prior art abstract ideas.”

            I agree as a general rule that when one takes obvious subject matter and only appends further obvious/anticipated subject matter, the result is generally still obvious. But that is only a general rule. The rule breaks down when there exists no previous motivation to apply the abstraction in the context. I submit such a situation above, albeit in a non-abstraction setting: Drilling for oil is generally obvious/anticipated and only becomes non-obvious when placed into the context of the judicial exception.

            There are a plethora of cases which prove this exact point, as they are all issued patents that were subject to 103 rejections. Do you think the Ultramercial examiner truly thought that advertising for currency was invented by Ultramercial? And yet the claim issued as non-obvious. The same for Alice’s claims. There is almost no rationale one could posit for the Alice allowance except that the examiner was convinced that it was non-obvious to perform the known abstract idea on a computer.

            Let me provide another example which has not yet come up but certainly will:

            Claim 1: A device comprising [my non-obvious widget]

            Claim 2: A method comprising using a known camera to take a picture of [my non-obvious widget]

            I’d submit to you that Claim 2, which is non-obvious for the same reason Claim 1 is, is ineligible subject matter. That is quid of the device disclosure is already protected by Claim 1, and Claim 2 is an attempt for the device inventor to try and steal/diminish the value of a camera inventor’s quid. Claim 2 is an attempt to impede the art of photography.

            There is no caselaw stating that *the only mechanism* by which Mayo/Alice Step 2 is unfulfilled is by conventional subject matter. There is only a statement that conventional subject matter is insignificant and therefore fails to meet Step 2. The outer bounds of insignificant limitations upon the abstraction have never been defined. To argue that the 103 test applied to the remainder of the claim approximates Step 2 places an assumption that the outer bounds of Step 2 is as broad as it is going to be.

            You are correct, though, that my natural law claim does not directly attack your known-abstract-idea shortcut. But they aren’t exactly ships passing in the night either.

            1. 6.2.3.1.3.1

              How the F are you an examiner?

        2. 6.2.3.2

          Greg – how does that taste?

        3. 6.2.3.3

          I invite the interested reader to consult the archives…

          Here, for example.

          1. 6.2.3.3.1

            For clarity, I’m actually not opposed to your position Greg. In the context of the specific example, I’m not crazy about that type of claim for that subject matter, but more generally I’m of the opinion that the question of whether a discovery can support a claim to an application of that discovery which is inventive over the prior art (but obvious in view of the discovery) is a question for Congress to answer. I have thought about trying to raise that issue in an amicus if Athena petitions for cert.

          2. 6.2.3.3.2

            If you stick your hand in a fire, you will get burned. If you stick your hand in the same fire five times, you will get burned five times.

            And yet, here again, Greg sticks his hand into the fire of Random’s post…

        4. 6.2.3.4

          I have addressed his hypo many, many times. I take it that he does not consider my refutation to be a “reasonable” refutation, but his rejoinder to it inevitably reduces to “well, I have never seen such a claim granted,” as if that proves the legal impossibility of such a claim.

          My recollection of your points is generally:

          1) You admit that it is not the law according to Mayo and now Sequenom

          2) Regardless of 1, it should be the law

          3) The claim should not only be eligible but patentable

          4) If the claim is not patentable there would be no research. We want to promote this kind of disclosure. Therefore it is patentable. (What I would call a general motivation for the patent power argument)

          It’s true I find this to be an unreasonable refutation, but it is not accurate to reduce the argument to “well I have never seen such a claim granted, therefore it is ungrantable.” My argument has many facets.

          First, the claim would allow for the federal government to control the natural resources of the states and the private lands of their citizens. Control of land is reserved to the states because they just got finished fighting a war for control of their lands, and it is unlikely the same people who wrote an amendment against takings meant for the patent power to extend to control over their natural resources. I find it unlikely that the federal government was granted the power to prevent a state from exploiting its own resources for any time period short of infinity simply because someone else discovered it.

          Second, Sequenom has many analogs – the oil industry, any kind of precious metal, even timber (though that is less likely to be non-obvious). One more hop away lies facts which, while man-made, are still non-obvious. The fact that a politician committed some misdeed is just as non-obvious before it is printed as the location of previously undiscovered oil is. I find it difficult to believe that the full sum of industries such as oil and precious metals and journalists have never once sought to avail themselves of a patent. Nobody thinks its odd that we’ve never had a case determining whether the first amendment prevents a patent over disclosure of a reportable fact? Nobody has ever tried to patent a reportable fact over the entire history of the patent power? No politician has tried to prevent disclosure, or no newspaper has tried to prevent competition? Nobody has ever tried to get a competitive advantage over adversaries by claiming the a method of extracting from a location of oil or minerals that they do not own?

          Third, regardless of the likelihood of the second point being true as a motivation, the second point clearly proves the lack of necessity. People search for oil despite that information not being protected, and people search for journalistic facts despite knowing that others will immediately copy and report the same. Yet the research happens. Although time has now shown the Sequenom is not the death knell for this research, one could have surmised that truth beforehand. The exact same type of information (whether it is patently protectable or not) is not, as a matter of common course, protected by patents in other fields, and yet those fields continue to expend significant resources. Thus the alleged harm in the judicial exception simply does not exist.

          I certainly agree that the general motivation for the patent power exists, but I disagree that the power was intended to encompass all disclosures that could be made. I also certainly agree that a command to drill for the oil is something more than simply a statement of where oil is. But I see no distinction either as a legal or a practical matter from the standpoint of the purposes of the patent act. To rely upon a distinction when the distinction is not relevant is not reasonable. When you argue that Sequenom is not claiming a natural law but claiming a diagnostic method that uses a natural law, when the context is that the art would find nothing of value in the disclosure beyond the disclosure of the law itself, you exalt a form over substance – you are rewarding someone not based on what new thing they told the art, but upon how much they have parroted back to the art what the art already knows. Every claim will be able to put the judicial exception to some use, but the utility requirement and the judicial exception logic is not the same thing.

          It would be one thing to take the point that the statement e=mc^2 should be patentable (i.e. argue whether Alice/Mayo step 1 should exist). It is another thing to concede the point but then draw a distinction based upon how much of a known encyclopedia one surrounds that disclosure with (i.e. argue whether Alice/Mayo step 2 should exist). The former is reasonable if admittedly substituting one’s judgment for the Supreme Court’s. The latter lacks any real reasoning.

          1. 6.2.3.4.1

            Utility within the Useful Arts eliminates many of your “examples” which are only strawmen and — to quote Wolfgang Pauli — not even wrong.

          2. 6.2.3.4.2

            My recollection of your points is generally:

            1) You admit that it is not the law according to Mayo and now Sequenom

            2) Regardless of 1, it should be the law

            3) The claim should not only be eligible but patentable

            This is all fine and accurate as a summary of my position.

            4) If the claim is not patentable there would be no research.

            I think that this is a mischaracterization of my position, but perhaps not worth the trouble of clarifying.

            We want to promote this kind of disclosure. Therefore it is patentable. (What I would call a general motivation for the patent power argument)

            Definitely not is patentable. As you noted above, I have already conceded that such a claim is not patentable under Mayo. I contend that the claim should be patentable (which is as much as to say that I contend that Mayo laid down a poor rule), although I do not feel strongly that this particular claim should be patentable. That is to say, if the statute were written in such a way as to exclude the discovery of oil deposits as a patentable discovery, I would not bemoan the untoward policy consequences (obviously, the scarcity of such actual claims in issued patents combined with the longstanding abundance of fossil fuel availability in our country demonstrate that the petroleum industry can get along fine without such claims).

