The enfant terrible?

The Green Bag at first appears as an oxymoron – known as an “entertaining journal of law.”  The published articles often rely heavily on satire to make their points. Hastings Professor Robin Feldman has a new article coming out in the Green Bag titled “Coming of Age for the Federal Circuit.” Her article though is quite serious and which begins as follows:

This has been a watershed year for the Federal Circuit. The Chief Judge, who had gained a reputation for commenting publicly about pending legislation and cases, resigned after a scandal involving the appearance of favoritism towards a lawyer who appears before the court. The Circuit fared no better in the more traditional measure of approval from the court above. The Supreme Court granted certiorari in six patent cases arising out of the Federal Circuit this term—the largest number the Justices have accepted since the Circuit’s creation in 1982. Moreover, in case after case this year, the Justices soundly and unanimously rejected the Federal Circuit’s logic. . ..

Characterizing these struggles as a debate about rules and standards misses the heart of the conversation that is occurring. Rather, a strong message echoes through the six Supreme Court decisions. It is a message about restraint, about carefully constructed logic, and about coming into the fold of judicial decision-making. This is not to suggest that the Supreme Court itself is always successful in following these aspirational goals. Nevertheless, the message is clear. This is a coming of age for the Federal Circuit–or at least the Supreme Court seems determined to coax, cajole and, when necessary, club the Federal Circuit into coming of age.

This article examines the messages evident in recent Supreme Court decisions and evaluates whether the Court appears to be gaining ground. Although some indications are positive, others suggest that the Federal Circuit may not be entirely ready to relinquish its role as the judiciary’s enfant terrible.

Read it here.

128 thoughts on “The enfant terrible?

  1. 14

    I found Prof. Feldman’s throw-the-bums-out remedy for the mess she perceives interesting.

    As I understand her dystopian view of the future is that if there is much more of this judicial nonsense, patent stakeholders will rise up with flaming torches and nooses, and run that whole CAFC lot out of town for good. Seems to me if one wants to exact a pound of flesh, it’s the authors of the 1952 Patent Act that should be tarred and feathered, but too late for that, so the judges/justices will do.

    My remedy for reforming the system would be less destructive than throwing out the CAFC. I would refine it – or, rather, replace it with a body better trained to do the job. The problem with the FedCir is that it should have been restricted to patent cases, with a sound technical education as a criterion for sitting on the bench or clerking.

    I would go for something more along the lines of the parallel bankruptcy system set up in 1984 – except with Article III courts and no appeal to USDCs. A specialty, parallel, stand-alone court system dedicated entirely to patent litigation from the trial court to the final appeal, with the possible exception that pure constitutional issues be heard by the normal USDC-CA-USSCt stream.

    One patent trial court per federal circuit funneling into a single court of appeals just for patent cases. So instead of riding herd on 90 something district trial courts, there would only be 12. All cases from the PTO that now go to EDVA would be heard by the patent trial court in the applicant’s federal circuit. (Trademark and copyright cases can stay where they are – they don’t require years of technical training to sort through complex issues.)

    The patent court judges, magistrate judges, and their clerks would have to be trained in science/technology, preferably to the PhD level, and in patent law. As has been noted in this thread a couple of times, and in this blog untold numbers of times, the judges/justices now deciding complex technical issues are not trained for it. Most of them have degrees in English lit and law, and that’s about it. How cretinous can it get: patent practitioners and examiners who are required to be trained in technology/science are over-ruled by those who wouldn’t know a USB from a BUS. Sure a lot of the issues are not technological, they are about policy, but a judiciary that is only trained to deal with policy, laws, and semantics is bound to fail eventually as the technology gets more and more complex and specialized.

    KSR?? Justice Thomas, bless his heart, wouldn’t know an electronic throttle control from a fuel injector. Ditto that x9. Myriad?? Justice Ginsburg, bless her heart, wouldn’t know a deoxyribonucleotide if it fell off the chandelier and landed face-down in her soup. Ditto that x9, too. And yet we expect these people to be making calls on highly complex technology where the outcome could be worth billions to the litigants and hundreds of billions to an industry. No wonder patent stakeholders are soaking their torches in kerosine and fingering their BICs.

    Don’t be fooled by all of these unanimous USSCt decisions. They only tell you the Oracles don’t have a clue – they are just a bunch of people going along because they don’t really get it. In order to dissent, they would have to write something that sounded like they knew what’s up. When they read the patents they adjudicate, their eyes glaze over and they long for the good ole’ days of Jacobellis v. Ohio cases.

    The patent judicial system no longer needs constitutional scholars making the final decisions. Occasionally cases come up that are pure constitutional issues. These cases can be easily identified and diverted from the patent court system to the standard USDC system. That Florida Prepaid case was one. The case over the meaning of “inventor” in light of F2F will be another if it hasn’t been filed already. Yeah, I would trust Kiki to figure out what an inventor is. I wouldn’t trust her to suss out a complex technology like gene design and synthesis.

    BTW, I loved Moonbeam’s point about calling a dead duck “deceased” or “expired” – ‘specially the part about scooping it up. Brilliant. I think Dennis’ new PC P-O policies are starting to bring out the creative best in the regular crowd.

    1. 14.1

      Babble, this idea has a lot to recommend it.

      I would add that all appeals from the PTO should first be to a district court who could conduct a trial de novo. This would almost entirely solve the constitutional problems with reexaminations and IPRs. See, e.g., the district court decision in Patlex for more on this. Cf., Crowell v. Benson that upheld Art. I fact finding subject to a trial de novo. Cf. Stern v. Marshall.

      Of course, the PTO does not like trial de novo’s.

      Also, there would be no need for IPRs, given that the district court judges would have just as much technical expertise as an APJ. Perhaps the problem of compulsory counterclaims could be solved with a small change in the Rules that would except patent validity challenges.

    2. 14.2

      Until our broken patent system is fixed, I don’t see why judges or patent attorneys or Examiners need to have “technical” backgrounds.

      After all, this is the “Age of Information”, not the industrial revolution, right?

      Seems like judges are in a great position to evaluate the sooper dooper awesome patent claims that we’ll be seeing on “methods of judging, on a computer” and “methods of managing a court docket, on a computer” and “methods of managing clerks, on a computer” and “methods of encouraging clients to settle, on a computer” and “methods of showing someone a picture of an judge, wherein the picture is modified on a computer to make the judge look angry, accompanied by an offer of attorney services”.

    3. 14.3

      BB, I don’t agree with much of what you’ve said, but you really should post more often – your comments are a pleasure to read.

    4. 14.4

      I’m going to take issue with all of this. I think the Fed. Cir. has been doing exactly what Congress asked it to do: set down consistent rules in applying the patent laws. The other circuit courts of appeals all disagreed with one another, creating an environment in which patents were too difficult to enforce, which resulted in US companies lagging behind their competitors in Japan and Germany by the 1970s. The Supreme Court’s approach is not much different, because just as before, nobody can predict whether a court will find a patent valid or infringed based on the facts of a given case. This is not the only area of the law in which the Supreme Court has muddied previously clear waters. Perhaps we should instead reform the Supreme Court? Although the other branches of government have grown with the country since 1787, the Court is still nine old codgers, trying to resolve the most difficult legal questions in the world largest economy. Perhaps decisions should be made by a panel of nine, drawn from a larger number of Justices, allowing the addition of Justices with legal experience in a wider array of subjects? That’s how they do it in France, for example.

      1. 14.4.1

        Nick, regarding the other circuits and the Federal Circuit, higher validity, right? Some respect for the presumption of validity. Clearer rules on obviousness. Etc., Etc., Etc.

        But now we have IPRs. BRI, preponderance, etc., etc., etc. Few, if any, patents survive intact. No real opportunity to amend. “Death squads” is a term bandied.

