Can a Third Party Challenge Section 101 Subject Matter Eligibility in the USPTO’s new Post-Grant Review Procedure?

By Dennis Crouch

In 2013, the USPTO will open its doors to a new form of administrative patent challenge – the post-grant review. Starting on September 16 of this year, however, the USPTO will begin hearing a limited form of post-grant review proceedings directed to finance related business method patents as part of the Transitional Program for Covered Business Method Patents. The enabling statute (the AIA) provides for a broad scope of challenge – any reason that could serve as an invalidity defense under 35 U.S.C. § 282(b)(2) or (b)(3) (as re-formatted in the AIA). The AIA re-formatted Section 282(b)(2)-(3) is written as follows:

282(b) The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:. . .

(2) Invalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability.

(3) Invalidity of the patent or any claim in suit for failure to comply with—

(A) any requirement of section 112, except that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable; or

(B) any requirement of section 251.

In his recent essay, Professor David Hricik explained his position that Section 101 challenges likely do not qualify as defenses under 282[(b)]. The basic gist of his argument is that the requirements of Sections 102 (anticipation & statutory bars) & 103 (obviousness) of the Patent Act are clearly "specified … as condition[s] for patentability" and thus their embedded doctrines qualify as defenses under Section 282(b)(2). However, a fair reading the statute would not lead us to identify the of the subject matter eligibility doctrines housed in Section 101 as ones specified within the statute as conditions for patentability. Hricik writes:

[T]he important point, again, is that Congress deliberately thought about what should be invalidity defenses, and what should not, and left out 101 not just as a "condition of patentability," but also in [the third]paragraph, where it "caught" some strays. It left out 101. That says a lot.

In his post, Hricik focused solely on litigation issues. However, the scope of the new post grant review system also stems from Section 282 (as discussed above). Thus, if Professor Hricik is correct, then lack of subject matter eligibility (under Section 101) would also fail as a proper post-grant review challenge. Now, the USPTO disagrees with this analysis and has issued final rules indicating that Section 101 challenges will be permitted. Although these rules could be challenged (See Tafas v. Dudas) the AIA does not permit any appeal of the USPTO's decision or grant or deny a PGR request. The House Judiciary Committee report also suggests that it intended for the PGR proceeding to be open to Section 101 challenges as did statements of Senator Kyl. That said, the passage of the AIA is unlikely to be seen as expanding the scope of 282 – as such, current Congressional commentary on the meaning of the statute is unlikely to impact its meaning.

Professor Mark Lemley suggested the potential that a 101 eligibility issues are essentially threshold jurisdictional questions – rather than Section 282 defenses. This fits with the thinking of some current Federal Circuit Judges (such as Judge Mayer and Dyk) who have no problem raising eligibility questions sua sponte on appeal. However, under this explanation, a Section 101 challenge would still be excluded from post-grant review precisely because it is not a Section 282 defense.

105 thoughts on “Can a Third Party Challenge Section 101 Subject Matter Eligibility in the USPTO’s new Post-Grant Review Procedure?

  1. 105

    I do not agree that anyone but the true inventor, or his assigns, has standing to bring a 256 action.  Now, if the accused infringer had an assignment from the true inventor, then that changes things.  Otherwise, the accused infringer owes damages to the legal owner.  In Roche, the party sued was a legal owner himself, by assignment.

  2. 104


    Implicit (and ignored) is the fact in our discussion that the pirate is known to be a pirate.

    I am not sure why you keep on overlooking the plain effect this fact will have on legal title.

    All of your posts assume the pirate’s legal standing cannot be questioned.

    It is a fatal assumption.

    I really with you would acknowledge this point, because I am afraid that my constant repeating it will offend the sensibilities of sensitive blog readers who might mistakenly think that my postings are crass or somehow lack class.

  3. 103

    anon, 256 allows the true inventor to be substituted for the named inventors.  Until that is done, the name inventor, and those in privity have legal title.

  4. 102

    But the bottom line is this: standing is a defense that the party asserting the patent does not have a legal assignment from the named inventors, or that the named inventors have legally assigned the patent elsewhere.

    Not quite. There’s a nuance that you are still missing, even though I have plainly provided it.

    That makes no sense to me and would fly in the face of 256.

    Perhaps because 256 is not the only legal concept in play… (and don’t forget that what the AIA does is take validity out of the equation – and you will also notice that is appears that the challenging inventor did not file his own application and seek interference/[derivation]).

    Again, you have latched onto “named inventor” rather than focus on where you need to focus. In that respect, while admittedly dicta, the Supreme Court in Stanford gives you the explanation that you just don’t seem to grasp.

    I will remind you (yet again – sorry Leopold), that our discussion on this matter started with a concern that a pirate cannot be stopped from profitting from his piracy. Throughout our discussions, you have yet to admit that the logic I revealed is at least one path for the courts to prevent the pirate from profitting.

    It would be a welcome advance in our dialouge for you to at least admit that I proved my primary point.

  5. 101


    To me a new matter rejection isn’t a patentability rejection, it’s administrative. You’ll get a patent if you file a CIP, e.g. I suppose that if the USPTO were to reject a claim solely because the spec had new matter — and not because the subject matter was not patentable given its filing date — you might have some sort of statutory argument, but…

    My point is more broadly: there simple and small point I make is I think pretty clear. When you get to other issue, anyone arguing lack of statutory authority needs to go slowly and meticulously. Double patenting also has roots in administrative practice, not so much in patentability as such (you get a patent, just subject to a terminal disclaimer).