            [T]he claim would allow for the federal government to control the natural resources of the states and the private lands of their citizens. Control of land is reserved to the states because they just got finished fighting a war for control of their lands, and it is unlikely the same people who wrote an amendment against takings meant for the patent power to extend to control over their natural resources.

            Do you contend that the Endangered Species Act is unconstitutional? The ESA constitutes at least as much of a federal government impingement on the states’ authority to regulate land use. Indeed, there is not even a time limit on ESA prohibitions. It is theoretically possible that the Army Corps of Engineers could prohibit Rancho Viejo from building housing developments in the arroyo toad’s habitat from now until the heat death of the universe.

            1. 6.2.3.4.2.1

              I contend that the claim should be patentable (which is as much as to say that I contend that Mayo laid down a poor rule), although I do not feel strongly that this particular claim should be patentable.

              What is the basis of the differential judgement? Is it just that you, personally, do not value the location of oil in the manner that you value that the mother has fetal DNA or that drug dosages should be different based on different factors?

              Do you contend that the Endangered Species Act is unconstitutional?

              The stated basis for the ESA is the commerce clause, not the patent clause, and it is questionable even at that – so “possibly”. I have no doubt that congress could regulate virtually all of the subject matter of patent law (including, for example, the extraction of oil) via the commerce clause, but they could not do so by the granting of patents. In fact, it is the commerce clause power (together with general welfare taxing and spending via grants) that forms one of the major basis es there is no need to worry about Sequenom ultimately resulting in a lack of research.

              Regardless, the ESA is being used in a manner that may simply effectuate a taking, you’re suggesting condoning a claim that, if granted to a third party, would unquestionably be a taking. Similarly, you don’t see to deny that a claim to reporting a non-public fact would be non-obvious and therefore patentable, and a prior restraint on speech is presumptively unconstitutional. The ultimate point of this whole argument is that 101, while allegedly inclusive of “everything under the sun” must either have inherent exceptions or must be unconstitutional overreach. My recollection (and correct me if I’m wrong) is that you appreciate that there are or can be non-textual exceptions, you just disagree with the ones the court sometimes articulates.

              1. 6.2.3.4.2.1.1

                What is the basis of the differential judgement? Is it just that you, personally, do not value the location of oil in the manner that you value that the mother has fetal DNA or that drug dosages should be different based on different factors?

                There are two differences. First, (as you have already noted), there is already a means for the petroleum discoverer to internalize the gains from the research (buy the land on which the petroleum deposit is discovered, lease the mineral rights, etc), while there is no such alternate method for the discoverer of the genetic correlation to internalize the gains from the research. Second—as an empirical matter—clearly R&D in the petroleum industry does just fine without these sorts of claims, whereas—once again as an empirical matter—R&D in the diagnostics industry is suffering without them. Patents exist to incentivize R&D, so where one can get the R&D without the patents, it is easy enough to acknowledge the superfluousness of patent claims, but where on cannot get the R&D without the patent claims, the necessity of patent protection is correspondingly undeniable.

                The stated basis for the ESA is the commerce clause… I have no doubt that congress could regulate virtually all of the subject matter of patent law (including, for example, the extraction of oil) via the commerce clause, but they could not do so by the granting of patents.

                I would be interested to see you unpack this. I look at exactly the opposite way. It seems to me transparently obvious that the Congress could—if it wanted—grant patents on playing cards, or bananas, or mineral oil (etc) as a constitutionally supportable regulation of interstate commerce. It is a good thing that Congress does not, but there is no constitutional obstacle to such a grant. The patent concessions could even go without time limits. The fact that the Court suggested otherwise in dictum from Graham just goes to show that they were not thinking carefully about the point because it was not actually briefed to them.

                [Y]ou don’t see[m] to deny that a claim to reporting a non-public fact would be non-obvious and therefore patentable, and a prior restraint on speech is presumptively unconstitutional.

                I think that your reliance on the analogy of “oil deposit location” to “journalistic fact” is (1) doing your argument no great favors and (2) a distraction from the more interesting points in discussion. First, a patent claim whose only point of novelty is some journalistic fact would fail §102 as anticipated—quite regardless of its §1o1 infirmities or lack thereof—so it would make a poor test case for your first amendment hypothesis. Second, even if the current patent act were to be held unsupportable on first amendment grounds, it would be possible to draft a replacement statute that would prohibit the claim(s) on one or more journalistic facts but allow the claim(s) on locations of petroleum deposits.

                The ultimate point of this whole argument is that 101, while allegedly inclusive of “everything under the sun” must either have inherent exceptions or must be unconstitutional overreach. My recollection (and correct me if I’m wrong) is that you appreciate that there are or can be non-textual exceptions, you just disagree with the ones the court sometimes articulates.

                Yes, that is correct. My baseline predicate for thinking about the law in a common-law system such as our is that it is always possible (although not always wise) for there to be non-textual refinements (e.g., “exceptions”) to statutory law as it is applied to real-world circumstances.

                1. Greg,

                  You engage in a logical fallacy taking one of the possible reasons for having a patent system and turning that into some type of “requirement.”

                2. there is no such alternate method for the discoverer of the genetic correlation to internalize the gains from the research.

                  How can that possibly be true in a utility-requirement system? If one performs a medical procedure with less complications (the utility of the method) then one delivers a higher quality product and achieves a market advantage. If it didn’t impart a utility, it shouldn’t have passed 101 to begin with.

                  Second—as an empirical matter—clearly R&D in the petroleum industry does just fine without these sorts of claims, whereas—once again as an empirical matter—R&D in the diagnostics industry is suffering without them.

                  Suffering is a relative statement. Since you don’t know what R&D in the petroleum industry would look like with patent protection (as again, neither of us has actually seen such a claim in existence), you can’t state with any assurance whether R&D in petroleum is suffering.

                  But I’m being glib. Assuming that R&D is suffering, it is not like the federal government lacks mechanisms to stimulate the R&D, it simply lacks a patent mechanism to do so. Let’s not pretend that there’s only one tool in the toolbox; and the situation is not so dire that Congress has either pulled out other tools or attempted to fix their “malfunctioning” one. A blatantly constitutional one would simply be to offer a flat monetary grant for the disclosure, rather than secured rights for a time.

                  It seems to me transparently obvious that the Congress could—if it wanted—grant patents on playing cards, or bananas, or mineral oil (etc) as a constitutionally supportable regulation of interstate commerce. It is a good thing that Congress does not, but there is no constitutional obstacle to such a grant.

                  It’s a simple exclusio argument – If the commerce power encompassed the patent power, the patent power would not need to exist, and language is not made dead letter, so it must not include it. I certainly think Congress can grant monopolies, but they cannot grant patents over existing knowledge, and they cannot assign infringement decisions and benefits to third parties. If they could they could simply end-run around separation of powers by granting enforcement decisions to amenable third parties rather than placing it in the executive branch where it must lie. Imagine drug use being policed by the tobacco industry rather than the FBI or other related executive branch agencies.

                  First, a patent claim whose only point of novelty is some journalistic fact would fail §102 as anticipated—quite regardless of its §1o1 infirmities or lack thereof—so it would make a poor test case for your first amendment hypothesis.

                  What is the basis of this statement? Are you relying upon the non-functional printed material doctrine to ignore the limitation (because my view is that really is a 101 analysis, not a 103 analysis, and regardless is just as extra-statutory as the judicial exceptions are)? If not, certainly a fact that is not publicly known is not within the prior art.

                  Second, even if the current patent act were to be held unsupportable on first amendment grounds, it would be possible to draft a replacement statute that would prohibit the claim(s) on one or more journalistic facts but allow the claim(s) on locations of petroleum deposits.

