Scholarship Roundup: Crouch and Merges, Operating Efficiently Post-Bilski by Ordering Patent Doctrine Decision-Making

By Jason Rantanen

Earlier this week I mentioned a recent article by Dennis Crouch and Robert P. Merges, entitled Operating Efficiently Post-Bilski by Ordering Patent Doctrine Decision-Making, 25 Berkeley Tech. L.J. 1673 (2010), as proposing that patent litigation might be streamlined by deciding cheaper and easier issues early in the litigation process.

In the article, Professors Crouch and Merges suggest that the best way to proceed post-Bilski is not to attempt to cut through its complexity, but rather to avoid it.  They propose this be done by reordering litigation so that claim validity is first tested against one of the less controversial and complex requirements for patentability before reaching the complex issue of subject matter patentability – in essence, applying a "chain theory" of patentability, where PTO and courtroom analysis should start with the easiest and cheapest links to test and terminate once a patent is held invalid.

A full copy of the article can be obtained here:  Download Crouch and Merges – Post Bilski Ordering.


29 thoughts on “Scholarship Roundup: Crouch and Merges, Operating Efficiently Post-Bilski by Ordering Patent Doctrine Decision-Making

  1. 29

    >> How often is expert testimony used for claim construction?

    Essentially always, but it’s all indirect.

    Claim construction doesn’t take place in a vacuum, but in the context of a dispositive infringement or invalidity issue to which the claim construction is a necessary predicate. The expert testimony on the dispositive issue often shades over into claim construction.

    Also, you often get expert testimony on “ordinary meaning in the art.” Almost by definition that can’t come from the intrinsic evidence, often isn’t found in dictionaries. Often that comes in by expert testimony explaining papers from the scientific literature.

    District courts know that they can’t state in written claim construction orders that they relied on experts, so they don’t. But you can see from the body language and the turns of phrase in the opinion that he/she relied on the expert to help inform his/her thinking.

    The proposal is the typical stuff of law school professors. In the context of an academic navel-gaze, § 101 is indeed one of the most indeterminate problems, especially after Bilksi told us only what the law is not. But in the real world, where cases turn mostly on facts rather than law, § 101 is one of the simplest issues.

    Markets work, and private parties are usually in the best position to determine their most efficient course. As facts come in, the attorneys get a good sense of what the quickest path to the end to the case is, and present their summary judgment motions in that order. You don’t need no stinkin’ rule to get that behavior.

  2. 27

    Now that there has been cert. denied in Applera, we are in a real bind on 112, p. 2. Recall that the Federal Circuit rule is that if a claim can be construed, it is not indefinite. The Feds do not require that the claims be clear or definite or particular. Those terms are completely read out of the statute by the Federal Circuit jurisprudence.

    So, we have fuzzy claims that have to be construed before we can even approach issues such as 102/103 or 112, p.1.

    Malcolm raises the issue of whether we can even get to 101 without claim construction and some discovery of expert opinions. I don’t know, as I have never seen a 101 case deferred because the court had not construed the claims. But it seems possible to read the claims the way they are written, i.e., broadly, for 101 purposes. If that is the case, 101 might be a preferred way to attack claims that are clearly non statutory.

  3. 26

    Max, funny. Probably an artifact of dictation software. That happens to me often as well, and I, as do many others, have a hard time seeing the errors in anything I right.

    That said, it can be said that Barack Obama reins in the US economy through his incompetent reign.

  4. 25

    Sounds plausible, even without the scourge of the English Rule on costs to encourage the weaker party to throw in the towel.

    Except that MM is also plausible on these “pinch” issues, where you don’t know whether the claim is going to go down as obvious or as non-enabled.

    Me, I think you can’t even do a proper job of claim construction till after the case has gone to trial. Do it once (after trial) but then do it properly (so it doesn’t get reversed on appeal).

  5. 24

    You see, there was me, naivly supposing that, since the case has got as far as litigation, there aren’t going to be any such quick-end issues in the case because, well, that’s why the case has got to be litigated.

    Well, if the defendant is going to win the case, he’s going to win on a single issue. It shouldn’t take much to identify which few of the defendants’ arguments are the strongest or most likely to succeed, and possibly save the time that would be spent on all the others.