        Sounds like we have to reform or do away with IPRs or else.

        And whose bright idea was it to so undermine the patent system?

      2. 14.4.2

        Bingo on the USSCt reform, Nick. Sign me up.

        My dream USSCt:
        1. At least 17 members. I think the panel idea for USSCt is very interesting.
        2. No justice serves past the age of 75 or for more than 25 years. [Should apply to all federal courts.]
        3. On the 30th day following each presidential inauguration the most senior justice is required to retire. President to nominate the replacement w/ consent of 40% of the Senate and no filibustering. This allows each president to appoint at least one justice for each term in office and help alleviate the ideological constipation the Court now suffers from. The Malox Amendment. That choice would be a part of the election dynamic, no doubt.
        4. Chief Justice is the senior justice, meaning no one is Chief for more than 4 years.
        5. Some provision for a minimum number of seats reserved for circuit court of appeals judges.
        6. Return to powdered wigs and a constitutional prohibition of pant suits for USSCt bar (in honor of Sandy Day).

  2. 13

    Is it me, or did Feldman entirely misstate the holding of Medtronics v. Mirowski on page 10? That case was about burden shifting for infringement, not validity.

    1. 13.1

      Feldman at 10: Similarly, the Supreme Court’s decision in Medtronics v. Mirowski ensured an increase in challenges to existing patents. Ordinarily, a patent holder bears the burden of
      proving that a patent is valid in an infringement case.

      It’s an error. Should be “ordinarily a patent holder bears the burden of proving infringement in a patent case.” Good catch!

  3. 12

    For some years the Supreme Court has been reversing any appellate court that creates a predictable, bright-line rule in any area of the law. When I was an environmental lawyer, the Court did the same thing to the definition of “waters of the United States” under the Clean Water Act, in Rapanos. This Court wants to empower the judiciary. The judiciary is empowered when the courts have the ability to rule in any way they please for a given set of facts. Unfortunately, it has created a situation in which the public can never be certain as to what exactly the law means unless the question is litigated in front of a judge. There is much less certainty now as to whether a claim meets the requirements of sections 101 and 103 then at any time since these sections were enacted.

    It is very important that people can understand whether their behavior violates the law or makes them liable under the law. The entire function of the law is to create universally understood standards of conduct. This Court’s approach of consistently introducing vagueness defeats this purpose.

  4. 11

    The problem with the Federal Circuit’s series of failed tests in the area of patentable subject matter lies not with the notion of having a test or a bright-line rule. The problem lies with forgetting the goal of why one is developing a test in the first place. Any test is no more than a proxy for the concepts embodied in the notion of patentable subject matter, which can be understood broadly as ensuring that the subject matter of a patent does not pose pre-emption problems.

    How do you have an exclusionary right without some pre-emption? A patent that doesn’t block anyone isn’t really a patent.

    1. 11.1

      How do you have an exclusionary right without some pre-emption? A patent that doesn’t block anyone isn’t really a patent.

      You’ve missed the point of the sentence, Scott. Patent claims that do not protect ineligible subject matter (e.g., information and other abstractions) do not generally “pose pre-emption problems.”

      For example, a claim reciting a new machine in distinct, objective structural terms that distinguishes the new machine from the machines in the prior art does not “pose a pre-emption problem.”

      On the other hand, a claim to a “new” machine that differs from the old machine only by the recitation of some “new” writing on the side of the new machine or the recitation of a “new” legal status for the old machine does pose “a pre-emption problem.”

      That’s one of the many reasons that a simplistic test for eligibility like the Federal Circuit’s “machine or transformation” test was a massive (and predictable) failure.

      1. 11.1.1

        I don’t think that we had sufficient experience with the FedCir’s Machine-or-Transformation test (circa 2008-2009) to know whether it was a massive failure (or even a failure at all).


          I don’t think that we had sufficient experience with the FedCir’s Machine-or-Transformation test (circa 2008-2009) to know whether it was a massive failure (or even a failure at all).

          The Federal Circuit majority’s decision in Prometheus v. Mayo applying their version of the test was a massive failure of logic and judicial integrity.

          You’ll recall that the majority characterized the claims as a “method of treatment” in spite of the fact that the plaintiff’s own expert testified that nobody need ever be treated for the claim to be infringed, and in spite of the fact that the claims failed to recite any treatment step.

          As an absolute test for screening out claims that protect ineligible subject matter, it was stillborn and worthless.

          Do you really want to defend the test, Dennis? Now? After Alice?

          After Alice even the presence of a machine in a claim isn’t a very good “clue” that the claim is eligible if the machine is a computer. On the contrary. And that’s as it should be.


            MM, the transformation part of the MOT it is straight out of Cochrane v. Deener and reflects what the courts considered Art to be for a very long time. But the problem with the Fed.’s analysis in Prometheus is its failure to apply the test to the claim as a whole. They found that the old subject matter in Prometheus passed the test, and ignored the fact that the new subject matter, the correlation, was not integrated into that otherwise patentable subject matter as was the case in Diehr. The Supreme Court corrected this error, essentially adopting the Hotel Security test in the process.

            On the whole, the lower court either did not understand Diehr, or if it did, it refused to apply it in an honest manner.

            Their opinion in Prometheus was one more example of nominalism: If any subject matter in the claim was found to be statutory, move on to 102/103/113. That some subject matter in the Prometheus claim passed the MOT was enough in their nominalist view.


          The massive failure of the test is evident in the reams of ridiculous “do this otherwise ineligible method on a computer” claims that were filed in reliance on the test — the same claims that are being tanked left and right now and should never have been granted in the first place.

  5. 10

    Does this Prof understand the patent system at all?

    Pre-emption is the point of getting a patent. If there is no pre-emption, there is no protection.

    1. 10.2

      Scott, I think she might be right, but if she is, the Supreme Court is wrong.

      However, the Supreme Court is not making distinctions between preempting statutory subject matter, and claims to results. I think it might be important for the lower courts to start making those distinctions to clarify the law.

    2. 10.3

      Based on what I’ve read of your comments so far, Scott, Professor Feldman understands patent law far better than you.

      The Supreme Court and Professor Feldman understand that every patent “pre-empts” some subject matter. The Supreme Court shared their understanding of that fact with everyone, expressly, in Prometheus v. Mayo. Quite plainly, the pre-emption of subject matter by valid claims is not the pre-emption that the Supreme Court is concerned about.

      The Supreme Court — and a lot of other people — are concerned about field-wide pre-emption of subject matter that is ineligible for patenting, e.g., information, information processing methods claimed as de facto mental steps performed “on a computer”, and other abstractions.

  6. 9

    If there is an “enfant terrible” in the federal courts, it’s the Ninth Circuit. They routinely ignore Supreme Court and their own precedent in unpublished decisions.

    The real message from the Supreme Court is to invalidate more patents. Having heard all the complaints, many of which are more loud than valid, about bad patents and patent trolls, the Supremes are on a Crusade to kill patents. We’re moving back in the direction of the “the only valid patent is one the Supreme Court hasn’t reviewed” days that preceded the CAFC and that it was created to end.

    You might be able to put some noble spin on the Supreme Court’s decisions if they were logically consistent or well reasoned, but even when they get the right result, the way they get there can create more problems than they solve. Anyone remember the good ole days when we had a workable test for obviousness that didn’t grant examiners complete license to engage in hindsight reasoning?

    1. 9.1

      Steve, “The real message from the Supreme Court is to invalidate more patents.”


      The patent bar needs to grow up at some point.

      1. 9.1.1

        The patent bar needs to grow up at some point.

        Don’t hold your breath.

        The march of the Dierhbots continues apace.

