Most Cited Supreme Court Patent Decisions (2005-2015)

by Dennis Crouch

The list below considers all of the U.S. Supreme Court patent cases decided during the past decade (Since January 2005) and ranks them according to the number of citations.  Citation offers some insight into the influence of decisions, but is obviously limited for a number of reasons. Cases may be cited because of their importance in changing the doctrine (KSR, eBay) or simply as the court’s most recent statement of the law on an important issue (Microsoft v. i4i and KSR) or for a narrow procedural issue that applies in many cases (Unitherm).   EBay’s high citation rate is also boosted because its principles have been applied broadly to injunctive relief across many areas of law. Some cases with low citation counts may also have major impacts. They may, for instance impact a small number of very important cases (Caraco) or perhaps they cause folks to change behavior so that the issue stops arising.

With this list we also have the timeline problem where older cases are more likely to be highly cited since there has been more opportunity for those cites.  I Alice Corp to rise in the ranks Nautilus and Teva, on the other hand,  may well flounder (based upon the Federal Circuit’s treatment of those cases thus far).

  1. KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398 (2007) (obviousness)
  2. eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (injunctive relief)
  3. MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (challenging licensed patents)
  4. Global-Tech Appliances, Inc. v. SEB S.A., 131 S.Ct. 2060 (2011) (inducing infringement)
  5. Bilski v. Kappos, 561 U.S. 593 (2010) (subject matter eligibility)
  6. Microsoft Corp. v. i4i Ltd. Partnership, 131 S.Ct. 2238 (2011) (presumption of validity)
  7. Illinois Tool Works Inc. v. Independent Ink, Inc., 547 U.S. 28 (2006) (tying)
  8. Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008) (exhaustion)
  9. Microsoft Corp. v. AT & T Corp., 550 U.S. 437 (2007) (infringement by export of components)
  10. Unitherm Food Systems, Inc. v. Swift-Eckrich, Inc., 546 U.S. 394 (2006) (post-verdict civil procedure requirements)
  11. Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012) (patent eligibility)
  12. Carlsbad Technology, Inc. v. HIF Bio, Inc., 556 U.S. 635 (2009) (appellate jurisdiction)
  13. Merck KGaA v. Integra Lifesciences I, Ltd., 545 U.S. 193 (2005) (research exception to infringement)
  14. F.T.C. v. Actavis, Inc., 133 S.Ct. 2223 (2013) (competition law – drug settlements)
  15. Gunn v. Minton, 133 S.Ct. 1059 (2013) (federal jurisdiction over cases involving patent law)
  16. Lexmark Intern., Inc. v. Static Control Components, Inc., 134 S.Ct. 1377 (2014) (unfair competition based upon false infringement allegations)
  17. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014) (indefiniteness)
  18. Already, LLC v. Nike, Inc., 133 S.Ct. 721 (2013) (standing after covenant not-to-sue)
  19. Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc., 131 S.Ct. 2188 (2011) (ownership under Bayh-Dole)
  20. Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107 (2013) (subject matter eligibility)
  21. Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S.Ct. 2347 (2014) (subject matter eligibility)
  22. Limelight Networks, Inc. v. Akamai Technologies, Inc., 134 S.Ct. 2111 (2014) (divided infringement)
  23. Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk A/S, 132 S.Ct. 1670 (2012) (forcing correction of Orange Book listings)

KSR has actually rocketed to the position of most-cited Supreme Court patent case of all time followed by Markman (1996); U.S. Gypsom (1948) (antitrust-patent); Graham v. Deere (1966); and Warner-Jenkinson (1997).

195 thoughts on “Most Cited Supreme Court Patent Decisions (2005-2015)

  1. 15

    Comments noting the MASS deletion of over 100 comments are hereby deemed “offensive” and not fitting the desired narrative and will be deleted.


    (well that’s fun)

  2. 14

    Is the Higgs Boson a product of nature? Can anyone prove that an Higgs Boson exists other than by an act of man?

    What if claimed as follows?

    1. Isolated Higgs Boson.

    What about this?

    2. Isolated, stabilized, Higgs Boson.

    Who is the inventor? Higgs? Higgs when CERN produced one? CERN?

    Should the publication of the idea of the Higgs Boson prevent a patent on the isolated, stabalized, Higgs Boson when one finally produces one?

    1. 14.1

      I like my Higgs Bosons with a bit of cream and fresh strawberries on top. Hopefully the price will come down as production increases.

    2. 14.2

      That seems like exactly the same issue as the element Americium, except the patent on that actually issued with this claim:

      1. Element 95.

      See US 3156523.

      Thoughts? I don’t know if it’s possible to determine whether Element 95 definitively does (or does not) exist anywhere else in the universe.

  3. 13

    Good morning! We have something interesting here today: a mid-90’s software patent that SHOULD be patent-eligible based on the MoT test. I saw it in a daily litigation report this AM.


    1. 13.1

      What claims are involved?

      Here is claim 6:

      6. A directional drilling method comprising:
      monitoring the rotation of a drill string with a first sensor at the surface;

      monitoring the orientation of a downhole tool with a second sensor, said downhole tool being connected to the end of said drill string;

      transmitting said drill string rotational information to said computer;

      transmitting said downhole tool orientation information to said computer;

      controlling a motor that rotates said drill string with said computer; and

      rotating said drill string with said computer controlled motor to a predetermined angle such that said downhole tool is rotated to a predetermined orientation.

      For the sake of argument, let us assume that everything in this claim is old and old in combination, with the point of novelty the use of the computer to control the motor. What we have here seems obvious because using a computer to control something cannot be an invention even at the date of this patent.

      As to 101, where is the ineligible subject matter?

      1. 13.1.1

        I’m not exactly an expert in this art, but I have a hard time believing this claim is novel, even in the 90s.

        If there is a 101 issue, I’d suspect it lies in that the applicant attempted to distinguish their claims over the prior art based on the information transferred.

        “Drill string rotational information” or “down hole tool orientation information.”

        If they got a patent on that distinction, that seems like a possible 101 problem to me.


          How they got the patent is irrelevant. Novelty is irrelevant (re-read Diehr, the Court goes into the novelty issue at length).



            Novelty is irrelevant? To what? Eligibility? That wasn’t my point. It is certainly relevant to whether this is an enforceable patent.

            Determining which parts of a claim and which parts are old is certainly relevant to 101, though of course this isn’t strictly novel. Usually, what is going on is that the “novel” aspect of this claim is ineligible subject matter.

            Diehr is the case I would cite if I were you too, I guess. But there are a lot more (9-0) recent cases that suggest your reliance on Diehr is misplaced. Read Alice and Mayo.



              Be aware of the fallacy of the “mere aggregation claim” as somehow something “more” when it comes to 101 arguments.

              This in particular is a weakness of yours when it comes to patent law and your cheerleading of what you “feel” should be law.

              The key word at least from Prometheus was integration – and the tendency to discount the Diehr admonition against dissection is often overblown and in fact is NOT the law, even as re-written by the Court.