    It gets messier when the case is strong for the plaintiff, because the plaintiff generally has to prevail on every single issue to dispose of the case. Even so, once the defendant has lost his few strongest chances to escape liability, he’s probably quite likely to want to settle the case.

  6. 23

    Malcolm writes about “issues that are most likely to lead to a quick end to the case, one way or the other”.

    My question: how many such issues does a typical litigation display.

    You see, there was me, naivly supposing that, since the case has got as far as litigation, there aren’t going to be any such quick-end issues in the case because, well, that’s why the case has got to be litigated.

  7. 22

    In a litigation, § 1o1 is the one issue that can be decided with no discovery, and (often) with no expert testimony.

    How often is expert testimony used for claim construction?

    The best approach is for judges to become adept at spotting the issues that are most likely to lead to a quick end to the case, one way or the other. For example, why have a protracted battle over a 101 issue if it’s clear that the claims must be invalid under 101 *or* 102/103? Or invalid as non-enabled *or* obvious (a typical pinch in biotech cases)? Judges should always be working to force admissions from parties that move the case towards a conclusion, one way or the other. And the parties should be helping judges with this process.

  8. 21

    In a litigation, § 1o1 is the one issue that can be decided with no discovery, and (often) with no expert testimony. If there’s a viable issue, get it out of the way first.

  9. 20

    Right on, Ed. Follow your map and walk this road, all the way to 103, already in the FAOM. What else makes sense?

    Not rocket science, is it?

    Anybody disagree?

  10. 19

    If we put the statutes in the order by which they must be satisfied by a claim, the most logical order would be 112, 101, 102, 103.
    First, you have to know what’s being claimed.
    Then it has to fit the definition of eligibility given by congress.
    Then you compare it to the prior art.
    I haven’t read the article yet, but it seems to me that 101 is often the simplest statute to satisfy, (e.g. Ex: is it a thing you made? Inv: yeah. Ex: ok then.). Only for very few cases, such as Bilski, does it become complex. Thus, a proposal to order rejections to be addressed by complexity necessarily makes such order unique to each case. The ordering itself becomes yet another issue to complicate the administration of the patent system, making everything less efficient.

  11. 18

    The “competing doctrine” is not the Bilski case, nor the ordinal sequencing of 35 USC itself, but rather, it is the Office mandates of how the Office governs the examination process itself, as indicated in at least CFR 113, MPEP 706 and MPEP 2106.

    The paper simply does not address the inherent inefficiency of what amounts to a very real probability of stretching a chain out in time by taking a one-at-a-time serial approach and the risk of a premature “final rejection” that a less-than-complete examination entails. In fact, such an approach actually conflicts with the premise in the paper that validity doctrines overlap.

    I recognize the first-instinct appeal of grabbing the low hanging fruit, but if that fruit does not in fact snap off the branch easily (as would be the case for truely overlapping validity doctrines), tugging hard on low hanging fruit will not result in the proposed savings.

    You cannot have it both ways – either the doctrines are easily separable, and thus performing a chain of examiantion based on easiest area first, or the doctrines overlap and a full and complete examination is the best route.

    I also wonder at the lack of development (and the instrinsic implication) that 101 is tackled first merely because of its location. I find this not only misleading, but odd that the actual words (and the implications of those words) are ignored – “may obtain a patent therefor, subject to the conditions and requirements of this title” has obvious gateway implications. It is almost as if the Supreme Court decisions are assigned a complete factor of arbitrariness by the absence of any indepth exposition.

  12. 17


    You and Robert are to be commended on this article. It’s very thoughtful, and the suggestions you make are very practical, especially for those of us who live in the patent prosecution world. The USPTO Examining Corp would benefit greatly from reading.

    You comment that following the numerical order of the patent statutes is not always the most efficient is very astute, and one I agree with totally. The only reason I would tend to suggest starting first with Section 112, and with paragraph one first, followed by paragraph two, is to make sure the scope and language of the claim being valuated is understood. Again, as your article suggests, this order may need to be revised because other validity issues are more prominent and visible.

    It would be nice for a district court ruling to simply stop with the most glaring validity issue as your article suggests. But that doesn’t always make for judicial economy, especially if the district court ruling is likely to be appealed to the Federal Circuit. Instead, it might make more sense for the district court to order its ruling based on which validity issues it feels are more “glaring” to those which are less “glaring.” That would at least give the Federal Circuit some signal as to which of those validity issues might dispose of the case easiest.