    I’m not saying anything about whether you’re right, or not – just my top-of-head.

  6. 100

    Inventorship fraud should be the only reason for invalidation and should be accompinied by beissuance to the wronged inventor and invention clusters is the only method of astronomical certainty of inventor fraud

  7. 99

    anon, on 256, the Feds. held that the true inventor has a cause of action to replace the named inventors if the true inventor did not act with deceptive intent.
    Stark v. Advanced Magnetics, Inc., 119 F. 3d 1551 – Court of Appeals, Federal Circuit 1997
    However, perversely, they also suggest that such a patent would be unenforceable due to fraud of the pirate.  That makes no sense to me and would fly in the face of 256.


  8. 98

    Anon, complete the thinking?  I will do so, but I find it remarkable that I have to given that I have given it to you numbers of times before.

    The inventor owns the invention, but he does not own the patent .  The party who owns the patent is the named inventor, and those in privity with him.  If the invention described and claimed is invented by an omitted inventor, in whole or in part, then the omitted inventor has an equitable right to coownership.  But he has to go to court, prove his case, and have the court name him as the inventor or coinventor on the patent thereby giving him ownership or coownership of the patent.  See §256.  If the inventorship cannot be corrected because of deceptive intent, then the patent is invalid under §102(f).  The AIA has removed the "deceptive intent" portions of the statute, thereby making it easier to correct inventorship.

    Stanford v. Roche, is inapposite.  That case involved a named inventor and which party was in privity with the named inventor.  The case did not involve a pirate or somebody who was not named.

    Today, if a pirate asserts a patent with incorrect inventorship, the pirate owns the patent by statute, but the patent is invalid under §102(f).  Under the AIA, the patent is no longer invalid.  Furthermore, the third-party cannot raise standing because the patent is legally owned by the named inventor or those in privity with him.  The only avenue for complaint by the true inventor is through section 256, or by derivation proceedings.  However, 256 still requires that the naming of the incorrect inventorship be through "error."  This would seem to exclude the case of intentional piracy by the patent owner.  In other words, 256 is a remedy can only be invoked by a bona fide patent owner who is not trying to steal the invention from a third-party.  The only remedy for the true inventor against the pirate is to file his own patent application and proceed through derivation proceedings.  This seems to be a no other remedy.  The result is perverse because the willful pirate is immune from a section 256 action, but his patent still is not invalid.  This would seem to be the exact opposite of what the law should be.

    But the bottom line is this: standing is a defense that the party asserting the patent does not have a legal assignment from the named inventors, or that the named inventors have legally assigned the patent elsewhere.


  9. 97

    This third party thing was suposed to be designed to allow me to recover pirated inventions. What they turned that into by corruption apears to be a totally diferent thing

  10. 96

    David, I think we should also consider that Congress never intended to codify the judicial exceptions. Even today, the patent office issues double patenting rejections as a judicial exception and does not rely on any particular statute.

    Whether the judicial exceptions are a proper grounds for invalidity is the question on a table given section 282. This section seems to suggest that we need to correlate a judicial exception to one of 102/103/112.

    The practice in the case of new matter seems to suggest the solution. New matter is expressly prohibited under 132. However the rejection is made under 112.

  11. 95


    I don’t know — I’d have to work through it, and with some of these issues acquiescence will kick in — at some point, if the issue is important enough and if it’s been settled long enough, courts will say “well, we may not have our interpretation right, but Congress hasn’t done anything to ‘fix’ it so we’re going to let it be.” That’s a rare circumstance, but some of these interpretations (not, as I can see so far at least, 101 invalidity) have been around a while.


  12. 94

    So, you need to complete the thinking on this.

    And remember the very reason this discussion was begun in the first place.

  13. 91

    IANAE, the original obviousness type double-patenting case was a “prior art” case.

    Form Miller v. Eagle

    In Underwood v. Gerber, 149 U.S. 224, it was ruled that where a patentee obtained two patents on the same day, upon applications filed on the same day, they could not be treated as one patent with two claims, and that the complainant in suing upon the second, or the one having the latest number, could not use the first, or the one with the earlier number, to help sustain the action.

    From Underwood:

    “As No. 348,073 does not claim the composition of matter, although it describes it, that composition must be regarded as disclaimed, and as being public property, and there was no invention in applying it to paper, as claimed in the patent sued on.”

    In this case the earlier patent claim the composition and later patent claimed applying a composition the paper. Assuming that the composition was old, the later patent was obvious.

    It seems to me that this case was based upon novelty, and 102.

  14. 89

    “The 101 exceptions are pretty much tied to the definition of “invention” in 101. If you insist on reading it into the explicit wording of the statute, 102 and 112 both require a claim to “the invention”, which makes any claim tautologically invalid if it relates to non-statutory subject matter.”

    IANAE, this suggests that 102/103/112 provides statutory support for a rejection based on lack of invention or ineligible subject matter independent of 101.

    I claim E=MC**2.

    If that is demonstrably a “fact” and not a machine, or process, etc., then the subject matter is indefinite; neither can it be built as required by paragraph 1; neither does the specification enable all ways of using such a fact.

  15. 88

    Prof. Hricik, I do not suggest that the patent office has authority to issue patents without utility or without subject matter that is eligible. What I do suggest is that any so-called 101 issue has to be framed as a 102/103/112 issue to provide proper statutory authority for rejecting a claim.

    If the claimed subject matter lacks utility, certainly there is a section 112, paragraph 1 rejection there somewhere. How can one describe how to use the claimed subject matter if it has no utility?

