The Gatekeeping Function of Patent Eligibility as Part of a More Complete Understanding of § 101 Principles

Guest Post by Bruce Wexler and Edwin Mok

From a review of the opinions expressed in the majority decision and rehearing denial in Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, reh’g en banc denied, 809 F.3d 1282 (Fed. Cir. 2015), petition for cert. filed (No. 15-1182, Mar. 21, 2016), and in the briefs filed by various parties in relation to Sequenom Inc.’s petition for writ of certiorari, we can see several different viewpoints emerge with respect to the case.  Some express the viewpoint that the case reached the wrong outcome, either because the Court (a) misunderstood the facts relating to the invention or patent, (b) misapplied existing § 101 principles, or (c) both.  Others express the viewpoint that the case reached the right outcome, either because the Court (a) correctly applied § 101 principles, or (b) incorrectly did so but would have reached the same outcome under a correct analysis.  And there are also some who express the viewpoint that the case correctly applied current § 101 eligibility principles but still reached a wrong outcome, such that § 101 requires a serious overhaul, or should be done away with altogether as a patentability criterion.  In this article, we do not take a position on any of these viewpoints.  Rather, we write to shed more light on the gatekeeping function of patent eligibility which we see permeating judicial decisions on § 101, making it worthy of careful contemplation when considering any one of the positions expressed above.

Analysis of § 101 patent eligibility generally involves discourse using the term “preemption.”  The Supreme Court, for example, has described preemption as driving the exclusionary principle under § 101.  Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347, 2354 (2014); see also Mayo Collaborative Services v. Prometheus Labs. Inc., 132 S.Ct. 1289, 1294 (2012) (“[Our precedents] warn us against upholding patents that claim processes that too broadly preempt the use of a natural law.”).  But, at the same time, we see in the cases that complete preemption by a patent claim—in the sense of a claim so broad it just recites an abstract idea or natural phenomenon—has not been the sine qua non of patent ineligibility.  For example, we have seen the Supreme Court reject eligibility arguments that merely contend that the claim in fact recites some physical structure, and so does not completely preempt the underlying abstract idea or natural phenomenon itself (putting aside for the moment what that structure is).  The late Chief Judge Archer explained why such arguments are unsatisfactory in a dissent he authored over twenty years ago in In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994), in which he opposed the patentability per se of a mathematical algorithm just because the claim referenced generic computing structures.  His reasoning was strikingly similar to that appearing more recently in Mayo.  As Chief Judge Archer observed, if patent eligibility was necessarily satisfied by reciting any physical structure, then Diamond v. Diehr would have been a much shorter opinion, and Flook and Benson would have come out the other way.  Alappat, 33 F.3d at 1557.  Alice too would have come out the other way, since some of the claims there recited generic computing structures.  See Alice, 134 S.Ct. at 2358-59 (“There is no dispute that a computer is a tangible system (in § 101 terms, a ‘machine’) . . . [b]ut if that were the end of the § 101 inquiry, an applicant could claim any principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept.”).

A way to make sense of this situation is to consider the gatekeeping function that § 101 plays within the patent law, also discussed within the Supreme Court cases but at times in a more subtle way.  To understand this function more clearly, we can look to the hypothetical discussed by Chief Judge Archer to explain how § 101, when correctly applied, “lays the predicate for the other provisions of the patent law.”  Alappat, 33 F.3d at 1553.  This hypothetical illustrates that, but for § 101 eligibility principles, a patent could be awarded for originating a new musical composition—something generally agreed to be outside the subject of patent law—by claiming the song in a generic physical form such as a CD (it was the 1990s, after all).  Id. at 1553-54.  Assuming the musical composition was original, the physical structure of the CD would contain a unique assembly of pits and lands specific to that new piece of music, and thus it would be a composition of matter that is structurally novel under § 102.  And because “the patent law cannot examine music for ‘nonobviousness,’ the Patent and Trademark Office could not a make a showing of obviousness under § 103” (which it would be their burden to do).  Id. at 1554.  And even if they could examine this question, the PTO examiners ought not to be judging musical compositions for obviousness (e.g., imagine patent examiners charged with determining whether a guitar lick or chord progression is obvious under patent law).  The result of allowing through the eligibility gate a claim reciting a CD (or equivalent generic structure) embodying the new song could be patent exclusivity granted for discovering a new musical composition.  Chief Judge Archer posited that § 101 acts as a gatekeeper to prevent such discoveries from being eligible themselves for analysis of patentability under the remaining patent law provisions.

The Supreme Court has also discussed this gatekeeping aspect of patent eligibility.  In Mayo, the Court rejected the government’s argument as an amicus that “virtually any step beyond a statement of a law of nature itself should transform an unpatentable law of nature into a potentially patentable application sufficient to satisfy § 101’s demands.”  Mayo, 132 S.Ct. at 1303.  In so doing, the Court discussed the limitations of patent law’s other provisions to judge ineligible subject matter:

We recognize that, in evaluating the significance of additional steps, the § 101 patent-eligibility inquiry and, say, the § 102 novelty inquiry might sometimes overlap.  But that need not always be so.  And to shift the patent-eligibility inquiry entirely to these later sections risks creating significantly greater legal uncertainty, while assuming that those sections can do work that they are not equipped to do.

Id. at 1304 (concluding that §§ 102, 103, and 112 cannot “substitute . . . for the better established inquiry under § 101”).  The Court recognized that the presence of a law of nature in a claim would not be entirely ignored when analyzing novelty and nonobviousness, since it is indeed an aspect of the claimed invention.  Id.  In other words, the entirety of the claimed subject matter that passes through the eligibility gate is evaluated for novelty and nonobviousness.  This operation of the patent law is viewed as supporting a need for an eligibility inquiry up front, which asks whether the invention as described and claimed by the patentee as a whole resides in something more than just the new idea or law of nature itself, so that it is appropriate to allow the claim as a whole to be judged by the remaining substantive patentability provisions.  And, from this perspective, we can also understand how very basic questions of a patent’s stated novelty for the claimed subject matter, and the breadth of the claim, can impact how the eligibility question is answered.  See, e.g., id. at 1295, 1297-98; Alice, 134 S.Ct. at 2359-60; Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107, 2116-19 (2013).

Chief Judge Archer’s hypothetical in dissent wound up playing out in the area of business method patents.  The Federal Circuit’s decision in State St. Bank & Trust Co. v. Signature Fin. Grp., Inc., 149 F.3d 1368 (Fed. Cir. 1998), having as a foundation the majority opinion in Alappat, opened the floodgates for patenting new methods of conducting business.  Seismic changes in the way banking was done during the late 1980s (see The Big Short for a dramatization of that happening) fostered this eventual patenting explosion.  Although these patents generated controversy, it would take over a decade and a half, until Alice, for the Supreme Court to rule that inventions residing in a way of doing banking business were simply beyond the realm of patent law, even where the claims recited generic computing structures.  See Alice, 134 S.Ct. at 2360.  This decision has dramatically changed how lower courts look at business method patents.  See, e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) (reversing its own two pre-Alice rulings that had upheld validity, and finding the patents in suit to be ineligible).

Currently, the gateway through which a proposed invention must pass is based on Supreme Court precedent, including the Mayo ruling.  In close cases, the § 101 principles may not be so easy to apply, especially since inventions generally speaking are constituted from arrangements of physical forms, which call into operation laws of nature and natural principles, arriving at a useful result.  See, e.g., Alappat, 33 F.3d at 1551-52 (quoting G. Curtis, A Treatise on the Law of Patents for Useful Inventions at xxiii-xxv (4th ed. 1873)); cf. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 609-10 (1950) (underlying a claimed invention is its “way,” the physical form; “function,” the principles of operation; and “result,” the effect achieved).  Thus, the task of separating what is appropriate for the subject of patent law from what is not appears to inevitably demand a set of core principles, rather than a detailed recitation of rules that neatly answers every case in all technical areas.  Historical efforts by courts to construct rigid mechanical tests for eligibility have, after struggling and evolving, ultimately failed.  For example, in the late 1970s and early 1980s, the Federal Circuit’s predecessor court developed a series of rules for eligibility, which lengthened in name as subsequent cases recognized the need to address existing inadequacies—the so-called Freeman‑Walter‑Abele test—before it was finally rejected.  See, e.g., State St. Bank, 149 F.3d at 1374.  As Chief Judge Archer explained, “[w]ithout particular claimed subject matter in mind, it is impossible to generalize with bright line rules the dividing line between what is in substance [a patent-eligible application] versus merely the discovery of an abstract idea or law of nature or principle outside § 101.”  Alappat, 33 F.3d at 1554.  He observed that the copyright law has long lived with a similar tension in the idea/expression dichotomy (i.e., the principle that the expression of ideas can be protected by copyright but not ideas themselves).  Id. at 1554 n.15; see also 17 U.S.C. § 102(b).  However, as he explained, “[t]here are . . . answers in every § 101 case.”  Alappat, 33 F.3d at 1554.  One question that has arisen is whether the Federal Circuit’s more recent decision in Genetic Techs. Ltd. v. Merial L.L.C., Nos. 2015-1202, 2015-1203 (Fed. Cir. Apr. 8, 2016)—which stated (slip op. at 11) that it was effectively bound to its outcome by Ariosa, which was itself said to be compelled by Mayo in the opinion of Judge Lourie (Ariosa, 809 F.3d at 1284)—altogether signals an attempt to return to a set of bright-line rules, or whether these cases instead reflect a genuine acceptance and application of the Supreme Court’s § 101 principles on their specific facts.  Either way, the Supreme Court precedents are ultimately bookends for understanding how to apply the law of eligibility in any particular situation.