              Also be aware of your tendency to think that “portion of claim being eligible or ineligible” has any foundation. This is an offshoot of the dissection mode which only the unsophisticated and easily confused abide in.


              “Novelty is irrelevant? To what? Eligibility? That wasn’t my point.”

              “Determining which parts of a claim and which parts are old is certainly relevant to 101.”

              Hilarious. Do you realize you contradicted yourself in two consecutive sentences?


                oh man,

                I wish you’d use a consistent moniker. That said, I was making a point in my first post and a different point in my second post. Pretty simple.

                What bad faith.

                1. “consistent monitor” does not help with the “bad faith” issue.

                  Look at who you cheerlead to see that.

                2. Look at who you cheerlead to see that.

                  99% of the habitual moniker-swapping sockpuppets who post here are coming from one or two people who truly love them some bottom feeding computer implemented junk patents.

                  That’s always been the case and we all know why.

                  Or have you forgotten, “anon”, that you were the primary abuser here for many years until Dennis outed you?

                  Now wait for “anon” to tell a sweet fable about how some guy on some other blog “does the same thing”. It’s a great one, folks!


                What I remember MM is you accusing me daily of using sockpuppets. But, then Dennis confirmed that I did not use sockpuppets. You never acknowledged this or apologized.

                1. Even worse is his own duplicitous actions of constantly whining about sockpuppets as “the worst thing ever,” his prevaricating about his own use (not a flat denial per se, but rather “rarely” and “not recently,” and then compounding that by pretending that his rampant use at Dr. Noonan’s site is merely some “fable,” while it is beyond evident that he engages in the very behavior he seeks to decry – and he does so more recently and at a higher volume than most any regular here in this ecosystem.

                  Small potatoes perhaps, but clearly a pattern of repeat offense indicating indifference to the obligation invoked by Prof. Crouch for honesty and being forthright.

                  Nine years and running. Same one, not merely some one.

                2. Actually, MM also posted under my name too and admitted it during the great sockpuppet era.


          I’m not exactly an expert in this art, but I have a hard time believing this claim is novel, even in the 90s.

          Impressive. Now I understand why some of you guys have so much time to comment here. It only takes you a few seconds to invalidate a claim like this, where mere mortals have previously spent months and countless dollars in failed attempts to do so.

      2. 13.1.2

        I’m not commenting on validity of this patent directly- the point of novelty MUST be the specific code that handles the drill string- something humans can do, but what a quality software program can do better to control a machine and thereby improve its function.

        To me, the eligibility inquiry must locate the point of novelty. If the software only provides information, but not control; ineligible. That may be a finer point in many embodiments, but its the only way to avoid purely functional claims that can’t be adjudicated fairly. On a validity basis, if the patent does not recite the structure of the code that provides the improvement, but only the idea of using a computer to control a drill string, it should be invalid for lack of description.


          MUST be the specific code

          Absolutely and completely false.

          Basics Mr. Snyder, basics.


          To me as in your feelings about what the law should be or as in your reading of Alice/Mayo? If the former, identify it as such so you don’t confuse people. If the latter, that’s a gross misstatement of the law.


            anon knows very well from my comments in recent months that my statements on eligibility are as I wish the law to be- pertinent to my opinion of how reforms should proceed- and not (usually) as the law may be today.

            As to how the Supreme Court may rule in the future on the current statues as written, I think they can outlaw per se software patents under current law if they wanted to.

            As to the way any particular case stacks up on the Alice standard, there is clearly range for judicial interpretation, as DDR and other recent cases have shown.

            anon’s mischaracterization of inter alia my stance on software patents is part and parcel of the “everything is wonderful” view of the current mess. Its not wonderful and I am not an anti-patent ideologue. Im also not a lawyer, so I hardly expect to make expert insights to the finer points of patent law. I am knowledgeable about software and the key concepts around subject matter eligibility, which is where I focus my input on this blog.


              Very much to the contrary, I am not the one engaging in mischaracterizations.

              As I stated previously, you need to take better care in your posts to make sure you are expressing your opinions as to changes in law as that. You are not doing that.


              Further, you continue to represent clear errors of law. For an immediate example, your statement of “think they can outlaw per se software patents under current law if they wanted to” is profoundly false from a legal perspective.

              Blandly stating “I’m not a lawyer” simply does not excuse what you are saying, nor does it mean my posts – discussion actual law – means that I am “mischaracterizing” you.


                “Further, you continue to represent clear errors of law. For an immediate example, your statement of “think they can outlaw per se software patents under current law if they wanted to” is profoundly false from a legal perspective”.


                If the Supreme Court decide that further processed information is abstract, period, it’s over for per se software patents without changing a word of current law.

                Can you ever make a statement with a counter-point that equals more than “you are wrong” about this or that?

                1. Some useful software patents should still be valid, providing we can distinguish between ‘information as content’ and ‘information as bytes’. Consider a software compression algorithm which reduces the storage space that ‘information as bytes’.

                2. Consider a software compression algorithm which reduces the storage space that ‘information as bytes’.

                  What about it?

                3. For example Patent 4558302. It describes the a ‘High speed data compression and decompression apparatus and method’. The invention is reduces the amount of storage (memory, disk etc ) needed to store data which has repeating sequences and describes how to accomplish it.

                  This is a software patent which makes a computer function better for all its tasks.

                  Most other software patents discussed here are processes which are improved by using a computer. They don’t make the computer function better, they add a new function to the computer.

                4. By the way, that compression patent was actively licensed by Unisys in the mid-1990s because it forms the basis of the GIF image file format. As a result of that license activity, the PNG file format was developed as a patent-free replacement. Who says software patents don’t lead to innovation?

                  link to

                5. IBM had a patent on the same compression algorithm. The filing dates of both patents were virtually the same.

                6. “Can you ever make a statement with a counter-point that equals more than “you are wrong” about this or that?”

                  Bro he has ocpd. look it up. Telling other people about how wrong they are is exactly what he loves most in life.

      3. 13.1.3

        let us assume that everything in this claim is old and old in combination, with the point of novelty the use of the computer to control the motor. What we have here seems obvious because using a computer to control something cannot be an invention even at the date of this patent.

        As to 101, where is the ineligible subject matter?

        Like the Prometheus claims, it’s either obvious or its ineligible pretty much on its face.

        It matters to the lovers of compuer-implemented junk because their junk is worth more if the amount of money it takes to establish that it’s junk is geater. Therefore, the lovers of computer-implemented junk prefer obviousness.

        What they apparently don’t see coming is that the obviousness of computer-implemented junk like this is going to become much easier to establish going forward as a summary judgment matter as the world grows tired of the infinite and endless stream of “do it on a computer” crapola and the endless stream of inane “i was born yesterday plus super shiny compooter makes me smile” arguments in defense of such claims.

    2. 13.2

      Is this patent actually being challenged under Alice? That will be a good test. This is a perfect example of something that should be patent-eligible: using a computer and to precisely control a device in a way that humans cannot. The patent says the state of the art involves operator guesswork (and I assume that’s correct), so the patent-eligible process of drilling a hole is improved via such computer control. I think Diehr is probably equivalent from an eligibility standpoint, but Diehr was decided before Alice.

