Supreme Court Slows its Patent Law Jurisprudence?

The Supreme Court had denied petitions for certiorari in three IP cases out of the Federal Circuit:

  • Google v. Oracle (Federal Circuit held that the Java API naming scheme was copyrightable and not an ineligible “system or method of operation”).
  • Google v. Vederi (Federal Circuit held that an amendment during prosecution to overcome a rejection need not be “strictly construed against the applicant”).
  • Ultramercial v. WildTangent (Federal Circuit held the patented method of distributing media content with advertising to be a patent ineligible abstract idea).

Apart from leaving-stand the particular holdings, these outcomes may collectively signal a time of out-breath for Supreme Court patent law jurisprudence.  By my count, there are no patent decisions pending before the Court (with certiorari granted) and none of the petitions on file carry a substantial chance of being granted.

128 thoughts on “Supreme Court Slows its Patent Law Jurisprudence?

  1. 15

    link to

    The Federal Circuit provided a long and exhaustive explanation of the Kessler doctrine in affirming the judgment of the Northern District of California, Phyllis J Hamilton, that the Kessler doctrine barred claims for infringement under the doctrine of equivalents for use of certain software by a customer, where the software was supplied from a manufacturer who had intervened in a prior case and had there received a judgment of no direct infringement. The issue of equivalents infringement was not litigated and decided in the prior case even though the patent owner had tried to raise that issue.

    Among the holdings in this case are the following:

    A customer may raise the Kessler defense because the doctrine is not personal to the party to the prior case (or their privies), but attaches to the products themselves – in rem.

    Because the infringement theory depended upon the use of the software that was essentially unchanged from the software at issue in the prior case, the addition of other things such as web browsers etc., did not take the software out from the Kessler doctrine.

    At one point the court did observe that collateral estoppel did not apply here because the issue of equivalents infringement was not actually litigated and decided in the prior case.

    1. 15.1

      Ned, re your note that “The issue of equivalents infringement was not litigated and decided in the prior case even though the patent owner had tried to raise that issue.”
      This decision says that they did not even try to raise that issue [different claim scope and different infringement argument by alleged DOE] in the prior suit until too late -long after they should have known they needed to. [Not a sympathetic fact situation for an attack on the Kessler defense. ]

    2. 15.2


      What do you think of the reply brief filed by USPTO at the 4th circuit for the Cooper case : regarding “constitutionality of its inter partes review”

      Also to other folks , what are your thoughts on the USPTO reply.



          Yes, I have copy of the brief I downloaded from Pacer. I dont think there is a way to upload a pdf on this forum.

      1. 15.2.2

        Academically / intellectually, it’s starting to look like checkmate IMHO. The USPTO cannot explain how this arrangement is constitutional per the public rights rule of law.

        Interestingly, the DOJ also admitted in briefing (for the first time) that because the claim of patent validity has been classified as a public right, Congress may assign its complete resolution to an Article I tribunal. In other words, because patent validity is an administrative claim (per the CAFC’s classification), Article III participation is optional. The Article III courts might become infringement-only venues.


            I believe that the DOJ merely acknowledged the “consequence” of a particular claim existing as a public right. That is, where a claim exists per Congressional authority as a public right, then it may be resolved conclusively by an Article I tribunal. Congress retains discretion as to whether the Article III judiciary may or may not participate.

            (this is separate from the discussion of whether the claim of patent validity was appropriately designated as a public right by J. Newman in Patlex – as you identified, Lockwood [and others] reveals the flaw)


          No, Patlex held that a patent was a public right because validity was a public concern.

          Even infringement litigation might be withrawn if a patent is a public right.

          But, since that is not possible because actions for infringement were known at common law, a patent cannot be a public right.

          Moreover, since infringement litigation cannot be withdraw the courts, validity defenses and counterclaims for invalidity similarly cannot be withdraw from the courts.

          Also, the argument that a patent is a public right because Congress created patents is equally flawed because the argument applies equally as well to both validity and to infringement.

          The government position is not defensible from any legally consistent point of view.


            Ned, understood. The Government also declined to state the complete rule of law governing the public rights exception. The commentariat has to do no more than review, e.g., Granfinanciera v. Nordberg to see that. It appears that the DOJ deferred to the patent schmucks and that rebuttal brief was the end result. The DOJ constitutional lawyers should be ashamed of that work product; perhaps there is some CYA going on.

            Nonetheless, my initial point was different: you now have a formal statement from both the DOJ and the USPTO before the 4th Circuit Court of Appeals that, given the classification of patent validity as a public right, it may be resolved conclusively and with finality by an Article I agency – Article III participation is not required. This is a significant development, and I promise you, Congress has noticed.

      2. 15.2.3

        Cooper did not raise the common law action to revoke patents. Such actions must be tried in Article iii courts.

        Moreover, the Supreme Court has already ruled these revocation actions have a right to a trial by jury.


            Dennis did a post on it awhile back.

            But you are right that this issue is perhaps the most important issue regarding the AIA before the courts today. Everyone wants to know what both sides are saying.