        You can explain the basics to me them a thousand times and you’ll just get the same stock responses: “B-b-b-ut my daddy said there’s no such thing as c-c-c-laim d-d-dissection.”

        But rest assured: they are very serious and important people.

    1. 8.1

      Don’t hold your breath waiting for a left coast law prof to recognize the problems with the 9th Circus. They’re too busy shaking their pompoms.

  7. 7

    “This is not to suggest that the Supreme Court itself is always successful in following these aspirational goals.”

    Understatement of the year.

    Including the Court’s unconstitutional incursion into 101 subject matter eligibility.

    They even explicitly refuse to define “abstract idea” — one of the core elements / tests in their own 101 analysis … leaving the courts below, the patent office, law firms and their 1,000’s of attorneys across the nation and throughout the world, and indeed the entire patenting / innovation ecosystem; in 101 confusion and disarray.

    Because a standard based on an undefined, subjective phrase like this is no standard at all, it is unconstitutional.

    If you want to do Congress’ job, may I respectfully suggest that you all give up your judgeships and run for elective office.

    1. 7.1

      Including the Court’s unconstitutional incursion into 101 subject matter eligibility.

      What is “unconstitutional” about the Supreme Court interpreting the scope of a Federal statute?

      a standard based on an undefined, subjective phrase like this is no standard at all, it is unconstitutional.

      Many of us don’t have great difficulty applying the Supreme Court’s holdings in a rational, reasonable way, Steve. It’s the Federal Circuit’s “standards” that were meaningless and unhelpful to everyone except for a tiny, tiny, tiny handful of so-called “stakeholders” in the system (primarily patent holders and speculators whose innovations lay primarily in wordsmithing and dreaming up “new paradigms” to protect with patents).

      Perhaps your real problem with the Supreme Court is that you don’t like how the application of these cases affects your bottom line or that of your clients. In that regard, it’s worth remembering that “it’s not all about you”. The public interest in a fairly functioning patent system is paramount. That’s never going to change.

      1. 7.1.1


        In whose interests is it that a standard deciding the rights of men be undefined and thus be no standard at all? Certainly not anyone person that makes up the public.

        If a standard is not in any way objective or defined, what replaces a principled analysis of what constitutes it, i.e. when can one decide something is “abstract”… what MM, could possibly replace *reasoning*?

        oh yes, you said it: “reasonableness”
        i.e. “intuition”, feeling, whim, perhaps political climate or political pull…

        Whose interest does it serve when Rule of Law is usurped with the ever changing winds of sentiment and whim, not just the rule by (a few)Men/Women but rule by their most irrational and capricious elements at play within them.

        I suppose you trust placing the public’s interest in the hands of those chaotic forces? Winds are always changing…

        Perhaps that trust is misplaced…


          Anon2: you said it: “reasonableness”
          i.e. “intuition”, feeling, whim, perhaps political climate or political pull…

          No, that’s completely wrong.

          Reasonabless = agreeable to reason or sound judgment; logical:

          I also said rational, a term which you seem to have happily ignored when you chose to cannonball into the warm, shallow pool of “usurpation”.

          I’ve said it before and I’ll say it again: everyone is very much aware of the rhetorical “strategies” (to put it generously) that have been deployed — and will continue to be deployed — by people who don’t like these Supreme Court decisions.

          The problems being fixed by the Supreme Court don’t go away because you call the Supreme Court names or because you capitalize “rule of law” or because you can stand on the hill and recite the Pledge of Allegience louder than anybody else.

          If you are unhappy with the level of clarity being offered then present a reasonable, practical alternative that has a chance of surviving more than two or three years and that isn’t simply a set of “magic words” for attorneys to use.


            Why do you pontificate like this?

            One does not have to give an alternative to point out a problem. And there is no implicit agreement that there is a problem.

            And again—please give me a claim that I can’t use 102, 103, and 112 to reject, but that only 101 can be used.

            So far, what we have seen is the SCOTUS extend a judicial exception to trump legislation when the legislation was perfected adequate to deal with the claim.


              please give me a claim that I can’t use 102, 103, and 112 to reject, but that only 101 can be used.

              As has already been explained to you, the issue is not about the arbitrary numbers given to the patent statutes.

              It’s about ineligible subject matter. You’ve already been given multitudes of examples of claims that you can’t reject unless you invoke subject matter ineligibility.

              Any claim in the form [olddatagatheringstep]+[usefulnon-obvious thinking step] is an answer to your question. You can’t reject it under 103 because it’s non-obvious.


                >given multitudes of examples of claims

                You have now given me one example.

                >[old data gathering step]+[useful non-obvious thinking step]

                So, Prometheus.

                1. So, MM is that? Is that the entire class of claims that you think need a 101 exception? A claim that includes a step of a person making a thinking step?

                  And, is it a thinking step or a determination for an action step?

                  [old data gathering step]+[useful non-obvious determination step] + [action based on the determination step]

                  Isn’t that really the claim?

      2. 7.1.2

        Just because they call it “interpretation” doesn’t make it so. The “abstract idea” exception isn’t statutory, it’s purely judicial. It’s also entirely subjective. It’s nothing more than a conclusion phrased as an argument to invalidate a patent that the Court doesn’t think should be patentable, not because its non-statutory, but because the Court doesn’t like it. That most of the patents, perhaps all, that have been invalidated were probably invalid under 102 or 103 doesn’t make the doctrine valid.


          Scott, if one is claiming results without including in the claim anything of the novel structure or methods, the problem is a section 112 problem, and the problem is preemption of too much. This is abstract claiming – and was discussed in Morse, which identified the problem to be a section 112 problem.

          On the contrary, if one is claiming something that is nonstatutory, the issue is not preemption but the fact that the claimed subject matter is not statutory.

          With respect to nonstatutory subject matter, the courts often dealt with claims with mixed statutory and nonstatutory subject matter. Needless to say, in analyzing these cases, the nonstatutory is not given weight unless it is functional with respect to the statutory in a manner so as to transform the statutory into a new state or thing.

          I think the Supreme Court opinions are consistent with the above but in a manner which is clearly not well understood. Furthermore, they do not discriminate between claiming results and claiming nonstatutory subject matter, which only confuses.


          The “abstract idea” exception isn’t statutory, it’s purely judicial. It’s also entirely subjective.

          That’s competely false. “Abstractions” aren’t listed among the enumerated categories in 101 and there is no indication by anyone, anywhere, that Congress intended to make abstractions eligible for patenting.

          And it’s certainly not “entirely subjective.” Not even close.

          I claim “A process comprising thinking about [insert new obvious thought here].”

          You think the ineligibility of that claim is a “subjective” call?

          How about “I claim a process comprising drinking a cup of caffeinated coffee and thinking about [insert new obvious thought here].”

          You think the ineligibility of that claim is a “subjective” call?

          Let everyone know.

    2. 7.2

      Steve, I second MM’s take.

      Wyeth v. Stone is a good example of what Alice is taking about. The claim there was essentially to all machines that were effective in cutting blocks of ice. Machines of course are statutory — but simply sprinkling the claim with gen eric machines cannot be enough. When the machines themselves are expressed in t0o high level of abstraction, the novel subject matter itself is itself little more than an idea and the claim as a whole is abstract. There really is no “application” of the idea to statutory subject matter. (Rubber-Tip Pencil is another case just like Wyeth where the idea of attaching a rubber tip to a pencil was stated without any details at all as to how to do it, where the ability of rubber to attach to tips through elasticity was known.)

      In the end, the claim must recite a new or improved machine, manufacture or composition; or must be a way of making a thing or improving (transforming) a thing in to a new state or thing. You will object that the latter is the MOT and that the SC did not approve of it as the universal test for processes. But it is the best test there is, and it was not disapproved.

