- Sherri Oslick: Senju Pharmaceutical v. Watson Laboratories
- Thomas Goldstein: Ariosa v. Sequenom
- David Stein: Most Dangerous Problem In Patent Law
- Michal Addady: Why Burning Man Could Be Suing Quiznos
- Joseph Mandour: Apple Suffers Patent Invalidation In Samsung Case
Get a Job doing Patent Law
You cannot “make nice” on a one-way street Prof.
All you achieve is feeding the (existing) perception (real or not, just does not matter) that certain viewpoints here are favored over others.
Coupled with the quizzical new forum selectiveness, it only appears that you are intent on causing yourself more of this perception pain.
Nine years and running – yet you insist on not addressing that blight.
People are going to see that, whether or not you want to.
Thanks Anon – You have more posts here on Patently-O than anyone else (including me). Unfortunately it is also true that I have removed more of your posts than anyone else.
I’d ask you to follow the guidelines: link to patentlyo.com
Dozens and dozens of those removed posts were not based on any objective basis.
Feel free to run an objective comparison – by any set of published rules (ecosystem post or previous “posted” rules, which not-so-oddly, has become difficult to find.
I will bet that removal for cause leads to a very different conclusion – one that supports what I say.
But hey, my perception is not the issue (nor the cause of your pain).
And let me repeat: I am more than happy to abide by ANY set of rules I see evenly enforced.
(it also goes directly to my point if rules are unevenly enforced – I do hope you realize that)
…and amusingly or not, the “ecosystem” link has the post about Malcolm being a SAME blight for nine years and running – well before I started posting here.
Funny how that seems so inconvenient.
Thanks Anon for agreeing to follow the guidelines.
My goal here is not to create a set of rules to enforce but instead to nurture a better ecosphere within the Patently-O community. see link to patentlyo.com.
Again Professor, your link to the “ecosystem” thread proves my point.
Bueller…
.
Bueller…
(you better check that “goal,” as it seems that the perception of applied “rules” is not matching what you are professing)
Just saying.
I don’t actually know what you area saying here?
It appears that “anon” is saying that because he perceives your application of the forum rules/guidelines to be non-objective (evenly enforced), he is not going to follow them.
If not that, then I am also at a loss at to what “anon” is saying.
Anon, some [but not nearly enough] of your posts are removed because they are misusing this blog for a personal hostility outlet, with no substantive content.
If MM and you would learn to simply ignore each other’s provocative comments unless you have an informative factual or legal rebuttal, that would also help.
Further reducing the large number of mere personal insults clogging up these blog comments might increase their readership and increase useful substantive contributions by others.
With a pen name like yours, you want to gripe about my posts?
Further, you are quite mistaken to say that my posts lack substantive content. You forget that I use both, the tools of rhetoric including biting ad hominem and substantive points.
As to just being quiet while the likes of Malcolm and the Echoes paper the threads with relentless propaganda, let me leave you with this quote:
“History will have to record that the greatest tragedy of this period of social transition was not the strident clamor of the bad people, but the appalling silence of the good people.”
You my friend have your right to remain silent. Just as I have my right to not remain silent. Your way though leads to the maxim of “repeat a L I E often enough and it appears true.” That you appear not upset by the SAME ones repeating their endless propaganda speaks less well of you than of me.
Further yet, you should note, that I am the one always calling for others to JOIN the dialogue as opposed to those engaging in tired monologues.
That’s an important distinction to keep in mind.
The eminent patent historian David Stein:
I question whether or not the Court is empowered to formulate an economic objective – and then formulate a massive reinterpretation of a law unchanged since 1952
Gee, I wonder why it took 40 years for patent attorneys to figure out that the “unchanged law” permitted them to flood the PTO with “do it on a computer” junk. Oh right: computers weren’t invented until 1990 and it took two years for Nobel Laureate Dr. Samuel F. Cable to prove to science that they could be used to communicate information if you hooked them together with his marvelous connectors. Got it.
Or you are just a paid blogger pushing Google’s agenda. One or the other.
CAFC issued a Rule 36 decision affirming the district court’s tanking (on summary judgment) of CMG Financial Services’ incredibly junky patent on method of using a computer to link mortgage line of credit to a checking account.
Nobody could have predicted ….