              There is an interesting district court case disabusing Ned’s favorite PON canard over at PatentDocs… (if you to be selective on your reading catch back plan)


                anon, Internet Patents v. Active Networks.

                I find it hard to believe, truly hard to believe, that the fetishists at Patent Docs cannot accept Wu’s analysis, thinking the Federal Circuit is going to reverse. How can they after Internet Patents?

                Moreover, what was Rubber-Tip Pencil all about? That case was decided under 101 and continues to be cited again and again by the Supreme Court.

                I’ll tell you, anon, what that case is about. It was about a truly abstract idea. The abstract idea was the idea of combining a piece of rubber to the tip of a pencil without claiming any means or method or structure in the rubber or the tip to do so.

                1. Ned – the district court case mentioned about 4/5 of the way down, the one that took Wu to the woodshed (and not the PatentDoc folks)

                2. I KNOW sir Anon the Dark. Wu.

                  But they ignore the holding of the Federal Circuit in Internet Patents that is directly on point.

                  Their fantasizing about Wu being wrong and that he is going to be reversed is interesting, but in the face of Internet Patents, what the Federal Circuit is going to do is no longer in doubt.

                  I presume the folks at Patent Docs know about “binding authority” and how that works?

                3. No Ned – not Wu.

                  Judge Pfaelzer in California Institute of Technology v. Hughes Communications.

                4. I see — Diehr is controlling law such that we cannot focus on the novel subject matter.

                  What a fricken joke….

                  THAT idea was placed firmly into the ashcan of history by Mayo.

                  Alice also relied novel subject matter test because computers were old and conventional.

                  And, virtually every case, from Benson to Alice cited and relied on Rubber-Tip Pencil, a case where the claim recited a pencil, a piece of rubber and where the point of novelty was the idea of attaching the piece of rubber to the tip of the pencil.

                  Even Benson focused on the math, deeming the computer old and conventional.

                  Judge Pfaelzer has his head up his … His thinking is clouded for that reason.

                  Diehr and Bilski represent aberations in the Supreme Court jurisprudence because they cited with approval Rich’s ideas in Bergey and Rader’s ideas in dissent in Bilski.

                  While Rader’s “abstract” still sees traction, Rich’s ideas on virtually any and every topic regarding 101 save for liveness have been rejected by the Supreme Court.

                5. ce also relied novel subject matter test because computers were old and conventional.

                  That’s not what Alice did, Ned.

                  And Prometheus cannot square with the very case it said was on point and that it was not changing.

                  Face it Ned – the Supremes have made a Royal Cluster out of the law as written by Congress.

      3. 15.2.4

        Brian, the PTO Solicitors reply to this 4th Cir. Cooper constitutional challenge to IPRs [and reexaminations] reads as thorough and convincing to me. It looks like they took this seriously enough to do a decent brief. [Rebuttals will also be of interest.]
        [Ned’s argument based on elimination of the de novo district court civil action appeal alternative is apparently not present in this case, but this brief appears to thoroughly distinguish the cited ancient Sup. Ct. cases.]
        Here is the PDF document again, thanks – link to


          Paul, I have a post waiting moderation where I linked all the relevant public right Supreme Court cases for your own, and everyone else’s mandatory reading.


            Dennis, I would really appreciate it if you could allow the post at 2:22 pm, July 1, 2015. It is currently blocked.


          Paul, a lot of patent owners may be sitting idly by waiting for the Federal Circuit to rule in MCM’s favor thinking that they can then somehow recover from losing a reexamination or an IPR, or the like. Well the Supreme Court recently ruled that one can waive their Article III rights, just as they can waive their 7th Amendment rights. Wellness v. Sharif; link to

          If you recall, I thought this was the case some months ago. My prediction turned out to be right.

          Patent owners need to assert their rights under Article III and the 7th Amendment in IPRs or they will not be able to obtain the benefit of any ruling in MCM’s favor down the line.


            Can you see the malpractice claims if MCM wins and one’s attorneys did not assert their constitutional rights?


              I can see the malpractice claim rejections – given that being absolutely correct is not the standard, but rather, what the “reasonable man” in that position being the standard.

              While for perhaps obvious reasons I am rooting for you Ned in the MCM case, I think that your position there is far weaker than you will publicly admit (or even discuss – and in this instance, I will respect the “non-discuss” tactics).


                Anon – what weaknesses have you identified in Ned’s position (other than Ned, of course)?

                1. See the archives for past discussions.

                  In a nutshell, Ned has not addressed one of the government planks in that the public/private division is not mandatory if “enough” of the public concern is implicated.

                2. (the DOJ is already aware of this – it is in their arguments; and the discussion on these boards was around my attempting to get Ned to see the deficiency in his position)

                3. I think that perhaps Schor is the only case that may have said this; however, Schor’s mode of reasoning did not survive later rounds of public rights SCOTUS decisional law. For example, Granfinanciera, the first public rights case to follow Schor, adopted a far more restrictive approach. J. O’Connor, who authored the Schor majority opinion, led the dissent in Granfinanciera.