                  As Churchill would say “Now we’re just haggling over price.” The relevant question is if you think there are any constraints on the patent power, or if Congress can validly allow for patenting “anything under the sun” when it so chooses. Once you cross that sunless rubicon you’re essentially no different from the current 101 judicial exceptions – either you construe the statute to not include subject matter that congress cannot make eligible or you force a rewriting of the statute. It’s possible to draft a replacement statute that would service all of the current judicial exceptions too. And which branch is responsible for saying that a current statute covers subject matter beyond Congress’ jurisdiction? The Court. The only difference between your “no journalistic fact but yes petroleum location” statute and my “no journalistic fact or petroleum location” statute is that (I think we agree) the latter would enjoy the support of the Court while the former would not.

                  As you may recall, it has long been my position that the judicial exceptions are called judicial exceptions because they are in fact constitutional requirements (based upon the fact that congress lacks jurisdiction over claims that would impede the art just as it lacks jurisdiction over claims that would impede the press or would result in slavery), and the court seeks to avoid calling something unconstitutional when it need not. Rather that up-heave the system by forcing a re-legislating of 101 they simply allow 101 to stand and cleave the unconstitutional matter from it. I find it unlikely there can ever be a legislative “fix” to the judicial exception logic that would satisfy people who dislike Alice/Mayo.

                  My baseline predicate for thinking about the law in a common-law system such as our is that it is always possible (although not always wise) for there to be non-textual refinements (e.g., “exceptions”) to statutory law as it is applied to real-world circumstances.

                  So I fail to see how Sequenom is a problem for you other than you, in a non-legal personal-taste manner, dislike the outcome. You agree exceptions can be made. You agree the court should, or at a minimum can, be the body which makes those exceptions. Morse put forward the exception long before either the AIA or the ’52 act, and I think that a claim that only modifies the ineligible subject matter by repeating what the art already knew is hardly a strong legal basis for reversing both eligibility and allowance. Is the logic of Morse not availing?

                3. about the law in a common-law system such as our[s]

                  Greg, your version of our law does not match up to reality in that Common Law law writing is NOT universally allowed.

                  See at least Schein (as well the previous note to see the movie The Paper Chase at the one hour six minute mark)

                4. As noted previously (but still caught in the Count Filter), Greg here errs by taking but one possible reason for having a patent system and somehow turning that into a requirement.

                  Random in turn exercises his supreme inte11ectuall honesty by attempting to build on that non-existent requirement.

    3. 6.3

      l. The herein described method of drilling oil wells which consists in progressively advancing a collapsed casing length into the bore simulta neously with, and adjacent, the drill, whereby a temporary casing of a diameter less than, and for a progresisvely increasing length of, the bore, is provided adjacent the drill, maintaining a circulation of water into and from the bore and about said casing length, stopping the drilling operation, interrupting the circulation of water, and expanding the casing length to provide a permanent casing for a length of bore, immediately following the completion of the drilling operation.

      US1981525A

      1933

      1. 6.3.1

        Once again Les, the fact that patents have been granted in the past for similar-but-different subject matter does not 1) apply to similar-but-distinguishable subject matter and 2) does not mean it is valid.

        Alice had a claim and a patent number, until they didn’t.

    4. 6.4

      6. A method of locating oil bearing strata penetrated by the bit where drilling mud is circulated in the rotary method of drilling comprising the steps of subjecting mud from the well bore to ultra violet light so as to ascertain the presence and volume of oil carried by the drilling mud, and ascertaining the location of the formation from which the indication of oil entered the mud by determining the rate at which the circulation of the mud occurred.

      Wow… implied mental steps and everything. Shining UV on the mud doesn’t do much good unless someone looks at it and CORRELATES the appearance of the mud under UV with the amount of oil in the mud, now does it.

      US2206922A

      August 8, 1938

      1. 6.4.1

        Les,

        Remind Marty about the conversation of traffic lights.

        Then remember that Marty simply does not care to bother to understand what “Utility” actually means in the patent sense.

        1. 6.4.1.1

          anon, a new structure for a traffic light is, and should be, an invention patentable. Red means stop and green means go should not be an invention patentable. All the sophistry you can marshal will not change that.

          Les, your oil examples are far afield(!) of “there is gold in them thar hills”. The casing method is unquestionably patentable. The UV method probably would not be by today’s standards. My result accords with the actual legal result in the case, and of course resulted in zero rate of change in medical investment(s).

          1. 6.4.1.1.1

            I am not the one applying sophistry by trying to not take the patent aspect of utility in view of what patent law means.

            Hint: that would be you.

          2. 6.4.1.1.2

            Martin –

            My examples might be far afield from what ever you were talking about because they were not posted in reply to you. They were posted in reply to Random.

    5. 6.5

      RG,

      I want to make sure I understand your hypothetical claim. Is the idea that someone discovered oil at a new location and then wrote a claim to drilling for oil at that particular location? I’m assuming this is it, as the process of drilling for oil at a newly discovered location has clearly been done for a long time, and would just be anticipated by the Texas oil boom, etc.

      With respect to claiming drilling for oil at a particular new location where oil has been discovered, I would suggest that the presence of oil at the particular geographical location is just a newly discovered natural phenomenon, and that steps of drilling for oil there are conventional and cannot supply an inventive concept sufficient to render the claim eligible.

      Accordingly, I’m not sure this hypothetical claim would really be impacted at all by the idea of narrowly construing the implicit judicial exception to not apply for prior art ideas, as this approach would not disrupt Supreme Court precedent applying the implicit exception to 101 to guard against pre-emption of newly discovered or novel laws of nature, natural phenomena, and abstract ideas, and the hypothetical seems to attempt to claim a newly discovered natural phenomenon.

      1. 6.5.1

        With respect to claiming drilling for oil at a particular new location where oil has been discovered, I would suggest that the presence of oil at the particular geographical location is just a newly discovered natural phenomenon, and that steps of drilling for oil there are conventional and cannot supply an inventive concept sufficient to render the claim eligible.

        Established supreme court precedent treats all the judicial exceptions the same. A known abstract idea is as ineligible as a natural law. Yet this claim, which contains a judicial exception, is non-obvious, or at least I so argue.

        You seem to agree my claim would be ineligible. I’d like to hear if you think it would be non-obvious. If it would be non-obvious, I would like you to articulate why this claim should be ineligible but a similar claim based on known abstract ideas would be both eligible (because you need not even apply Alice 101 logic) and patentable (because of the non-obviousness). In other words, if

        “drilling for oil at a particular new location where oil has been discovered” is ineligible; why should a claim to

        “[selling oil using known fundamental sales techniques] wherein the oil was acquired by drilling for oil at a particular new location where oil has been discovered” be patented?

    6. 6.6

      Thanks to Greg for his 6.2.3 suggestion that:

      “I think that the method that Random has in mind is more like “a method for petroleum extraction, the method comprising drilling at least 75 m sub-surface at a location within a 500 m radius of 134.0522° N, 18.2437° W.””

      because it makes the eligibility/patentability hypo much more interesting for me. So interesting, in fact, that I do not yet see what the right answer to it is.

      1. 6.6.1

        It is actually only a little bit better than your attempt MaxDrei, as the same points that I put to you apply with equal measure to the changed “at” phrase.

        See post 6.2.1.1.

        I think that the questions you want to follow up with simply do not “match” well with the originating cause of Random’s “example” (even – as it appears – Random himself does not seem to appreciate that originating cause).

        That originating cause actually sounds more directly in the Knowles assertions that the Court has been ultra vires in “penciling out” the words of Congress.