      However, I suspect the opposition would argue, under Alice, that (a) “drilling a hole” is an abstract idea and (b) using any generic computer with broadly-functional instructions like “rotate to a predetermined angle” is not sufficiently “something more.”

      The fact that this is even a cognizable argument against eligibility is ridiculous. If you want to argue that it’s anticipated or obvious, fine, find the art or demonstrate what PHOSITA knew back then. But suggesting that this computer-controlled drilling device and/or method is not even eligible for patent protection is clearly counter to the intent of Congress and the Constitution.

      Likewise, I suspect Diehr would also fail as ineligible under the Alice test.

      If only patents were corned beef, we’d all be eating a delicious breakfast because the courts have made a marvelous hash of them. (Mmmm, now I have to run to the deli…)

      1. 13.2.1

        I think you are correct. This is a 112 issue, 101 shouldn’t even be thought of when looking at this claim. Preventing claims like this from even getting in the door laughs in the face of SCOTUS’s own admonition that these exceptions should be narrowly tailored and applied judiciously to avoid over-exclusion. They way the test is applied now anything with a processor is being rejected.


          Here’s a quote from a district court judge earlier this year, holding that a computerized poker-management system was not summarily invalid in view of Alice/101:

          “True, it is difficult to understand the difference between (1) a claim “directed” to an abstract idea but saved by an “inventive concept,” and (2) a patent not “directed” to an abstract idea in the first
          place, but that nonetheless can be said to “embody, use, reflect, rest upon, or apply” an abstract idea. Id. at 2354. But in patents, no less than all other areas of the law, Courts must do their best to follow Supreme Court rulings, no matter how unsatisfying.

          (Case 8:11-cv-00189-AG-RNB, Central District of California)


            How unsatisfying that progress in the “poker management” arts is no longer going to be subject to patent protection! The poor judge must have crawled in bed and slept under his blankets for a week after tanking those super awesome patent claims.

            Does anybody have a large glass I could borrow? I just filled mine up with tears.

            Of laughter.


          101 shouldn’t even be thought of when looking at this claim.


          You can’t parody this stuff.

          Rest assured: we are long, long past the point where any technological context can free a claim with information processing functionality from eligibility concerns.

          And thers’ a great reason for that: information is ineligible for patenting. So is math. So is logic.

          Eligibility concerns over “software” enabling functionality are never going away.

          You’re welcome.

      2. 13.2.2

        I just read about the litigation this morning, but I assume it will face a 101 challenge shortly.

        This is exactly the example of where per se software (that results in further processed information for human use) vs. machine component software (that results in a physical effect in the world) should be the operative test (i.e. the MoT test) because such a test can be reasonably understood by all parties, can be more fairly adjudicated, can not as easily claimed functionally, and requires no “gisting” to identify what is “abstract” at the point of novelty.

        Go ahead anon, pretend you don’t know what “should be” means.


          Martin, I see no software claimed.

          I am hard-pressed to understand how anyone would think claim 6 presents even the remotest hint that someone is trying to claim information processing in the abstract.

      3. 13.2.3

        suspect the opposition would argue, under Alice, that (a) “drilling a hole” is an abstract idea and (b) using any generic computer with broadly-functional instructions like “rotate to a predetermined angle” is not sufficiently “something more.” The fact that this is even a cognizable argument against eligibility is ridiculous.

        No, that’s not the argument and yes you are ridiculous. But wow — thanks for demonstrating how deeply confused you are about subject matter eligibility! Funny stuff.


          The “abstraction” isn’t “drilling a hole.”

          That’s the prior art (which nobody can patent, no matter how clever their attorney is).

          The abstraction is “monitoring orientation”.

          Have you ever drilled a hole? I have and so have most people I know. Then again, we weren’t born yesterday. I know that’s not true of everybody, of course. In particular, I know it’s not true of a lot of people who comment here.

          Anyway, when you drill a hole you not use your muscles and your drill but you also use information and logic. The logic helps you to orient the drill so you don’t drill into your foot or some other place where you don’t want the drill hole to go. The information helps you apply the logic.

          Sensors collect information. That’s also in the prior art. Old stuff. Really, really old stuff. The more sensors you have the more information you have. That’s also really old stuff. Also really old is the understanding that sensors, in the abstract, can sense anything that is detectable by sensor (just like your eyes can see anything that is visible to your eyes). It’s “what sensors do.”

          I could go one here but the point is that, absent some other innovation, the “using logic and information” to drill a hole “the way you want it to be drilled” is ineligible subject matter. If the only other innovation in this claim is the sensor and a computer configured to take the information and move the drill around, then you’ve got an Alice problem. Alice, you’ll remember, stands for the proposition that “computerization” of otherwise ineligible subject matter doesn’t cut it.

          Note that you don’t have to like this analyis or where it leads you. But there’s nothing “ridiculous” about it, nor is it particularly confusing.

          Please try harder to keep up! You can’t really drive the software patent train any further off the tracks than it already is. DDR Holdings is a joke.


            The claim is directed to drilling a hole. If that’s not abstract then the claim has no eligibility problems because, even if “monitoring orientation” is abstract, you just reminded us that Diehr stands for the premise that “the mere presence of ineligible subject matter in a claim does not render a claim per se ineligible.”

            If drilling a hole isn’t abstract then the Alice part 1 test fails, part 2 never gets invoked, and the claim is patent-eligible.


              If that’s not abstract then the claim has no eligibility problems because, even if “monitoring orientation” is abstract, you just reminded us that Diehr stands for the premise that “the mere presence of ineligible subject matter in a claim does not render a claim per se ineligible.” /i>

              You can explain the concept of “one” to some people but 1+1=2 is somehow enormously difficult.

              I’m glad you understand the holding of Diehr — congratulations! Some don’t even make it that far. Try to remember it.

              Now you need to understand the other part of the analysis: a claim reciting ineligible subject matter isn’t rescued from ineligibility merely by reciting old technology (i.e., a drill with a sensor; an old method of gathering data to be analyzed; “a computer”).

              Note: I am not asserting here that this claim is plainly ineligible (it might be; it might also be obvious). I am telling you what a proper eligibility argument looks like since you seem to have no clue about the law in that regard.

              This statement from you, for example: “The claim is directed to drilling a hole. If that’s not abstract then the claim has no eligibility problems” is absolute nonsense and it was put to bed by the Supreme Court in Mayo. Give it up, already, mkay?


              By the way, SlotGuy, you and “anon” make a really cute couple. I’m glad you are “joining forces” — surely you will both benefit from your alliance.



                “The Court has long held that §101, which defines the subject matter eligible for patent protection, contains an implicit exception for ‘ “[l]aws of nature, natural phenomena, and abstract ideas.’ ” ” (Alice, slip op. at 1).