                  Nonetheless, Schor was discussed somewhat favorably by the majority in Wellness. If this issue does go before the SCOTUS, I’d expect a contentious 5-4 vote in either direction.

                4. No, I do not believe the court is going to overturn Murray Lessee — which held that actions litigated in the courts in England at common law are not and cannot be public rights.

                  They would have to totally ignore that patent infringement actions were tried in the courts of England.

                  They would have to ignore that actions to revoke patents for invalidity were tried in the courts of England at common law.

                  The government’s discussion about a public interest in the validity of patents is irrelevant. The argument somehow assumes that courts cannot deal with invalid patents. That not only makes no sense, it is insulting to the courts.

                  The government has no power to revoke issued patents. Article I, Sec. 8 grants congress the power to protect inventions with exclusive rights. This article does not grant any right to revoke an issued patent – that has become the constitutionally protected property of its owner.

                  The only power in the constitution to judge validity of patents, and to revoke them if invalid, is in the courts. See, Mabury v. Madison -> McCormick Harvesting.

                  Regulatory program? This harkens to the very heart to the matter. Where does Congress have the power, the regulatory power to revoke an issued patent? The ITC deals in patent validity, but the ITC is there because Congress may “regulate” interstate and foreign commerce. But the ITC does not even pretend to have the power to revoke a patent.

                  Public rights are between the government and those subject to its jurisdiction. This includes the subjects of legitimate regulatory programs like the ITC.

                  There is nothing in the public rights doctrine that extends to issued patents because congress has no power to “regulate” issued patents.

                  The government is using a lot of red herring and strawmen arguments that are totally irrelevant. They refuse to and do not address the fundamental issues, and this includes that a patent enjoys a right to a trial in court for infringement, validity and for revocation because all three actions were known at common law and all three had a right to trial by jury.

                5. Ned – this is an excellent post, and I agree that the USPTO declined to articulate the relevant standard governing the public rights rule law. Where a litigant (particularly at this level) either short cites the relevant standard or misrepresent the standard’s application, the situation beings to look (as indicated previously) like checkmate.

                  Regarding Anon’s point: I believe that Anon is referring to is the subjective factors introduced into the public rights analysis by J. O’Connor in the Schor decision. You may have noticed in the briefing, however, that the USPTO generally does not rely on Schor. I explained why in my previous post — in terms of the public rights cases, J. O’Connor’s view did not survive later rounds of public rights decisional law.

                  The USPTO may attempt to argue that Wellness revitalized Schor. However, I did not see this argument in the USPTO’s 4th Circuit brief (nor did I see a cite to Schor, for that matter). I believe that the explanation is clear: the USPTO recognizes the limitations of the majority’s treatment of Schor in Wellness. In other words, Schor was discussed favorably inasmuch as it included a discussion of non-dispositive waiver. The Wellness decision, however, did not touch upon (or approve of) J. O’Connor’s view of the public rights exception.

                6. Thanks No – I appreciate the additional views.

                  What struck me though was that Ned did not address what the government did say.

                  He ignored it and simply reiterated already made arguments, letting the government have the last word on that particular thrust.

                  Do you really want the court (or Court, perhaps eventually) to have to make that last jump itself? Maybe Ned will pick up on the fact that he has left a loose end and maybe he will not. As I have said, I am rooting for him to win his case. But he does have the hiding-in-plain-sight- cheobal effect that one hole below the waterline in the good ship AIA sinks the whole kit-n-kaboodle. I doubt that the “what Congress intended” implicit-or-explicit judicial scrivining can overcome the plain fact that Congress had the separability option in front of it and knowingly passed on it.

                  It would be charley foxtrot all the way down.

  2. 14

    You know, for years I have predicted almost exactly what has happened with patents.

    Another area of my predictions is what is going to happen to corporations without patents. I think we are already seeing the big corporations gearing up for a world without patents. What will that world be like? Well, I think it means vertical monopolies. The corporations will no longer have an incentive to disclose what they are doing and will keep everything possible a secret. They will also try to vertical integrate to lock up their markets and hide more of what they are doing.

    Expect: software and hardware architecture to become a complete secret. Employees to be locked into draconian employment agreements that basically mean you get hired by Google then that is your life (or you take 3 years off and go do something completely different).

    My guess is that companies will have their own private programming languages, etc. It will be almost impossible to pierce the veil of what they have done. They will take anything they want to copy from small companies (who will cease to exist at the levels they are at now).

    As proof just look at what the corporations are doing. Vertically integrating and becoming more secret. (Lemley: please do tell us how you protect the IP in your company.)

    I am afraid the dystopia is coming.

    1. 14.1

      Expect: software and hardware architecture to become a complete secret.

      Right. Like the formula for Coke.


  3. 13

    Thank you to the poster below!

    Cert petition in Life Tech v. Promega was filed on June 26.