        See (at least): link to ipwatchdog.com

      2. 6.6.2

        That is indeed the kind of claim I mean.

        The point is to show that to accept the full range of 101, one would have to accept that congress was granted authority it clearly was not granted, such as the ability to diminish land, which was clearly left within the states’ purview.

        A similar claim could be fashioned for patenting the reporting of previously non-public details, which flies right in the face of the first amendment.

      3. 6.6.3

        I do not yet see what the right answer to it is.

        What do you mean by the “right” answer? Do you mean “how would Congress hope that the courts would treat this claim when Congress passed the AIA?” Or do you mean “how would the Supreme Court treat this claim if such a claim were in front of the Court?” Those two are not the same question, and they have different “right” answers.

        Taking the easier one first, it seems to me that the Court would say that this claim is “directed to” the discovery that there is a recoverable sub-surface petroleum deposit at 134.0522° N, 18.2437° W, and that this fact is an unpatentable natural phenomenon. They would then say that the rest of the claimed elements (drilling, depth of sub-surface penetration, etc) are just routine and conventional post-solution activity. Thus, the SCotUS would arrive at a conclusion that the claim is not eligible.

        By contrast, the Congress who wrote the statute put only three requirements into the subject matter eligibility provision (35 U.S.C. §101): viz., new; useful; and fitted into one of the specified categories of “process, machine, manufacture, or composition of matter, or any new and useful improvement thereof…” Here, the correct analysis is that the claim recites a process, and that the claimed process is new (there is no evidence that anyone has performed the process before) and useful (it results in petroleum, a substance that can be employed to many good and practical ends). Therefore, the Congress would arrive at the conclusion that the claim is eligible.

        It is a shame that the Congress and the Court disagree on this point. It is doubly a shame that the Court’s word on the matter trumps (in practice) the Congress’.

        1. 6.6.3.1

          It is a shame that the Congress and the Court disagree on this point. It is doubly a shame that the Court’s word on the matter trumps (in practice) the Congress’.

          Of course, there is a third view which is most likely correct: Congress sought to allow for patenting all things which was within their constitutional power to grant patents upon. It is unlikely that Congress sought to allow for patenting things which were outside of its power.

          Given that Congress has not acted in the five years that Alice has come down, or seven since Mayo came down, it is not unreasonable to assume that there is in fact no dispute in the area. Congress sought to patent everything that could be, and the Court identified one area that cannot be, and Congress’ wish as modified by the Courts is still Congress’ wish.

          You know, the PTO had a rule since 1987 against patenting humans. It wasn’t until the AIA that there was actually statutory support for that rule, and the statute said that it affirmed the rule. I don’t see anybody shouting about how the PTO was improperly impeding the art of cloning by acting outside of the text of 101.

          1. 6.6.3.1.1

            Given that Congress has not acted in the five years that Alice has come down, or seven since Mayo came down, it is not unreasonable to assume that there is in fact no dispute in the area.

            So when this Congress or the next amends the statute to legislatively reverse Mayo, will you revisit this assertion?

            1. 6.6.3.1.1.1

              So when this Congress or the next amends the statute to legislatively reverse Mayo, will you revisit this assertion?

              Of course, I’m not going to maintain that congress blundered into legislating.

              Then comes the important question of whether the constitution mandates the denial of eligibility or not. I do not know if the court will go there, but if they do I doubt Congress would act again.

          2. 6.6.3.1.2

            I’m pleased to see that my “right answer for this hypothetical claim” probe elicited a civilised debate. I am assuming that there is broad consensus, all over the world, on which subject matter is fit for a utility patent and which is not, but disagreement how best to treat this particular claim.

            Being in Europe, I see it differently from others here. I see Europe’s “103” as the best tool to despatch this claim into oblivion.

            Indeed it reminds me of Robin Jacob’s testpiece, his well-known hypothetical claim to “A 5 1/4 inch plate.” Robin Jacob is a (now retired) English patent law judge, very eminent, sometimes provocative.

            His art field was tableware (dinner services, tea services, breakfast ware). The prior art has various different plate diameters, but 5 1/4 inch is new. Patentee maintains it cannot be held obvious because there is in the state of the art no teaching, hint or suggestion to the PHOSITA, to choose that very special and specific diameter. What about that then?

            But were his claim to be examined for obviousness at the EPO, it would with certainty, and in short order with unassailable reasoning, be held not to satisfy the non-obviousness patentability requirement of Art 56 EPC.

            How other jurisdictions choose to strike down such claims is of course their sovereign privilege. My interest is just in doing it as elegantly as possible, with a maximum of judicial clarity and economy.

            Of course the EPO also has an eligibility filter. It excludes all subject matter that lacks “technical character” ie lies outside the ambit of the “useful arts”. Drilling for oil though, that’s something of technical character and within the useful arts, regardless where on Earth that drilling occurs.

            Despatching this claim using the eligibility filter seems to involve claim dissection to find the “rest” of the claim, then dismissing it as “post-solution” stuff. Perhaps do-able with this claim, but not so easy in real life against claims written by clever and determined sctiveners. Uuuuuurgh!

            1. 6.6.3.1.2.1

              Yet again, you blunder inelegantly with your attempt to equate two things that are different:

              It excludes all subject matter that lacks “technical character” ie lies outside the ambit of the “useful arts”.

              Please do not do this. This is a sign of your lack of respect for the different choices by different Sovereigns.

            2. 6.6.3.1.2.2

              I’m pleased to see that my… hypothetical… elicited a civilised debate.

              It is very easy to have a civilized debate with Random Guy involved. After the late, great Ned Heller, he is probably the most well read (case law wise) and law knowledgeable participant on these boards. He also operates entirely in intellectual good-faith. It is always a pleasure to interact with and learn from him.

              1. 6.6.3.1.2.2.1

                Utter B$.

            3. 6.6.3.1.2.3

              I see Europe’s “103” as the best tool to despatch this claim into oblivion.

              Naturally, if the grandees of Europe consider it important to tank such a claim, that is their prerogative, and no great concern of mine. It is not clear to me, however, why it should be thought important to dispatch this claim into oblivion.

              The person who discovers the oil deposit in the specified locale has done the public a service. Why is it important that s/he should not have a reward, or that the reward not come in the form of a patent?

              1. 6.6.3.1.2.3.1

                Good question, Greg. Do not misunderstand me. I’m not urging that it is “important” to strike down this claim. I just think it is an interesting hypo for exploring 101 and 103 issues.

                As to your question about “reward”, I’m thinking that the ownership issue is decisive, but not of any issued patent. Suppose the inventor is NOT the owner of the land, that he “discovered” the oil with some sensor or other within an unmanned overflying drone and as soon as he is issued with the patent promptly enjoins the owner of the land from drilling for oil on his very own land. Is that OK with you?

                What if it is not oil but some rare plant with medicinal properties rendered available by leaching its leaves, and the patent forbids the owner of the land from harvesting, using or selling those leaves?

                1. I just think it is an interesting…”

                  A fine example of “civility” covering up B$.

                  You may also think “it interesting,” but your choice of words belie a bias that even Greg picked up.

                  Back-peddling instead of owning your bias presents the type of “false facade of civility” that obscures rather than enlightens the discussion.

                2. Suppose the inventor is NOT the owner of the land, that he “discovered” the oil with some sensor or other within an unmanned overflying drone and as soon as he is issued with the patent promptly enjoins the owner of the land from drilling for oil on his very own land. Is that OK with you?

                  In a word, yes. That is what IP does.