As we can therefore see, § 101’s gatekeeping role is not distinct from the provision’s policy purpose of preventing undue preemption.  A possible way to think about it is that if the Mayo test is properly applied, and the totality of claimed subject matter is allowed through the eligibility gate, then the law of novelty and nonobviousness and claim breadth should, for example, be operating on subject matter in a way that is appropriate under the patent law.  This is a way to make sense of the different outcomes in Diamond v. Diehr (finding eligible a claim to an improved rubber-curing process that involved use of a computer algorithm) and Parker v. Flook (finding ineligible a claim to a method for using an algorithm to adjust alarm limits).  See Alice, 132 S.Ct. at 2358.  From a practice standpoint, thinking about § 101’s gatekeeping function in relation to the totality of the claimed subject matter may in some cases serve as a useful check on understanding how a court may perceive the patent eligibility issue.  For example, if the novelty or nonobviousness analyses would devolve into an evaluation of the novelty or nonobviousness of an idea or natural phenomenon itself, without significantly more to that inquiry, that may indicate to the inventor, the patent examiner, or the court that the invention is treading near the borderline of patent-ineligible subject matter.  This is a more nuanced understanding than simply regarding Mayo as articulating a “two-part test,” without adequate recognition as to what that test is trying to do.

In our next post, we consider the different opinions in the denial of the petition for rehearing in Ariosa and particularly their expressed commentary on principles of patent eligibility.

Bruce Wexler is a partner, and Edwin Mok an associate, in the New York office of Paul Hastings.  Their practice focuses on patent litigation and trials.  Mr. Wexler is also an adjunct professor at New York University School of Law, where he teaches an advanced patent course.

209 thoughts on “The Gatekeeping Function of Patent Eligibility as Part of a More Complete Understanding of § 101 Principles

  1. 21

    Coming in a few days late… but here are some 101 claim analysis problems with the current precedent. (Below, “directed to” refers to claims “as a whole” as it should be)

    Claim A directed to CD with new and defined structure and any information stored thereon is not specified in the claim: 101 analysis is as simple gatekeeper with no parsing of claim to identify point of novelty- no problem

    Now consider 101 analysis of B1 and B2:
    Claim B1 directed to CD with generally known structure but new defined arrangement of “pits and lands” on the medium, i.e. information defined structurally rather than as song or program: 101 analysis is as simple gatekeeper with no parsing of claim to identify point of novelty- no problem

    Claim B2 directed to CD with generally known structure and with information (“song(s)” or “program(s)” or “image(s)”…) stored thereon: case law now requires parsing claim to identify point(s) of novelty- PROBLEM: merely reciting the information completely changes the scope of 101 analysis– WHAT?– Since when has the text of a claim impacted the meaning and reaches of a statute? It’s like saying that the speed limit changes merely because of the kind of car being driven. A CD is still a manufacture regardless of whether it is claimed with or without information. Claim B2 should be deemed eligible under 101 and novel under 102. Obviousness is borderline.

    HOWEVER, even if claim B2 is deemed nonobvious, a big problem is indefiniteness. The “information” needs to be specified in sufficient detail to clearly define the metes and bounds of the claim, e.g. for a song: arrangement, performer(s), instrument(s), tempo, dynamics… or perhaps define all the required pits and lands on the medium. When the point of sufficient specification has been reached, the scope of protection would be to a CD with that exact information or structural detail. There would be no concern for preemption. Of course, the claim would likely be easily circumvented.

    Now consider 101 analysis of claims C1 and C2.
    Claim C1 is directed to a new apparatus for crushing stones by dropping a hammer on it: 101 analysis is as simple gatekeeper with no parsing of claim to identify point of novelty- no problem

    Claim C2 is directed to a new apparatus for crushing stones by employing the pull of gravity to drop a hammer on it: case law now requires parsing claim to identify point(s) of novelty- PROBLEM: merely reciting “gravity”completely changes the scope of 101 analysis– WHAT?– The apparatus is still a manufacture regardless of whether it employs gravity.

    1. 21.1

      Rick, when everything in a claim other than, let us say, the information content of something, is old and generically claimed, are we to say with a straight face that the invention is “directed to” the admittedly old and generic?

      The claim is not viewed in isolation from the spec. If it there established that the invention being claim is directed to information, information processing, or a product or law of nature, it makes no difference how much one festoon’s a claim with the common place but otherwise patentable subject matter.

  2. 20

    Actually, The Big Short was about the 2007-2008 financial crisis. The author is likely thinking of Liar’s Poker, also written by Michael Lewis, about his experience on Wall Street in the 1980s.

    1. 20.1

      In the Big Short, there is a recounting and dramatization of the change in banking that took place in the 1980s. That change eventually leads to more and more speculation and risk taking which culminates in the crisis in 2007-2008.

    2. 20.2

      It also recounted and dramatized the history of the financial crisis. The book/movie showed how, in the 1980s, banking fundamentally changed to involve riskier and more speculative investments that made bankers more money. This culminated in the 2007-2008 financial crisis. The article is referring to the changes occurring in the 1980s, and correctly notes that The Big Short dramatizes this.

    3. 20.3

      Greg, I thought the film was good, well made, but boring. Not academy award nomination material.

      That said, the film should be viewed by everyone and anyone intending to vote in the next election.

      1. 20.3.1

        How about the film (the old one) The Paper Chase…?

        You might want to pay attention to what the professor says at the hour and six minute mark.

  3. 18

    Worth posting on top (as Malcolm is almost on the path to being correct):

    Malcolm stumbles onto a nut:

    Either that or the “prior art” tests have to “depend on the subject matter of the claim.”

    Just not how you are grasping the situation, Malcolm.

    The direct and straightforward comment is one that I have already provided: Wolfgang Pauli’s “Not even wrong.

    I have been consistent – and consistently clear – that you must start within the Useful Arts.

    The Fine Arts thus cannot serve as any type of “argument” within patent law.

    Your asking someone else to “just get used to it” is more than a bit ironic given how you yourself refuse to “get used to it” for patent protection for the aspect of the manufacture and machine component that is software that deserves patent protection under the law as written by Congress.

    1. 18.1

      “anon” The Fine Arts thus cannot serve as any type of “argument” within patent law.

      You can’t establish that a claim is in the “fine” arts without making an argument about (1) what is in the fine art and what isn’t; and (2) how the claimed subject matter relates to those arts.

      Everybody knows this and we can all see through your bizarro attempts to avoid discussion of facts that you have hard time dealing with (e.g., the fact that 101 is more than a mere standard for claim drafting, and the fact that element by element “dissection” of claims is necessary for any reasonable subject matter screening paradigm to function properly).

      Your asking someone else to “just get used to it” is more than a bit ironic

      It’s not ironic at all. It’s 2016 and you’re playing the same silly completely debunked rhetorical games that you did back in 2011 when you were in S0ckpuppet Apocalypse mode.

      1. 18.1.1

        There is NO hard time on that Malcolm – and never has been.

        Your attempted deflection misses – and misses badly.

        You do realize that your inadvertent “nut” was that you listed two very different ways of looking at the situation, even as now (here) you want to try to merge those two different ways back into one way (the wrong way) and stick to your old tired and trite way, instead of recognizing that the second way you volunteered is what I have been saying all along.

        It’s right there in black and white.

        Let’s see you try to deny it.

        (I’ll get my own popcorn, thanks / who knows where yours has been)

  4. 17

    This blog post is probably best characterized as an advertisement for the two authors. They want your legal business to invalidate patents.

  5. 16

    Way down below in the 3 series of comments, Random posits the following:

    Yup. That’s where the sentiment in Sequenom goes wrong. The judges say “Man this natural phoenomenon is really really non-obvious and really really has utility, so we should want to protect it, and Congress has expressed a desire to protect as much as possible, so it should be eligible” without questioning whether the framers intended patent law to be the mechanism by which the act should be protected.

    (emphasis added)

    Nobody is questioning that some natural facts or logical proofs are difficult to achieve, that is undoubtably the case. The only question is whether patent law is the intended mechanism for encouraging the difficult path to discovery. In Sequenom’s case, it clearly isn’t. That isn’t to say the inventors shouldn’t be rewarded, and that disclosure cannot be either coerced (through praise or money) or even compelled, simply that it isn’t patent law to do it.

    To which I asked (in a non-tr011ing manner):

    What type of “utility” does the item – in and of itself – have?