    The petition is at 2015 WL 3941490

    Yay! This one has a pretty good chance of being taken, I think. If I find a public link I’ll share it unless some kind soul makes one in the meantime …

      1. 13.1.2

        Great work by the petitioners. The second question presented

        Whether the Federal Circuit erred in holdingthat supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 U.S.C. § 271(f)(1), exposing the manufacturer to liability for all worldwide sales.

        is such a slam dunk and would resolve this case with such minimum energy expenditure that the Supremes might leave the “induce oneself” question for another day (e.g., a situation where a “substantial portion” of uncombined components of a patented invention were exported from an actor’s US plant to its foreign plant for completed manufacture and foreign sale).

        We’ll find out soon enough I suppose. I’m just glad the defendants here had the resouces and inclination to at least attempt to fix the CAFC’s screw-up.


          MM, again, there is little to no chance that the Feds will be overturned here. Roberts decision in King v. Burwell is the reason why. The literal words of a statute are no longer of paramount importance, but must conform to the intent of congress in passing the statute.

          Here, the intent was to overrule DeepSouth Packing where selling the components for offshore assembly was held not to be an infringement. That case did not depend on who did the offshore assembly, or that every single component be included in a kit.

          The infringer here is making a lot to do about the words in the statute when the words in the statute are no longer all that important.


            With all due respect, Ned, are you aware of the facts in the case or the statute we’re talking about?

            The statute in question talks about “components” (plural). The statute that’s *not* in question talks about single component exports.

            Deep South was about doing an end-around the patent statute by exporting uncombined components (plural) that had no other use except to be combined offshore into a device that would otherwise infringe the patent.

            The accused infringer here is exporting a *single staple item of commerce* from its US plant to its foreign plant where it uses that staple item to manufacture kits that are never imported back into the US. Congress never came close to suggesting that would or should qualify as infringement. Everything they did suggests the exact opposite and the Supreme Court has already indicated their understanding of that fact, and the policy reasons supporting that interpretation.

            Anyway, the bet’s on. 😉 Care to double down?


              You are aware (as I have informe you) of the statutory construction rule regarding items of singular/plural nature, right?

              Maybe Malcolm (and Ned) can seek out a statutory law CLE….


                You are aware (as I have informe you) of the statutory construction rule regarding items of singular/plural nature, right?

                Tell everyone exactly what this “rule” is, “anon”, and explain to everyone why any court — much less the Supreme Court should be bound by that rule in this case.

                Should be easy for you, right? After all, you’re an “expert” on patent law in your own mind.

                Good luck.

                1. Asked and answered.

                  For some reason, pointing this out is deemed “offensive,” as this is the second time that a correct view of law (and statutory construction) somehow “impugns” Malcolm, while his own drivel his welcome with open arms.

                  That other by-line looks more accurate all the time.

                2. Asked and answered.

                  Oh, I see how your game works. In that case, suffice it to say that your answer was a complete failure for all the reasons I provided to you. Surely you remember those reasons and your mewling, woefully insufficient response.

                  Golly, this is fun! What happens next?

                3. Obviously, your dissembling, as you provided no reasons at all to the statutory construction rule that I provided.

                  (It’s in the archives, you know)

  4. 12

    Since some of the arguments in comments below are analogizing the subject Oracle command codes to a dictionary, this is not to take any position on whether that is a valid analogy or not, but it should be noted that in Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340 (1991) the Supreme Court decided that the listings in a telephone book could not be protected by copyright. Feist had copied information from Rural’s telephone listings to include in its own, after Rural had refused to license the information. Rural sued for copyright infringement. The Court ruled that the large amount of copied information contained in Rural’s phone directory was not copyrightable and that therefore no infringement existed.
    This is another example of a Sup. Ct. limitation on copyright protection in addition to the more subject-analogous decision I had noted below, Lotus Development Corporation v. Borland International, Inc., 516 U.S. 233 (1996).

    1. 12.1

      That is a good case to keep in mind, of course, but here I think the comments are directed toward the actual definition of the word.

    1. 11.1

      This case illustrates where we are going with all patents. The accused infringer will fight to the last drop and it will be years and years before their product changes or a penny of licensing fees are paid.

      Advantage: large corp.

    2. 11.2

      “why the SCOTUS continues to believe that they are in charge of patents.”

      I’ll have a look, thanks. Maybe it will also ‘splain why USSCt believes they are in charge of every aspect of human behavior w/in the US.

      Is the common law getting out of hand? Related question: Is the federal judiciary descending into a gaggle of bickering banana-brains?

      Richard Posner, chief judge of 7CA, has just bithc-slapped Roberts in an op-ed attack in Slate regarding Roberts’ dissent in Obergefell.

      link to

      To which waaacko USDC judge Richard Kopf has responded by bithc-slapping Posner by calling him a l1ar. The Kardashians will be in the fray before you know it.

      link to

      Recall Kopf’s diarrheal attack on the USSCt in Jun.2014 in which he said they should STFU. To which one commentator responded:

      But worse, you are not just abasing the USSCt, you are abasing the federal judiciary as a whole. Retire, and then come back and tell us what you think. I’ll buy 5 copies of your first book, I promise.

      ITMT STFU.