                  Stephen King’s copyrights stand as a (time limited) restriction on what I might do with my HP laser printer. Kary Mullis’ PCR patent stood as a (time limited) restriction on what molecular biologists were allowed to do with the heat blocks in their labs. There is a necessary trade off with IP that diminishes individual liberty and property rights, but that is a price that society (wisely, IMHO) deems worth the benefits that accrue. If the landowner is restrained from harvesting the oil for a limited time, she is no worse off than she was back when she did not realize that she even owned any oil.

                3. I read what you write, Greg, but still baulk. Imagine the patent is yours and that you inform the landowner pre-emptively, that should she set up a drilling rig she will promptly be enjoined under the patent, the patent, that is, that protects the “invention” you made.

                  Invention? Are you serious?

                4. Invention? Are you serious?

                  Yes. The English “invention” comes from the Latin “invenire” (“to find or discover”). I am the one (in this hypo) who discovered the oil under that land and disclosed the presence of the oil to the world.

                  It is not crazy to my mind that the law should reward that sort of public benefit—or at least no more crazy than it is to reward Stephen King by giving him the right to impose restrictions on what might be done with the chattels of this nations various photocopier and laser printer owners. As I said, that is just what IP does.

                5. Yes, I know the Latin origin, but think “discovers” in the Patents Clause is used in the legal sense of discovery process ie uncover ie provide an enabling disclosure.

                  Not every “process” is patentable; nor every “discovery”.

                  With “your” drone, either you were using a known oil prospecting method, or one you invented. If the former, it is not an invention to use your drone to search for oil.

                  If your method is your invention, patent it, sure, but don’t use the map co-ordinates of my land as the point of novelty in your claim.

                  As you see, notwithstanding my enthusiasm to allow patents on everything patentable, I still baulk at the idea that your claim is directed to a patentable invention. Respect for patents dwindles, the more often patents are issued for subject matter that (in the forum, in the market square, in the mind of the public) ought not to be patented.

                6. but think “discovers” in the Patents Clause is used in the legal sense of discovery process ie uncover ie provide an enabling disclosure.

                  See 35 USC 100(a).

                  Your take is just not what our Sovereign has chosen.

                7. I have this phrase and it appears to have a cloaked meaing:

                  Respect for patents dwindles

                  The cloaked meaning is that patents for outside of what I feel makes me feel bad about patents.

                  Sorry MaxDrei, but what you deem “respect” has no tether to the actual patent law. I reject the attempted subtle inversion based on such feelings.

                  Your “populace” (or mob) driven approach is WAY too susceptible to propaganda.

                8. oops lost a phrase:

                  “that patents for outside of what I feel makes me feel bad about patents”

                  should read

                  “that patents for outside of what I feel should be allowed to be patented makes me feel bad about patents”

                  Of course, from MaxDrei, we OFTEN see this with his attempts to conflate “technical arts” with the US Sovereign different choice of Useful Arts.

  5. 5

    Lemley, Chien, etc. The architects of the destruction of the patent system.

    No ethical constraints. No peer review. Lots of money flowing in their pockets (admitted by Lemley). The new “academic.”

    1. 5.1

      Not to put too fine of a point on it, but the phrase “no peer review” is not only inaccurate, but the inaccuracy clouds one of the larger problems with academia in general: the “peer” system in academia is NOT a meritocracy but is instead a “how best do you hew to the mindset and viewpoints of the controlling establishment?”

      I “get” that your intended use is likely to be the version of the word as used in scientific circles, but the different context inherent in the different groups of peers – and thus the larger view of how “peers” typically interact is an important consideration to keep in mind.

  6. 4

    Moonbeam’s ad nauseam entreaty at #3 that; fundamentally; only proverbial buggy whips are deserving of patent protection aside, Mr. Doerre’s article leaves one feeling that he — like so many others — is dazed and confused over how to trudge through the eligibility morass that is current 101 jurisprudence.

    Leaving the only certain way to insure that this innovation-sapping, new company formation blocking, great new jobs denying morass is cleaned up for good is this:

    Abolish 101.

    Allow the three horsemen of the patent apocalypse — 102, 103, and 112 — to do the job they were created to do.

    1. 4.1

      Moonbeam’s ad nauseam entreaty at #3 that; fundamentally; only proverbial buggy whips are deserving of patent protection aside,

      The number of yet-to-be-described new objects, compositions and methods that can be distinguished from the prior art using objective structural terms or by the recitation of steps that result in a non-obvious physical transformation of matter is beyond comprehension.

      If it all seems like “buggy whips” to you, probably now is a good time to stop inhaling the fumes from your favorite techbro’s armpits.

      To put it another way, if you think that logic and information itself needs to be protected by a 20 year monopoly in order to “progress”, then explain why that’s the case. The fact that without those cr@p patents you’ll have less chance to win the Derpshert Silly Con Invest@rd Sweepstakes is not a very compelling argument. An even worse argument is that you’ll be forced to find work in another area of law (because patent law definitely doesn’t need you).

  7. 3

    This article is in the running for the most poorly written article ever to make into this online journal. The title alone is a trainwreck.

    Three immediate issues jump out. The first is that the entire article appears predicated on the mythology that 101 as presently applied is somehow “swallowing” all of patent law or is otherwise poised to do so. In fact, nothing could be further from the reality (as the historically enormous numbers of patents being granted in the wake of Bilski, Mayo, and Alice demonstrate). The reality is that all of patent law has been in constant danger for the last quarter century of being “swallowed up” by basement-level con artists (including, especially, patent attorneys themselves) scrivening claims that protect the use of information and logic in various prior art contexts. As of 2019, that danger has been acknowledged and confronted at all levels of the legal system, including venue (!). That inevitable confrontation and tightening up has, in turn, been turned into an excuse for a tiny but ridiculously over-amplified class of self-identifying “innovators” (and their attorneys, surprise!) to engage in an endless propaganda campaign bemoaning the “end of innovation” and all kinds of other imaginary societal ills that flow from the rejection of their patents on logic and information.

    The second major issue is that Jeremy seems to have decided to engage in battle with the already beaten-to-a-pulp strawman version of “pre-emption”. Specifically, the implicit assumption is that the pre-emption concern is primarily one of overbreadth, i.e., claims that are too broad or so broad that they encompass prior art “ideas” so that nobody can use those particular “ideas”. That is most definitely not the issue that the Supreme Court and the CAFC are concerned with and they have made that crystal clear on countless occasions. The “pre-emption” that the Courts are concerned with is the pre-emption of the so-called “fundamental building blocks” of technical progress, period, i.e., facts, information and logic (and any other names you want to give to these abstractions). It doesn’t matter at all whether these building blocks are protected broadly or in the most narrow terms possible. What matters is that when a particular patent claim protects (or “pre-empts”) any of these abstractions, regardless of how narrow the protection is, that claim is ineligible. The rationale is simple and unassailable (by most reasonable people): if the gates of the patent system are open to protecting highly specific (“narrow”) examples of “non-obvious” logic or highly specific examples of “non-obvious” facts, then there will be a “land rush” and these fundamental building blocks will become unavailable to nearly everyone except for the landlords who had the money and the legal manpower to “stake their claims” on the building blocks.

    This concern is not a “paranoid” vision by any means. Those of us who have been neck deep in the system for the past twenty years or so saw this happening in real time. We saw patent attorneys arguing that the utility patent system permitted them to obtain claims that would allow them to sue doctors for thinking about the meaning of data that was collected using prior art techniques. And we saw patent attorneys arguing that the utility patent system permitted them to protect searchable databases that differed from prior art databases only in terms of the data content being searched. And we saw patent attorneys arguing that the utility patent system permitted them to protect newly discovered natural phenomenon by reciting only prior art detection steps, where those detection steps were known to be useful for detecting natural phenomenon in a class identical to the class that was discovered. It doesn’t take a whole lot of deep thought to appreciate the extremely negative consequences that would result if that kind of behavior was allowed to continue. In fact, it’s the kind of behavior that only an incredibly greedy manipulator and his/her attorney could pretend was not readily envisionable.