Also, with little fanfare, the CAFC today put another Rule 36 nail in the effectively sealed coffin of Ron Katz and his junky “call management” “technology” patent monetization schemes, affirming the tanking by the USPTO of one of RKT’s last asserted patents. Good riddance.
MM, the Feds may want to start imposing sanctions on people appealing business method patents if all they argue are that the business methods are detailed and specific or the like.
Ned: the Feds may want to start imposing sanctions on people appealing business method patents if all they argue are that the business methods are detailed and specific or the like.
That’s never going to happen. After all, what if someone came up with the greatest method of determining a price for pork bellies ever? How could progress in the useful arts possibly be expected to continue without such claims being given open-minded and impartial consideration by at least three appellate judges?
There’s not enough cheese in the world to go with David Stein’s incredible wine about the “unpredictability” in the patent system.
News flash: a bit of “unpredictability” is what you get when the system is in correction mode and that’s where we’re at now. The problem for David and his fellow travelers, of course, is that they liked things the way they used to be, i.e., back when the worst junk ever granted by any patent system on earth was worshipped and admired by the Federal Circuit just as the mutants worshipped their holy atom bomb beneath the Planet of the Apes (with the same inevitable result).
That said, the idea that there is more unpredictability in patent law than before is difficult to accept. To take just one example from David’s screed, there is far more “predictability” now than ever before in the area of subject matter eligibility. More importantly, there is at last a teeny bit of justice because thanks to some folks shining a light on the system the CAFC and the PTO is finding it extremely difficult to hide inside their teetering house of cards.
But this passage really takes the cake:
The Supreme Court’s zeal to reform patent law is not informed by actual experience with the patent system: the nine seated justices have zero technical degrees, and zero experience in patent practice or the business of technology. That this body of unelected officials, with no accountability to any constituency, has assumed the mantle of “protectors of the technology economy,” should be deeply troubling.
Yes, folks, that’s just the recycled “you don’t understand the law or technology!” argument that’s been used since forever by the self-worshipping, entitled patent-lovers class to squelch any criticism of their out-of-control system.
Of course it would be asking far too much for David Stein to define exactly what he’s referring to when he describes the “technology economy.” Presumably he’s not referring to the “thinking about correlations economy” (pretty sure the Supreme Court justices know what a correlation is); or the “selling-stuff-using-information-transmitted-by-signals-economy” (pretty sure the Supreme Court justices are familiar with that); or the “use-rules-to-compare-stuff economy” (pretty sure the Supreme Court justices are familiar with that); or the “gamble-on-the-stock-market economy” (pretty sure the Supreme Court justices are familiar with that); or the “put-this-information-on-a-database economy” (pretty sure the Supreme Court justices are familiar with that; or the “determine-available-real-estate economy (pretty sure the Supreme Court justices are familiar with that); or the “manage-bingo-games economy” (pretty sure the Supreme Court justices are familiar with that; or the “take-old-logic-used-to-perform-task-and-adapt-it-for-a-computer economy” (pretty sure the Supreme Court justices are familiar with that); or the “use-information-to-avoid-car-accidents economy” (pretty sure the Supreme Court justices are familiar with that); or the “use-a-smaller-handheld-wireless-device-instead-of-a-big-device economy” (pretty sure the Supreme Court justices are familiar with that).
So exactly which “technology economy” is David Stein referring to?
We need not address the other obvious question raised by the quoted passage above which is: which “constituency” would David Stein prefer the Supreme Court to genuflect towards when determining questions of patent law? We need not address that obvious question because, well, the answer — as has always been the case when it comes to the patent worshippers out there — is painfully obvious.
The weirdest thing about Stein’s piece, I suppose, is that while he whines about predictability the fact remains that nearly all of the “changes” David perceives were, in fact, predictable and were, in fact, predicted. And yes there’s more to come.
Did Congress kick off a “correction mode” on this statutory law…?
What was that about ends and means again (looks like Malcolm was not paying attention).
I find it interesting how he ignores one of the biggest sources of unpredictability: the fact that many patent prosecutors intentionally draft patent applications and claims to be vague.
The patent system, as currently formed, has incentivized this type of drafting. Without clear specifications and claims it’s harder to find prior art, to determine whether the claims are enabled, to be on notice of patent rights, to design around… All of this causing unpredictability in litigation outcomes, in patent rights, and in technological development. The compact prosecution model doesn’t help, and until the PTO starts forcing patent applicants to be much clearer, we are going to continue to see problems.