                “Using this framework, the Court must first determine whether the claims at issue are directed to a patent-ineligible concept.” (Alice, citing Mayo, slip op. at 2)

                The claim is directed toward directionally drilling a hole with a computer-controlled drill string. That is neither a law of nature nor a natural phenomenon. The only relevant eligibility criterion is whether it is an abstract idea.

                “The “abstraction” isn’t “drilling a hole.””
                (MM, above, post

                Here you admit that the subject matter to which the claim is directed is not an abstract idea, and I don’t think you’ll argue that it’s one of the other two ineligible exceptions. Therefore, the claim is not directed to an ineligible concept and the first part of the Mayo / Alice test fails. If the first part fails, the second part is not performed because the claim is already deemed eligible.

                You suggested that my statement that the claim is eligible “is absolute nonsense and was put to bed by the Supreme Court in Mayo.” But there is no other eligibility test proposed in Mayo.

                How do you defend your position, counsel?

      4. 13.2.4

        suspect Diehr would also fail as ineligible under the Alice test.

        Diehr’s claim was a pile of crap that should never have been granted. It was ineligible or obvious.

        Holding Dierh’s claims up and pretending that some conflict with Alice works against Alice is pretty funny.

        Sometimes the Supreme Court gets it wrong. Diehr got one thing right (the mere presence of ineligible subject matter in a claim does not render a claim per se ineligible) and that’s about it. The lovers of information processing junk have come up with all kinds of bizarre zombie interpretations of Diehr and, as a results, Diehr is being chipped away at steadily. All that will be left is that “one thing” I referred to above.

        Watch and see.

    3. 13.3

      Martin, Just checked. Locating the “rotation” sensor at the surface is the novel limitation.

      1. 13.3.1

        Locating the “rotation” sensor at the surface is the novel limitation.

        Ah, a structural limitation.

        How quaint.


          Locating a sensor here instead of there.

          You can’t make this stuff up. Must be a sooper dooper serious guy here.




            There might be a great argument for the non-obviousnes of the claimed location of the sensor. Do you know of one?

            It is more than a bit odd to include all the information-processing limitations in the claim if the non-obviousness of the sensor location was worthy of a patent.

            Perhaps the argument is “it cost too much money to put a bunch of sensors on a drill”. That’s aways a good one.



              MM this one is quite a bit different from the run of the mill junk. The software doing the job is doing something no human could do, not only because it can do it faster, but because it can integrate more kinds of sensor data more accurately than a human, using more information about rocks, and tube properties, and brake system properties etc. than any human could know. The combination of the sensor in the hole (among many other sensors) and devising all the programming needed to actually make the drill go where its steered MAY be novel and non-obvious enough to confer patentability. In this particular case, I don’t think the patent discloses enough of the whole system to not be indefinite, but I do think its eligible under 101, again because philosophically I think the MoT test reflects the intent of the current statue. If this was just software that showed an operator where to steer, I would say not eligible. You gotta draw a line somewhere.


                His line is processor + function = claim ineligible. Again, not the law’s line, as much as he wants it to be, but his line nevertheless.



                I agree with you general premise BUT:

                None of what you described is in the claim. There’s just the slight of hand “determining” type phrases.

                1. go I posted the patent as a type of computer implemented innovation which should pass the 101 test. I don’t think this particular patent discloses enough structure, but the possibility is there for similar types of inventions.

                  One of these days I will find one that is really unassailable. Kind of sad they are such rarities….

      1. 13.4.1

        Or maybe one of the 40%+ accused infringers cleared at the Fed Circuit or the 90% plus at IPR…..

        And what of the prisoner who is actually, you know, not guilty? The sickos and nihilists around here are satisfied that to make an omelet you need to break some eggs…. the lack of concern for innocent small businesses shaken down for life-changing money over nothing is disgusting… and when the precious racket gets trimmed, they wail about rule of law…..

  4. 12

    Hmm… of these 23 cases, the patentee lost the vast majority of his/her/its argument at Scotus.

    An not only that patentee lost, all subsequent patentees are hung with the adverse precedent.

    Tell me they aren’t on an anti-patent vendetta.

    1. 12.2

      Silicone, they? What if the Court affirmed a holding adverse to the patent holder?

      Regardless, the consensus view is that the Federal Circuit was far too friendly to patents in any number of ways, from obviousness to patentable subject matter.

      To the extent that you do not truly understand this, then may I suggest that you are part of the problem, not part of the solution.

      1. 12.2.1

        Consensus Ned?

        Sorry, but no – you are merely engaging in your oft-repeated pattern of “you must be a genius when you align with my agenda” (as per the references to 6 as an Einstein when he posts something you like).

        Quite to the contrary, it is your own devotion to the Supreme Court that blinds you (quite often) as to which body of the judiciary is most to blame for mucking up the STATUTORY body of patent law.

        You sir – are part of the problem. And I would add, that this inability of yours to pick up on when the constitutional issue of violation of separation of powers arises, your position is greatly weakened.

      2. 12.2.2

        Ned, who do you mean by “consensus?”
        Consensus of

        1. Citizens of the US?
        2. purveyors of open-source licensing?
        3. Chinese copiers?
        4. Registered patent practitioners?
        5. Ivory tower theoreticians?
        6. Winos?

        Somebody else?


          >>6. Winos?

          We all know that the only people that can understand Ned are winos.


          SiliconeVG, consensus? By whom?

          Anybody and everybody who knows anything about patents and who are not patent attorneys.

          In other words, your list minus item 4.

  5. 11

    USC 100 (a) The term “invention” means invention or discovery.

    USC (f) The term ‘inventor’ means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.

    When did supreme court have power to over rule explicit definitions given by congress? And why are not patent professors like Dennis not bothered by supreme court overruling congress?


            I am talking about law USC 100 defining “invention” includes discovery. “Inventor” includes discoverer. How can supreme court say discovery is not patentable when congress was so explicit in their definition? Who gave our judges power to overrule explicit law.


              again, Mr. scientist, what case are you talking about?

              May I guess?


              What was the holding?

              DNA was not a “new” composition.

              101 reads …. “new” … “composition.”

              In other words, the discovery of a composition that is not “new,” is not eligible for patenting.

              I suspect you did not understand the holding.


                Ned. It is new. It is new discovery. Supremes said so much “It found an important and useful gene, but groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry.” But yes it does . The invention includes discovery (USC 100). It is a new discovery. Case closed. Except that in our country the judges are writing the laws, not congress any more.

                Even if I concede for argument sake DNA itself is not patentable, no one had isolated gene. It is a new composition. No one definitely used it to screen for cancer (a new process). And the law calls for “whole” the two step process of supremes breaks “whole” into two pieces. Two pieces is not a whole. You see how many laws supremes get to break to invalidate Myriad? But none of you lawyers are bothered that law of the land is not longer there.

                1. scientis36a, since 1793, “101” added both “new” and “composition” to the statute, while retaining the additional requirement of “not known or used.” Whether a composition is known or used is not decisive on whether it is “new.”

                  Consider the New World. Columbus discovered it in the sense that it was not previously known. But the New World was not “new.”