    Is there some form of intrinsic utility? Or is this utility actually in the interaction of that item in order to obtain some end?

    Not meant as a slam, Random, just ruminating as to what “utility” is being discussed….

    1. 16.1

      “anon” What type of “utility” does the item – in and of itself – have?

      What “item” are you talking about?

    2. 16.2

      Not meant as a slam, Random, just ruminating as to what “utility” is being discussed….

      The location information (that the fetal DNA is in the mother and not just the fetus) has utility. But knowing locations in general has utility – people know how to dig, but telling them to dig in a certain place because there is oil underneath is useful information. The point is that knowing where to dig may have commercial value for the businessman (since now he has eliminated the chance of having nothing to show for his digging) but no technical value for the engineer who does the digging – he’s performing a conventional drilling method. The same applies here – the knowledge that something can be found certainly overcomes the commercial fear that one might have in going to look for it, but doesn’t teach the technician to perform a test he couldn’t have performed anyway.

      Most all non-fictional information you can convey has some level of utility. Even fictional information conveyed has utility if you’re willing to buy that entertainment is a useful thing. But patent law is not a one-stop location where we publish any information in exchange for exclusivity on it. Patent laws protect inventions in the useful arts, not disclosures of locations of raw materials. You allow Sequenom and every person who ever discovers oil or a coal deposit or a cave with gems in it will patent it, and strip the actual land owner of the use of their land.

      1. 16.2.3

        Not sure I understand the utility “point” of separating out the engineer either….

        Where does this approach come from (no snark)?

        I think that you are overplaying your thinking in the last paragraph – I won’t “dive into the already long exchange between you and Gregg, suffice to say that Gregg’s position is clearly better than yours (from an objective legal point of view).

  6. 15

    Can anyone explain what’s wrong with this?

    “There is no dispute that a computer is a tangible system (in § 101 terms, a ‘machine’) . . . [b]ut if that were the end of the § 101 inquiry, an applicant could claim any principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept.”

    In particular, what’s wrong with claiming a principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept?

    I have yet to figure that out. The claim itself has an ambit — a computer system programmed to perform the “principle”. What’s wrong with that?

    1. 15.1

      I suspect that 99 times out of 100, it will either be obvious under 103 or else necessarily cabined by 112(a) into a claim so narrow that the applicant will not consider it to be worth the filing fee. As for why it is problematic under § 101, however, I am as befuddled as you are.

      1. 15.1.1

        It just may cause some future harm by somehow limiting some future innovation….

        (Never mind that courts are not allowed – even the Supreme Court is not allowed – to engage in conjectural harm that merely “may” happen)

        Or…

        Take the words of the Court on their “face value” and realize that through the power of the “Gist” leading edge, that even things that can drop on your foot are now “Abstract.”

        (and yes, if you think this is merely the exception swallowing the rule, you would be correct, as the effective outcome of this is that the words of Congress in 101 vanish. Something having the right type of utility and belonging squarely in a statutory category is denied under 101.

  7. 14

    The Supreme Court has also discussed this gatekeeping aspect of patent eligibility…

    We recognize that, in evaluating the significance of additional steps, the § 101 patent-eligibility inquiry and, say, the § 102 novelty inquiry might sometimes overlap. But that need not always be so. And to shift the patent-eligibility inquiry entirely to these later sections risks creating significantly greater legal uncertainty, while assuming that those sections can do work that they are not equipped to do.

    I really like and respect Justice Breyer, but the fact that he could write this with a straight face (and that none of his 8 colleagues thought it necessary to write a separate concurrence to distance themselves from this howler) just goes to show that the Supreme Court just should not be allowed within a country mile of a patent appeal. They do not have the technical chops to understand the cases they are deciding, so they mostly get things 180° backwards, and even when they do reach the result most consistent with statute and precedent (e.g., Monsanto v. Bowman) it is largely by accident.

    The amount of §§ 102 / 103 jurisprudence dwarfs the § 101 jurisprudence, and the § 112 written description standard is orders of magnitude more easily applied to cabin overly broad claims. The idea that there is more danger to the patent system from using §§§ 102/103/112 than from using § 101 is so crazy that it is only by virtue of ignorance that one can say this with a straight face. Anyone with even one year’s worth of actual experience prosecuting and/or litigating patents would recognize the patent nonsense (if you will forgive the pun) in the portion of Mayo quoted above.

    1. 14.1

      I would like to make clear that, despite the harsh tone of the above, I really admire our Supreme Court justices. Our republic is fortunate to have such wise and learned jurists deciding 99% of our cases. Patent law is not, and should not be, their main priority, so it is only a very weak criticism when I say that I do not think that they do patent law well.

      Still and all, you really need a certain level of science background to decide patent cases well, and none of them have the necessary training. We would all (and “all” here includes the (hopefully-soon-to-be) nine justices themselves) be better served if they stayed away from patent appeals.

    2. 14.2

      Greg: The amount of §§ 102 / 103 jurisprudence dwarfs the § 101 jurisprudence

      So? It sure in heck doesn’t mean that it’s more “clear” or easy to apply.

      They do not have the technical chops to understand the cases they are deciding

      A smart fifteen year old has the “technical” chops to understand most of these cases. Were the facts in Mayo difficult? Maybe for you, Greg. Check that: they were definitely difficult for you.

      Shall I repeat them for everyone? Patentee discovers a “new” correlation. Patentee tries to claim a method that recites (1) obtaining data using old tools and (2) thinking about the “new” correlation.

      Got that? Now tell everyone, Greg, how 103 works to get rid of that kind of claim when the correlation is non-obvious. Or go ahead and tell everyone why that kind of claim should be permitted.

      Step up, Greg! Impress everyone. You’ve only fallen flat on your face ten times already when you tried to play grown-up. Maybe this time you’ll strike gold.

      Or not.

      LOL

      1. 14.2.1

        You’ve only fallen flat on your face ten times already when you tried to play grown-up

        Malcolm’s “version” of both “grow-up” and “fall on your face” are not in any way to be confused with reality.

  8. 13

    I claim

    A method for making money and restraining competition without any innovation, comprising the steps of:

    Reading at least one scientific journal to identify a recent discovery of a preexisting law of nature;

    Incorporating said recent discovery of a preexisting law of nature in at least one conventional technology;

    Filing the first patent application claiming said recent discovery of a preexisting law of nature incorporated in said at least one conventional technology;

    Extracting payment from anyone who practices the claimed subject matter of said first patent application after a patent is issued; and

    Suing everyone who practices the claimed subject matter of said first patent application and does not pay after said patent is issued.

    1. 13.1

      LOL — I’ve lost track of the number of times I’ve seen that method utilized, especially in the computer-implemented “arts” but also in the nutritional supplement / energy drink “arts”. It’s a widespread tactic beloved by America’s favorite b0tt0m-feeders.

    2. 13.2

      As if that is enabled–112 fail. Typical nonsense from the antipatent judicial activist.

  9. 12

    ”This hypothetical illustrates that, but for § 101 eligibility principles, a patent could be awarded for originating a new musical composition—something generally agreed to be outside the subject of patent law—by claiming the song in a generic physical form such as a CD (it was the 1990s, after all). Id. at 1553-54. Assuming the musical composition was original, the physical structure of the CD would contain a unique assembly of pits and lands specific to that new piece of music…”

    Even if that were a side effect of a proper reading of 101, so what, what is the harm? Who would avail themselves of an expensive to get, expensive to enforce 17 year patent, when a free 100 year copyright is easily available? And, what if they did get a patent for a recorded piece of music, who what that harm?

    “And because “the patent law cannot examine music for ‘nonobviousness,’ the Patent and Trademark Office could not a make a showing of obviousness under § 103” (which it would be their burden to do)…”

    Why couldn’t they? The patent office could allege a CD obvious just as easily as it would declare the fish tank and electrodes of a cold fusion reactor obvious.

    1. 12.1

      Les: Even if that were a side effect of a proper reading of 101, so what, what is the harm?

      It certainly wouldn’t harm the typical patent lawyer, would it? And patent lawyers are the most important people ever. After all: they know all about patent law! The non-patent lawyers aren’t really qualified to talk about it so who cares what they think.

      Seriously, though, it’s not really a question of “harm” (though it wouldn’t be difficult to imagine musicians and composers being harmed by the existence of a zillion patents on “newly discovered” melodies and chord changes). It’s a question of “the patent system wasn’t created to protect music, period, so if your patent claim protects music — directly or indirectly — the system is being manipulated improperly by you.”

      Who would avail themselves of an expensive to get, expensive to enforce 17 year patent, when a free 100 year copyright is easily available?

      Someone with a bunch of money who wants to see how much they can get away with before they get busted. I know: totally shocking!

      The patent office could allege a CD obvious just as easily as it would declare the fish tank and electrodes of a cold fusion reactor obvious.

      And then Les and his friends rush screaming to the Courthouse steps because their “Constutional rights” have surely been trodded upon by that mean ol’ PTO.

      1. 12.1.1

        MM: The non-patent lawyers aren’t really qualified to talk about it so who cares what they think.