      1. 7.2.1

        I think Rich did a fairly thorough job of debunking your notions Ned.

        Application of Zoltan TARCZY-HORNOCH.


          The way to think about what is going on at the SCOTUS and the Fed. Cir. is we now have judges that are about as educated about modern science as judges were back in 1850. So, what is happening is that patent law is devolving back to where it was due to the ignorance of the judges.

          We can only hope that the judges will avail themselves of a modern education in science.


            Night, I don’t think this controversy has anything to do with education sciences or lack thereof. I think there is some confusion in the Supreme Court precedent, and the confusion really got started, I think, in Benson which got to the right result, but it muddied the waters because relied on the so-called exceptions rather than fact that math itself was nonstatutory.


              Ned, I think the lack of education of the judges is key to the issues related to patents. Benson came to the exact wrong result and evidenced a complete ignorance of the issues and was reviled by patent scholars at the time as perhaps the worst SCOTUS option ever penned.

              I am hoping that Obama will stop appointing judges to the Fed. Cir. that are ignorant in patent law and science. And, let’s hope that the qualifications for the SCOTUS go beyond being good at twisting words and having done well in law school.


                Night, had the claims in Benson required that the BCD->Binary be an executable instruction of the computer, the result would have been different as the machine would have been improved.

                I don’t think the Supreme Court had a long at all.

                1. I don’t think the Supreme court had it wrong at all.

                  (Another Dragon misrecognition that I did not catch.)


              By the way Ned, I think that this touches on your core. You and MM continue to ignore science. The fact is that software/hardware/firmware are equivalent. You do not and cannot address that point. Please respond to Mano and tell us why he is wrong.

              Last we left MM, he said that he believes that music is like software. He believes that his stereo is imbued with new functionality when he plays different songs. He is convinced that his stereo will drive his car if he can only find the right song. He hasn’t id’ed any new functionality, but that is my problem apparently.

              Also, he won’t compare and contrast wheat with music. Music and stereo is to wheat and wheat processing machine as ____.


                Night, since I know what I am talking about give my very long history in computer arts, I think I do not ignore the science of what is going on.

                However, I have a different view of that matter when the issue of your understanding of the art is involved. You do not seem to understand that an old computer running software is not a new computer. Why that is it not certain.

                1. Ned,

                  If you know the science, then you would have to agree that GPC + software is equivalent to a new computer.

                  And, the GPC + software defines a set of ROM/hardware solutions that are equivalent.

                2. Night, I daresay I know what you are talking about from a technical point of view. I have a degree in physics from IIT, and helped develop intercontinental ballistic missiles (nuclear weapons) for a number of years before I went to law school. I only point out the latter because they do not put the incompetent to work on nuclear weapons.

                3. That is a great school Ned. I went to the U of I, but you still didn’t answer my question.

                  You know as well as I do that every other argument is really just about the one question I asked.

                4. And Ned in a world where judges are judicial activist, this issue hits the fan with the following claim:

                  a circuit configured to [functional description]

                  That has been determined to read on structure. But, is a physical circuit configured when software is then controlling the circuit? The science answer (Mano) is yes no doubt about it. The judicial activist answer (from people that could not even tell us what Ohm’s law is or what a Turing Machine is) is no.

                5. Night, the simple answer is that a computer loaded with software is not a new machine even though it might operate in the same way as a circuit mathematically. The only thing that’s really equivalent is that both computers and circuits can perform logic and math. They are not the same in other ways. The computer needs digital to analog converters to receive data from signals, digital analog converters to output signals from data, while the circuits need similar inputs and outputs to convert data into signals. Overall, the two are not equivalent from a hardware point of view. The equivalence stops at their ability to perform math. They are functionally equivalent in the context of a larger machine or process and that’s where their equivalence stops.


          Rich, as he is wont, did a job on the Supreme Court precedent to determine that the “function of a machine” doctrine was not even followed by the Supreme Court.

          But, the reason I cite the cases is that the Supreme Court is citing them today as examples of what it is talking about. That you and I would agree that claiming results really is a section 112 problem does not change the fact that the Supreme Court believes it is a 101 a problem. The author, Robin Feldman, also thinks the Supreme Court is focused on “preemption.”

          But preemption is a 112 problem, but I would wish to point out that if what is being preempted is nonstatutory, that is a separate and distinct problem. As the Supreme Court pointed out in Flook, in the case of math which is clearly nonstatutory, it makes no difference whether the nonstatutory subject matter is preempted entirely or only partially. The problem is that the nonstatutory can’t be preempted at all – because it is nonstatutory. However, we learned in Diehr that if one applies the mathematics to transform an otherwise eligible process, the nonstatutory aspect of math is irrelevant.


            In TARCZY-HORNOCH Rich brilliantly summarizes previous SCOTUS case law and illustrates why the doctrine of function of machine was not sustainable. I not that Lemley did not address Rich’s arguments in a substantive way. No doubt few of the new Google judges on the Fed. Cir. have even read the case. (or could even read it.)

                1. OK, but just so others might know what we are talking about, it was a doctrine that a method could not cover the functioning of a machine. The law had developed that a method involving a machine must cover at least two different machines, not just the machine disclosed.

                  Rich toasted the doctrine when he showed the origins were in Wyeth v. Stone, that those cases merely held that one could not patent a result, and because the Supreme Court had held valid method patents where only one machine was disclosed that could carry out the method.

      2. 7.2.2

        Also funny Ned that when I cite case law you ignore it or try to push by it with very general statements. When I don’t cite case law, you determine that all of my arguments have no merit.

        Quite a racket you have going there.


          Night, I don’t think that Rich disagreed that the basis for Morse was 112, just as you and I have previously discussed many times. He also traces the functional-of-a-machine doctrine to Wyeth v. Stone, which is one more example of claiming a result without any details which was the same thing that Morse complained about with respect to claim 8, i.e., a section 112 problem.

          In the end, this CCPA case overturned the function-of-a-machine doctrine because it made no sense. But if you know what the doctrine was, you can see that Rich had no intention of overturning Wyeth v. Stone or O’Reilly v. Morse.

          Regarding Lemley, I don’t think Lemley understands the functional-at-the-point-of-novelty problem. It really is a problem of claiming results as Rich concluded in Tarczy-Hornoch.


          Night, also, when you cite case law, we have a basis for further discussion. We are not just stating our opinions about things.

      1. 7.3.2

        I imagine that if we had a blog back in the days of Jefferson and Marshall, that the matter of “just a silly little justice of the peace appointment” would also have been attempted to have been p00-p00’ed under the rug, and mislabeled as an attempt to be such things as “only about you” or “a shallow pool of ‘usurpation’ – with insults of “gee, that’s a four syllable word.”

        Drawing attention to the means and stating that the ends do not justify the means is NOT a trivial point or something that we should close our eyes to. It is no small accident that there is a fairy tale that mirrors the sharp point made by the French term of “L’enfant terrible” – the parable of The Emperor’s New Clothes.

        Hush child, your view is not welcome here.

  8. 6

    L’enfant terrible (“terrible child”, also enfant terrible) is a French expression, traditionally referring to a child who is terrifyingly candid by saying embarrassing things to adults, especially parents.

    LOL – Hush child, your view is not welcome here.

  9. 5

    That’s one of the best summations of “what’s happening here” that I’ve read. Every Mr. (Mrs.) Jones with even a passing interest in patent law should read it (it’s short and very well written).