    If the claimed subject matter is not eligible for patenting because it is abstract, that is at least a section 112 problem. The authority for this proposition is O’Reilly v. Morse. It might also well be a section 102/section 103 problem as illustrated in Mayo v. Prometheus.

    As an example of the above, it is section 132 that prohibits the addition of new matter. Certainly with the addition of new matter, the claims are supported. However, it has long been the practice to reject the claims under §112, paragraph 1, not under section 132. Do you see the point? The legal authority for rejecting claims is not the statute wherein the requirement is placed. It is in 102/103/112.

  16. 87

    Now Ned please explain how the terms have anything to do with our pirate example, given that the pirate falls to the wrong side of a broken chain of title per the Supreme Court explanation of who has first ownership (the actual inventor rather than the named inventor).

  17. 86

    Dennis, sure.
    The legal title owner is the party(s) that owns the exclusive right to sue for infringements. That party in the case of a patent is the named inventor or company identified on the face of the patent, and those in privity with the named inventor or company, such as successors or assignees.
    There may be beneficial owners, for example, in a trust.

    There may also be true inventors who are omitted.  Such omitted inventors may have an action in equity to obtain legal ownership or coownership.

    Also equitable assignees may also have an equitable right to obtain legal assignment. 
    But, in any such case of an equitable right, the party holding equitable title must bring action in court to obtain transfer of title by court order.
    See: link to
    Legal Title

    The term "legal title" refers to the person who officially owns a patent. This is the name on the patent documents filed with the U.S. Patent Office.

    Equitable Title

    An equitable title owner is someone who is not found on the patent ownership documents but has a claim in equity to the title of the patent. An equity claim is based in fairness and is determined by what is considered reasonable and objective.

    Determining Equitable Title

    If someone believes they share in the ownership of a patent due to equity, they will need to go through the court system to have that interest confirmed with a court order.

    Read more: Legal Vs. Equitable Title Patent | link to


  18. 83


    We are not making any headway here because I have explained to you the break in chain of title and you cannot seem to understand that concept.

    You keep on thinking that the start of the chain is the named inventor. Re-read Stanford to see that the Supreme Court does not agree with you.

    Once you understand where the chain begins, you can understand that if the chain is broken between the link of actual inventor and named inventor (our hypothetical of a known pirate), the person on the wrong side of the chain – even if he be the named inventor loses standing to enforce.

    Your circling back again to insert more elements into the discussion can only cause confusion and obfuscation. There is no need to start talking about equitable and legal title. None.

    I would appreciate it if you showed you understood what I am telling you by addressing what I have told you (apologies to Leopold, who may feel differently).

  19. 82

    Anon, from the infringer's point of view, if the patent is valid the only thing he has to complain about is whether the person who nominally owns the patent actually owns the patent.  I think therefore that the question is who legally owns the patent, not whether who equitably owns a patent.

    Now I will grant you that an actual inventor may have a cause of action against a pirate which might result in a court ordering an assignment of the patent from the pirate to the actual inventor, with the corresponding change in name of the inventorship.  But until he does, the legal ownership remains in the pirate because he is the named inventor or is in privity with the named inventor.  Thus the infringer is not harmed at all if the legal title owner is the party to the suit.

    In order for your theory to prevail, somehow the true and actual inventor would have to be a legal owner of the patent such that he could bring suit against the infringer in his own name regardless that the pirate remains the named inventor.  In such situation, the defendant might actually be liable to two different owners of the same patent, or at least to some other legal owner not before the court.

    But to even state this case, shows it doesn't make any sense.  Rather it is clear that the actual inventor must establish in court his right to be named as the inventor or as a coinventor, and be awarded title by the court, before he has legal title.  Until that time, all he has is an equitable right.

  20. 81


    Sorry, I don’t see the issue with your issue (no matter how important you think it is).

    Validity alone is rather meaningless without my issue. After all, this discussion started with the thought of you being upset that a pirate could profit from the new law. I just showed you that he could not.

  21. 80

    Anon, your issue is standing.  My issue is validity.  I think the fact that a valid patent issues on a pirated invention is an important issue that we should understand and discuss.  I am quite willing to discuss your issue as well, but don't confuse the fact I also find validity important.

  22. 79

    Ned, I dont’ recall promising to look into it, and I don’t have time to for a while. I’d have to really piece that together.

  23. 78

    Ned, I disagree that there is no grounds for a 101 rejection in the USPTO. I agree that 102 and 103 are conditions of patentability, but 101 is a limited grand of power: the USPTO may issue a patent if it has utility and is on certain subject matter. The implication is the USPTO may reject a patent that has no utility or isn’t on that subject matter.

    I have got a lot of irons in the fire and haven’t followed all this since a day or so ago. But note that somewhere Mark Lemley or Dennis noted that utility would also not be an invalidity defense.

    It is also probably no accident that these two “weak sisters” of patentability are in a separate section from 102 and 103. I’ve always admired the Act.

  24. 77

    ” is also ”

    Are you done moving the goalposts yet?

    Dennis, is this the sort of debate you’re hoping to achieve? Just wondering. If not, I can tell you an easy way to improve it.

  25. 76

    They are an equitable solution under common law. That means they should be narrowly construed as possible and seldom used.

    Even if you are correct about the “equitable solution” issue, since when does the fact that a rule is based in equity mean that it should be “seldom used”?

    I believe that the frequency of use should depend on the frequency of violation of the equitable principle. Is there some Supreme Court holding to the contrary that I’ve forgotten?