Certain arts see this much more than others. All of this works to the benefit of the patent owner and to the detriment of the public.
David’s issue with “unpredictability” could be in large part addressed by the patent bar. Too bad they’re incentivized to do otherwise.
>>fact that many patent prosecutors intentionally draft patent applications and claims to be vague.
That is ridiculous. That statement is often trotted out by the anti-patent movement. But, in reality–you know real stuff–we see almost all the recent cases have made patent law less predictable. TSM is gone. 101 is now an arbitrary test based on how the judge feels that day. Etc.
Fact is that the blame rests squarely on the judiciary. They have decided to weaken patent law and in the only way they know how to do that is to create case law that allows them to write an opinion as if it is an application of law rather than an equitable decision. That is Alice.
Etc. As noted below it is not even clear if Congress could fix patent law now as Alice is supposedly an interpretation of the Constitution “promote” so it changed by law.
And, seriously Jane do you really believe the nonsense you wrote?
Night,
To be clear I am not saying there is anything improper about what the patent bar is doing. They are just doing what the system incentivizes them to do — whether that incentive comes from the PTO, the judiciary, or otherwise. Write clearer claims and specs, and we may see less “equitable” decisions out of the judiciary (see my comment below)
It’s a feedback loop — no one party is to blame, and no one party is innocent.
I don’t agree Jane. This notion that it is all gray and we are to blame just doesn’t fit with the facts of late. The SCOTUS could have just said this 101 stuff is nonsense. This Bilski and Alice patent are clearly invalid in view of 103. The SCOTUS and Fed. Cir. could simply have tightened 112.
Take TSM, for example. Had we stuck with this standard we would have a somewhat objective standard to implement and the PTO could vastly improve prosecution by using TSM with better controls.
Fact is that what the courts have done is cripple the PTO with 101. They have made the jobs of the examiners much harder (and ridiculously complex) with Alice.
the anti-patent movement
LOL
Never fails to crack me up.
the blame rests squarely on the judiciary. They have decided to weaken patent law
Golly whiz! And only a couple of decades after the same judiciary drove a truck through the system on behalf of the least credible and most self-entitled people ever, with predictably catostrophic results.
The billions that your grifting cohorts skimmed off the wreckage wasn’t enough for you? Boo hoo hooo hoo!
The madness of the paid blogger. A Google bucks reality.
David’s issue with “unpredictability” could be in large part addressed by the patent bar. Too bad they’re incentivized to do otherwise.
Absolutely correct.
David’s not as ignorant as most of the little yapping lapdogs that scurry around here reciting Big Q’s latest recycled scripts. He can tell the difference between the worst junk and the stuff on the borderline. But if he wants “predictability” and he wants some of his beloved information-processing “innovations” to be predictably deemed valid in the distant future he should focus on articulating a thoughtful, realistic, and practical series of tests (because these things come in different flavors) that achieves his goals rather than refusing the desperately-needed guidance that the Supreme Court has provided thus far. There is much more to come after all. The predicted squeeze play is in effect and the wind is never going to blow back in the opposite direction.
It would be entirely possible to increase the requisite standards of 112(a) and 112(b) to require more extensive and precise claim drafting. Arguably, this is what Nautilus and Dow v. Nova *try* to accomplish.
Such a patent system would produce a higher rejection rate – but a consistently higher rejection rate, at every level of review, providing the same rationale that the subject matter was not technically enabled, or that certain terms were undefined or unacceptably ambiguous.
Consider the difference between:
(A) A patent system that produces a consistently higher rejection rate, en route to raising the standard of disclosure; and
(B) A patent system that produces an inconsistent rejection rate, because the principles of adequate disclosure are unclear and subjective.
The problem is not particularly with the interest in elevating patent standards. The problem is that the rules by which such elevation is being sought are completely unclear – leading to (B), rather than (A).
In their rush to propel change, the courts are replacing rules that were unacceptably conservative but clear with rules that are aimed at a higher standard but unclear.
The entire point of my article is that where we set the bar is a different issue than how clearly we define the law. Zealous pursuit of the former has sacrificed the latter.
In short, the means matter – while there remain those who clench tight their eyes to the collateral damage and wish to only celebrate certain (select) ends.