        Aw, MM, we still care what you think. It’s always good to have another viewpoint, even if it’s from a lay person with a vested interest.

        1. 12.1.1.1

          a lay person with a vested interest.

          LOL.

          I’m a Ph.D. and a patent attorney, iDan. And I teach patent attorneys.

          Please keep the laughs coming.

          1. 12.1.1.1.1

            MM: I’m a Ph.D. and a patent attorney, iDan.

            Suuuure, you are, MM. There’s really no need to pretend: we’ll still read your comments even if you confess that you’re actually just a lobbyist.

            1. 12.1.1.1.1.1

              you’re actually just a lobbyist.

              Tell everyone how much I get paid and who pays me. You’re on a roll!

              LOL

              1. 12.1.1.1.1.1.1

                MM: “Tell everyone how much I get paid and who pays me.”

                That I don’t know how much you get paid means you can’t possibly be a lobbyist? Clearly, you’re not a logician.

                1. you’re not a logician.

                  Says the guy who has apparently deduced that I’m a lobbyist.

                  LOLOLOLOLOLOLOL

                2. Deduced? No, MM… I merely noted that you’re a lay person and said that we would still read your comments even if you confessed to being a lobbyist. Without denying it, you demanded that I produce your financial records, and now appear to be feverishly trying to deflect attention. The layman doth protest too much, methinks.

                3. iDan: you … now appear to be feverishly trying to deflect attention

                  LOLOLOLOLOLOL How did you arrive at that conclusion, iDan?

                  I merely noted that you’re a lay person

                  And what compelled you to note that? Surely you weren’t trying to deflect attention from anything I might have said …

                  Without denying it

                  I pointed out that I’m a scientist and a patent attorney.

                  you demanded that I produce your financial records

                  ???? Are we reading the same thread?

                  Thank goodness the patent maximalists never resort to blatant blogtr0lling. Theyre very serious people!

                4. MM: “I merely noted that you’re a lay person

                  And what compelled you to note that?”

                  That’d be your sarcastic statement that Les’ suggestion would help patent lawyers who “are the most important people ever. After all: they know all about patent law! The non-patent lawyers aren’t really qualified to talk about it so who cares what they think.”
                  Since you clearly disagree with Les’ suggestion, then just as clearly, you’re placing yourself in the “non-patent lawyers” category.

                  MM: “Without denying [being a lobbyist]…

                  I pointed out that I’m a scientist and a patent attorney.

                  Neither of those are inconsistent with being a lobbyist. They are, however, inconsistent with your statement regarding non-patent lawyers.

                  MM: “you demanded that I produce your financial records

                  ???? Are we reading the same thread?”

                  You demanded that I “[t]ell everyone how much [you] get paid and who pays [you].” Those are financial records, no? So, therefore, you demanded that I produce your financial records. This shouldn’t be that complicated, MM.
                  And you still haven’t denied being a lobbyist.

                5. Since you clearly disagree with Les’ suggestion, then just as clearly, you’re placing yourself in the “non-patent lawyers” category.

                  Sure, that makes sense.

                  Better blogtr0lls, please.

          2. 12.1.1.1.2

            Given your professed lack of respect for the law as it is, it is downright scary to think that someone somewhere has you teaching patent attorneys, Malcolm.

            And my rather low view of academics moves even lower…

            But I cannot say as to being too surprised, as having once consider – and deciding otherwise – on a career in academia, I can see the reflections of a lack of meritocracy and leftist indoctrination permeating your short script.

            1. 12.1.1.1.2.1

              leftist indoctrination

              ROTFLMAO

              So who are you voting for in November, “anon”? Did you figure that out yet?

              LOLOLOLOL

              1. 12.1.1.1.2.1.1

                Not sure why you are laughing at a question previously asked and answered…

                My vote is still for Sanders, Herr Trump of the anti-patentists.

                1. My vote is still for Sanders,

                  That’s why I’m laughing.

                  But he’s a very serious person, folks! And totally not an evasive c r e ep.

                2. 1) Ask a straightforward question (apparently, not for the first time).
                  2) Receive a direct and explicit answer (again, apparently, not for the first time).
                  3) Call the answerer an “evasive c r e ep”.

                  ¯\_(ツ)_/¯

                3. Hang on, wait a minute, you’re making fun of MM’s “leftist” indoctrination, but you’re ready to vote for the most left leaning candidate for president in recent memory? Lol wut?

                  But hey, setting the irony aside anon, what attracts you so much to Bernie? (Also, did you hear he wants to take all ur patents away and give them to poor minority students?)

                4. Weighing the issues and looking at the candidates has NOTHING to do with leftist indoctrination, 6.

                  Trump reminds me of the Right-side alter ego of Malcolm, and Hilary is so Fn deep in the pocket of Big Corp and Big Bank it is not even funny.

                  You apparently missed the last conversation and see irony where there is none. One issue – even that issue being patents – does NOT a candidate choice make.

            2. 12.1.1.1.2.2

              anon: Given your professed lack of respect for the law as it is, it is downright scary to think that someone somewhere has you teaching patent attorneys, Malcolm.

              He didn’t specify what he teaches them, and at no point implied it was related to patent law. Perhaps he gives cooking classes, or shows how to perform oil changes at home? An adult education center teacher is still a teacher, of course.

              1. 12.1.1.1.2.2.1

                You make a good point iDan – He did not explicitly say that he teaches patent law.

                I see as well that your “punking” Malcolm with an objectively less offensive manner of posting than Malcolm engages in has been wiped out.

                Let’s see if this means that Malcolm’s behavior (that generated that “punking”) will be likewise “watched” and as objectively mirrored, be also wiped out.

        1. 12.1.2.1

          we agree then, there would be no harm….

          Right! That’s what I meant when I wrote “[I]t wouldn’t be difficult to imagine musicians and composers being harmed by the existence of a zillion patents on “newly discovered” melodies and chord changes.”

          Please work on the reading skills, Les.

            1. 12.1.2.1.1.1

              xplain how they would be harmed BY A PATENT TO A CD, not cord changes and melodies.

              Gee, Les, although the popularity is on the decline, plenty of arists put their music on CDs (or some other recordable media, including vinyl, and I’m sure you’d be out there advocating for the eligibility of music on signals, right?). Then they sell the media with the recorded content on it. And they don’t have to worry at all about being sued for patent infringement when they do that (unless they transact the sale over the Internet and manage to infringe some crxp biz method of the sort that you also tirelessly defend).

              You really need me to break this down for you?

              We all know what you and your super intelligent and “innovative” cohorts want, Les: patents on everything that are easier to enforce against everybody. And we all know why you want it.

              The great news for all of us is that you and your cohorts are probably the least intelligent attorneys that the US legal market has ever produced.

              1. 12.1.2.1.1.1.1

                “You really need me to break this down for you?”

                Yes I do. To infringe a patented CD someone would have to manufacture, import or use an unlicensed copy of the CD.

                How can that hurt anyone but an infringer?

                Answer: It can’t.

                Which is why you can’t provide a straight answer.

                1. To infringe a patented CD someone would have to manufacture, import or use an unlicensed copy of the CD.

                  How can that hurt anyone but an infringer?

                  Answer: It can’t.

                  The best and the brightest, folks. Your patent maximalists.

                  And the wonder why they keep getting hammered? After all, they’re so serious! And so important.

                2. Les: To infringe a patented CD someone would have to manufacture, import or use an unlicensed copy of the CD.

                  How can that hurt anyone but an infringer?

                  Answer: It can’t.

                  MM: The best and the brightest, folks.

                  You didn’t answer his question, MM.

                3. You didn’t answer his question

                  You’re right. And you popped up as if to suggest that Les’ question merited an answer.

                  The best and the brightest, folks. And they work in teams! Super effective.

                4. MM: “You didn’t answer his question

                  You’re right.

                  You can’t answer his question, then? Should you really be claiming to be “educating” people on a topic when you either refuse to or can’t answer simple questions?

                5. Try to believe it, folks: the patent maximalists think they’ve discovered some kind of awesome rhetorical t 0 0 l. “Only infringers infringe that junk patent! So what’s the harm? After all … they’re infringers! Try to answer the question! Ya can’t do it, can ya? Huh? Huh?”

                  Deep, deep stuff! I’d like to say that it’s beyond parody but if there’s anything we’ve learned over the past ten years it’s that nothing — absolutely nothing — is too inane for these b0 tt0 m-feeders to latch onto like a pitbull puppy latches onto a squeaktoy.

                  Keep the laughs comin’, people. You’re totally not just tr0llin’ the blog!

                6. MM: “Deep, deep stuff!

                  Thanks, MM. Now, would you care to answer the question posed to you, or should we take it by your sobbing accusations of tr0lling that you’re conceding the point?

                7. iDan should we take it by your sobbing accusations of tr0lling that you’re conceding the point?

                  LOLOLOLOL

                8. anon: “That is not an answer either Malcolm.

                  Why do you find it so difficult to answer?”