                2. Ned don’t place words from different parts of statute as convenient. The statute states “a new and useful process,..” It does not have to be a composition to be patent eligible. The supremes broke the claim into pieces which they are not allowed to do. It is not “whole” analysis, rather they resort to two step process which is expressly prohibited by law. They act like people will get incentivezed some how (Denise also says that – you spend your life on research and trust me). Please read about Douglas Prasher and tell me this is how scientists are supposed to live in this country “driving a bus for minimum wages”. Douglas Prasher published – did not patent and he ended up driving bus for minimum wages. Is this the incentive Denise is talking about?

                  link to

                  link to

                3. none of you lawyers are bothered that law of the land is not longer there

                  I was very much bothered by the logic used by the Supreme Court in the Myriad decision.

                  The main reason most people aren’t bothered by the holding(s) in Myriad is because (1) the claims were junk from other angles; (2) Myriad is a terrible company with terrible business practices and deserves the worst that’s coming to them; (3) allowing people to patent methods of looking at or isolating parts of their own body using old technology is a recipe for grifting and patent abuse that most people in the grown-up arts can see quite readily; and (4) most of the decent chem/bio companies aren’t in the business of isolating genes for the sake of isolating them but are focused on modifying them to improve their functionality, hence the Myriad decision doesn’t really affect their bottom line.

                4. S-36a, I think we changed topics again.

                  1. What case are you talking about now? Myriad was about compositions.

                  2. “Claim as a whole” — “law.” 101 says nothing about claim as a whole.

                  3. “Process” == “Art” Art was in “101” from 1790. But the term Art fell into disuse and was “replaced” by process.

                  4. The Supreme Court defined “Art” and “process” prior to ’52. The ’52 was not intended to change the law on THIS topic.

                  5. A claim can include both subject matter that is eligible and subject matter that is ineligible. Well-established case law from at least Hotel Security (2nd. Cir. 1908) required that invention be in the statutory subject matter. I assume you have no dispute with this simple proposition.

                  6. The Supreme Court cases are now entirely consistent with Hotel Security.

                5. Ned: Are you saying a claim by Myriad

                  “A process of screening for cancer by isolating a DNA and treating the identified patient with a surgery” is patent in-eligible?

                  ACLU said in oral arguments “enormous recognition” is sufficient. Sorry but driving a bus for minimum wage is not my type of “enormous recognition”. If you guys want I will donate a lab coat and you can go and drive a bus and use Denise’s incentives.

                6. Scientist36a, I have not reviewed any process claims involved with Myriad. I was confining my remarks to issue of “discovery” of a previously unknown, but pre-existing, old, not new, composition.

                  Regarding this hypo, “Treating X for disease Y using Z composition…,” seems entirely eligible regardless that Z is not new. Its use in the application may be new.

                7. Denise: I am not going to dignify MM’s comments and his language by respond. But I request you to take care of the language people use to keep your blog professional

                8. Ned: , “Treating X for disease Y using Z composition…,” seems entirely eligible regardless that Z is not new. Its use in the application may be new.”

                  Commercially this is all it matters. One can isolate a DNA as long as they do not use it to treat patients.

                9. scientist36a:

                  Most patent attorneys agree with you. The SCOTUS acted as they did to curb what they believed factually to be a problem. They did the same thing in Alice. There is little doubt that they were acting outside their authority as judicial activist.

                  I am afraid that is the way the SCOTUS behaves in all areas of law. They make their own factual beliefs up in their chambers and then make law according to what they think. Shameful.



                Ned you need to recognize the difference between holding and your version of the holding.

                The universe is NOT static.

                Think putnisite, or evolution.

                Think “warehouse of man.”

                Think Chakrabarty – “Thus a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter.

                When you realize the actual non-static universe, one can (and should) realize that man may have something – at the time of invention – is new per your view, but if nature changes (i.e. evolution), then EVEN something meeting your version of new misses on eligibility (and NOT on that version of “new” that is properly the domain of 102/103).

                I explained this to you in great and exacting detail in the lead up to the Myriad decision.

                1. This seems reasonable anon.

                  New caterpillar evolves tomorrow. I discover it. Not patent eligible.

                2. The only problem with this rant, anon, is I have quoted the holding to you many times. You seem to ignore the words of the Supreme Court and provide a gloss to them that warps reality.

                3. I explained this to you in great and exacting detail in the lead up to the Myriad decision.

                  The assumption that you have “explained” anything with any clarity *ever* in the history of this blog is a great one indeed.

                  Even here it is pretty much impossible to tell what you’re driving at because your writing is so incredibly awful.

                  Are you trying to say that the recognition of a “product of nature” exception to subject matter eligibility means that, in some instances, a rightfully granted claim may later become ineligible after the discovery/description of a newly discovered “natural” product falling within the scope of that claim?

                  If so, just spit it out then.

                4. You mentioned this in the prior thread too. It is one thing to suggest that a patented man-made composition may be later discovered to have been in nature all along. That’s just part of our ever-increasing knowledge of the universe.

                  But are you aware of a case where a patent covering a man-made product was later invalidated due to it spontaneously appearing in nature (for the first time) during the life of the patent? I don’t mean that the material was ancient but just recently-discovered, like putnisite, which I assume was in the cave for a long time before someone found it. I mean that the material didn’t actually exist anywhere on the planet at the time the patent was filed. 20 years is an awfully short window on an evolutionary or geological scale.

                  For things like GMO crops, I’d be concerned about properly demonstrating natural genesis. If a patented drought-resistant wheat strain planted only in a corner of a Washington state field was later found to be growing in Egypt, I’d think there would be more likely causes than natural genesis. Like some combination of birds, wind, and human global travel.

                  But if you’re aware of an actual case where the courts found this to have occurred, I’d like to read it.

                5. Beware the fallacy of “the short time,” as everything that happens in time does happen at a specific time. This is – and must be – a given as the Universe is not static.

                  Yes for something on the order of crystals and geologic things, where the span if time is not years, the misperception of a static universe can happen easily, and so to for evolutionary things (although some instances of evolution very much happen in our time references, think Superbugs), but the concept is what is important, as the concept separates the 101 from the 102/103 aspects of prior art.

                6. Oops – beware the typos as well

                  “span if time is not years”
                  should read
                  “span of time (that we typically use when discussing) is not years”

                  To wit: the formation of a diamond is often thought of as a long process, but there is but a moment when the actual crystal structure happens.

                7. That’s all true. I think you only need four carbon atoms in a tetrahedral structure to be a diamond, and diamonds were forming in extraterrestrial settings long before any life appeared on our planet.

                  But I’m really wondering whether you know of any situation where, during the lifetime of an issued patent on a substance, that substance spontaneously appeared in nature for the first time. The odds of that seem astronomical (pardon the pun but it’s fitting).

  6. 10

    It no doubt makes a huge difference which population of citiations you look at.

    For example, I’ll bet that for citations by Article III courts, KSR is well down in the pack, and Anderson v Liberty Lobby on summary judgment is in top three.