From an historical perspective, a decidedly unwise path, no matter the desired ends
David,
I think the two issues you mention in your last paragraph are interrelated. The law often acts in reaction to issues that come up because of where we have set the bar. For example, if claims clearly defined what was infringing, would we have such difficulty and arguments over whether a “good-faith belief” in non-infringement should absolve an inducer? The cases where that issue would come up would be few and far between.
The old adage is that bad cases make bad law. Courts, in their equitable nature, have made the law unfuzzy in part in an attempt to have more equitable results. But equity is called upon less often when boundaries of patent rights are more clear.
Sure. But certainly, the people making adjustments to the law in these cases (which should be legislators… but in this case, we’re talking about judges) can choose how to respond.
Time for an analogy. Public zeitgeist holds that cops are tasing people too often, fueled by videos and anecdotes that clearly demonstrate questionable use. In response, police departments could do one of two things:
(A) Enumerate specific conditions in which tasers can be used – such as when a suspect is fleeing, when someone is actually committing assault, or when someone is harming himself or herself. Train cops in these conditions. Hold them to account: when a cop deploys a taser, review it to determine whether any of these situations applied; if not, apply some kind of penalty, such as taking it away.
(B) Just tell cops to use them “less often” and “only when really necessary.” Identify a few examples where it was “really necessary.” Otherwise, just leave it to each officer’s judgment.
Both solutions address the problem. So under what circumstances would the policymakers choose (B) instead of (A)?
David: Consider the difference between:
(A) A patent system that produces a consistently higher rejection rate, en route to raising the standard of disclosure; and
(B) A patent system that produces an inconsistent rejection rate, because the principles of adequate disclosure are unclear and subjective.
For some mysterious reaons, David, you forgot about the patent “system” that produces a trasnparently inflated allowance rate because it ignores the law (and reason) in favor of coddling its preferred “clients” du jour. That went on for years and years … and it’s still going on. But, sure, it’s all the Supreme Court’s fault. Because “unelected.” Good grief give everyone a break already.
Yeah, MM, clients.
In the interview with the Kappos holdover, now commissioner for patents, he actually said that Quality meant better service to these clients.
Ned: See below @ 2.2.2.1.1.
David: The entire point of my article is that where we set the bar is a different issue than how clearly we define the law. Zealous pursuit of the former has sacrificed the latter.
I think nearly every reasonable person who is informed of the issues and not directly invested in the “More Patents Iz De Better!” mythology would prefer some fuzziness around the question of “how much objective structure is necessary in a patent claim” to a “clear” rule that says “any old structure in a claim clears the 101 hurdle.”
^^^ what exactly is the point that you are flailing at her, Malcolm?
I err on the other side of the coin and try to intentionally draft patent applications to be clear. I find vague patent applications to be incredibly difficult to read and hard to prosecute.
So, not all of the “patent bar” does what you’re saying they do.
Now, I do find cases drafted overseas (particularly Great Britain) to be drafted very vaguely. Although perhaps it’s unfair to single out Great Britain, when Japan comes in a close second.
Jane, you and I are in 100% agreement on these points.
Have I quoted you Walker’s denunciation of the practice of drafting unclear claims in his 1889 Treatise?
Text-Book of the Patent Laws of the United States of America by Walker
link to books.google.com
link to amazon.com
And, I further agree that compact prosecution is at war with any effort by the examiner to clarify the claims before a definitive search is conducted.
Thanks Ned — I will definitely take a look at this!
“[The USPTO] handed down a decision that questions the validity of one of Apple’s design patents for its mobile phones. The ruling came down after a request for reexamination was made anonymously, however all signs point to the request coming from rival tech giant Samsung, which has been engaged in a years’ long bout with Apple over its patented phone features.
The non-final action in the reexamination was handed down on August 5, 2015 and concerns a feature of the iPhone contained in U.S. Design Patent No. 618,677, the text of which claims “the ornamental design of an electronic device”. Apple filed the original D‘677 patent application back in the summer of 2010 and given the recent invalidation action, the chances that Apple will be successful in keeping this patent are becoming more and more grim. Several commentators have echoed this sentiment, finding that since it took almost two years for the USPTO to make a ruling on the reexamination request, it likely will not reverse its conclusion.
As for the reasoning behind the invalidity finding, in its decision the USPTO pointed out that the very same claim had been previously denied patentability on two separate occasions on the grounds of obviousness.”
Another deeply disturbing report of a system that allows collateral attacks on validity by an accused infringer, one in court where one has rights to have one’s case heard by an independent judiciary and another by a political institution.