      I’ll ditto that. If respect for common law can’t even be sustained within the judiciary, how is it supposed to contribute to a “peaceful realm” (I think that was Kennedy’s term in Obergefell. Obviously too many video games for that guy.) I am beginning to wonder whether the 3+3=4 caucus* isn’t more counterproductive of a peaceful realm than the waay right caucus.

      * 3+3=4: the three women justices + the three Jewish justices provide 4 votes.

      1. 11.2.1

        USSCt believes they are in charge of every aspect of human behavior w/in the US.

        Because they held that the Constitution doesn’t allow the government to discriminate against gay people?

        When the government tries to regulate or even monitor every aspect of human behavior, it seems to me the Supreme Court’s job is to make sure that regulation is Constitutional.

        I’m looking forward to the religious exception to patent infringement. After all, my client has a deep and sincere belief that the patent system is against God’s plan and those deep and sincere beliefs are super dooper sensitive to any challenge. Therefore, those beliefs can never be questioned and my client should never be forced to even confront how those beliefs might relate to living in a secular society. It’s a great argument, isn’t it? Freedom to be free from living in reality. Thats what America is all about!!

        LOL. Just imagine: less than a decade ago when I first started commenting here there were quite a few commenters who posted blatantly anti-gay comments here without batting an eye. Nobody could have predicted that the earth was shifting under their lizard feet. Fun times.


          >>>LOL. Just imagine: less than a decade ago when I first started commenting here there were quite a few commenters who posted blatantly anti-gay comments here without batting an eye. Nobody could have predicted that the earth was shifting under their lizard feet. Fun times.

          It was over a decade ago that you starting commenting on this blog. You, MM, are the only regular commentator (other than your numerically named friend) that makes racist and/or anti-gay comments.

          But, it is good that you are reformed. Congratulations. Welcome.

      2. 11.2.2

        I understand the decision of the Supreme Court as a valid exercise of equal protection against discrimination. I don’t understand the Supreme Court’s use of liberty and due process as a justification for its holding.

        I don’t think there is a right to marry as recognized by the Supreme Court. I think marriage has always been about institutionalizing a relationship between a man and a women for having and raising children. This is not so much about rights as about obligations – and society needs to provide incentives and penalties to maintain the institution of marriage because men tend not to want to get married in the first place; nor do they want to stay in a marriage. They wander.

        But on the other hand, there is the issue of discrimination against homosexual couples who want to recognize the bond between each other in a manner similar to married couples.

        Thus the bottom line here, for me at least, is that this is the case about discrimination and about equal protection.

        Still I worry that recognizing gay marriage may have collateral consequences undermining traditional marriage so important for our civilization. That would be unfortunate.


          Ned: society needs to provide incentives and penalties to maintain the institution of marriage because men tend not to want to get married in the first place;

          What the ?


          traditional marriage so important for our civilization.

          I think you meant to say “traditional divorce” here.


          Well, I think the result is right. But, I think the way they got their is very sketchy. It is similar to what is happening in all SCOUTS cases. They are making law by themselves which creates a lot of instability. It means the way to get what you want is to get the justices you want on the SCOUTS. That is not good. That means, for example, that the Koch brothers are now going to be far more motivated to get their president so they can have their justices so they can have their law of the land–which with our current royal 9 includes Congress and the judiciary.

          So—-just like with patents–judicial activism is the wrong way to go. Pass laws and amend the Constitution. We have seen this with abortion with this never ending battle. We should have a Constitutional Amendment to settle the issue. Then all the nut cases can fight over getting the Constitution amended rather than getting their justice appointed.

          I think too under this reasoning that polygamy should now be legal.

  5. 10

    Maybe Google should have known better, if they weren’t by overreaching, doing evil.

  6. 9

    I would like to see the Ariosa v Sequenom decision appealed. The Fed Circuit panel decision was appalling.

    Then again, that Fed Cir panel was likely channelling the clueless Supremes.

    Section 101 is in English and appears clear to me. Maybe black robes emit bad fumes.

  7. 8

    I sense a willingness of late of the Federal Circuit to follow the Supreme Court not only in the letter, but in the spirit. Perhaps this has something to do with the departure of you know who last year about this time. Thus, unless the Federal Circuit en banc has a major split where the majority is clearly wrong, I think the Supreme Court is going to let the Federal Circuit be for a time.

    I think the Supreme Court might be interested in Federal Circuit’s continued insistence on lack of liability if method steps are performed by independent parties such that if an inducer performs even one step, he or she avoid liability altogether.

    They will also be interested in constitutionality of IPRs however the Federal Circuit rules in MCM v. HP — and the PTO position, same case, that their assertions of jurisdiction in IPRs and the like are beyond the review of the courts. (Can you imagine that? Subject matter jurisdiction is always reviewable except when it is the PTO making the call.)

    1. 8.1

      I believe that many of us would like to see the SCOTUS address the patents & public rights issue.

    2. 8.2

      What you sense is a (more than a) little different.

      The situation is much more akin to the psychological conditioning experiment with caged primates, hanging bananas and a fire hose.

      1. 7.1.1

        I assumed that the fair use defense was not very persuasive, and so it will most likely fail. Even if the fair use defense succeeds, that’s great news for Google, but still very bad news for software developers because of the uncertainty in winning a fair use argument.