    The last glaring issue that jumps out of Jeremy’s paper is the extremely opaque and muddy characterization of the Mayo case (something we’ve seen before a thousand times). The facts in Mayo are not difficult to describe, nor is the issue a difficult issue to understand. So why not lay it out in plain terms? Prometheus claims recited a method of using an admitted prior art data gathering step to gather data, followed by a step of thinking about the meaning of the data (i.e., “correlating” the data with a meaning). The Supreme Court recognized that within the prior art context of collecting that data, the claims impermissibly protected ineligible subject matter, i.e., a correlation, therefore the claims were ineligible. The Supreme Court also recognized that the eligibility problem could be “cured” if the claims recited (rather than merely a prior art data gathering step) an eligible and inventive (i.e., non-obvious) step, series of steps, or apparatus. Of course, most of us recognized immediately that once you have that additional curative matter, a skilled attorney would not bother reciting the problematic additional step of thinking about the meaning of the gathered data. In other words, the plain message from Mayo (and Alice) is that eligible utility patent claims need to be focused on non-obvious non-abstract distinctions relative to the prior art. And that plain message was received by many (most?) patent attorneys without a lot of crying and moaning. For many (most?) of us, it was business as usual. And, years later, it still is: clearly eligible claims are those claims which distinguish themselves from the prior based on recited structural distinctions and steps that result in non-obvious transformations of matter. There is nothing at all radical or unsettling about any of this. This is the way the system has functioned for eons.

    So let’s take this specific passage and put a stake through its heart:

    The author would suggest that, in the context of a claim that is alleged to be directed to a known prior art abstract idea, any nonobvious element or combination of elements that is sufficient to render the claim patentable over the prior art abstract idea would also be “‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [abstract idea] itself.’”

    Well, that can’t possibly be true. What if those “non-obvious elements or combination of elements” are themselves ineligible abstractions? Now the claim is eligible because it recites two ineligible abstractions, one old and one-non-obvious? That’s ridiculous and, as noted above, it completely misses the entire point of the Supreme Court’s very well-reasoned case law. On top of that, it would represent an incredibly radical change to patent law as we know it. And for what purpose? To prevent some imaginary “swallowing up” of patent law that is plainly the opposite of reality? Please.

    There are other passages from the paper that are similarly bizarre because they fail to directly address this gaping loophole in reasoning. For example:

    That is, there is no need to resort to use of an implicit judicial exception to 35 U.S.C. § 101 for abstract ideas in order to prevent pre-emption of prior art ideas because 35 U.S.C. § 103 already ensures that claims do not “’disproportionately t[ie] up the use of ‘underlying’ [prior art] ideas.”41

    If the author could provide everyone with just one single example of a claim that recites objective non-obvious physical structure, or a new non-obvious physical transformation of matter, that the Supreme Court or the CAFC has held to be an “ineligible abstract idea” then we could possibly begin to be concerned about the issue the author thinks he is addressing. But it is my understanding that even if such cases exist, they are very few and very far in between, and the law as it stands is already well equipped to “correct” such errors on the margins.

    1. 3.1

      I agree. The article seems confused and confusing. The main argument seems to be something like the following:

      a. 35 USC 101 is a statute that states a general rule that new and useful processes, machines, manufactures, and compositions of matter are patentable unless another provision says they aren’t.
      b. Laws of nature, natural phenomena, and abstract ideas are three judicially created exceptions to 101’s general rule.
      c. There is caselaw out there, like Commissioner v. Clark, 489 U.S. 726, 727 (1989), holding that when a statutory scheme states a general rule and then enumerates exceptions, the exceptions should be read narrowly to preserve the general rule.
      d. The Supreme Court should take the same approach to the judicially created exceptions to 101 that Clark suggests for specifically enumerated statutory exceptions.
      e. The abstract ideas exception is driven by concerns about “preemption.”
      f. For “prior art ideas,” this concern is unfounded because 103 already exists to prevent patents on prior art ideas.
      g. Therefore, the abstract ideas exception should be read “narrowly” not to apply to “prior art ideas.”

      If I’m right about the syllogism, I think the first three steps of the argument (a-c) are mostly fine, but it goes off the rails after that. I think the paper overreads and misapplies the “construe exceptions narrowly” precedent, I’m not sure what it means by “prior art ideas,” and I think MM well explains why step (f) of the syllogism doesn’t really work.

      1. 3.1.1

        dcl summarizes the points made in the paper:

        e. The abstract ideas exception is driven by concerns about “preemption.”
        f. For “prior art ideas,” this concern is unfounded because 103 already exists to prevent patents on prior art ideas.

        If I squint really hard here I can find an extremely important truth that is worth repeating and which also accurately reflects the Supreme’s guidance in Mayo. Specifically, in the typical patent claim, there is indeed no “pre-emption” of ineligible subject matter when, somewhere in the claim, there is a recitation of non-obvious objective physical structure or the recitation of a step or ordered combination of steps that results in a non-obvious transformation of matter. This is true even where the claim goes on to recite a limitation that would be ineligible if claimed on its own terms (i.e., claimed “straight up” without the non-obvious subject matter I described above). As I already noted, a skilled practitioner is not going to weigh down his/her claim with such red flag-waving limitations if there is already patent-worthy subject matter in the claim and most of us seasoned practitioners instinctively avoid doing so (why limit a claim unnecessarily?). The reason there is no “pre-emption” issue is that nobody who is practicing the prior art or an obvious variation of the prior is going to be “pre-empted.” Any third party who is, say, selling the structurally defined non-obvious apparatus recited in the claim is already “over the line”, in terms of what they are entitled to do (assuming I’ve drafted my apparatus claims carefully). If they are selling that structurally defined non-obvious apparatus to, say, print the word “Help” on a piece of paper (as recited in my method claim), well, that’s just icing on the cake. But the “abstract idea” of “communicating a need for assistance” is not pre-empted at all by my claim because my claim is expressly limited to a non-obvious non-abstract (i.e., structurally defined) apparatus — the kind of apparatus that has always been the proper subject of a utility patent claim from the beginning of the patent system.

        1. 3.1.1.1

          …because “structurally defined” is anything but an optional claim format, right?

      2. 3.1.2

        dcl,

        Thanks for reading and for the thoughts.

        I suspect we are largely in agreement about the necessity to read the referenced narrow construction precedent cautiously. Elsewhere, I tried to be cautious in merely suggesting that the implicit exception to 101 could reasonably be narrowly construed, but I probably should have been more careful in that section not to oversell the applicability of the precedent. I do think that the Court’s indication that one must “tread
        carefully in construing this exclusionary principle lest it swallow all of patent law,” Alice, 134 S. Ct. at 2354, provides a little bit of additional support in this regard.

        With respect to MM’s comments re (f), I noted in a response to him (caught in comment filter I think) that I tried to address this in n. 40, suggesting that “if an element or combination of elements that might otherwise qualify as an inventive concept is itself alleged to represent or be part of an ineligible abstract idea, e.g. a new mathematical formula, then the claim could simply be alleged to be ineligible as directed to that abstract idea,” or to the combination of those ideas. 2019 Patently-O L.J. 10, 14 n. 40. I suggested that “identification and emphasis of this abstract idea at risk of being pre-empted, as contrasted with a blanket allegation of a claim as directed to a prior art idea coupled with dismissal of elements or a combination of elements as also abstract, has the advantage of requiring more explicit logical analysis, thus minimizing the likelihood of an error in application.” Id.