                  I think it’s because MM realizes that he misunderstood the question, but he can’t admit he was wrong.

                9. MM:”

                  iDan should we take it by your sobbing accusations of tr0lling that you’re conceding the point?

                  LOLOLOLOL”

                  Careful their, your PhD is showing. U of A from the sound of it?

              2. 12.1.2.1.1.1.2

                Just answer the question.

                What legitimate activity of musicians and composers is threatened by a patent to a CD carrying a particular set of pits?

      2. 12.1.3

        MM: “It’s a question of “the patent system wasn’t created to protect music, period, so if your patent claim protects music — directly or indirectly — the system is being manipulated improperly by you.”

        The hydraulophone is an instrument, invented only a little over a decade ago, and is covered by several patents. Those patents indirectly protect music, namely compositions for the hydraulophone, which cannot be legally performed absent a license to use the patented machine. Is the patent system being “improperly manipulated”? Should an otherwise patentable machine be ineligible, because it’s function involves making music?

    2. 12.2

      Les: “And because “the patent law cannot examine music for ‘nonobviousness,’ the Patent and Trademark Office could not a make a showing of obviousness under § 103” (which it would be their burden to do)…”

      Why couldn’t they? The patent office could allege a CD obvious just as easily as it would declare the fish tank and electrodes of a cold fusion reactor obvious.

      Not to mention that the PTO already steps into judging aesthetics to be obvious with design patents. Perhaps music is beyond their present scope, but between musical encyclopedias and audio signature analysis, it doesn’t seem to be impossible.

      1. 12.2.1

        iDan the PTO already steps into judging aesthetics to be obvious with design patents.

        As everybody knows, the PTO doesn’t really examine design patents at all except for adherence to technical requirements.

        And when they try to do it, they are terrible at it.

        Are you guys seriously arguing that the patent system should be expanded to include the protection music? I thought I’d seen everything but maybe not.

        It’s definitely been noted before, however, that the patent maximalists will do and say anything if they think they can find the littlest bit of traction. They’re endlessly amusing that way.

        Keep the laughs coming.

        1. 12.2.1.1

          MM: As everybody knows, the PTO doesn’t really examine design patents at all… they are terrible at it.

          They don’t do it, and they’re bad [at what they don’t do]?

          I’ve figured it out: MM is actually Yogi Berra!

          1. 12.2.1.1.1

            Abstract iDan,

            To paraphrase a certain past vice-presidential debate:

            I knew Yogi Berra, and Malcolm is no Yogi Berra.

            (Why do you have to insult p00r Yogi like that?)

  10. 11

    [i]”This hypothetical illustrates that, but for § 101 eligibility principles, a patent could be awarded for originating a new musical composition—something generally agreed to be outside the subject of patent law—by claiming the song in a generic physical form such as a CD (it was the 1990s, after all). Id. at 1553-54. Assuming the musical composition was original, the physical structure of the CD would contain a unique assembly of pits and lands specific to that new piece of music… And because “the patent law cannot examine music for ‘nonobviousness,’ the Patent and Trademark Office could not a make a showing of obviousness under § 103” (which it would be their burden to do)…”[/i]

    No, but since the particular arrangement of pits and lands provides no more functionality than the arrangement of text on a page, the printed matter doctrine says the “new music” is given no patentable weight, and accordingly, the CD is obvious over prior art CDs with different music. There’s no need to try to stretch 101, as 103 is perfectly sufficient.

    1. 11.1

      As pointed out though, iDan, the example is a BOGUS example to begin with as it attempts to use a non-Useful Arts item.

      Further, as has also been pointed out (in EXTREMELY EASY TO UNDERSTAND terms of simple set theory), the judicial doctrine of Printed Matter includes an exception for those items functionally related.

      When “learned” people discuss these things and omit (whether on purpose or through innocent error) such critical elements, the end result of what they want to say is so tainted as to be worthless.

      One then can take a step back and see why they are using such a “tactic” – what is the “picture” that they want to present.

      If it is a picture that the mess of judicial writings are somehow actually “cohesive,” then you know for sure that there can be no good to come of the “analysis.”

      As I mentioned, to that effect, such efforts are a disservice to the ongoing dialogue.

      1. 11.1.1

        “anon” it attempts to use a non-Useful Arts item.

        Manufactures for storing digital media are “non useful arts items”? Really?

        Or do manufactures fail 101 just because their function is to store music? Please explain.

        the judicial doctrine of Printed Matter

        Please show us the analyis. Assume the pits are structurally defined in the claim and the arrangement is new. Oh, and don’t forget that you can’t dissect the claim or compare elements to the prior art because “claims as a whole”. (<— or so you've told us a zillion times).

        the judicial doctrine of Printed Matter includes an exception for those items functionally related

        How are the pits on the CD not “functionally related” to the music-producing functionality of the CD?

        I can’t wait to hear your answers, “anon.” You’re a very serious person! You’ve definitely thought about this a lot.

        1. 11.1.1.1

          MM: the judicial doctrine of Printed Matter

          Please show us the analyis.

          How exactly do you expect someone to show you “the analyis” when you quote six words, out of context, that don’t refer to an analysis?

          Is this the speed we’re supposed to try to get up to?

          1. 11.1.1.1.1

            iDan: How exactly do you expect someone to show you “the analyis” when you quote six words

            I’m retty sure that “anon” can follow the thread, iDan, even if you can’t.

            Wow.

        2. 11.1.1.2

          Manufactures for storing

          Nice manipulation. Except I said no such thing.

          Maybe you want tot start at the start and recognize what I have always said about trying to use Fine Arts in a Useful Arts topic…..

    2. 11.2

      iDan: the printed matter doctrine

      News flash: the so-called “printed matter doctrine” is rooted in subject matter eligibility concerns.

      There’s no need to try to stretch 101, as 103 is perfectly sufficient.

      Your version of 103 is “perfectly sufficient” when 101 is incorporated into it.

      All this is old news, by the way. Your arguments were considered and blown out of the water years ago. Try to get up to speed.

      1. 11.2.1

        MM: Try to get up to speed.

        Such insight! Such wit! What other gems do you have to offer?

        MM: News flash

        Wow!

        Can we all please pause for just a moment to thank MM for setting the standard for discourse here? I, for one, can’t imagine what this place would be like without him. Why, we might actually discuss things!

        1. 11.2.1.1

          Or you can just “thank you”, iDan.

          One way to keep the standard of discourse high is to encourage know-nothings like you to keep your trap shut. Try to learn something for a change.

          1. 11.2.1.1.1

            MM: “thank you”, iDan.

            No need, but you’re always welcome, MM.

            MM: know-nothing

            Oh, don’t be so hard on yourself!

            MM: high

            Ah, I see… Well, when you sober up, please feel free to contribute.

          2. 11.2.1.1.2

            standard of discourse high is to encourage know-nothings like you to keep your trap shut. Try to learn something for a change.

            Like how to have a short script and treat anything off of that script in an manner like Malcolm…

            To paraphrase, Malcolm: “Sh.ut up if you don’t agree with my views and I, self-appointed watcher of the fields of rye, will brook no heterodoxy.”

            That fits right into the lack of meritocracy and “learn the babble of those higher-up” that exists in the academic world. Far, far, far too many of those “excelling in school” (even or perhaps especially in law school) are “excelling” in learning the views and desired philosophies of the same type of rye protectors rather than learning how to critically think.

      2. 11.2.2

        Try to get up to speed.

        Especially as Malcolm omits his “oops” of admitting to knowing and understanding that the judicial doctrine of printed matter includes the critical exception of certain printed matter with a functional relationship…

        That he consistently attempts to overlook this and pretend that this is something other than what it fully is, is also something that must be “kept up to speed.”

        Of course, speed is only one aspect – direction is another and Malcolm’s desired direction is 180 degrees from the proper direction.

        1. 11.2.2.1

          That “critical exception” is easily the most blatant example of “judicial activist” “I know it when I see it” gobbledyg00k in the entire patent system. That much has been readily admitted by people far more intelligent than you who are otherwise in sympathy some of your concerns.

          But because its an “exception” that favors junky patents, you’re happy to not just look the other way but to actively cheerlead for it. This is why you’re a hypocrite, “anon.” And I pointed this out to you years ago when it first became clear to me that your understanding of the doctrine was frozen at the level of an infant’s.

          1. 11.2.2.1.1

            I explained all of this to you on short declarative sentences and the use of simple Set Theory on the Hricik side of the blog, linked to that explication several times and you have yet to supply anything close to a meaningful, cogent, inte11ectually honest comment to the explication.

            But “you know better,” and yet refuse to hew to the actual doctrine and instead want to twist that doctrine to say something that it clearly does not…

            And you want to call me the hypocrite….

            That’s a whole lot different….

            Not.

  11. 10

    This paper is ridiculous. Look, a “mathematically algorithm” is what? Do you even understand Bruce that we are processing information? So, a mathematical algorithm to write a brief or fed. cir. opinion is ineligible because it is “math.” What is math? Have you figured that out? Doesn’t sound like. What is the difference between applied math and theoretical math? Do you know?