  26. 75

    I am stating my position, not yours

    I do not understand this comment.

    Validity and invalidity are separate and distinct issues from ownership.

    That is part of my position. It is why I keep asking why you keep on inserting a discussion of validity when the issue is proper ownership and the pirate, not being a proper owner failing to be able to profit from his piracy.

    Further, you still do not seem to understand what the Supreme Court is discussing in Stanford v Roche and why I asked you to read that case. The Supremes are quite clear that the very initial ownership innures to the actual inventor. The issue of actual inventor being different from the named inventor is not disccused in the case, and your reliance on named invnetor is quite simply misplaced. The whole point of our discussion has centered on the fact that a break in the chain – as quite clearly starts with the actual inventor per Stanford – not the named inventor – provides a mechanism that defeats the pirate from profiting. Of course, the patent is still valid – no one has ever said differently! That is (and always has been) a non-sequitur. What is critical is that the pirate cannot enforce the valid patent because the pirate – even if he be named the inventor – loses standing by failing the chain from the actual inventor.

    Legally,the named inventor is the owner and can sue until the true inventor makes a claim in court.

    And legally, the named inventor – if he be a pirate – will be kicked out of court, nonsuited (and yes, the patent is still valid).

  27. 73

    Sorry. This is not copyright law. Anonymous filing gets no credit.

    Well, since it appears that true anonymity (pseudonymity) is a lie, I can imagine giving credit to a fellow academian when it is known to not rightfully belong will change in the brave new world.

  28. 72

    anon, I am stating my position, not yours.  Validity and invalidity are separate and distinct issues from ownership.

    The bottom line remains, the named inventor owns the patent unless the named inventor has assigned it to someone else.  Stanford v. Roche is not inconsistent since a named inventor was involved.  

    I will agree to this, though, that an inventor whose invention was pirated may have a cause of action in equity for specific performance of the pirates patent to the true inventor.  This is equity, though, and not law.  Legally,the named inventor is the owner and can sue until the true inventor makes a claim in court.

  29. 71

    a very hard time to accept that with the repeal of 102(f) a patent that does not name the correct inventors is nevertheless valid

    Ned, you are mistating the situation (at least between you and I). Validity is not at point in the inventor/pirate situation. I cannot be more clear about that, and yet you keep harking back to it as if it resolves the issue.

    It doesn’t.

    Also, it is not a matter of “If inventorship could be raised at any time by anyone.” This too should have been clear to you in oour discussion of the pirate not profitting. It is not “just anyone’ that would be bringing up the issue. It would be whomever the pirate is attempting to enforce his pirated invention against. There is no need for the interference/rival inventor fact pattern, thus the controlling law is the basic law of standing. Surely you are not saying that patent law supercedes that, are you?

  30. 70

    David, my current thinking is that the may be no grounds for a 101 rejection in the PTO. For example, section 132 states there shall be no new matter, but the rejection itself is under 112. 101 states, “Whoever invents…, may obtain a patent therefor, subject to the conditions and requirements of this title.” This expressly states that the conditions are elsewhere, not here.

    It seems not by accident that 102 begins, “A person shall be entitled to a patent unless-” It is not by accident that 282 expressly limits invalidity to 102/103/112.”

    Other examples abound. 111 requires drawings. But a rejection for lack of a drawing is under 112. 116 requires all inventors to apply. If one is omitted the patent is invalid — under 102(f).

    101 is no different than any of these. The statutory grounds for denying a patent are set forth in 102/103/112 (and 251). There, and now where else.

  31. 69

    David, I know you promised to look into eventually, but a lot of folks here are having a very hard time to accept that with the repeal of 102(f) a patent that does not name the correct inventors is nevertheless valid. Congress provided specific measures for a non named inventor to challenge inventorship, and that is through derivation proceedings were both the PTO and the courts have the authority in the appropriate case to change the names of the inventors on a patent but without affecting validity. Such a challenge limited to rival inventors who have their own patent or patent application. Third parties are not welcome to the discussion.

    If inventorship could be raised at any time by anyone, it would upset the statutory scheme and also violate the one year statute of limitations for derivation proceedings.

    But, most of us still find it almost impossible to accept that valid patents may issue to what some may call pirates.

  32. 68

    is also

    Are you done moving the goalposts yet? It’s obvious which aspects of 101 involve the blowing smoke.

  33. 67

    That means they should be narrowly construed as possible and seldom used.

    Obviousness-type double patenting is also a judicial exception. So it should be narrowly construed and seldom used.

    If it suddenly becomes standard practice in one prolific industry to file a thousand patents with mutually obvious claims, should we stop applying the exception because it’s no longer “seldom used”? Should we keep it “seldom used” by making arbitrary distinctions between claims that clearly all present the same legal issue? Or should we accept the trivial fact that lots of patents can trip a “seldom used”, “narrowly construed” exception if you draft them all in the same form?

  34. 66

    David: that is the whole point of these 101 cases. They are not statutory, but a judicial exception. They are an equitable solution under common law. That means they should be narrowly construed as possible and seldom used.

    That is what I have been saying for years on this blog. Exactly what I said above. Duh. It is the people trying to get rid of patents that keep blowing smoke around this issue. The Lemleys and Moores of the world.

  35. 65

    I am not good at this thread response system, or my Mac isn’t. I’ll blame it.

    My point is to say that the text says what it says, and what it says is that Congress did not authorize a federal court to hold a patent invalid for lack of patentable subject matter. Nothing I’ve seen has changed my mind.