  13. 16

    And I was thinking that doing patentability before one has done patent-eligibility is putting the cart before the horse. Or like checking out whether I have the heart, lungs and muscle power and endurance of a potential Tour de France winner without first looking to see whether I actually have a pair of legs below those lungs.

    But when SCOTUS makes the rules, everybody else has then to make the best of it, right?

    BTW, Daniel, in the EPO, obviousness is not often the hard bit. But in the structured, step-by-step approach invariably followed by the EPO, it comes last and, by then, the case is usually ripe for decision

  14. 15

    Silly me – I used to think obviousness was the difficult part of the validity determination, and that patent eligibility was the easy part. I’m soooo glad SCOTUS straightened that one out with its Bilksi decision.

  15. 14

    Berkeley might want to get a better proof-reader. For amusement, readers, watch out for “reign in” and “commiserate” (where “commensurate” was intended).

    But apart from that, a pleasure to read.

    Just one question: If the first instance does just one issue, and then stops, and that issue then gets fixed on appeal, does that not consign important cases to an endless ping-pong between the first instance and the appeal instance? Delayed justice is justice denied. Or?

  16. 13

    So, objectivity is what magically turns it from a .5trillion dollar tax on innovation into… what? A .49trillion dollar tax on innovation?

    Seriously though, what would an “objective” anything NPR could say on this subject reveal?

  17. 12

    Yes, it would be far better if far more business method claims would get rejected on 103 prior art, or even 112 lack of enablement or ambiguity, than 101. But unfortunately that is fighting human nature. It is so much less work just to say “rejected as unpatentable under 101” than it is to go do a really good prior art search and apply it to each claim element by element.

  18. 11

    Lulz – anyone taking anything NPR says about patents as not drenched in anti-patent rhetoric and hopelessly mired in a complete lack of objectivity.

    6 agreeing with that complete lack of objectivity – Sounds about right.

  19. 9

    To me it stands to reason that you should not go looking at patent-eligibility or patentability until you know what subject matter you are examining. Hence clarity and definiteness should come first. Go on to look at 101, 2 and 3 after that.

    But when the EPO tried that approach, in PCT Ch II on cases drafted in the USA, they met with uproar, and things rapidly went sour on a huge swathe of cases. I mean, imagine. A European Examiner of all people, using English as a foreign language, dares to tell an attorney-at-law of the USA, in front of his client, that the claim he drafted is not clear. The sheer effrontery of the man.

    So the EPO Examiners withdrew, regrouped and came back with the line “The claim is so unclear that I can find it lacking novelty over D1”. That worked. Pragmatism at work. Bravo.

  20. 8

    “We believe any claim that can be invalidated under one of the less controversial and less complex requirements for patentability—§§ 102, 103, and 112, for instance—ought to be disposed of without considering subject matter patentability.”


    Totally agree that, in screening the claims for validity, §101 should come last, not first. That’s what Michael Risch, I and others have said ever since Bilski went up to SCOTUS. In fact, claims should be screened first under §112, first and second paragraphs, before ever getting to patent-eligibility under §101; that comes out of what Rader said in Research Corp. v. Microsoft:

    “In the context of the statute, this court notes that an invention which is not so manifestly abstract as to over-ride the statutory language of section 101 may nonetheless lack sufficient concrete disclosure to warrant a patent. In section 112, the Patent Act provides powerful tools to weed out claims that may present a vague or indefinite disclosure of the invention.”

  21. 6

    I think the concern is at least as much with the courts over which Kappos has no jurisdiction.

  22. 4

    After reading the article it would seem that D is on board with putting the “simple” 101 determinations up front.

    I’m otherwise on board with his proposition. Now all he needs to do is bug director Kappos and get it implemented.

  23. 1

    ” where PTO and courtroom analysis should start with the easiest and cheapest links to test and terminate once a patent is held invalid.”

    I’m curious what he proposes would be the course of action where the claim clearly is not eligible? Do we then do 101 first?

    I’m also curious how he proposes to do different sections at different times as in an OA we do it all at once. Does he propose mini-actions sent out with art rejections before finally we swoop in with 101 rejection in another action to seal their fate?

    Because, if so, I might would do it just for the lols.

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