          Let’s be realistic here — Google is just going to pay them a lot of money, get a license, and there should be zero impact on software developers.


            Yes, most likely zero impact on Andriod developers. But, that’s not what I meant though. I meant other software developers who are thinking of using a known API. Now they probably won’t.


          Oracle’s position with respect to the NPAPI was not unreasonable. Google was arguing fair use of function declarations (whatever that means), but Java is not like C or C++. Everything but elementary data types like int or boolean are programming Objects including Class and Interface. Thus a Java API (i.e. a Java Interface) represents a good deal of software code, which is certainly copyrightable.


            This shows a shocking lack of understanding of exactly what Oracle is arguing.

            There is *NO* code involved here. It’s *NAMES*, and only names. For example :


            JAVA – Name of the language.

            Math – Name of the package that is descriptive of it’s contents.

            ADD – Name of a process that adds two numbers.

            DIVIDE – Name of a process that divides two numbers.

            All the APIs are is names and definitions. For all intents and purposes, if JAVA is a language, then the APIs are a Dictionary. Oracle has claimed (and the CAFC said ‘Sure that sounds intelligent’) that a dictionary is copyrightable. Not the layout of the dictionary, the entries in the dictionary.

            The API structure is how you ‘speak’ JAVA, it’s not code. It’s language structure. You might just as well say you’re going to copyright Esperanto (Also a man made artificial language) and that nobody can create a dictionary of Esperanto without paying you a license.

            As a developer, I find this insane.


              One way to think about this (assuming software is copyrightable), is at what level can someone copy? If they copied the entire code you would agree it is a violation. Now image them slowly replacing some code at the lowest level functions and working their way up to the API. At what level does it no longer constitute a violation?


                One way to think about this (assuming software is copyrightable), is at what level can someone copy? If they copied the entire code you would agree it is a violation. Now image them slowly replacing some code at the lowest level functions and working their way up to the API. At what level does it no longer constitute a violation?

                Try to answer your own question.


              “As a developer, I find this insane.”

              As someone who rights new computer languages, you would probably find it perfectly reasonable. Why should anyone else be able to piggy back on your hard work without remuneration, or at least your permission.

              By the way, check out Webster’s web page. Look up a word. See if they claim a copyright or not…


                > By the way, check out Webster’s web page. Look up a word. See if they claim a copyright or not

                Of course, they don’t claim the word itself or its placement in the dictionary or even the antonyms or synonyms. To the extent that Webster has a copyright at all, it’s in the expression of the definition of the word and/or the non-exhaustive compilation of English words.

                By that analogy, Google copied the words and made their own definitions. That was the whole point.

                I think the SCOTUS denied cert to wait for the more interesting question that the SG noted wasn’t even resolved yet: could the copying of the “words” but not the “definition” be protected fair use.

                1. Yes, well, you are viewing it a bit sideways from Java’s point of view. They would say that in the Webster’s dictionary analogy the word is something like: “primitive for calling add function” and the definition, which they created, is: JAVA.MATH.ADD(X,Y).

                2. This link explains why Oracle is full of carp.

                  The function prototypes (“declarations” in the link above) that Google used are analogous to the words in a dictionary, and the implementations (“definitions”) are analogous to the definitions of those words. If Webster has any copyright in anything, it’s to the creative process involved in drafting those definitions. Similarly, the creative process in creating Java is fundamentally to the implementations of the various functions, rather than to the function declarations which are required to be in precisely that form for interoperability with pre-existing Java code.

                3. What bothers me is that by protecting the API, one is protecting not expression, but functionality. This should be self-evident to anybody and everybody. Programmers certainly recognize that an API is like an alphabet. If one wants to write in a particular language one has to use that alphabet.

                  Control of the alphabet controls the language.

                  Perhaps the District Court will figure out that the fair use doctrine allows one to use the alphabet, the API, in order to compete in otherwise noninfringing products. But if the fair use allows the use of the whole alphabet, the whole API, to compete then it makes no sense to say that the API is copyrightable the first place. The whole point of the copyright in the API is to prevent people from copying it for competitive use.

                  I think this case will eventually be accepted by the Supreme Court after the fair use aspect of the case is worked out.

                4. Java is a very different language from C/C++. Java does not have the equivalent of declarations.

                  Java has Classes, Interfaces, Abstract Classes, and Abstract Interfaces — all of which are Objects that can be manipulated like other Objects.

                  Creating a Java interface involves a good deal of coding and is not equivalent to writing a header file of function declarations as one might do in C/C++.

                5. Here is the Java book we used in 6001 at MIT about 15 years ago. It is a little dated but compared with the current C++ manual is a fairly easy to read in about 2 hours. It should explain how different Java is from C/C++ in many areas and especially with respect to function declarations.

                  link to

                6. A plurality of thresholding units

                  This link explains why Oracle is full of [crap].

                  It was good that SCOTUS rejected certiorari because the complaint was so Java specific.