    Several of you have argued it’s covered under another section. Perhaps, I don’t know, as it would require far more than a textual analysis. But, on its face, it’s absurd to say 112 covers patentable subject matter, but maybe you can get there through history? I don’t know.

    Someone will raise the issue in litigation, I hope, as no one has since the 1952 Act had been adopted (and no one really focused on patentable subject matter until the last few years, for tat matter.) And we’ll then know if the text hides something from us. Or some “academic” will write an article that lays it out (we academics do those things).

    But you gotta admit, it ain’t as simple as you thought it was. I do strongly suggest that everyone in patent practice study statutory interpretation more, though, as it’s an oft-overlooked issue in this field, in my experience.

  36. 63

    You may well have said it before but it was equally wrong then. Read Section 1 of the Patents Act, for an invention to be patentable it requires novelty, inventive step, industrial applicability and not being excluded.

  37. 62

    Dennis: Yes. Indeed. BRC. Hmmmmmh. Something for another thread, one day, I guess. Here, now, I restrain myself from mentioning the grotesque problems which BRC unfortunately gives rise to.

  38. 60

    I have an outstanding OA which presents a 101 rejection. I might raise 282(2) in a response and see what happens.

    Why would you *not* do it?

  39. 59

    Dennis, we are on the same page, it seems, regarding the statutory construction issue.  Further, an invention not patentable under the "judicial exceptions," as they were once known, all seem to present problems under 102/103/112.  (To me, the most difficult inclusion here is double patenting.)

    I have an outstanding OA which presents a 101 rejection.  I might raise 282(2) in a response and see what happens.

  40. 58

    Dennis, don't you find it interesting that cases like Aristocrat that want to include 101 as a "condition for patentability" never actually quote the language of the statute?

    100 Definitions. 
    101 Inventions patentable.
    102 Conditions for patentability; novelty and loss of right 
    to patent. 
    103 Conditions for patentability; non-obvious subject 
    104 Invention made abroad.
    105 Inventions in outer space. 

  41. 57

    The only problem is that it ignores the statutory structure.

    It also ignores what the Supreme Court itself has said. But we can dream, can’t we?

  42. 56

    at least a reasonable basis

    If you think it is reasonable to equate US law and UK law…

    Not saying that UK law is applicable in any way

    Actually, yes you are.

  43. 54

    Ned – I think  that the textualist response to this is that any condition for patetability created under 102/103/112 serves as a  proper invaildity defense.  To the extent that those provisions overlap with 101 (which I agree they largely do), that overlap would also serve as a 282 authorized defense.  

  44. 53

    David, I assume you are ignoring everything I have said that every 101 problem also creates a 102/103/112 problem. Prometheus may have been dead wrong when it said that patentable subject matter was exclusively a 101 issue. The caselaw prior to 1952 did not confine its statutory authority for the judicial exceptions in “101.” Morse, for example, clearly rested its statutory authority on the statutory requirement for a written description of how to make and use the invention. That statute is now section 112, and 112 is specified as a gounds for invalidity in 282.

  45. 52

    Ned, I agree that I previously assumed that 101 was a proper defense. In fact, I don’t think that I had ever really thought through implications of Section 282 limitations until I heard about the Aristocrat case.

    In addition, I should say that neither of us (Hricik or myself) have committed ourselves to the correct statutory interpretation. We do, however, both think that it is an important issue.

  46. 51

    Dennis, I would just like to point out that you and many others “assumed” that 282 invalidity included 101. May I quote you from your “Crouch Markup” of 321:

    “New sections 321-329 define a new post grant review proceeding allows a third party to request review of recently issued patents based upon virtually any invalidity ground, including failure to satisfy the requirements of sections 101, 102, 103, or 112 (except for best mode).”

    What the statute actually reads:

    “(b) Scope- A petitioner in a post-grant review may request to cancel as unpatentable 1 or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of section 282(b) (relating to invalidity of the patent or any claim).”

    I would like to bring your attention to the following 1967 Law Review article. LLater Patents As Prior Art, 1967 Wash. U. L. Q. 078 (1967), Available at: link to

    The article in fn. 3 states that 282(2) refers to 101, 102 and 103. However, later it contains the following discussion on page 88,

    1. Section 282(2)

    The 1952 Patent Act was enacted “to revise and codify the laws relating to patents and the Patent Office.” One of the most striking revisions was the modification and collection of the former statute’s conditions for patentability into a single section, section 102.”

    These conditions for patentability (as well as the condition of non-obviousness contained in section 103) have been incorporated by reference into section 282,” which lists the defenses in an infringement suit. Thus, the present statute provides that the grant of a patent and the validity of the patent once issued are subject to the same “conditions for patentability.”

    Note the authors emphasis that 102 collects “the” conditions for patentability into one section. One section. One. Not two. One.

    Frederico’s plan seems clear. If a claim could not be found unpatentable under 102/103 or the separately recited 112, it was patentable and valid.

    But what then about the judicial exceptions, one must ask? Double patenting, substantial utility, law or product of nature and abstractness?

    Well, that is the question. Do they fall under 102/103/112? If they do not, can a patent be invalidated on grounds not specified by Congress in ’52?

    The answer, I suggest, is that all the judicial exceptions also create conditions for invalidity under 102/103 and/112, just as the US government brief suggested in its brief to the Supreme Court in Prometheus.

    But, now we have to deal with the dicta in that Supreme Court opinion that opined that “101” defenses are not 102/103/112 defenses. That dicta is a problem considering 282 exclusion of 101 as a grounds for invalidity.