    If you look at a citation service that includes PTAB decisons, well yeah, you’re gonna get a LOT of citations.

    1. 10.1

      David, regarding the PTAB, they love it. Use it like an incantation, in fact. Magic words that bless their work product.

  7. 9

    Lol I just heard an “anti-patent troll” advertisement on pandora telling me to tell congress to support anti-troll measures!

    Problem has gotten out of hand when I start hearing about this in the main stream.

    1. 9.1

      “Propaganda has gotten out of hand when I start hearing about this in the main stream.


      1. 9.1.1

        The bizarre thing about this is that it is no secret that the anti-patent crowd is pouring money into lobbying efforts and yet many on this blog do not even acknowledge that. See, now, that is one point of intellectually integrity.

        6, if you do not admit that the anti-patent movement is pushing massive money into lobbying efforts that all of your opinions are as worthless.


          This is the kind of thing that should get people banned on this blog. If a blogger consistently just denies reality for their rhetorical purposes, then they should be censured or banned. It is too bad that our society has moved into relativism.


            I would refine your comment just a bit.

            It is not that “this person has a different viewpoint,” as much as it is that “this same person had a viewpoint that continues to ignore the counterpoints presented that in any intellectua11y honest dialogue would be accepted and integrated into the discussion.”

            What happens here is that it is not that just any some one is ‘wrong on the Internet,’ but rather it is that the same ones are wrong – and wrong for reasons provided, and ig nored that strongly indicate that a dialogue is in fact not the aim of these “same” ones, but that indeed a drive-by monologuing propaganda effort is underway.

            The good professor has a bully pulpit here. Alternate views – without guile – should be welcome and explored, but not simply welcomed for “diversity’s sake” and given no critical thinking.

            And certainly, basic matters of fact and law should not be tolerated to be spun and manipulated just so that a certain “ends” view is promoted.

            No need for smarmy spin replies DanH.


              Who, me? I have nothing but admiration for the guileless way you accept and integrate counterpoints into your intellectua11y honest dialogues.


                I know we disagree about various topics, DanH, but I really would like to subscribe to your newsletter.


              “Alternate views – without guile – should be welcome and explored, but not simply welcomed for “diversity’s sake” and given no critical thinking.”

              Said creationists everywhere.


                Actually 6, you again prove my point as creationists ask for the opposite of what I ask for: critical thinking.

                1. To clarify: I ask for views to undergo critical thinking. The creationists on the other hand shun that an want their opinions accepted “on faith.”


            Nice bit of projection there Night Writer. How about denying the reality that thousands of companies have been scammed out of billions of dollars via litigation abuse around horrible patents, and so are angry and politically active about it?

            That seems a little more probable than the idea that all of sudden, after 150 years, those who want to infringe finally got enough political capital to push for it.

            Propaganda only works on fertile ground…I wonder just what it is that is fertilizing it?

            Now which one makes more sense in your constantly invoked “real” world?



                Your question simply reflects the fact that the “culture of propaganda” works.

                The acceptance of propaganda – when a dialogue is attempted to correct that misconception cannot “win out” when those holding the misconceptions refuse to give them up.

                This is what I mean by “drive-by monologue” versus an actual dialogue. In the immediate case, Mr. Snyder is simply too invested into a “software patents are bad” mindset to ever appreciate the realities of law and fact. He spends every possible moment reinforcing his Belieb system instead of critically thinking about the law and the facts put on the table for discussion. And it is exactly these types of no sophisticated people that those who should know better but still advocate by spin and miarepresentations, these types that are led astray an on turn “advocate” that the system “is broken” when in fact it is not and we really do have a level of innovation that we should be proud of – not denigrated constanty as “lowest form” or “grifters” or such.

                “Culture” indeed.

                1. And there I am, 45 minutes before your totally wrong point, posting a software patent that I do believe is eligible.

                  You are impressive anon. Your overactive contrast filter is quite reliable. Ever thought of shorting stocks?

                2. As immediately observable above at 14.1.2, your propensity for error – and my noting such – is de@d on, regardless of whether you think any one particular patent may fit a non-existent MoT “law.”

                  But hey, feel free to throw out a “miss” character @ttack anytime because of “culture” or whatever.

                3. we really do have a level of innovation that we should be proud of

                  Totally different from the 60s and 70s!



              Martin, Google spends more than any other corporation on lobbying the Congress. That is fact that I have provided citations to. One to the Financial Times. That is fact.

              Where are your facts?


                Moreover, Google wants to weaken patents. They have made that clear in the public statements. Moreover, Google has said that their number one fear is a new innovative way to search the Internet (90 percent of their revenue.)

                See for example the Google documentary in 2010.



          “6, if you do not admit that the anti-patent movement is pushing massive money into lobbying efforts that all of your opinions are as worthless.”

          Well brosef I don’t know much about “lobbying” so I don’t know how I can acknowledge it, but I’d say it is probably so. But that’s bound to happen when people are being shaken down for half a billy.

  8. 8

    A little conjecture…

    Given that the citations include “court decisions, PTAB decisions, law reviews, and some treatises” and given that citations:

    – could be for referring to precedent in arriving at a conclusion in the ratio decidendi,
    – could be to refer to a case while distinguishing over or from it,
    – could be mentioned in the course of obiter dicta by way of analogy or contrast,
    – could refer to cases which have been reversed in some respect (by SCOTUS) – – – could be cited by some academics for what it does not mean (hopefully rarely) or out of context,
    – could be referred to by academics for a political purpose
    – could be referred to by academics because its ratio decidendi is “problematic” or arrives at an outcome they do not like
    -could be referred to by academics because it is a case they like but they think it should be applied more broadly or in a different context..

    Given all the possible reasons for citations, what would (statistically) be the order of the following cases (by citation):

    A. Uncontested (on correctness) precedent of low political import (politically uncontroversial or neutral).
    B. Contested (on correctness) precedent of low political import (politically uncontroversial or neutral)
    C. Uncontested (on correctness) precedent of high political import (politically controversial)
    D. Contested (on correctness) precedent of high political import (politically controversial)

    The list is likely topped by cases which are somewhat contested in academic circles as well as somewhat political (of interest to academics) but are nonetheless found “useful” to cite in court cases and PTAB.

    The middle of the list is probably populated by cases which are “good law” (uncontested), followed religiously by courts and PTAB, but no longer of interest to academics (uncontroversial).

    Cases not making the list at all are likely contested (not the best law) but politically neutral (not of interest to academics).

    Just a conjecture.

      1. 8.1.1

        Yes, super deep and compelling stuff.

        Do the work and fnd a place that cares to publish it. You’ll be famous!

        Then you can use your fame to generate even more interest in the relationship between “stuff people disagree about” and “stuff people talk about.” Maybe you can monetize it somehow. Put up a graph each day and shove an ad in a person’s face. Have you filed your patent yet?


          If your comments accurately reflect your “real world” personality, then you may be the most miserable person alive.