This has got to stop.
Maybe we should look at the claims before getting all worked up.
Ah, it’s a design patent. The claims are basically “see the figures”. That is, to analyze this correctly, you’d have to examine the figures. The claims are pretty much useless.
That is, to analyze this correctly, you’d have to examine the figures.
I bet they’re super complicated. Might take an entire twenty seconds … possibly thirty. Nobody has time for that.
Because the ends might justify the means…
…or something.
/off sardonic bemusement.
It’s the famous rectangle-with-rounded-corners patent.
And it is literally a rectangle with rounded corners. It’s astonishing that even the PTO issued that. There were hundreds of telephone handsets with that same outer shape in circulation before 2010. The PTO guys who issued the patent had them in their pockets.
As I understood it, the case is in appeals and the DC has finished with it, so an invalidation from the PTO is too late to reverse the $500MM in damages, isn’t it? Judge Koh refused a stay when the parties determined that reexamination would probably continue until around 2018. If the patent is found invalid after final judgement, the judgement stands.
You realize that there is no “rectangle with rounded corners” patent, right?
Ned, that is actually a significant component of the argument that I raised in my article.
The fact that different branches of the review process routinely produce conflicting results over the same issue in the same case – due to different standards of law, different contexts in which the dispute arises, legal tests that are primarily rooted in subjective opinion, and the absence of anything resembling precedent – harm everyone that the patent system affects.
David, in other words, the mere presence of a reexamination system itself undermines the patent system, especially when patentability/validity is subjective.
Reexamination was grew out of Rene Tegtmeyer’s no-fault reissue procedure that was very popular. Had they simply allowed no-fault reissues instead of allowing third parties to petition, the system would have been very pro-patent. But allowing third parties in has, in practice, allowed collateral attacks by accused infringers, something that should have been entirely predictable.
We need to stop third party reexamination petitions and allow IPRs only if both parties consent.
David: different branches of the review process routinely produce conflicting results over the same issue in the same case
And in the overwhelmingly vast majority of instances (>90%) the “conflict” arises because the PTO bent over backwards to misapply the law or simply ignored it, to the benefit of the patentee — you know, the same entitled, impossible-to-satisfy class that the Supreme Court has been oh-so-unfair to.
MM, did you see Quinn’s interview with the new Commish for Patents? He thought “Quality” meant better “service” for the customer.
Yes, the article repeatedly talks about “quality.”
Consider what this article does not discuss:
(1) Consistency or predictability of the USPTO’s decisions. (See: IPR process; the USPTO’s invalidation of patents that it not only allowed, but public held up for acclaim, years earlier; etc.)
(2) The high rate of appeals, and the resulting backlog and pendency.
(3) The unnecessary expense incurred by clients due to (1) (i.e., clients’ inability to make filing decisions based on the USPTO’s likelihood of issuing a patent – since the question is completely up in the air) and (2) (since bad decisions can be reversed, but only through the expense and extreme delay of the appeal process).
Those things affect “customer service” as well – more directly than fuzzy notions of “patent quality!” If you think that clients are eager to sacrifice their budgets, planning, and process efficiency, in pursuit of the broader cause of “patent quality”… then, well, that’s not how the world works.
Yet, none of these issues were addressed… nor even mentioned.
To be clear, I’m a fan of Andrew Hirshfeld. As a committee chair of the National Association of Patent Practitioners, I invited him to speak at our Annual Meeting. (We featured Raul Tamayo instead, largely because both our conference and Raul’s office are in Denver – and I believe that it was the best session of our meeting.)
But Hirshfeld’s answers reflect the USPTO’s cultural stance on these issues. It typically avoids them because, at the moment, it has no viable answers.
I don’t know Hirshfeld. Probably an upstanding guy. But to make a difference, he should push up to his management that the PTO has to do a better job in issuing quality patents, patents that claim patentable subject matter, have clear claims that are fully supported and enabled, etc.
From what I see, the PTO is making no efforts in that direction.
@Ned: That sounds an awful lot like Jon Dudas’s strategy: pursue “patent quality” by pushing down the allowance rate. Arbitrarily punish applicants until they file better patents.
That didn’t work out so well, did it?
Here’s a better idea:
* Devise some specific, new requirements for 112(b).
* Work with Congress to make them part of the law, and effective as of a certain date, so that applicants are prepared to comply with them. Host some USPTO “road shows” to explain the new requirements to applicants.