    These two paragraphs also provide a nice summation (citations omitted):

    Most importantly, the cases this year reflect an impatience with the type of nice distinctions that patent lawyers have grown accustomed to falling back on to justify a client’s behavior – ones that the Federal Circuit has readily accepted. Over and over again, the message from the Justices essentially has been, “forget the clever drafting and technical workarounds, what is really going on here,” while the message from the patent bar and the Federal Circuit has been “but this is how we do things.” Consider the patentable subject matter case Alice v. CLS Bank. In five diferent places, the Justices referred to “draftsman’s art” or “drafting efforts,” signaling loudly and clearly that the Federal Circuit’s legal doctrines must rest on more than such tenuous grounds.

    The problem of relying on ever-fining distinctions, at the expense of a coherent logical base, has plagued the Federal Circuit for some time. I have described this problem as “death by tinkering.” The Circuit changes a little piece here and little place there until the doctrine threatens to collapse under its own weight. In Alice, the Justices pointedly directed the Federal Circuit to construct legal doctrine that did not rest on these types of drafting discussions.

    Indeed. That’s why the Federal Circuit’s so-called “machine or transformation test” for determining eligibility was such a miserable failure, as a matter of fact and also in the view of the Supreme Court. It was simply an invitation to discover the next set of “magic words” that would allow applicants to protect “new functionalities” for old machines or to protect information itself.

    Ultimately patent law is headed “back to the roots” where it always belong before it was unmoored by courts (mainly the Federal Circuit) who looked no further than the interest of the patentee when deciding cases. If the operating assumption is a misguided and false one (“denying a patent on X means no innovation in the field of X”) then the doctrines flowing from that assumption will be equally misguided. The result is an overburdened patent system that functions primarily to enrich the bank accounts of patent lawyers, speculators and “land grabbers.”

    There is one very clear, easy to apply and objective test for determining subject matter eligiblity that is consistent with most of the long history of our patent system and keeps a perfectly weighted lid on things: all claims must recite either a new composition/machine in distinct, objective structural terms that distinguish the new composition/machine from the prior art machines, or a new step (or combination of steps) that results in a physical transformation that was previously unachieved by the prior art.

    From that starting point — the “roots” I referred to above — if there’s compelling evidence that some other “new technology” needs to be shoe-horned into the patent system or else it won’t be developed, that shoe-horning should occur only after a careful consideration of the exceptions being made and how those exceptions will inevitably be exploited by patent lawyers. With a few exceptions, this is pretty much the opposite approach than that taken by the Federal Circuit in recent years.

    1. 5.1

      Regarding this easy to apply objective test, if one claims a composition (or machine, or article of manufacture), and it is rejected under 102 as lacking novelty, does that also mean it is not patent-eligible? If it is novel but obvious, it is patent-eligible – just obvious? Or are we just talking about the gist having to be new?

      1. 5.1.1

        if one claims a composition (or machine, or article of manufacture), and it is rejected under 102 as lacking novelty, does that also mean it is not patent-eligible?

        I’d love to hear an explanation as to why this matters to you or anybody else. Just for the sake of argument, let’s say an anticipated claim is also ineligible beause 101 applies only to people who who invent new stuff. Why does this matter? It’s like quibbling over a whether we call a dead duck “deceased” or “expired.” Either way it needs to be scooped up and taken out of the barnyard.

        If it is novel but obvious, it is patent-eligible – just obvious?

        “Just” obvious? If your recited combination of new, distinct objective physical structure is obvious, then the claim is invalid. If the additional elements in the claim are non-obvious but ineligible for patenting on their own terms (because they are abstractions like information, labels, etc), then the claim is ineligible.

        are we just talking about the gist having to be new?

        Depends on what you mean by “the gist”. That’s neither a legal term nor a technical term that I’m advocating is of much use to anybody.

        What can’t be the only “new” or “non-obvious” limitation in the claim is the recitation of an abstraction, e.g., information (whether factual or not) , a non-physical relationship between elements or actors (e.g., a legal relationship), or an abstract status/label applied to an old element (e.g., “copyrighted”; “offered for sale” etc) — or –the mere recitation of a desired “functionality” to be innovated by others (with or without guidance provided in the specification).


          A minor correction perhaps, but “gist” is in fact a legal term.

          From Black’s Law Dictionary:

          1. The ground or essence (of a legal action).

          2. The main point.

          And perhaps ironically:

          This noun derives from the Law French verb guest “to 1ie.”


          The legal term of art of “abstract” on the other hand, is NOT listed in Black’s Law Dictionary – leastwise not as used in these patent cases – and the suggestion to use the dictionary does not accord with the words of the decision either, which explicitly say that NOT defining the term is what the Court has chosen to do. If the Court wanted us to use the dictionary definition, it could have, and it would have, simply said so.

          This is not an idle point here, as your own retreat from gist shows, you retreat from advocacy on what you imagine is an undefined term (which happens to have a legal definition) and advocate on what you imagine to be a defined term, which in reality is not so defined.

          Without snark of any kind, your own logic does not support you conclusion, and works against the decision you want to hold out as “clear.” This is very much part of the “squaring” that EG has asked for, and that – in truth – has not been answered (it is NOT a matter that someone does not “like” the answer – instead, it is that that answer is just not logically sustainable).


          Why it matters is because an analysis of novelty or obviousness requires a limitation by limitation analysis of the claim and comparison to specific prior art. Obviousness further requires articulated reasoning as to why the skilled artisan would make the changes necessary to meet each and every claim limitation.

          The analysis of Alice Corp throws all that out and instead just “abstracts” the claimed invention without specifically addressing any claim limitations and then declares it to be old and unpatentable without applying any specific prior art.

          Clearly Justice Thomas didn’t understand why it matters any more than you.

    2. 5.2

      MM, good post.

      The Federal Circuit long ago lost track of the statute, and never asked the question of whether the subject matter to which the claim was directed, the novel subject matter, was otherwise statutory. Thus they avoided novelty analysis in 101, and avoided 101 analysis in 102/103. The result was inevitable: that nonstatutory subject matter could easily be patented by simply sprinkling a claim with statutory subject matter.

      Also I would like to point out Rich’s analysis of the business methods in State Street Bank. He posed the question as to whether there was an exception for business methods. He never asked the right question and that was whether business methods were otherwise statutory, the basis for their not being found patentable subject matter in all the cases prior. Whether something is statutory places the burden properly on the applicant/patentee, while asking whether there is an exception places the burden on the defendant. Of course the courts have not categorically excluded business methods, as they have excluded laws of nature and natural phenomena. But that does not mean that business methods are statutory, a question that Judge Rich never asked.

    3. 5.3

      Here is a method claim from US 8,772,226:
      27. A method of imaging or treating a subject having cancer or suspected of having cancer comprising administering to the subject a composition comprising: a) thapsigargin (TG) or a thapsigargin analog; b) a phenolic linker comprising a radiolabel; and c) a peptide cleavable by prostate specific membrane antigen (PSMA); wherein said phenolic linker is conjugated to said thapsigargin or thapsigargin analogue.

      Does this pass the subject matter eligibility test? Is it just claiming the step of “administering”?

    4. 5.4

      The Court’s repeated references to “drafting” shows their ignorance. The Claims are the metes and bounds of the patent. How they are written will ALWAYS matter. It’s unavoidable and not a problem. The Court is really just saying that otherwise patentable claims that they do not like should be invalidated for reasons that have nothing to do with 101, but are lumped into that section for lack of a better way to invalidate them.

      1. 5.4.1

        Scott, they always matter for infringement purposes, Scott. But you and I both know that a lot of us are taught the art of festooning.

      2. 5.4.2


        I do not agree with the choice of the word “ignorance” per se.

        But I would take the opportunity to point out that the Court is very much playing an active philosophical role. Contrast the number of times the Court references the scriviner with the words from across the pond from the Rt. Hon. Sir Robin Jacob (while discussing a different matter at ):

        Over the years I have seen bad behaviour by both big pharma companies and generic companies. I am neither pro nor against them. I am a judge. My job is to decide who is right in fact and law.