      2. 8.1.2

        Thank you anon, but I must disagree:

        1. Subtlety was not intended and in general is not required nor particularly applicable to nor useful for the exercise of reason
        2. Nothing particularly “very good” nor “critical” was required or illustrated above: only the barest minimum of “thinking”.


          1. …for the exercise of reason…

          You are forgetting the level of anti-patent “culture” here.

          2. …only the barest minimum of “thinking”…

          See comment to 1.

    1. 8.2

      As demonstrated in numerous widely varying views in comments on this blog, as well as the recently demonstrated differences even as to “facts” between whole sets of law professors and economists, dividing up judicial decisions by whether or not they are “politically controversial” would be impossible. These are obviously extremely subjective views in the eyes of the particular beholder.
      Nor, as to these Supreme Court patent law decisions, does it make any difference even if they were “politically controversial.” They were unanimous or nearly unanimous decisions and highly unlikely to ever be overruled. [Only hopefully someone better clarified in subsequent Fed. Cir. decisions.]

      1. 8.2.1

        1) Identifying cases as “controversial” versus those “not controversial” is not impossible. If all “academics” agree or do not care, then the case is not “controversial”.

        2) As to whether or it a Supreme Court case being “politically controversial” makes “a difference” … you cannot drop the “to what” such “a difference” would or would not be made…

        Observe here, that “political controversy” makes a difference TO the “number of citations” which is the subject matter of this post.

  9. 7

    Dennis: to combat the age effect, how about a re-ranking of decisions based on (total # of cites)/(# of days since opinion)? That should give a rough estimate of how frequently a case is cited.

    1. 7.1

      That would address frequency per unit time (age effect), but what about the number of decisions and papers issues per any unit time? i.e. the “publication effect”?

      A measure of frequency per “unit published” (papers, decisions, etc.) may need to be used to combat the “publication” effect.

      1. 7.1.1

        Don’t forget to normalize for the number of patents potentially affected by the decisions!

  10. 6

    I was wondering why some Supreme Court patent decisions have higher citation rate than others. I guess it makes sense that their high citation rates are due to the broad application of their principles across many areas of law.

    1. 6.1

      On the list, it appears that 10 and 12 are not confined the patent law issues but are of broader scope involving issues of proper seizure and subject matter jurisdiction respectively.

    2. 6.2

      The higher citation rate sometimes comes from things like Graham on obviousness where almost every patent is challenged in court for being obvious and Graham is almost always cited for that. Sometimes a SCOTUS may be the backdrop for the case law but other cases by the Fed. Cir. are cited that cite to the case.

      Just read a few briefs and decisions and you’ll get the idea.

    1. 5.1

      We can only hope. Think they’ll ever actually bother to train us on Nautilus?

      1. 5.1.2

        Your training will focus on Eidos Display v. AU Optronics (CAFC; March 10, 2015) (reversing district court finding of indefiniteness).


          What is your opinion on that case MM?

          Federal Circuit trying to pretend like Teva didn’t happen or case where claims were clear and district court ignored intrinsic record?

      2. 5.1.3

        Think they’ll ever actually bother to train us on Nautilus?

        Why would Nautilus apply to BRI? In fact, Nautilus is a good reason why BRI can no longer be applied.


            The first or the second?

            It’s hard to apply Nautilus in BRI because you can’t really determine whether something is unreasonably vague when you’re applying the outermost interpretation of it.

            Take the claim language in the case itself – a spaced relationship to perform a function will always meet BRI-standard indefiniteness because a “spaced relationship” is definite and a functional result is definite. I often ask if the office acted correctly in a case and it’s clear in Nautilus it did, nobody in the office would give that an indefiniteness rejection. It’s only when you take the further step of asking “could it be said better?” which inherently moves you out of BRI, that you reach the inquiry Nautilus requires.

  11. 4

    I think Teva will move up to the top ranks over time. Panels will cite Teva nearly every time claim construction is in dispute. Back in January 2013, I counted 753 Federal Circuit citations to Cybor. In a way that’s understating it, since the Court sometimes cited more recent later cases applying Cybor for the same de novo review proposition.

    1. 3.1

      Thanks, anon.

      Today, Cooper’s amicus brief was approved for filing by the Federal Circuit in the MCM case.

      But I must say, going to the 4th circuit is really a godsend here – utterly brilliant. Patlex is not binding authority on that circuit – rather the Supreme Court opinion in McCormick Harvesting is binding authority.

      Moreover, even if the Federal Circuit approves of the constitutionality of IPRs, the 4th Circuit may decide otherwise, setting up a conflict of circuits.

      Now I see the government’s plan when it raised the exhaustion defense. It wanted to funnel the whole issue into the Federal Circuit where Patlex is precedent.

      1. 3.1.1

        Yikes! “Statistics show that, at least at the beginning, 95% of adjudicated patent claims were being invalidated through these proceedings.” That is shocking.


          Patent Bob, I think there has been a vast improvement in that stat– 90% are now invalidated, not 95%.

          There is saying from Hamlet about Denmark. Now, just what did Shakespeare say?


          “Statistics show that, at least at the beginning, 95% of adjudicated patent claims were being invalidated through these proceedings.” That is shocking.

          I guess it’s “shocking” if you drink a lot of patent kool aid and are unable to appreciate how much junk is floating out there.

          I’m still waiting for you or Ned or anyone else to show everyone the tanked claims that shouldn’t have been tanked. Surely it must have occurred to one of you by now that the initial claims that were taken into IPRs by defendants were the ones deemed most easily tankable.

          Or you can just keep pressing the inane “death squad” rhetoric, as coined by the disgraced Judge Rader. Super compelling!


              MM, I agree there is a lot of junk out. But 95% junk?

              But that’s selection bias. It’s not 95% of a random selection of claims. It’s 95% of claims that are likely bad to begin with. Stats without a statistical setup are pointless, 96.1% of the people know that.


                I agree; without an analysis of the IPR claims, arguments, litigants, etc., you really cannot tell what’s happening. It could be that terribly broad, NPE patents are being litigated. But 90-95% seems like a shockingly high rate, even if all the patents are being litigated are poor. You would think there would be more than 5 or 10% of patents that can survive an IPR. There have to be some real companies suing each other over real inventions with real claims. I also realize that a motivated litigant is more likely to find prior art, but if all 90-95% of patents are being found invalid due to new prior art, that doesn’t bode well for the original prosecution.

                1. ” You would think there would be more than 5 or 10% of patents that can survive an IPR.”

                  There probably are, but people don’t bother to file an IPR in those instances.

                  According to Boundy the vast vast majority of patent deals are done behind closed doors from beginning to end.

                2. According to Boundy the vast vast majority of patent deals are done behind closed doors from beginning to end.

                  Compare with assertions we hear all of the time about how nobody can talk about a patent without filing the lawsuit first.


                that’s selection bias.

                Of course it is.

                Reasonable people generally don’t spend a lot of time and money trying to tank or “steal” decent patent claims.

                It’s the dubious junk that gets taken to the woodshed.