                  If SCOTUS granted certiorari, the decision might have wrongly be treated as precedential.

                7. Joachim Martillo:

                  Too bad the SCOTUS and Fed. Cir. can’t read. They should have read page 7 of your book and they could have had both module and abstraction explained to their ignorant tainted arrogant selves.

                8. Unfortunately, epistemology, computer science, and SCOTUS all use abstract in different ways.

                  I think SCOTUS usually means analytic or prior knowledge with the phrase “abstract idea”.

                  I recently had to explain the difference between “abstract” and “non-material” in a response to an office action.

                  Something non-material (like an electromagnetic field of classical physics or the logical device of the patent application) can certainly be real and not abstract (like a Platonic ideal form).

                  Page 7 seems to describe a module as a functional unit that can be implemented in many ways.

                9. “Page 7 seems to describe a module as a functional unit that can be implemented in many ways.”

                  The same could be said of “a screw”.

                10. A screw or a gear is a well-understood device component.

                  In the old days (I mean since the middle ages), an engineer could consult a reference book to choose the type of screw or gear that might be appropriate for the device he was constructing.

                  Because “(software) module” is not so well defined as a device component, the PTO and the courts interpret “module” as a synonym for “means”.

                  On the other hand, there are reference books today that list processors (or more recently processor cores) rather as medieval and renaissance texts listed gears or screws.

                11. Joachim,

                  Gasp – and screws are still invented today (as I recently posted a patent number in reply to one of Les’s solid (objectively solid at that) points.

                  And to Malcolm’s pet “objective physical structure” meme, do these claims call out all (any?) of these “objective physical structures” in the claim itself?

                  Or how about that chemical range claim with the “as fuzzy as desired” ends of range? What pray tell is the one singular “objective physical structure” in a range?

                12. JM –

                  You said:

                  “A screw or a gear is a well-understood device component.”

                  So is a “filter module” or a “low pass filter module”… at least as well understood as there mere recitation of “a screw”. Is it a wood screw, machine screw, philips head? 10×24, 8×32, metric, galvanized, stainless steel? Recitation is just a vague and/or just as broad as is recitation of a “module for filtering the signal” and there is no reason the patent law should treat the recitations differently.


                Why should anyone else be able to piggy back on your hard work without remuneration

                Oh noes! “Piggybacking” off someone else’s work! Save us!! Save us!!


                Ned said:

                “What bothers me is that by protecting the API, one is protecting not expression, but functionality. ”

                Then rest easy Ned. The functionality is not being protected. Google could have written their language so instead of using JAVA.MATH.ADD(X,Y) the same functionality was provided by GOGA.COMBINE(A,B).ABSTRACTIDEAS.

                All that is protected here is the “Expression”


                I suggest you go read the amici briefs, quite a few of the ones decrying this decision were from organizations (both commercial and non) who develop languages.

    1. 7.2

      Depends on the forum. For cases ending up on appeal to the Federal Circuit, I could see it being bad news for developers. For cases ending up on appeal to the 9th Circuit, I think the jury’s still out on what the 9th would do. The denial of cert leaves intact circuit splits that existed in the aftermath of SCOTUS’s denial of cert in Lotus v. Borland.

      1. 7.2.1

        Ah, I see. But now that the Fed. Cir. has ruled one way and the SCOTUS has denied cert., doesn’t it become more likely that the 9th Cir. would go along with the Fed. Cir.’s decision?

        (The Wikipedia article for Lotus v. Borland case didn’t mention the existence of a circuit split…)


          Not necessarily. Some scholars view the Fed. Cir.’s decision as a distortion of 9th Cir. law on copyrightability. See Samuelson’s Brief in Support of Granting Cert. So it’s plausible the 9th ends up rejecting the Fed. Cir.’s analysis.

          Google’s Brief for Granting Cert. provides a good starting point for getting a sense of the Circuit differences in copyrightability law. Samuelson’s brief takes a different approach. The 4-4 split in Lotus reflects the Circuit divide.

    1. 6.1

      Well, anon, the financial movers and shakers can see the big picture as well. This says it all,

      “…patents are not an asset class if they can be invalidated at will by patent offices. Imagine if this could happen to stocks or bonds. Financial chaos would result.”

      The existence of reexamination, PGRs and IPRs, but especially the latter, are see for what they are — the PTO cancelling patents they, the PTO believes, should not have issued. Everyone can see that with lower burdens of proof, the use of BRI, the ability to pile it on with multiple petitions against the same patent (if you don’t succeed at first, try, try again), and with no requirement for standing, that patents are not property but a standing joke on their owners.

      And, reexaminations were sold to congress to strengthen the validity and enforceability of patents for the benefit of patent owners.

      Yeah right. Congress was sold a bill of goods by liars. I have heard that Newman regrets being a part of that process.

      1. 6.1.1

        Is there an example of an IPR where the PTO canceled a good claim? Has anyone actually lost any money that was invested in R&D? (as opposed to scrivenering and drafting costs)

  8. 5

    None of Oracle, Vederi, nor Ultramercal had been to an en banc review at the CAFC. Are appellants just ignoring the ordinary full CAFC reconsideration? It’s no wonder the Supremes are reluctant to take a case that the CAFC isn’t yet done with.