* Require examiners to be specific in their rejection of applications under 112(b) based on these new requirements, and to work proactively with applicants to address them.
* Provide a remediation period, during which applicants of previously filed, still-pending applications (and patents under reexamination) can amend in new subject matter for the limited purpose of satisfying the new requirements. This could be implemented in a way that is well-tailored to the requirement: e.g., maybe require the examiner to issue a rejection that specifies exactly how the pending application is deficient, and only allow amendments that directly address that deficiency.
Result: “Patent quality” achieved in a clear, forward-looking, cooperative manner.
David, the problem is that the Federal Circuit and the PTO ignore a host of case law surrounding “particularly point out” and until Nautilus, “distinctly claim.”
We ALL know why this condition exist. One person who was of the view that everything prior to ’52 was abrogated. This person co-wrote the ’52 Act and became a federal judge to opine judicially on what it meant.
Yeah sure.
Re: Dudas, unfocused reject, reject, reject is not a good means to a good end.
Re: remediation: Applicants can file CIPs at any time. What is the problem with that?
I think the PTO has to get out front on 101/102/103/112 and force the Federal Circuit to recognize this prior case law, and force it to actually read cases like Perkins Glue, Wabash Appliance, Halliburton, the cases on particular point out that began with Evans v. Eaton, the requirement for claims that are definite, White v. Dunbar. The Feds are primarily to blame, and the PTO is now in cahoots with their clients seeking to service their needs and requirements above all else.
Requiring applicants to bear the cost of an additional application, and the ensuing risk to your priority date (since they raise a question of which parts of the application are entitled to priority and which aren’t), is not a fair way to impose a rule change on previously filed applications.
I’m talking about making an exception to the restriction against amending to add new matter. If this kind of retroactive rule change is imposed, applicants of pending applications should be able to amend in additional information, if required, to satisfy it at no cost.
David Stein says: The Supreme Court’s zeal to reform patent law is not informed by actual experience with the patent system: the nine seated justices have zero technical degrees, and zero experience in patent practice or the business of technology. That this body of unelected officials, with no accountability to any constituency, has assumed the mantle of “protectors of the technology economy,” should be deeply troubling.
Outrageous!
And independent judiciary is the cornerstone of liberty, the foundation of all our rights. But, David Stein does seem to represent the PC Zeitgeist of the patent bar. The fact that the patent bar can say or even think these thing puts the patent bar decidedly in the luntatic fringe camp, where the rest of America will want to do something about us rather than for the people to do something about the Supreme Court.
I am fighting to take the ultimate decisions about one’s patent out of the hands of political institutions, accountable to the big bucks. But that is the System that David and the rest of the bar wants. What a shame. What a disgrace.
David Stein says: The Supreme Court’s zeal to reform patent law is not informed by actual experience with the patent system: the nine seated justices have zero technical degrees, and zero experience in patent practice or the business of technology. That this body of unelected officials, with no accountability to any constituency, has assumed the mantle of “protectors of the technology economy,” should be deeply troubling.
Outrageous!
And independent judiciary is the cornerstone of liberty, the foundation of all our rights. But, David Stein does seem to represent the PC Zeitgeist of the patent bar. The fact that the patent bar can say or even think these thing puts the patent bar decidedly in the luntatic fringe camp, where the rest of America will want to do something about us rather than for the people to do something about the Supreme Court.
I am fighting to take the ultimate decisions about one’s patent out of the hands of political institutions, accountable to the big bucks. But that is the System that David and the rest of the bar wants. What a shame. What a disgrace.
Great points David. Ned: you should realize that Benson fits exactly what David is writing about. In terms of science, Benson is shameful. Benson was decided as it was to save the PTO from having to examine information processing patent applications. This was based on an implicit finding of fact by the SCOTUS that the PTO was incapable of examining the information processing applications and therefore judicial activism was called for. That is reality.
It is interesting that David’s views are often drowned out by the paid bloggers.
Also, you will note most of the 101 decisions are/or should be based on actual empirical evidence and findings of fact and yet they are not.
Who was it that said power is reality…
I’ve read Benson probably 20 times and still have no idea what it says. It seems incredibly contradictory. To me, it seems as if the SC had no clue about technology.