    Look, your arguments are right out of the iron age. Try to modernize your thinking. Get that these are information processing machines.

    1. 10.1

      Bruce, what experience do you have in science/technology/innovation? Cognitive Science? Your view of math is based on a philosophy before the modern information age. Please go away.

      1. 10.1.1

        Bruce appears to have some excellent “school” creds for physics and law, but also appears to have jumped right into the litigation side without any “real world” development or patent prosecution work (his registration information still portrays him at the “agent” level).

        This might explain some of the overly simplistic view of the law in relation to “real” hands on development, and the glossing over of some of the more pertinent historical nuances in the Court decisions.

          1. 10.1.1.1.1

            Whether that is the case or not, I do not know.

            I do know that it is less than flattering to write a piece on a topic and get so many fundamentals wrong (or at least attempt to ASSume certain aspects of the Court are proper and try to make disparate cases “make sense” through some rather excessive contortions.

            As I said, this piece is a disservice to the dialogue.

            I do not go as far as to say this was a purposefully deceitful action, or that some other agenda is at play, but clearly, Bruce should take pause in his lack of appreciation of the scope of law involved here, from the perspectives of the law itself as well as the factual and historical underpinnings.

    2. 10.2

      And Bruce, try scope of enablement. And give me one claim that needs your 101 witch law.

  12. 9

    In the patent law system, § 101 represents the only absolute criterion for patentability. Every patented invention is no longer novel nor non-obvious after the patent is granted and published.
    The theories of relativity are a fine example of subject-matter that once was definitely novel and non-obvious, but still is not patentable subject-matter.
    Indirectly, § 112 makes it very clear that every PHOSITA must be able to carry out a patented inventions. So only acts are patentable subject-matter (not mere facts), and pure science is not patentable because (usually) it has no value to PHOSITAs, only to inventors who turn pure science into acts that a PHOSITA can perform.
    The essence of the difference between a scientist and a PHOSITA is that the former does things that may fail, whereas a PHOSITA does not deserve that designation if he fails. A battery researcher may fail to invent a smartphone battery that lasts all day with intensive use, but a contractor must be able to build a house for me.

    1. 9.1

      Nice post Reinier. Reality: there is no problem with 101 and there wasn’t a problem with 101. There was/is a problem with 103. The courts decided that they would just push 103 into 101 and make is so they could do so with SJ.

      That is reality. All this yapping about elements of claims are a this or a that are nonsense. Not one claim has been exhibited on this blog that needed 101 to police the patent laws. Not one despite years of me challenging the anti-patent judicial activist.

      Reality–information processing takes time, space, and energy. It is a physical process. The conservation of information is the most important law of physics.

      1. 9.1.1

        Information is not preserved. That is a basic rule of thermodynamics.

        Whatever § 1xx provision is “pushed into” whatever § 1yy provision, a patent system in general must distinguish between absolute tests and relative tests. § 101 is an absolute test since it does not depend on the state of the art, unlike the §§ 102-103 tests.

        You may argue that the absolute test is not needed. Doesn’t § 101 contain a list more intended to emphasize the breadth than to enumerate the statutory types of subject-matter? Doesn’t the provision contain the word “any” twice, with the same purport?

        But look at the last claim in O’Relly v. Morse (1854): can one patent things that still must be invented? The SCotUS said no. But didn’t future inventors depend on the all of Morses claims to make their own inventions?

        It seems fair to conclude that § 101 is not completely redundant.

        1. 9.1.1.1

          § 101 is an absolute test since it does not depend on the state of the art

          Except 101 does “depend on the state of the art”. Of course it does. It has to.

          Either that or the “prior art” tests have to “depend on the subject matter of the claim.”

          There’s no way around this. Just get used to it already.

          1. 9.1.1.1.1

            The wording of § 101 is confusing, by referring to “new (and useful)”.
            Granted, “new” refers to the state of the art.
            However, the courts have repeatedly said that the § 101 test itself is not about novelty, that’s the § 102 test. Otherwise the § 102 test would be duplicate and redundant.

            1. 9.1.1.1.1.1

              Reinier, “new” does not refer to the state of the art. It refers to whether the subject matter is new in the absolute sense, not whether it was known.

              1. 9.1.1.1.1.1.1

                Ned,

                Asked of you and repeatedly ignored, this “version” of yours still must be squared with the changes in controlling law that the Act of 1952 and the AIA have wrought.

                In particular, “new to you” is now considered “new” in the patent sense.

                Your contrived and self-induced “belief system” will come crashing down when you open your eyes to the actual laws.

              2. 9.1.1.1.1.1.2

                This perception cannot be right, unless the word “new” means something completely different from common parlance here.
                For me “new” is the oppositie of “old” mirabile dictu.
                If someone applies for patent for an invention that was patented before, or known otherwise, along the rulews of § 102 it is not new. So it depends inevitably on the state of the art. Whether the substanbce of the application is new does not just depend on itself, but on the state of the art.
                And I repeat that courts have repeatedly said not to confuse or mix the “patentable subject-matter” test (101) with the novelty test (102).

                1. Reinier, “New” was added in 1793 when composition was added. At the same time, “discovers” was dropped. The statute independently required novelty with respect to the knowledge (of the public) in the same sentence.

                  1793:

                  That when any person or persons, being a citizen or citizens of the United States, shall allege
                  that he or they have invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used before the application….

                2. Ned,

                  You have convinced yourself of something that is not there in the bigger picture of things.

                  Repeating yourself like this is not helping you understand what the law really says.

            2. 9.1.1.1.1.2

              I am with Ned in saying that “new” in § 101 does not reference the state of the art, but rather means “new” in the absolute sense. Still and all, I am afraid that the CCPA disagreed with Ned and myself in In re Bergstrom/i>, 427 F.2d 1394, 1401 (C.C.P.A. 1970) (“[T]he criteria for determining whether given subject matter is ‘new’ within the meaning of § 101 are no different than the criteria for determining whether that subject matter possesses the ‘novelty’ expressed in the title of § 102… That such is the case is clear, we think, from House Report No. 1923, [which states]: ‘Section 101 sets forth the subject matter that can be patented, “subject to the conditions and requirements of this title.” The conditions under which a patent may be obtained follow, and section 102 covers the conditions relating to novelty,”).

              1. 9.1.1.1.1.2.1

                Greg,

                On what basis then do you find yourself “with Ned”…?

                How you want the law to be?

                Or something else?

                1. No. I mean that when I read § 101, it seems to me that the most natural reading of “new” is to convey absolute novelty, rather than “new” in the sense of “hitherto unknown,” which is the purview of § 102.

                  That is to say, to my mind, the reason why natural products are excluded under § 101 is not because of some “judicial exception.” Rather, the § 101 says that “[w]hoever invents or discovers any new and useful… composition of matter… .” If your invention is a frog in an unexplored swamp in the Amazon, then the frog may well be § 102 “novel” (i.e., not on sale for more than 1 year in this country, not described in a printed publication, not the subject of a Paris treaty application filed more than 1 year ago, etc.), but it is not § 101 “new,” because it has existed for long before your discovery of the frog during an excursion in the Amazonian swamp.

                  That is why this Amazonian frog is excluded from patentability, because it does not comply with the § 101 requirement of being “new.”

                  I find this understanding of § 101 to be much more intelligible, administrable, consonant with separation-of-powers principle, etc. than the alternate view—i.e., that the exceptions to § 101 have been contrived by the Supreme Court out of whole cloth and independent of the statutory text. Unfortunately, the CCPA did not endorse my view of the § 101 “new.” They read it as entirely coextensive with § 102.

                2. You are trying to squeeze novelty (even at the “absolute” reference level) back into 101.

                  That was never the purpose of the word in 101.

                3. It might help to remember that prior to 1952, the entire 101/102/grafted out of “101” 103/112 was a single paragraph.

                4. Also, it would help if you reviewed my Atlantean pure water/pure dark water hypothetical and remember that the universe is not static.

                5. You are trying to squeeze novelty (even at the “absolute” reference level) back into 101.

                  Hm, that is not how I would characterize my own view. I would say that it is useful to distinguish (in patent parlance) between “new” and “novel.” It is important that “new” be part of § 101, but that “novel” (and its near relation, “conventional”) not be part of § 101.

                6. Also, it would help if you reviewed my Atlantean pure water/pure dark water hypothetical and remember that the universe is not static.

                  I clicked the link you gave and went back to review the “dark water” hypo. I think that I understand the point at which you are driving. I am not sure that I agree, although I am still thinking through it.

                  Two questions:

                  1) What job do you understand “new” to be doing in § 101? The explanation you give for your “dark water” hypo definitely excludes the absolute sense of “new,” but it looks to me like it also does not fit with “new” as co-extensive with the § 102 sense of “novel.” In other words, it looks to me as if you prefer simply to pretend that “new” is not there at all in § 101. Why am I wrong in thinking that?