                PatentBob: But 90-95% seems like a shockingly high rate, even if all the patents are being litigated are poor. You would think there would be more than 5 or 10% of patents that can survive an IPR.

                Again: there’s nothing shocking about it. Your second sentence has no basis.

                if all 90-95% of patents are being found invalid due to new prior art, that doesn’t bode well for the original prosecution.,

                How much “original prosecution” are you familiar with? Are you even aware of the amazingly poor arguments that applicants make when presented with good art? Now consider the the cases where the PTO doesn’t find that art, either because it was hard to find (for whatever reason) or because the PTO goofed up. There are thousands and thousands and thousands of junky patent claims out there. More of those junky patents are being asserted now than ever before because a certain class of attorneys will try to “monetize” anything — after all, what’s to lose?

                1. “more than ever before” without proper norming is as meaningless as any of the other loose stats being thrown about.

                2. proper norming

                  Right. We need to also take into account that the number of bottom feeding patent attorneys has also risen enormously. Grifters gotta grift, you know.

                3. Modified for this ecosystem:

                  I agree with you that at the commentator level any genuine changes would not be accomplished simply by shifting rules but instead would require an effort to make a change in the culture.



                IPRs are further “highly selected” by being claims viewed as broad enough that 80% of such claims have already been sued on for patent infringement, and for that same reason are also subject to a vastly more thorough prior art search than is available to any PTO application examiner.

                Also, is not the 90% rejection of IPR challenged claims[assuming that is correct] excluding all requested but denied IPRs and all IPRs settled before any decision, and all future Fed. Cir. reversals of appealed IPR decisions?

      2. 3.1.2

        Ned, could you provide a bit more information on what you are referring to above? Like what 4th Cir. case?


          Paul, click on the link anon provided.

          The Cooper appeal of the constitutionality of IPRs is going to the 4th Circuit where Patlex is NOT controlling, but where McCormick Harvesting IS controlling.

          All I can say is this: IPRs are in a world of hurt.


              Anon, I can see a half a million amicus briefs from the likes of the IPO and the AIPLA piling on in the Fourth Circuit arguing, desperately arguing, that the Fourth Circuit should transfer the case to the Federal Circuit, where the patent bar seems confident, nay exhibits a certain swagger, that the Federal Circuit will not overturn Patlex.

              But, given the Supreme Court decision in Gunn, that appears to be highly unlikely because the issue of whether an IPR is constitutional or not does not depend upon a substantial patent law issue.


                You are doing that odd projecting thing again Ned – has the patent bar come out with a position on Patlex that you can share?

                And I am still having difficulty with your bare assertion that a patent law does not invoke patent law…

      3. 3.1.3


        Apologies if this is addressed in the briefing (I admittedly didn’t read it), but I had a question. How does the authority to time-limit patents under the progress clause play into this?

        For example, as a hypothetical, could Congress pass a law that says, “You get a patent for 20 years or until when the PTO finds it invalid in an IPR, whichever comes first”? What’s the interplay with Congress’s ability to set time limits (broadly, as held in Eldred) and the 5th/7th Amendments?

    2. 3.2

      No doubt that the Cooper appeal to the Fourth Circuit is also going to raise a significant brouhaha regarding which circuit court is the proper court to decide constitutional questions of an act of Congress that does not involve a significant issue of patent law even though the act in question is a patent act.

      As the Federal Circuit noted in the Madstad case, link to,
      the Supreme Court has not decided this issue. The Federal Circuit believed that the Madstad case was properly in the Federal Circuit because the resolution of the constitutional issue involved a significant issue of patent law – specifically, the meaning of “inventor.”

      In contrast, the constitutionality of IPRs has little or nothing to do with a significant issue of patent law. I think the government is going to be hard-pressed to have the Fourth Circuit transfer the case to the Federal Circuit – and, if that order is made, I think the Supreme Court will take that issue on certiorari.

      1. 3.2.1

        Not sure how a pinnacle feature of the patent act does not raise an issue of patent law… (I will note that I have note yet read the Cooper appeal, so I cannot comment directly on their arguments)


          Anon, you might want to read the linked Madstad case, and the companion Gunn case in the Supreme Court. There has to be a substantial issue of substantive patent law involved, such as what an inventor is, in order that the issue be within the exclusive jurisdiction of the Federal Circuit.

          Regardless, as I said, I expect both the government and the major IP organizations will go all out to have the case transferred to the Federal Circuit because they know they are in a world of hurt otherwise.


            I’ve read the Madstad case – and have comments in the archives explaining why he was certain to lose.

            That still does not explain how you want to treat a patent law as somehow not invoking patent law.

            As to the world of hurt – hey, I’m on your side on that issue (I am just not projecting that any particular organization is out to stifle that issue).


                Not seeing it Ned – not saying you are wrong, but I’m just not seeing it. Can you step me through your thinking?

                1. I will add that the denial to Madstad on standing should be contrasted with the ability (improvidently taken) of the Supreme Court to insert itself on some future projected possible harm on its implicit 101 writings.

                  Something to think about: the court says “too speculative in the one case, and yet glosses over its own speculation to reach out and violate separation of powers in the other.

  12. 2

    Where are the actual number of cites? We don’t know if there’s a 10:1 spread between first and last place or 1000:1.

    Have you thought about normalizing for cites per year since decision was issued? That would be an interesting comparison.

  13. 1

    “Cited” in and for what and by whom?

    Reminds me of a “popularity contest” in the social networks… but does a citation mean “like” or “dislike” or “we gotta address this $#$@% case somehow”

      1. 1.1.1

        Is there a way to exclude PTAB decisions from this, for the “most cited Supreme Court opinions” stat? Most SCOTUS opinions don’t have the benefit of being relevant case law in thousands of PTAB decisions per year.

      2. 1.1.2

        Reminds me Dennis that you somewhat criticized me when I pointed out that Hotel Security had 462 cites reported by Google Scholar, which I did not break down in any manner as to who was citing the case.


          I’m pretty sure he did more than that.

          But then again, your citation habits are, shall we politely say, creative…


          More than that?

          I am not sure what you are talking about, anon.

          I don’t recall exactly what I said to cause Dennis to complain. Do you?


              Authority? Anon, you surprise me at times. Everyone knows that the Federal Circuit is not the Second Circuit and that the decision of the Second Circuit is not binding on the Federal Circuit. But that is quite beside issue, is it not, because the C.C.P.A. followed Hotel Security and its progeny in creating the business method exception in the C.C.P.A. as well. Ditto, the printed matter exception which is directly attributable to Hotel Security.


                It’s clearly not besides the issue, as you continue to ig nore everyone who attempts to tell you that your position is flawed.

                As to the exceptions to the judicial doctrine of printed matter, shall we visit my simple Set Theory explanation again – or will you just feign ig norance once more?


                …and you do know that there is – in fact – no business method exception, right?

                From Congress, to the Court (3, the new 4, is still not 5), you have NO authority for the “careful wording” that is simply not that careful and certainly, not correct – no matter how many times you want to say it.

Comments are closed.