        Oh, to have that level of insight and NEUTRALITY…

  10. 4

    “appearance of favoritism”

    A little overstated maybe?

    Saying someone is a good advocate for their clients’ interests is hardly “favoritism”.

    1. 4.1

      “appearance of favoritism”

      A little overstated maybe?

      I don’t think so.

      Judge Rader knows what he did was wrong. In his own words, he was “inexcusably careless”.

    2. 4.2

      “Appearance of favoritism” and “favoritism” are equally bad when discussing a judge’s behavior, because a judge must avoid the “appearance of impropriety.” See the Canon 2 for the Code of Conduct for United States Judges.

      In other words, what the judge feels deep-down inside is quite irrelevant.

    3. 4.3

      Bad Joke, when the PTO, Congress and even the courts start speaking of “stakeholders,” we know who they mean. The patent world is just a little too cozy. People outside the world of patent law look at what’s going on an can only think that patent law is out of control. The Federal Circuit is and has been a large part of the problem, an why?

      I think the commentator has it right. That court has not been faithful to the law, plain and simple. Benson was decided 40 years ago, but the CCPA and the Federal Circuit tried their best to overrule it — by a thousand cuts. The Federal Circuit was invested in nominalism, an effort that can be best summarized by trying to force every patentability decision into 102/103/112. Thus if a claim nominally recited a machine, manufacture, composition or process that otherwise passed MOT (Prometheus), the Federal Circuit was quite willing to move on to 102/103/112, and was quite willing in such analysis to give weight to obviously nonstatutory subject matter so that we were soon patenting business methods and and new scientific discoveries even the the courts had long held that things could not be patented.

      The question is, what is the Federal Circuit going to do in response? We await Ultramercial.


          Bad joke, let me say that I would agree with you that the problem in Benson was that math is nonstatutory, and the focus of the court on the exceptions caused chaos because math was really not one of the exceptions. Nor did the Rubber-Tip Pencil case clearly apply because that case really was about claiming abstractly, claiming results without details; and the claim before it in Benson was not that at all.

          The problem in Benson was that the novel subject matter was nonstatutory, and the statutory subject matter, the computer was claimed “gen rically.” By the time of Benson, these kind of mixed subject matter claims had been treated consistently, beginning with cases like Hotel Security, as requiring invention in the statutory part while giving no weight to the nonstatutory. Of course there was an exception. The exception occurred if the nonstatutory was functional with respect to the statutory so as to transform the statutory part into a new state or thing.

          Had the Supreme Court applied the Hotel Security line of cases, Benson would’ve been a lot clearer. However, beginning with Prometheus and now with Alice, the Supreme Court seems to have returned to the fold.

  11. 3

    “Finally, in Alice, the Supreme Court gave up and delineated its own rule on
    patentable subject matter, one derived from the language of its own prior decisions in the area.”

    Perhaps, but the Royal Nine’s “own rule” is also not derived from the explicit language if the statute itself, i.e., 35 USC 101, only by alleged “implication” of these so-called “exceptions.” Also, the broken two-part Alice test does not “delineate” what the Royal Nine means by an “abstract idea” (part one), or “something more” (part two).

    I would also like to know how Professor Feldman can square the so-called “logic” of Alice/Mayo with Diehr. Sorry, but Professor Feldman’s proposed article leaves me unconvinced and “boiling”

    1. 3.1

      EG I would also like to know how Professor Feldman can square the so-called “logic” of Alice/Mayo with Diehr.

      What part of the logic in Alice or Mayo do you find difficult to square with Diehr, EG? Be very specific. We can’t read your mind.

      Diehr stands for the simple, banal proposition that the mere presence of ineligible subject matter recited in a claim is not sufficient to render the claim per se ineligible.

      Alice and Mayo stand for the proposition that the mere presence of eligible subject matter in a claim does not render the claim per se eligible.

      There is no conflict there. There is nothing to be “squared.”

      The principle in Mayo will never, ever be overturned because no sane patent system can function without that principle. The Supreme Court recognizes this fact every time they remind you that ineligible “innovations” can’t be protected by the “draftsman’s art.”

      1. 3.1.1

        “What part of the logic in Alice or Mayo do you find difficult to square with Diehr.

        MM, you don’t need to “read my mind” to figure what “logic” can’t be squared. That’s all I’m going to say to you.

    2. 3.2

      I think the difference between 101 and what the Federal Circuit does is that the judicial exceptions have been used for at least 60 years while the Federal Circuit goes its own way.

      1. 3.2.1

        Prof. Hricik has long pointed out that errors in law – even long and oft repeated errors – need to be corrected when the error is brought into the sunlight.

        Your point of “have been used for at least 60 years” is not persuasive.


          …and I would add that your point is not entirely accurate either.

          Take note of the language used in the 101 decisions. The position has not in fact been static over the course of years since 1952. We have moved from full scale dicta in Graham to explicit words of caution and heavy emphasis on ‘implicitness’ to the more recent demands that the Court’s views not be made into dead letters and the explicit addition of such a word as ‘technological.’

          Do not pretend that the Court has not been active here.


            …and I would further note the historical fact that the recently released President Clinton papers contained official concerns that three Justices/potential Justices were deemed to be too activist minded.

            Those three Justices happen to be the very same Justices that still cling to Justice Stevens’ view that the Court could explicitly re-write the words of Congress and “hold that business methods as an entire category are not within the Useful Arts, in direct defiance of the actual words and actions of Congress.

            This little fact is a loincloths of decency that should not be left in the dressing room.


            For the sake of argument I will accept that the use of 101 has changed in the past 60 years.

            But patents have changed in the last 60 years from being mechanical to software and business methods. So of course the use of the judicial exceptions have changed.

            Finally, it really is beside the point what the Supreme Court has done when discussing the judicial non-compliance of the Federal Circuit. I dislike what the Supreme Court has done in many different areas of the law, but it is not for the lower court to issue holdings clearly contrary to the Supreme Court.



              I could not disagree with you more – your position is equivalent to the “it is the Emperor, so you better admire his clothes.” If the Supreme Court acts beyond their authority, then there is no legal effect to disregarding what they say. Judge Rich knew this only too well and that is exactly why he could disregard the mountains of dicta in the Supreme Court Benson case without suffering his removal from the bench.

              I would also question your attempted use of “well patents have changed” and point out that the Act of 1952 did not change. You appear to embrace the very common law approach that Congress removed in 1952 when they added 35 USC 103 to eliminate the Judicial setting by common law of the defintion of “invention” that earlier patent law written by Congress had invited the Judiciary to develop. That 101-style authority experiment ended in 1952. This has been noted before and not just on this blog and certainly not just by me.


                If the Supreme Court acts beyond their authority, then there is no legal effect to disregarding what they say.

                ^^^ this thought, unchallenged, is decidedly dangerous.

                1. How so?

                  Let me just add a few words from Benjamin Franklin to your obvious attack on a messenger:

                  It is the first responsibility of every citizen to question authority.

                2. There was no attack on a messenger. Rather, there was an attack on the statement that you presented, which is clearly untrue (go ahead, “disregard” the Supreme Court’s approach to subject matter in front of a district court judge and see what “legal effect” that has) and which, if taken as true by the courts, would lead to chaos. Checks on the Supreme Court’s authority come from the Legislative and Executive branches, not from the lower courts.

                  I don’t have any trouble with Ben’s advice to “question authority.” But I don’t think you should advise your clients (or anyone else) that “there is no legal effect” to ignoring the Supreme Court.