                  2) As I said above, the reason why I prefer to understand § 101 “new” in the absolute sense is that it grounds the so-called “judicial exceptions” in the § 101 text itself. What is the statutory warrant for your “storehouse of nature” understanding of the § 101 exception? Come to that, what is your reason for the “storehouse of nature” doctrine at all? From where and why are you asserting this idea as being part of U.S. law?

                7. The warehouse notion is part of the law from pre-1952, when the courts had been given authority by Congress to develop through common law the meaning of the word “invention.”

                  It is critical to recognize the dividing line of 1952.

                  What “new” may have meant prior to that must also be looked at in light of that Act (and in light of the AIA – which has altered the Trade Secret aspects in so far as “new to you” is still “patent new”).

                8. Greg,

                  Can you flesh out a little more this notion of yours: “ useful to distinguish (in patent parlance) between “new” and “novel.”…?

                  Thanks.

                  I want to see if I understand your view enough to attempt to fit it into the other points that I have presented: the fact that the universe is not static, for example, and to understand how you attempt to have a non-prior art aspect without depending on how the pre-1952 single paragraph was broken into multiple and different sections of law.

                9. Can you flesh out a little more this… distin[ction] (in patent parlance) between “new” and “novel.”…?

                  Sure.

                  “New” = did not exist before. The Amazonian swamp frog is not new, because it was living in the Amazon long before the scientists showed up and gave it a Linnean name.

                  “Novel” = not in the state of the art. The Amazonian swamp frog—despite not being “new”—was still “novel” as of the day of its discovery because it was not (1) on sale for more than 1 year, (2) described in a printed publication,… (etc.).

                  It is critical to recognize the dividing line of 1952.

                  Hm, I confess that I am not buying this. The 1952 act was a very well drafted patent act. Probably the best drafted we have ever had. But it was not some magical watershed. Patent law was nevertheless a statutory matter before 1952. McClurg v. Kingsland, 42 U.S. 202, 206 (1843) (“[T]he powers of Congress to legislate upon the subject of patents is plenary by the terms of the Constitution, and… there can be no limitation of their right to modify them at their pleasure…”).

                  The warehouse notion is part of the law from pre-1952, when the courts had been given authority by Congress to develop through common law the meaning of the word “invention.”

                  Er, o.k., but then by the same logic that you are constantly urging on Ned, we really ought to be chary about importing that common-law understanding into a statute that Congress revised for a reason. Congress carefully drafted § 101 to carry over all that was good about the prior jurisprudence, and to leave behind all that was unworthy. Unless you can find a warrant for the “storehouse of knowledge” doctrine in the present § 101 text, it seems to me that you are simply engaged in a special pleading version of indulging the same behavior on your own part that you would castigate in Ned. Can you? I can, but I am not sure that the statutory warrant that I find will quite get you to the outcome of your dark water hypo.

                10. Greg, “101 carefully drafted in 1952” to do this or that….

                  Greg, 101 has not changed in language since 1793.

                11. So then, in response to my question at 9.1.1.1.1.2.1, it is merely how you want the law to be…

                  (I “get” that you have ends that appear magnificent and all…)

                12. The explanation you give for your “dark water” hypo definitely excludes the absolute sense of “new,”

                  No it does not. In fact, the opposite – as the sense of timing that you want to have is the sense of timing (think sequential) that is captured in 102. I am not sure that you have incorporated a non-static universe view into the 101 view.

                13. The statutory aspect of patent law prior to 1952 is not the point – the point being that prior to 1952, Congress had shared some of its statutory power with the judicial branch.

                  That shared power explicitly changed in 1952 (and does not depend on your “buying it”).

                  I have shared previously how the allocated power to one branch can be properly shared with another branch (this is still currently being done in patent law – check out the properly designated sharing when it comes to the court’s ability to use principles of equity in Article III adjudicated cases).

                  Whether or not you might find it “convenient” to think of the Supreme Court actions post-1952 as no different than pre-1952 cases is part of the problem.

                  Appreciation of what actually happened would provide you with a better sense of patent law (and a better sense of why umbrage at the Supreme Court is deserved). Justice Stevens invoked a “nose of wax” metaphor early in his career, and then later was himself guilty of attempting to bend that very same nose of wax to his personal viewpoint (a viewpoint that cost him the majority writing position on the Bilski case, mind you!)

                14. Ned states:

                  Greg, 101 has not changed in language since 1793.

                  And as I have repeatedly explained; the mere “same words” is a fallacy that the law was not changed.

                  That single paragraph was changed into multiple sections of law.

                  103 was carved out of that single paragraph and was an affirmative and deliberate change BY CONGRESS to the mess created by the courts in the treatment of “invention” (and at least a dozen other pseudonyms).

                  Ned refuses to accept the impact of what happened.

                  He wants it as if the Act of 1952 never happened.

                  It did happen.

                  And it happened for a reason: the Court was too politically/philosophically involved.

                  Ned wants to retreat to a “mere codification” fallacy. I have shown him explicitly many instances where such “mere codification” cannot stand up to scrutiny.

                  He just ignores all of this and repeats his views as if the counterpoints were never presented – a rhetorical tactic that I have labeled the “internet shout down.”

                15. Anon, as explained by Federico, the reason that the prior art sections of 101 were split out into a new 102 was to add to the new 102 the former defenses to infringement so that the patentability could include the defenses to infringement. There was no intention by Federico or by congress to change the meaning of 101 by this split.

                16. Ned,

                  Your “defense” of 102 when I was pointing out 103 is simply not on point.

                  At all.

                  We’ve been over this before and you refuse to give full credit to what Congress did in 1952.

                  I even typed and provided links to the notes of 103 that explain this.

                  All I get from you is disingenuous misdirection.

              2. 9.1.1.1.1.2.2

                Greg, I think you are beginning to see just how really awful a jurist Judge Rich was. He really did not understand patent law, and it showed relentlessly.

                Rich never looked to the origin of the term “new” in the statute. If he had, this would have confirmed that new was in the absolute sense, and did not include something that was not known. In fact, the Supreme Court has at least twice now confirmed this view.

                1. to see just how really awful a jurist Judge Rich was.”

                  I call B$ on Ned – nowhere in Greg’s post is there ANY such recrimination against Judge Rich.

                  Stop your muckraking Ned.

                  What you are trying to do is blame Rich for what Congress did and you are trying to pass off the acts of the Court as if Congress did not write the Act of 1952.

                2. Bergstrom was authored by Judge Almond, not Judge Rich.

                  In any event, I cannot agree with your disparagement of Judge Rich. With the possible exceptions of Justice Storey and Learned Hand, Judge Rich had a more thorough understanding of US patent law than any other appellate judge in this nation’s proud legal history.

                3. Greg,

                  Ned has a long Storied [sic] history of trying to disparage the single most knowledgeable patent judge ever because that judge does not align with the way that Ned wants the law to be.

                  It’s been an ongoing battle with him to fairly treat both the law, Congress (not Rich) that passed that law, and Judge Rich.

                4. Greg, except that he was at war with the Supreme Court’s 101 jurisprudence and with its obviousness jurisprudence. Then we have functional claiming and 112(f), which he drafted. I can go on and on citing historical precedent after historical precedent that he cavalierly overturned, even with panel decisions.

                  I agree that he did not author all of the bad decisions from the CCPA and the Federal Circuit. But the courts, both of them, took a disastrous turn when he was appointed.

                  No doubt that he was knowledgeable. But there is not a precedent that he penned that will stand the test of time. Every precedent authored by either Story or Hand has entered the hall of fame, worldwide.

                5. First, move the goalposts back Ned.

                  Second, realize as has been pointed out to you, that it was Congress that made these changes in the Act of 1952 – not Judge Rich on a lark afterwards.

                  That “disastrous turn” is not where you think it was. (and we both know that it is only “disastrous” because it does not align with how you want the law to be).

          2. 9.1.1.1.2

            MM Reinier is doing no more than report the line taken at the EPO these past ten years or so, where eligibility (Art 52 EPC) is achieved only when the claimed subject matter has “technical character”. A CD with pits in it has technical character and so is eligible even if its only novelty lies in the tune represented by the pits.

            The point is though that under the EPC not all aspects of structural novelty count towards patentable non-obviousness. Inventive tune composition is no basis for recognition of patentable non-obviousness

            This proposition strikes me as so unassailable and banal that it amazes me how many people have difficulty with it.

            Of course, I do see that, as a practical matter, because there is no jurisprudence that distinguishes different fields of inventive activity, a prior art-relative rather than absolute (within the useful arts Y/N) “gatekeeping function” eligibility filter has to be allocated to examination under 35 USC 101. Same in England.

            1. 9.1.1.1.2.1

              Your “has to be” is simply far too biased with your desired end results and your continual lack of due appreciation between the differences in sovereign law, MaxDrei.

              1. 9.1.1.1.2.1.1

                I do not really think that it shows any lack of respect for U.S. sovereignty to say “hey, we do things this way in the EP and it works pretty well. You seem to be having problems, so maybe you might want to consider how we do it.”

                The U.S. is not so perfect that we cannot learn a thing or two from other jurisdictions.