  47. 50

    I’ve said this before, but in the UK patentability ONLY refers to eligibility of subject matter and NOT novelty or inventive step (obviousness). Not saying that UK law is applicable in any way, just that there is at least a reasonable basis to interpret patentability to include 101.

  48. 48


    It was pseudonymous, not anonymous.

    Copyright experts, what sayeth you?

  49. 47

    Fair point (apart from the sarcasm). I think that the best chance for this to succeed is by challenging the scope of PGR because there are no cases analyzing its scope. In that situation, the court would only indirectly overrule 200 Years of patent law history.

  50. 45

    Courts have interpreted 282 as limiting the available defenses.

    They’ve also interpreted 101 as a defense.

    Round and round we go!

    Seriously, it is an interesting discussion. For the record, I’ll predict Hricik’s “theory” goes absolutely nowhere, in spite of its logical appeal. You have to consider the audience, after all. Going to a Federal court with this argument is like a climatologist going to a Republican convention. It doesn’t matter what the data shows. They’re just going to look at him/her and say “But Al Gore is fat.”

    Thankfully the stakes are really, really low because even if Scalia or Thomas did get all worked up about this statutory language business it would take two seconds for Congress to run in and fix it. And can you imagine the howling from the True Believers after that fix? Oy.

  51. 44

    2. Courts have interpreted 282 as limiting the available defenses.

    That’s as may be, but they didn’t exactly ask a lot of tough questions about 282 when Mayo asserted a 101 defense against Prometheus. Nor did Prometheus or any of the amicus briefs, as far as I can recall. Not as strong as an explicit holding on point, but a pretty good indication that this issue is not a big deal.

    Sure, it’s a bit of a hand-wave, but considering how fundamentally just the end result is for the defendant, I’m not really willing to take a microscope and a scalpel to the statute.

  52. 43

    1. Lack of ownership is typically treated as jurisdictional rather than as a defense.
    2. Courts have interpreted 282 as limiting the available defenses. Perhaps that is wrong.  I believe Hricik assumed it was correct.

  53. 42

    (or constitutional authority, if the judicial exceptions are interpretations of the term “invention”)

    Nice fantasy. Got a cite for this dream?

  54. 41

    Dennis, I agree that the “additional grounds” section of the statute references the threshold, but I am not sure the two necessarily need to be read together. For example, the legislative history on this point seems to focus on patentable subject matter as an exemplary “unsettled” area.

  55. 40

    that policy motivation does not give the courts the right or freedom to rewrite the statute.

    They’re not rewriting the statute. Section 282 is not exclusive. It doesn’t say “The following shall be the defenses”. It simply provides some defenses. If the plaintiff doesn’t own the patent, that’s also a defense.

    The 101 exceptions are pretty much tied to the definition of “invention” in 101. If you insist on reading it into the explicit wording of the statute, 102 and 112 both require a claim to “the invention”, which makes any claim tautologically invalid if it relates to non-statutory subject matter. Or we can call it a basis for “absence of liability for infringement”, or “unenforceability”. I’d rather semantically overburden the statute than provide no effective remedy for the agency granting a right it has no authority to grant.

    But I don’t think a court would even feel the need to go that far. If the agency has acted outside its jurisdiction, the court should be (and currently is) more than happy to un-act on its behalf. Any such remedy would have to go before the courts anyway, since the agency position on an issued patent is pretty clear – they’re fine with it. What better time and place for the court to rule than when the patent is being asserted against a defendant who should not be made to pay? Justice can’t exist without a little judicial pragmatism.

  56. 38

    Our task, rather, is the narrow one of determining what Congress meant by the words it used in the statute; once that is done our powers are exhausted.

  57. 37

    Thanks Scott. Your argument might be correct. However, I think that 324b does not allow the PTO to expand reasons for granting a PGR Beyond those authorized by section 282. Rather, 324b Is designed in a way to allow the PTO to lower It's threshold For granting a PGR request When the issue is an important issue. Does that distinction make sense to you?

  58. 34

    Max. Thanks again for your insight from Europe. Our law also allows for a similar differentiation between examining for patentability as compared with invalidating an already issued patent. this is the whole basis for the broadest reasonable construction used by patent examiners.

  59. 32

    “Professor Mark Lemley suggested the potential that a 101 eligibility issues are essentially threshold jurisdictional questions – rather than Section 282 defenses.”

    Yes, but only a day after I suggested it, referring specifically to the concept of jurisdiction.

    Remember Dennis, this is now a first-to-file world.

    Somebody may indeed beat my claim of priority, but mine clearly bests Lemley’s.

  60. 31

    The PGR statute also provides, under 324(b), that the petition may raise novel or unsettled legal questions important to other patents. Assuming 101 is somehow excluded by the statute (which I am not saying I agree with), I think you can work it in under 324(b) in any event.

  61. 30

    No parade of horribles. I guess let me try it this way:

    Every court that has upheld a 101 rejection from the Office has done so properly under 101. Again, maybe the distinction isn’t setting in: Prometheus was an invalidity case, and 282 defines the scope of invalidity defenses (and other things); 101 defines patentability — Diamond, Bilski, etc. were all patentability cases, appeals from the USPTO rejecting a claim.

    Related to that, I guess, every litigant who has failed to raise the issue, if the interpretation is right (and it’s just the text), has waived it, so those cases won’t be “undone.” (If I am sued for fraud and fail to plead the statute of limitations, too bad for me, I guess is the point.)