                3. Speaking of questioning authority, do you have a source for that supposed quote of Franklin’s? That sounds more like Noam Chomsky than Ben Franklin, to me.


              J, “It is not for the lower court to issue holdings clearly contrary to the Supreme Court.”


  12. 1

    “It is a message about restraint, about carefully constructed logic, and about coming into the fold of judicial decision-making. ”

    There is no restraint or carefully constructed logic in Alice. It is the Supreme Court that is the enfant terrible.

    1. 1.2

      I agree. These decisions (Alice and its progeny) just don’t make sense.

      The fact that a computer “necessarily exist[s] in the physical, rather than purely conceptual, realm,” Brief for Petitioner 39, is beside the point. There is no dispute that a computer is a tangible system (in §101 terms, a “machine”), or that many computer-implemented claims are formally addressed to patent-eligible subject matter. But if that were the end of the §101 inquiry, an applicant could claim any principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept. Such a result would make the determination of patent eligibility “depend simply on the draftsman’s art,” Flook, supra, at 593, thereby eviscerating the rule that “‘[l]aws of nature, natural phenomena, and abstract ideas are not patentable,’” Myriad, 569 U. S., at ___ (slip op., at 11).

      How does this make sense? If your claims are directed to a computer performing an “abstract idea”, then the computer implementation isn’t abstract. Furthermore, why can’t you claim a computer that “claim[s] [a] principle of the physical or social sciences”? Say you discover E = MC^2.1. If your claims are directed to computers for implementing a function to determine E = MC^2.1, what is wrong with that? You’re not claiming the principle; you’re claiming a computer that implements the principle.

      1. 1.2.1

        Patent, you claim a new computer. The new computer varies from the old computer because it is used to calculate some new information.

        Now, you question the thinking of the Supreme Court?

        Really, is it the Supreme Court’s thinking that is wrong here?


          No Ned. The new computer varies from the old computer because the new computers is configured to calculate new information and the old computer was not so configured.

          …just as the Wright Flyer varied from a pile of lumber, cloth, rope and (I assume) nails, by its configuration.


            Les, well then the problem is a section 112 problem because if you say that there is a new computer and all you disclose is software, then there is no support in your specification what you’re claiming.


              Sorry Ned, but you appear to not be reading the claims correctly, as the extent needed is only that to which a person having ordinary skill in the art to which the invention pertains needs.

              One does not have to include in the specification that which PHOSITA can fathom.

              This too highlights one of the (unforeseen) consequences of an activist Court.

              When the Court turned up the power of PHOSITA in KSR, they also (perhaps unwittingly) also turned down in equal measure that which is needed to be presented in an application.

              Such is probably one good reason why patent law writing should be left to the legislative branch.


              How do you figure? Are you saying that one of ordinary skill in the art doesn’t know that software runs on/configures a computer?


                Les, I am saying that the Supreme Court has held that a programmed computer, without more, does not define a new machine, because if it did, Benson and Alice both would have come out the other way.

                This means that all claims to configured computers, where configured implies or specifies that the computer has new structure, must be nonsupported by a disclosure that does not show new structure, but only programming.

                It might be recommended that the patent office start rejecting configured computer claims along these lines.

                1. Ah, well, I base my position on logic and reason. If you’re gonna start relying on SCOTUS, we are going to start talking past each other and the conversation is just gonna degenerate.

                2. Well Les, there are many here, jesse for one, that do not agree that a computer running software is a new computer from any point of view.

                  Lets go down to the street and ask a kid, any kid, the following question: here is your baby bottle. Do you have a new baby bottle every time someone puts formula in the bottle?

                  Now lets go to the store have you dressed in various attire. Do you change every time you try on something new? Do the clothes really make the man?

                3. Ned –
                  1) It is a new bottle. When the bottle is emptied, Mother says “oh what a good boy! “Do you want ANOTHER bottle?” and fills it up.

                  2) Moreover, if it is filled instead with Elmer’s glue, it is no longer a baby bottle, but is instead a glue dispenser with a flexible tip for getting glue into those hard to reach places.

                4. Les, a baby bottle filled with glue is a baby bottle filled with glue.

                  It still isn’t any good at dispensing glue.

                  It could also be called a case of child endangerment.

                5. Jesse –

                  Lumber, cloth and rope is lumber cloth and rope even when configured as an airplane. Yet we recognize the configuration to be an airplane and award a patent for it.

                  That’s what inventions are. New configurations of known components.



                Your post reminds me of a subtle but still critical point:

                One cannot ‘run’ software on a computer until one first loads and configures the computer with the software.

                That first step is (willfully?) overlooked and it is that first step that changes the machine.

                1. What, Les, is the difference, if any, in using a computer to run software and a new computer having new hardware circuits where the latter has the same functionality as the former? Call that functionality, function A.

                  Regarding claims.

                  In example 2, I disclose specific circuits that have the new functionality. Can I claim

                  — 1. Computer configured to perform function A. —

                  where that function is described in the spec?

                  I would suggest that the claim would fail because it did not claim the circuits except by their function. There is a legal problem when one does this. What is that legal problem?

      2. 1.2.2


        How does this make sense?

        It makes perfect sense on its face to a great many people who had been advocating for the result in Alice for decades.

        Can you tell everyone, PB: do you believe there is such a thing as ineligible subject matter? If so, do you believe that lawyers should be allowed to protect ineligible subject matter by writing claims using “magic words” (e.g., “machine” or “process”)? If you answer “yes” to both questions, can you explain what makes the subject matter “ineligible” as a practical matter? Serious questions that all critics of Mayo/Alice need to be prepared to answer forthrightly because they are never going away. The Supreme Court has already given you their answer.

        If your claims are directed to a computer performing an “abstract idea”, then the computer implementation isn’t abstract.

        But computers are very, very old machines designed for the purpose of “implement” information processing. Equally old are the generic steps for the “implementation” of information processing. If your claim recites the abstract idea “on a computer” using those generic steps and nothing else then you are protecting the abstraction, at least in the context of computation which is all that is needed (any old context will suffice).

        A simple example should make this perfectly clear. Imagine you discover (or create) some non-obvious useful information of great value. You claim “An improved computer, wherein said computer is configured to store [said information] and, upon request from a user, transmit said information.”

        That claim prevents people from storing and transmitting otherwise ineligible information on their otherwise unpatentable (old) computers. The claim is therefore ineligible. There’s more complicated scenarios but the underlying principle is the same.

        If your claims are directed to computers for implementing a function to determine E = MC^2.1, what is wrong with that?

        Everything is wrong with that. Computers are ubiquitous and old. Nobody except for a tiny, tiny, tiny, tiny handful of patent attorneys wants a system that allows people to lock up correlations for 20 years in the manner you describe. That doesn’t promote “progress”. That only promotes endless reams of “new” unexaminable correlations being shoved at the patent office and an ensuing multitude of patent lawsuits brought by patent hoarding lawyers who contribute nothing of value to society, just more litigation. This is the trend that we could already see developing. It’s not speculation.

        Try applying your logic to other contexts. Some guy invents a dumptruck for hauling stuff and dumping it out. Then a thousand patent lawyers file 100,000 claims to “improved” dumptrucks where the only new “limitation” recited in the claim (relative to the original dumptruck) is, e.g., the source of the gravel in the bed or whether the gravel is “purchased according to a license agreement.” How does that promote better dumptrucks? It doesn’t. It just promotes litigation and lawyering.


          And apparently only “a tiny, tiny, tiny, tiny handful of patent attorneys” would think your to examples to be unpatentable based on the patent statute as written – because neither is novel and nonobvious.

          Example 1: As claimed a “computer” is a machine and thus patent eligible. However, long standing case law would prevent the novelty or non-obviousness of the claim from being established based on the recitation of unpatentable subject matter: new information. This predates computers – the printed matter doctrine.