    And DDR seems to have been settled without reconsideration, unless I missed some news in the past seven months. Of course, the panel did cut down the verdict, probably to low six figures and maybe nobody wanted to invest in another round of appeals instead of just settling.

    1. 5.1

      Just checked the NY Times exhaustion case. The did not file a request for rehearing. The mandate issued on May 6. No pet. for cert. was filed.

      Simply amazing.

  9. 4

    Has the deadline for filing a petition for cert in Promega v. Lifetech passed by? If not, it must be getting fairly close.

    The bizarro construction of “components” in 271(f)(1) to include a single conventional item of commerce is still hanging out there.

    link to

    1. 4.1

      The point about the rules of statutory construction was directly on point to Malcolm’s quip.

      It was even better, as it was best on real law – the thing that is supposedly what this place is to be a leading source of.

      Methinks you should change your byline if you are going to prefer the empty snark of Malcolm.


          That would be you

          Classic Malcolm and his
          Accuse Others Of That Which Malcolm Does

          I may use snark, but I back that up with law and facts. All you got is the table pounding of “Policy/opinion/feelings/Beliebs”

    2. 4.4

      MM, having read Roberts’ opinion in King v. Burwell, where he bent over backwards to interpret contradictory language in the Obamacare statute so that the statute can be read as a whole to carry out the intended purpose of Congress, let me tell you that the Federal Circuit got this one right. The purpose was to plug the loophole of DeepSouth Packing, and it makes no difference at all whether one component or multiple components were sold abroad.

      The Supreme Court will not be too eager to take a patent case in order to question Roberts’ line of thinking in King v. Burwell by insisting that the mere words of the statute should prevail over the intent of congress.

      Justice Scalia will be right that King v Burwell will have inaugurated a whole new brand of statutory interpretation were the words of the statute are given very little weight versus the intent of congress.

      I think this case is also going to have a major impact on how the Federal Circuit interprets the first to file provisions of the AIA. Even if Congress did not get the words correct, what Congress intended will be given great weight so that the AIA comes out the way Congress intended.

      1. 4.4.1

        Good intentions pave the road to where exactly, Ned?

        Now the god-like Judiciary will divine the intentions as well as the words (conveniently waiving away words in order to Gist to their heart’s content)….

        The Federalist Papers and even Jefferson warned against such Judicial Godliness (or as most sane people would call it: godlessness)

  10. 3

    link to

    Big con law case of first impression. 5-4 Kennedy with the left.

    1. Article I, 4, “Legislature” includes direct democracy so that the people may take away from the legislature its right to determine the time, place and manner of electing senators and representatives.
    2. Judicial power extends to controversies between state entities regarding the structure of state governments.

    1. 3.2

      I haven’t had a chance to read Arizona yet, but it seems that the history surrounding the 17th Amendment should have been instructive. Before the 17th Amendment, could a state broadly read Article 1 Section 3 and elect its senators by popular vote (or by independent commission, for that matter)? Did any states ever do so, or attempt to?

      1. 3.2.1

        Having briefly skimmed the opinion and dissent so far, I find it ironic that Chief Justice “When Is A Tax Not A Tax?” Roberts now argues that the term “legislature” should be consistent in its meaning throughout the Constitution.

    2. 3.3

      This is an example of where the conservative bloc was in fact correct and yet also wrong.

      To have the issue as non-justicible means that the only ones weighing in on the Constitution would be state Supreme Courts looking at their statutes in light of the Constitution. You’d have a system where identical statutes in different states are both unconstitutional and constitutional, which is precisely the non-uniformity Marbury v. Madison worried about. You’d have a federal constitutional crisis as soon as different people woudl have been elected based upon the different lines. You have to decide the issue and yet you can’t decide it in favor of the state legislatures because the constitution is not ably equipped to be amended against state legislators who pick their constitutents. The solution was practical if not textual, and in my mind represents the best of a terrible choice.

  11. 2

    I’m surprised by the denial on Google v. Oracle. I guess SCOTUS must want the fair use arguments resolved at lower levels before they move forward on the case, if at all.

    1. 2.1

      Also surprised. Especially since, as I had noted in a comment on this blog re the cert request earlier, the Supremes had waffled 4-4 on a [to me] quite similar software command-lines copyright subject matter issue 19 years ago.* Also because there is a huge amount of claimed copyright infringement damages, and maybe even a massive-impact attempted injunction?, at stake here.

      But I would assume if the latter happens there will be another appeal, and perhaps another cert attempt?

      *Lotus Development Corporation v. Borland International, Inc., 516 U.S. 233 (1996) arguably established that copyright does NOT extend to the command lines text or layout of a spreadsheet program’s menus. [The Sup. Ct. 4 to 4 [tied] opinion left the 1st Cir. decision intact.]

      1. 2.1.1

        My best guess is that they think it’ll constitute fair use so the copyrightability point will be mooted, given how much they like to kick the can on highly important software IP issues.

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