Also, it seemed to me that the issue was the breadth of the claims. The claims were abstract (NOT the “idea” as characterized by the SC in Alice), but could they have been saved by a claim directed to a machine? It’s unclear, since Benson is unreadable.
You should read Chisum’s paper on it. I think he says that the word algorithm is used in 16 different way.
Benson, Bilski are both in the same camp, Night. Extremely unclear as to their ultimate holdings. Benson because of the bit about the computer being the only practicable use and preemption. The problems this has caused reverberate even after Alice. And we all know about Bilski.
But if we want to keep the Supreme Court out of patent law, it is incumbent on the Federal Circuit keep their decisions in line with the fundamentals – and these are the decisions of the Supreme Court. They take certiorari when the Federal Circuit strays.
Ned, the per curiam Federal Circuit Alice opinion is right in line with the Supreme Court’s Alice opinion. Difficult to say that the Federal Circuit “strayed” in that instance.
The Court’s objective was pretty clear: fleshing out a new framework for deciding patent-eligibility under 101, with the purpose of preventing patents on “fundamental economic practices” and “methods of organizing human behavior,” etc. Note that the Court’s Alice opinion spends one page discussing the Federal Circuit’s opinion (as a factual summary of case history), and then doesn’t mention the Federal Circuit again.
On the other hand, the Court spends seven pages describing a broad new set of legal principles that comprise 101. This section is not even in the context of Alice’s claims: it is an overarching narrative about 101.
Alice was not a correction of the Federal Circuit. Alice was unabashed lawmaking. The Federal Circuit opinion was incidental to the Court’s objectives.
And, yes, I question whether or not the Court is empowered to formulate an economic objective – and then formulate a massive reinterpretation of a law unchanged since 1952 in furtherance of that objective.
David, there was no Federal Circuit majority opinion in Alice. No doubt, this was because the Rader/Supreme Court decision in Bilski was opaque. The Supreme Court HAD to take the case in only to force the entire Federal Circuit onto the same page.
Right, I agree – the Alice Federal Circuit opinion was one of the most fractured opinions in the history of the federal court system.
But this is my point. The Alice Federal Circuit did not “stray” from the Bilski Court; it had no idea what to do with it.
a new framework for deciding patent-eligibility under 101, with the purpose of preventing patents on “fundamental economic practices” and “methods of organizing human behavior,
Because abstract junk was always eligible! Doesn’t everyone remember the huge bubble of “do it with a ball point pen” and “do it over the telephone phone” patents?
MM, well, at least since Hotel Security, business methods were non statutory.
Then we get Rich in State Street Bank who talks of “judicial exclusions.” The premise here is that a claim to a business method is otherwise statutory.
Rich was good at strawman argument.
Then we have this from State Street,
“Since its inception, the “business method” exception has merely represented the application of some general, but no longer applicable legal principle, perhaps arising out of the “requirement for invention” — which was eliminated by § 103.”
Another strawman argument that simply ignores what the court in Hotel Security actually said — that in no sense is a method of doing business statutory. Statutory, Rich! Why make something up? Why lie?
Incredible that this man was a judge.
You will also note that Ted Sichelman’s recent post did not even normalize his data. His data actually proves that patents are not out of control but are merely keeping pace with population growth and technology growth since 1972.
But, again, we see the problem where these law “professors” get to publish whatever they want with no consequences. If Sichelman was an engineering professor, he’d likely lose his tenure and job for this type of paper. It is just outrageous!
Ned, do you think the SC in Alice made a decision that allows the three branches of government to work as they should? For instance, in Halliburton Oil Well Cementing Co. v. Walker [329 U.S. 1 (1946)], the SC effectively held that MPF language could not be used at the exact point of novelty. In response, Congress effectively overruled the SC by passing 35 USC 112, paragraph 6.
Contrast that with Alice, which is written so that no one really knows what’s valid and what’s invalid. Congress can’t step in and overrule it, because Congress doesn’t understand what it says.
How does this achieve the purposes of the separation of powers?
Wow patentbob that is a really good point. The SCOTUS did in Alice basically say that this is the ultimate test that no legislation can overrule because it is tied to the Constitution. The tie to the Constitution, by the way, is very loose.
It is like a pornography test.
Great point. What legislation could even address Alice? How? I guess Congress could rewrite 101, but the SCOTUS is claiming that Alice is based on the “promote” section of the Constitution so no legislation can overrule Alice.
This illustrates just how out of control the legislative branch is.