          Example 2: Computers are known tools for calculating and implementing functions. Programing a computer to implement a known function is prima facie obvious.

          Example 3: Your “new” limitation is a statement of intended use, which even patent lawyers not included in the “tiny, tiny, tiny, tiny handful” to which you refer know cannot be relied upon to distinguish the prior art.

          But applying statutes as written is soooo boring. New law, conjured from thin air, is much more exciting. Really, who would have even cared if the Alice Corp patent had been held invalid based on prior art? Same result, but very dull and predictable. And who would want that in patent law. Oh yea, just that same “tiny, tiny, tiny, tiny handful of patent attorneys” – the one’s that actually read the statute and represent real clients.


            Loss, “Example 1: As claimed a “computer” is a machine and thus patent eligible. However, long standing case law would prevent the novelty or non-obviousness of the claim from being established based on the recitation of unpatentable subject matter: new information. This predates computers – the printed matter doctrine.”

            Do you know where the printed matter doctrine came from? Hotel Security, a case Rich refused to follow in State Street Bank, and which Stevens wanted to follow in Bilski.

            You might want to read that case, then Guthrie v. Curlett and In re Russell.

            The point is that claims have, at times, mixed statutory and nonstatutory subject matter in them. The cases simply require that invention be in the statutory.

            The whole point of Alice (and Mayo) is that the statutory part of the claim in not new.


              “The whole point of Alice (and Mayo) is that the statutory pat of the claim is NOT NEW.”

              NOT NEW? NOT NEW?

              You are exactly correct, that is the point, the whole point as to why the decisions in Alice and Mayo are off the rails.

              An abstract idea (or a law of nature) is just that – being new or old doesn’t change their fundamental character and the question as to whether it new or old as no place in determining whether or not the subject matter is eligible for patenting.

              The question for patent eligible subject matter should end with the determination whether there is “a statutory part” of the claim. If there is a statutory part, e.g., a process or machine, the question of whether it is “new” is to be determined according to the requirements of the patent statue – 102/103, not 101.

              Once you start making “newness” determinations unconnected to specific claim limitations or the statutory and case law framework 0f 102/103, there is no particular basis at all for the decision. The “analysis” in Alice can be applied to to just about anything to reach any result desired: The patent at issue in Diamond v. Diehr was directed to the abstract idea of curing rubber which had been done for many years and nothing new was added, just a conventional processor programmed with an unpatentable algorithm. That patent should have been invalidated as nonstautory. Anything that you might try to argue to the contrary to save the patent would require you to focus on the specific claim limitations, but Alice made it clear that claim limitations no longer matter for determining the statutory qualifications of an invention.


                At a loss, may I respectfully suggest that you read Rubber-Tip Pencil, the case that Supreme Court cites for an example of what they are talking about when they refer to an abstract idea. There the claim was to a rubber tip “for” attachment to the tip of a lead pencil. The court noted the rubber tip and its ability to attach to things was well known, and that the idea of attaching the well known rubber tip to a lead pencil was not patentable by itself. What the court was looking for was some new structure in the rubber tip, or the positive requirement for attachment to the pencil in some detail.

                Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498, 22 L. Ed. 410 (1874). link to

                Everybody knew, when the patent was applied for, that if a solid substance was inserted into a cavity in a piece of rubber smaller than itself, the rubber would cling to it. The small opening in the piece of rubber not limited in form or shape, was not patentable, neither was the elasticity of the rubber. What, therefore, is left for this patentee but the idea that if a pencil is inserted into a cavity in a piece of rubber smaller than itself the rubber will attach itself to the pencil, and when so attached become convenient for use as an eraser?

                An idea of itself is not patentable, but a new device by which it may be made practically useful is. The idea of this patentee was a good one, but his device to give it effect, though useful, was not new.

                In other words, there had to be more than simply the idea of attaching the rubber tip to the pencil.

                Regarding newness determinations in 101, I think the statutory subject matter must be notoriously old or admitted to be old. If it is even arguably new, one has to move on to 102/103/112, but here, subject matter that is clearly non statutory must be given no weight. Cf., Funk Bros. and Hotel Security.

    2. 1.3

      Les, I am beginning to suspect that you do not understand Alice as opposed to being of the view that it was wrongly decided.

      1. 1.3.1

        Alice: We have said that claims are abstract when they would capture a fundamental building block. In the present case, the claims are not directed to a fundamental building block. But that doesn’t matter, because we think they are abstract anyway.

        Did I get that right?

        Alice: First impermissibly distill the invention down to a “gist”. Then declare the “gist” old without any support. Then, because it is old declare the gist abstract. Because the “gist” is abstract, then circle back and find the claim to be abstract.

        Did I get that right?

      2. 1.3.2

        Sorry, but Alice Corp is the most confused and tortured judicial opinion I have ever read. The only way to “understand” it is to disregard 100+ years of patent law. With his decision in Alice Corp, Justice Thomas has returned patent law to its roots – before the 1836 act – when patents didn’t have claims: Just read the specification and announce whether it is “inventive”. Saves a lot of time too, don’t have to dither around with all those bothersome and complicated claim limitations.

        The problem is that today, digital information and software implemented controls are the basis for the economy, not physical things and machines like wooden shingles, horse shoes and the cotton gin as in the early 19th century. Failure to allow the patent system to adapt to the new economy will ultimately render it irrelevant. Which is exactly the agenda on one side the debate about the patentability of business method inventions. So let’s stop pretending that Alice Corp represents some sort of important legal analysis or insight to be parsed for nuggets, and recognize it for what it is: a ham-handed attack on business patents that inartfully bleeds over onto all digitally based inventions and elsewhere because it never acknowledges what it is doing.

        In the meantime, I think I’ll go out and buy a wig and a robe. I will probably need that next time I have to argue a patent case.


          loss, not a single person that I know of is saying that improved machines, processes, or the like driven by programmed computers are not patentable. That you may think this, is to me, a problem.

          Why do you think this?


            I don’t think they are either, but Alice Corp says they may be. On their face, the claims at issue in Alice Corp were also directed to improved machines (systems) and improved processes driven by programmed computers, yet they were deemed unpatentable subject matter such that no analysis of novelty or obviousness was necessary.
            There is nothing in the decision in Alice Corp. that expressly limits its application to any particular technology field or type of invention.


              at a loss, and they keep citing Rubber-Tip Pencil, which is like Wyeth v. Stone.

              My take is this: if the hardware in the claim is old and notorious, completely conventional, or claimed at a very high level of abstraction as in Wyeth v. Stone, then there is a problem. It has to be clear that the claim is directed to an improvement in one of the statutory categories, and machines that are claimed at a very high level of abstraction leads to a conclusion is that the invention is not in the machines been something else.

              But it the programmed computer is applied to improve the functioning of a larger machine as in Alappat, that is enough. There is an improved machine.


                Don’t disagree with your take as a general proposition, but still it begs the question as to why one must decide if something is old or new in order to determine if it is an abstraction? One my coworkers has suggested that Alice Corp makes perfect sense – if you accept that the word “abstract” has been completely redefined. He may be right.

                Old cases like Rubber Tip Pencil are not especially helpful because they were decided under a patent statute that did not separately identify subject matter, novelty or non0bviousness as different statutory requirements. The entirety of what is now 101, 102 and 103 was encompassed in one run-on sentence, which started out almost the same as the current 101. Thus when a court at that time said something was not a patent eligible “art” or machine, etc., it was not distinguishing between statutory subject matter and novelty because the statute didn’t.

                I suppose, if Alice Corp had been decided under the Patent Act of 1836, there really would be nothing much to criticize.

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