        Thanks again for the thoughts, as I’m always interested in thoughts on where an argument I make goes astray.

      3. 3.1.3

        dcl,

        Thanks for taking the time to read the article and for your insightful thoughts. My apologies for the delayed response, as my prior response got caught in a post filter.

        With respect to overreading the Clark precedent, I suspect we largely agree that a cautious reading is necessary, and I definitely should have done a better job of conveying this in the article. I tried to temper the overall conclusion by merely suggesting that the exception to 101 reasonably could be narrowly construed, but I likely should have done more to clarify that the precedent merely offers a door, and doesn’t really dictate that it has to be opened.

        That being said, I don’t think that it is a big ask to suggest that implicit judicial exceptions to Congressional statutes should be narrowly construed. The spirit of this idea, at least, seems partially reinforced by the Court’s recent suggestion that courts may not “may not engraft … exceptions onto the statutory text,” Henry Schein, Inc. v. Archer and White Sales, Inc., 139 S. Ct. 524, 530 (2019), and “may not rewrite [a] statute simply to accommodate [a] policy concern.” Id. at 531.

        Further, I think that in this specific instance the idea of narrowly construing the implicit judicial exception to 101 also gets at least a bit of support from the Court’s cautioning that one must “tread carefully in construing this exclusionary principle lest it swallow all of patent law.” Alice, 134 S. Ct. at 2354.

        With respect to (f), I tried to address this at note 40, and suggested that if an element or combination of elements that might otherwise qualify as an inventive concept is itself alleged to represent or be part of an ineligible abstract idea, e.g. a new mathematical formula, then the claim could simply be alleged to be ineligible as directed to that abstract idea or to the combination of those ideas. I tried to suggest that identification and emphasis of this abstract idea at risk of being pre-empted, as contrasted with a blanket allegation of a claim as directed to a prior art idea coupled with dismissal of elements or a combination of elements as also abstract, has the advantage of requiring more explicit logical analysis, thus minimizing the likelihood of an error in application.

        To be honest, I think that this is a legitimate question, and I recognize that this isn’t really a complete answer. Ultimately, maybe this would end up being unworkable, but I’m not sure that it’s immediately clear that this is the case.

        Again, my thanks for your consideration and thoughts, as I am always interested in any thoughts on where an argument I make is erroneous or goes astray.

    2. 3.2

      Let’s just answer the title question while we’re at it:

      Is There Any Need to Resort to a § 101 Exception for Prior Art Ideas?

      1) Applying a rule to eliminate X does not constitute a “resort” to that rule simply because eliminating X is possible under a different rule.

      2) Rules that were once “rarely applied” or were designed to be “rarely applied” should not be disparaged for increasingly being applied against a historically unprecedented (and unanticipated) number of rule breakers.

      3) With respect to the idea that 103 is capable of “policing” against non-obvious abstract ideas, anybody who makes this argument needs to understand what they are arguing for (and they need to demonstrate to their audience that they understand). Specifically, it must be recognized that 103 has been judicially altered to permit (theoretically) post-filing evidence of commercial success and other “secondary” factors. As a result, the application of 103 to police “abstract ideas” (without “resort” to 101) will lead to the patenting of abstract ideas that are prima facie obvious but which the patentee has managed to successfully commercialize. In other words, the use of 103 to police “abstract ideas” will essentially create an exception to the judicial exceptions … and what a bizarre exception that will be.

    3. 3.3

      MM,

      Thanks for taking the time to read through and for the comments. I’m also proud to be in the running for the most poorly written article you’ve read. Truly, it’s an honor just to be nominated!

      I think one thing that might surprise you, although maybe not, is that to the extent that you are making the point that the current framework largely invalidates the patents that should be invalidated and rarely results in improper invalidation of claims to legitimate non-obvious technical innovations, I actually agree. That is, with respect to any cases where legitimate non-obvious technical innovations are being improperly invalidated, I agree that “even if such cases exist, they are very few and very far in between, and the law as it stands is already well equipped to ‘correct’ such errors on the margins.” MM at post 3.

      This article isn’t really intended to suggest that the exception is at risk of swallowing patent law because legitimate inventions are constantly being invalidated. This is why the article doesn’t really offer a forceful conclusion that anything must be done, and instead just suggests that the implicit exception reasonably could be narrowly construed. To the extent that the exception is at risk of swallowing patent law, it really seems more like the implicit judicial exception to 35 U.S.C. § 101 sometimes effectively “swallows” 35 U.S.C. § 103 because the inventive concept inquiry substantially overlaps with an obviousness inquiry but can be applied more loosely.

      To be clear, I specifically noted in the article that I “believe[] that 35 U.S.C. § 103 should be applied more frequently in accord with KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) to reject and invalidate obvious claims, e.g. claims which merely represent obvious computer implementations of prior art ideas using routine and conventional computer components and functionality.” 2019 Patently-O L.J. 10, 19 n. 76. But I think that using the exception to address these claims only forestalls consideration of when obviousness rejections should properly be applied in view of KSR, and also increases confusion over proper application of the implicit judicial exception.

      In this regard, I think that this confusion has negative effects both ways, and I suspect you would agree that confusion over proper application of the exception sometimes causes claims to be found eligible when they should not be. I think that allowing decision makers to broadly allege that a claim is directed to a prior art abstract idea increases the likelihood that an ineligible abstract idea that a claim is directed to is mistaken for an inventive concept.

      Your point about “[w]hat if those ‘non-obvious elements or combination of elements’ are themselves ineligible abstractions,” is well taken. I tried to address this in n. 40, suggesting that “if an element or combination of elements that might otherwise qualify as an inventive concept is itself alleged to represent or be part of an ineligible abstract idea, e.g. a new mathematical formula, then the claim could simply be alleged to be ineligible as directed to that abstract idea,” or to the combination of those ideas. 2019 Patently-O L.J. 10, 14 n. 40. I suggested that “identification and emphasis of this abstract idea at risk of being pre-empted, as contrasted with a blanket allegation of a claim as directed to a prior art idea coupled with dismissal of elements or a combination of elements as also abstract, has the advantage of requiring more explicit logical analysis, thus minimizing the likelihood of an error in application.” Id.

      Overall, my intended point was largely just that although the implicit judicial exception is needed to prevent claims from unduly pre-empting newly discovered natural laws, natural phenomena, and abstract ideas, there is no similar need to resort to such an implicit judicial exception for ideas that are already in the prior art.

      With respect to Mayo, I didn’t really get in to the facts because I think there are others with more specialty in that area that can, and have, laid it out way better than I can (yourself included). I do think Mayo is a useful example that illustrates that narrowly construing the implicit judicial exception to not apply for prior art ideas would not disrupt Supreme Court precedent applying the implicit exception to 35 U.S.C. § 101 to guard against pre-emption of newly discovered or novel laws of nature, natural phenomena, and abstract ideas.

      Thanks again for your thoughts, as I am always interested in any thoughts on where an argument I make is erroneous or goes astray. I’m not sure there’s a case that narrowly construing the implicit judicial exception to not apply for prior art ideas absolutely needs to be done, but I do think there’s a logically consistent argument that it would be a reasonable approach that would help to clarify § 101 analysis.

    4. 3.4

      MM,

      Thanks for taking the time to read the article and for the constructive comments. My apologies for the delayed response – my prior one got caught in the post filter. I’m also proud to be in the running for your award. Truly, it’s an honor just to be nominated.