    For the future, I’d look at this if I were a patentee. I don’t know if I’m right — I can come up with some statutory interpretation arguments to the contrary, but from the text, I’ve got an argument that a defendant can’t plead 101 as an invalidity defense.

  62. 29

    Well, asking Prometheus wouldn’t do me any good. I need to ask the statute. The fact that it wasn’t raised in Prometheus means Prometheus didn’t address it, right? The case means nothing to this point.

    As for your second question, I don’t know. Right now, the text of the statute doesn’t say a court has judicial power to hold the patent invalid. Is there some other “penalty”? I don’t know.

    You and others seem to be arguing “it needs to be a defense.'” Maybe I’ve read too many Supreme Court statutory interpretation cases where they say, “go tell that to Congress.”

  63. 28

    But what is the consequence of the agency’s violation?

    Ask Prometheus.

    What do you think should be the consequence of an administrative agency exceeding its statutory jurisdiction and awarding rights of action to members of the public? Even if the statute in question doesn’t specifically say “a right granted in excess of the agency’s jurisdiction shall not be enforced”.

    What if the PTO decided to stop examining for 101 issues, and we got millions of patents granted to novel and non-obvious songs, laws of nature, equations, and computer-readable media with stuff written on them?

  64. 27

    For an interested observer from Europe, the distinction between lack of patentability and lack of validity is very clear. Thus: Article 84 of the EPC requires that the claims be “clear”. Under the EPC, EPO Examiners have the task of witholding issue until the patent application complies with ALL the relevant provisions of the EPC. Thus, no claim gets through till the Examining Division is satisfied that it is “clear”. They are getting more and more picky on this.

    Why more picky?

    The founding fathers of the EPC deliberately refrained from setting up a lack of clarity as a ground of invalidity. They reasoned: could there ever issue, a patent whose claims are 100% resistant to complaints from lawyers that its claims are less than 100% clear. Can you make any invention 100% clear if all you have to work with are mere words? So, allow Art 84 as a validity attack and the inevitable consequence will be that you will clog up the courts with frivolous or mischievous suits.

    In consequence, judges all over Europe are today lamenting that the EPO isn’t doing its job, namely vigorously enough filtering out unclear claims before they get to issue. Hence the ever-increasing picky-ness.

    And 35 USC 101? How much potential does that have, to clog up the courts? Not a bad idea then, to shut it out, as a ground of post-issue invalidity.

    And if the courts can’t touch it, will the USPTO get more picky about it?

    And if neither the PTO nor the courts fancies 101, perhaps 101 issues will increasingly creatively be adjudicated using the tools of 102 and 103 (just like courts in Europe deal with clarity issues under one of the Articles they can use, like Art 54,56 or 83).

  65. 26

    No, it’s not a tautology. Congress gave authority to courts to declare patents invalid for certain things, but 101 isn’t one of them.

    You’re right that there’s no authority to the USPTO. But what is the consequence of the agency’s violation?

    Ergo, no tautology.

    Also, I think in recent times (last 50 years?) 101 has been to the US Supreme Court one time — one — on invalidity under 101. All the other cases were patentability rejections, and 101 clearly limits the USPTO’s authority there, so no one would raise it.

  66. 25

    I give up. Your question was would you end up at a different place under 102/03 than 101? Yes, you would: 101 the patent is valid. 102, it’s not valid if it’s anticipated. 103, same thing.

    Ergo, no.

    Have a good day.

  67. 24

    there is no statute that sets out a consequence for issuing a patent not covered by patentable subject matter. So, a patent on nonpatentable subject matter is valid.

    There’s no statute that gives the PTO the authority to grant a patent on non-statutory subject matter. That’s virtually a tautology.

    If the law does not permit the patent to be granted, the patent can’t be valid and enforceable. Any reasoning leading to the opposite outcome is necessarily wrong.

    That’s probably also why 101 has been up to the Supreme Court so many times without anybody bothering to raise this issue. If you want to stand before the Supreme Court and ask them to enforce a patent that was demonstrably granted without statutory authority (or constitutional authority, if the judicial exceptions are interpretations of the term “invention”), good luck to you.

  68. 23

    Should I bother retyping a third time, or is it too much trouble for you to look up the thread?

    Can we pretend that I asked them again, but they magically appeared at 10:01 AM?

  69. 22

    Are you saying that the courts (ALL courts, ANY courts) that have held patents invalid based on 101 have acted beyond their power, and that all such case law should be thrown out?

    Is this really a difficult question to answer?

  70. 21

    I’ll try one last time:

    Under the text of the Act, there is no consequence for a patent issued on nonpatentable subject matter. Therefore, a patent issued on it is valid.

    So… now, what is your question?

  71. 20

    François – I think that there is lots of merit to your point. However, I don’t know the problem with Bilski stems from the fact that it arose from an ex parte PTO challenge rather than an inter partes or litigation challenge. Should also remember that Benson, Diehr, Flook, and Chakrabarty all stemmed from USPTO rejection of pending applications.

  72. 19

    Would it help if I just asked you to stop assuming where my questions lead and just answer the questions?

  73. 18

    I give up. I guess I”m not being clear: there is no statute that sets out a consequence for issuing a patent not covered by patentable subject matter. So, a patent on nonpatentable subject matter is valid. You say it’s invalid. How?

    I’m not dodging, I’m trying to understand your question, but I don’t deal well with snarky comments, even when I’m feeling well.

  74. 17

    So are you saying that the Courts have acted beyond their power and the case law (in essence ALL 101 case law) must be thrown out?