      I think one thing that might surprise you, although maybe not, is that to the extent that you are making the point that the current framework largely invalidates the patents that should be invalidated and rarely results in improper invalidation of claims to legitimate non-obvious technical innovations, I actually agree. That is, with respect to any cases where legitimate non-obvious technical innovations are being improperly invalidated, I agree that “even if such cases exist, they are very few and very far in between, and the law as it stands is already well equipped to ‘correct’ such errors on the margins.”

      This article isn’t really intended to suggest that the exception is at risk of swallowing patent law because legitimate inventions are constantly being invalidated. This is why the article doesn’t really offer a forceful conclusion that anything must be done, and instead just suggests that the implicit exception reasonably could be narrowly construed. To the extent that the exception is at risk of swallowing patent law, it really seems more like the implicit judicial exception to 101 sometimes effectively “swallows” 103 because the inventive concept inquiry substantially overlaps with an obviousness inquiry but can be applied more loosely.

      To be clear, as I tried to note in the article (note 76), I think 103 should be applied more frequently in accord with KSR to reject and invalidate obvious claims, e.g. claims which merely represent obvious computer implementations of prior art ideas using routine and conventional computer components and functionality.
      But I think that using the exception to address these claims only forestalls consideration of when obviousness rejections should properly be applied in view of KSR, and also increases confusion over proper application of the implicit judicial exception.

      In this regard, I think that this confusion has negative effects both ways, and I think you would agree that confusion over proper application of the exception sometimes causes claims to be found eligible when they should not be. I think that allowing decision makers to broadly allege that a claim is directed to a prior art abstract idea increases the likelihood that an ineligible abstract idea that a claim is directed to is mistaken for an inventive concept.

      I think that there is a strong argument that the second part of the Alice/Mayo framework was intended to distinguish between claims that are “directed to” an ineligible concept, and those that are directed to a patent-eligible application, and that the recent trend of utilizing a separate inquiry at step 1 of the Alice/Mayo framework to inquire whether a claim is “directed to” an ineligible concept increases the risk that ineligible claims will be found eligible. I think that there is an argument that requiring decision makers to be more explicit in their logical analysis regarding what idea a claim is directed to, e.g. by not allowing them to simply allege that a claim is directed to a broad prior art concept, could potentially help bring consistency to application of the framework, resulting in less errors both ways.

      Your point about non-obvious elements or combination themselves being ineligible concepts is well taken. I tried to address this at note 40, and suggested that if an element or combination of elements that might otherwise qualify as an inventive concept is itself alleged to represent or be part of an ineligible abstract idea, e.g. a new mathematical formula, then the claim could simply be alleged to be ineligible as directed to that abstract idea or to the combination of those ideas.

      Overall, my intended point was largely just that although the implicit judicial exception is needed to prevent claims from unduly pre-empting newly discovered natural laws, natural phenomena, and abstract ideas, there is no similar need to resort to such an implicit judicial exception for ideas that are already in the prior art.

      With respect to Mayo, I didn’t really get in to the facts because I think there are others with more specialty in that area that can, and have, explicated it way better than I can (yourself included). I do think Mayo is a useful example that illustrates that narrowly construing the implicit judicial exception to not apply for prior art ideas would not disrupt Supreme Court precedent applying the implicit exception to 101 to guard against pre-emption of newly discovered or novel laws of nature, natural phenomena, and abstract ideas.

      Thanks again for your thoughts, as I am always interested in any thoughts on where an argument I make is erroneous or goes astray. I’m not sure there’s a case that narrowly construing the implicit judicial exception to not apply for prior art ideas absolutely needs to be done, but I do think there’s a logically consistent argument that it would be a reasonable approach that would help to clarify 101 analysis.

  8. 2

    Jeremy Doerre labors mightily, but he can’t get past the same core issue tripping up this whole controversy. There are two kinds of impermissible abstractions; abstract inventions and abstract claims.

    They are not the same. 101 is concerned with inventions that are intrinsically abstract- where the art may not be patented at all. 103 and 112 are concerned with claims that are extrinsically abstract in relation to the prior art, meaning they are obvious, or the inventor is not in full possession of the novel subject matter.

    Trying to handle both kinds of abstraction with one test inevitably leads to subjective, unrepeatable and unpredictable results. This has been noted by dozens of judges and hundreds of lawyers. It’s not a made up frustration based solely on ideology.

    The dictionary definition of abstract includes: existing in thought or as an idea but not having a physical or concrete existence. In the vernacular, abstract is often a synonym for intangible. Bilski established that process patents require no physical manifestation, so mere intangibility cannot preclude eligibility.

    The root of the word is the Latin ‘abstrere’, meaning ‘to draw away’. I suggest that an abstraction can only exist in relation to a human mind.

    If there is no human consciousness to host an abstraction, it cannot exist. The act of drawing information into a human mind is unequivocally an act of consumption. Human consumption of information is the moment when the degree or character of an abstraction becomes 100%, regardless of any a priori characterization of the abstraction.

    I suggest that when a method patent’s result is construed to be an item (or items) of information consumed by human actors, that method may not be eligible subject matter. The invention is intrinsically abstract. Section 101 need not be modified by a single word.

    This statement of doctrine eventually could implemented judicially, but if by statue, modifying 100(b) to read:

    The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material. The term “process” excludes any process which results in information consumed by human beings, excepting processes that improve information processing without
    regard to the particular content or meaning of the processed information”.

    This would be the fastest, cleanest way forward.

    This controversy has been propelled not just by philosophy, but by simple economic rules: every early dismissal saves millions of dollars.

    12(b)6 is where a judge should finds abstract inventions. Can’t have a case if you don’t have an invention patentable.

    A revised Markman procedure should be used to probe for abstract claims.

    Because this occurs earlier in a litigation, and centers on claims, it remains useful in the economic context of 101 practice is today.

    Because Markman inquiries have already evolved as mixtures of fact and law, and both sides have a chance to fully brief, including tutorial, etc., there is a much better chance for fair outcomes for both patentees and accused infringers, with more structured findings in relation to the several sections of the patent act.

    1. 2.1

      Not altogether bad, Marty (pausing for the moment to recognize that you are not in the patent terrain, but still reading on).

      Now if you could only grasp the patent sense of “utility.”

    2. 2.2

      Bilski established that process patents require no physical manifestation, so mere intangibility cannot preclude eligibility.

      In reality, what happened is that some members of the Supreme Court admitted that they weren’t ready to hold that “mere intangibility” (LOL) could preclude eligibility because they lacked enough information to make that decision.

      Any skilled attorney who advocates, unfettered, for a utility patent system that is limited to the protection of tangible innovations (i.e., innovations distinguished by objective structure, or innovations distinguished by physical result) is going to win his/her case. There is no way for a skilled, unfettered attorney to lose that result, frankly. What in heck is the attorney on the other side going to argue?

      “Your honor, we simply must have room for the protection of abstractions with no structure or no physical changes because otherwise there will be no promotion of progress in abstractions.”

      “Abstractions like using logic to reach a conclusion? Abstractions like methods of using reason to decide that someone is guilty or innocent? We need utility patents to promote advancements in that sort of thing? Since when? When was that decided? What is your evidence?”

      [long pause] “Look at this shiny computer! I can feed my dog remotely!”

      “Court is adjourned and the case is submitted. Thanks for playing.”

      1. 2.2.1

        If only MM. But in real district courts, that ain’t how it works.

        Bats, they are sick. I can no hit curve ball. Straight ball, I hit it very much. Curve ball, bats are afraid. I ask Jobu to come, take fear from bats.

        1. 2.2.1.1

          “In my world, magic and science are the same” – Thor.

  9. 1

    Candidate for Amicus for Bud…?

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