    Is this too difficult of a question?

  75. 16


    Do you realize that asking questions is not answering my questions?

    Why do you continue to dodge?

  76. 15

    I look at it this way, I was asked what RCL did while in Bankruptcy, and that being ignored. So why was the other case closed while in the same situation and already filed?
    So maybe the dates that are removed reflect me out of Bankruptcy for that moment? I think I’m getting warm, for all the wrong reasons!

  77. 14

    If indeed Section 101 cannot be used in a third party challenge, a consequence may be that we will seldom see any higher court decision regarding patentable subject matter. The only cases reaching the Federal Circuit or the Supreme Court will be when one challenges a Patent Office rejection. We may then be left with the less than crystal clear directions that we got from Bilski.

  78. 13

    SQ there are certainly cases that hold patents invalid under Section 101.  The original post states as much.  

    What is missing from those cases, however, is any analysis as to the court's power to apply Section 101 as a defense to patent infringement.  We know that Section 282 limits the types of defenses that can be used and (as far as I know) no court has explained how subject matter eligibility fits within those limited number of potential defenses. 

  79. 12

    I think we’re not communicating.

    Yes, courts have held patents are invalid under 101. None of them by analyzing whether a statute authorizes them to do so.

    What statute authorizes them to do so? That’s the question I’d like to have your answer to. If you say “well, it’s sort of a limitation in 101” I’ll ask: what is the consequence authorized by Congress? Why do you conclude a court has authority to say the patent is invalid?

  80. 10


    Why do you think I am begging the question? Wouldn’t you say that I am more begging an answer?

    Are you denying the fact that patents are held invalid based on 101? Really? What assumption do you think I am making?

    (and yes, you are dodging my questions)

    Have you not read any court cases that invalidate based on 101? If so, do you really think that you should be posting on a topic that you are so woefully unprepared to discuss?

    (and I do hope you are feeling better soon)

  81. 9

    I have a bad cold, so sorry if I’m not thinking clearly.

    1. I disagree with your assumption. Where do you see anything in the patent act that says a patent issued on nonpatentable subject matter is invalid? Your question begs the issue, in other words.

    2. See abbove.

    3. See above.

    Hope that didn’t dodge. If there’s nothing that says that a patent issued on non-patentable subject matter is invalid, then, if there’s a consequence, what is it? That’s the question you seem to be avoiding that’s necessary for your questions to make sense. It may be as Mark Lemley said that these are jurisdictional type issues; it may be that this is an administrative issue (e.g., the USPTO went beyond its power and so the patent is “void” or something, I don’t know). But until you can show me where in the patent act it states that a patent issued on non-patentable subject matter is invalid, I’m lost on answering your questions, since they assume the answer.


  82. 8


    Do you realize that you did not answer my questions?

    Once again:

    Is this a meaningful distinction since a court looking at 101 or 102/103 issues will end up in exactly the same place with a negative finding (patent invalid)?

    Are you saying that a court cannot bring up a patentability question (or that a patentability question cannot be raised as a defense), because that same result would be invalidation?

    If there is no meaningful difference, how is this “new” (101 questions are surely not new to the courts)?

    Will you answer or dodge?

  83. 7

    Paul, Thanks for this comment. With regard to the post-grant review proceedings, the new statute is clear that a post-grant review must be based upon a defense defined in Section 282.  If subject matter eligibility is not a defense defined in Section 282 then it cannot be the basis of a post-grant review proceeding. Dennis

  84. 6

    I still do not see why 282 HAS to be read to include 101? Unless 101 is to somehow be read as ineffective, meaningless and contrary to the recent Sup. Ct. Mayo decision and Congressional intent for post-grant proceedings for any issued patent, why cannot 101 be read to render patent claims issued by the PTO in violation of 101 as void ab initio, and thus invalid for that reason?

  85. 5

    The courts usually don’t decide patentability, they decide invalidity (putting to the side suits against the USPTO itself). That’s the root of the distinction, I think.

    That’s another reason 101 is so odd — it’s really a pure question of patentability, not invalidity as such… which feeds into Mark Lemley’s observation that maybe this is different…?

  86. 4

    Ah, now you end up smack dab in the middle of some fun statutory interpretation issues that also relate to the other thread: should intent trump plain meaning of the statute? Does this indicate that Congress acquiesced in prior interpretations and so even in litigation 282 should be read to include 101?

    In those waters is where SCOTUS has its fun.

  87. 2

    used it as an invalidity defense, as opposed to a patentability question

    Is this a meaningful distinction since a court looking at 101or 102/103 issues will end up in exactly the same place with a negative finding (patent invalid)? Are you saying that a court cannot bring up a patentability question (or that a patentability question cannot be raised as a defense), because that same result would be invalidation? If there is no meaningful difference, how is this “new” (101 questions are surely not new to the courts)?

  88. 1

    Dennis, is there anything in the (brief) legislative history one way or the other?

    You’d have an argument about acquiescence, which someone raised under the other discussion — at the time the AIA was adopted, courts were allowing subject matter invalidity challenges. But, it’s pretty weak because (at least so far) we don’t have a single case actually interpreting the statute that way. In the usual acquiescence case, the Supreme Court has said “we hold that ‘conditions of patentability in 282 includes 101 and if we’re wrong Congress will fix it'” and we don’t’ have that. And, I think, this is not an “old” issue — it seems to be only recently that people used it as an invalidity defense, as opposed to a patentability question.

    I have a video I did on the AIA where the lawyer says this statute will keep patent lawyers busy for years…

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