                1. That would be great if that were the tact that MaxDrei took.

                  It is not.

                  Instead he shills for the “EPO way” as if the US was not set up differently at all.

                  He’s been doing the same “provacative” throw-sht-at-the-wall for years.

          3. 9.1.1.1.4

            Malcolm stumbles onto a nut:

            Either that or the “prior art” tests have to “depend on the subject matter of the claim.”

            Just not how you are grasping the situation, Malcolm.

            The direct and straightforward comment is one that I have already provided: Wolfgang Pauli’s “Not even wrong.”

            I have been consistent – and consistently clear – that you must start within the Useful Arts.

            The Fine Arts thus cannot serve as any type of “argument” within patent law.

            Your asking someone else to “just get used to it” is more than a bit ironic given how you yourself refuse to “get used to it” for patent protection for the aspect of the manufacture and machine component that is software that deserves patent protection under the law as written by Congress.

  13. 8

    With regard to the comment about a “paid” post, there was no money received for this post. It was entirely in the interest of furthering deeper thought and coherent legal dialog on an important patent policy issue. I assume that anonymous rantings will be largely ignored, as they should be.

    1. 8.1

      Bruce,

      The comment about “paid” is not directed to you (I believe).

      Note the word “flood.”

      This is apparently your first time here, as else wise you would have noticed that the “flood” is Malcolm and his echoes.

      Yes, your piece here does tend to support a viewpoint that those “flooders” prefer: the active participation of the judicial branch in the writing (implicit, explicit, or both) of statutory law that our Constitution designated as belonging only to the legislature.

      Your article does seem to merely assume that such overreach is perfectly fine, when such overreach is part and parcel of the problem.

    2. 8.2

      What should be ignored Bruce is publications in the vanity press called law journals that purport to be scholarship.

      And, Bruce, try to address the substance of what is said. Try to address substance. Consistently, academics on this blog yap their little brains out and then run away from any substantive argument.

      And I would go one on one with any of you in a moderated debate where you were actually judged on your performance. Just running from substance and yapping about elements of a claim being a witch or blabbering about how patents are destroying our software industry (10 times what it is in another part of the world and we are the ones that protect it with patents–reality.)

      1. 8.2.1

        It seems a bit much to dismiss a Paul Hastings partner as an “academic” merely because he teaches a class at NYU in the capacity of an adjunct professor.

        Whatever other criticisms you may have, this is not someone isolated from real-world experience by the confines of the Ivory Tower.

        Somehow, gripes about substance-free responses ring rather hollow in view of 8.2.

        1. 8.2.1.1

          It is not a “write whatever” card to be a partner at that firm, Greg.

          In fact, if you want to play the “but he’s a partner” game, I would be even harsher for his lapses of grasping the nuances and actual history of the 101 struggle.

          As I pointed out elsewhere, it appears that his knowledge base is in fact “book” centered (and litigation), and not in the “real world” of innovating and prosecuting that innovation.

          1. 8.2.1.1.1

            You misunderstand my point. I am not trying to say “we should respect the author because he is a partner,” or “we should respect him because he works in a big, prestigious firm.” My only point is that it is a cheap shot to deride him as some ivory tower academic.

            These authors answer to clients and have to deal with real-world consequences just like the rest of us. An adjunct professorship does not make one an “academic,” so you cannot brush away his argument simply by invoking the hackneyed trope that professors are too removed from the “real world” to understand.

            Argue your response on the merits, without the subtle ad hominems.

            1. 8.2.1.1.1.1

              Your point is taken – and while it is not an “Ivory” tower, he has built his tower on shifting sands of a p00r foundation of understanding the prosecution and innovation side, and attempting far too much to ig nore the nuances of the very real battles among the different Justices of the decisions on 101 post 1952.

              I did NOT brush away his argument “just because.” – Do not do what you are accusing others of doing (brushing away my arguments. Read them again.

              And the use of ad hominem is NOT to be avoided altogether – those areas that do have a link, do have merit, even if a bit tawdry. As I pointed out – there IS a bit of “towerism” in his views.

            2. 8.2.1.1.1.2

              See post 1 – I found it difficult to even get to his premise, as the foundation upon which he wanted to lay that premise was simply too ill-begotten.

            3. 8.2.1.1.1.3

              And “answering to clients” alone is simply not enough – if that answering is only on the litigation side.

              There are certain other common posters here that exhibit similar one-sided type flaws in their appreciation of patent law, and the tendency is sometimes overt to place the infringer (or supposed infringer) in higher regard than the patent owner. There is simply FAR too much of the mindset of “patent =bad and enforcement of patent = even worse”

    1. 7.2

      This comment is a clear sign that “In this article, we do not take a position on any of these viewpoints,” if ever I saw one.

      ROFLPIMP

    2. 7.3

      Dittos.

      Anybody with a brain knew that simply adding generic hardware was not enough, Archer was clearly right, and yet we got State Street Bank anyway.

      When a claim mixes the ineligible with the eligible, invention must be in the eligible, or the ineligible must be applied to transform the eligible to a different state or thing. This really is the essences of the printed matter doctrine that has been with us more than 100 years.

      1. 7.3.1

        The cotton gin was made from generic hardware …. combined with a new configuration.

        Why is adding “generic hardware” not enough?

        1. 7.3.1.1

          Protons, neutrons and electrons are ALL “generic”…

          …as is the “law of nature” as to how they are put together and combined with one another…

  14. 6

    “Analysis of § 101 patent eligibility generally involves discourse using the term “preemption.””

    It’s beautiful to see one’s children all growed up.

    1. 6.1

      Lol – ALL claims preempt – that’s what they do.

      Not sure you want to claim that “child.”

      1. 6.1.1

        Yes anon, but not all claims preempt judicially excepted subject matter. Which is the topic.

        And yes, I’ll claim my own.

        1. 6.1.1.1

          Claims preempt what they preempt.

          Always has been true, and is a point notably lacking in this dissertation.

          Your comment about preempting a judicially excepted subject matter misses the point of the expansion of that exception, and the limitless “Gist/Abstract” sword that has been crafted by the Supreme Court.

          Then again, you already knew that, eh?

          1. 6.1.1.1.1

            “Claims preempt what they preempt.”

            Yep, and if what they preempt is forbidden from being preempt we have a problem.

            “Always has been true, and is a point notably lacking in this dissertation.”

            That’s because everyone already knows it re re, it doesn’t need to be said.

            “the point of the expansion of that exception”

            It hasn’t been expanded at all, at least not during the last 70 years.

            1. 6.1.1.1.1.1

              Except it not being said is missing from how that impacts the rest of the analysis…

              Are you really that obtuse?

              (and to your “other” point, you need to first realize what actually happened with the Act of 1952 and the stripping of the common law ability from the judiciary of setting the meaning of the word “invention.”

              That’s rather critical to this conversation.

              (Let’s see if the Judge Rich insight needs to be exposed, even after you profess to have read it)

              1. 6.1.1.1.1.1.1

                “Except it not being said is missing from how that impacts the rest of the analysis…”

                There is no “impact” to the “rest” of the analysis. That “impact” is your imagination brosefus.

                “(and to your “other” point, you need to first realize what actually happened with the Act of 1952 and the stripping of the common law ability from the judiciary of setting the meaning of the word “invention.””

                According to judge Rich in 64′ nobody at the time in the 50’s (including himself) even understood what they were doing because the language hadn’t yet evolved enough for them to even know. I think it fair of the courts to not presume that the congress intended to strip away subject matter eligibility just because they took the obviousness part out to a separate section. And so do they. They’re the ones that get to decide, and they’ve decided. Congress has been mum.

                1. In reverse order:

                  You are still getting Judge Rich wrong, 6.

                  And no, this is most definitely not an “in your imagination” thing here.

                2. If I’m getting him so wrong anon, then why not go ahead and cite specifically to what he said that is counter to what I’m saying? I mean, I can practically verbatim cite to what he was saying, it’s pretty clear what he said.

                3. You are misapplying the timing of what he said and when he said it, and also omitting what else he has said on the matter that is not congruent with your desired takeaway.

                  Further, and more to the point here, the “rest of the analysis” is not dependent on Judge Rich, but my view is also congruent with what Federico has written, and your “cult O the claim” leanings are still very much present in your bias against what the law plainly is.

                4. LOL – it’s not vague at all.

                  You happened upon one tome of Judge Rich and do not understand the larger context of his writings or life’s work.

                  You thus misapply his wisdom and muck up the time aspect of what he knew when and what he believed when.

                5. “You happened upon one tome of Judge Rich and do not understand the larger context of his writings or life’s work.”

                  I’ve read quite a bit of his works and decisions bro. This one was just more illuminating than most.

                6. You have glommed into something that you think supports what you want the law to be and do not recognize the item itself in relation to his other work.

                  Classic taking something out of context.

                7. “SYou have glommed into something that you think supports what you want the law to be”

                  Hardly, I was quite surprised to read his little history that set things forth quite so explicitly. And it isn’t what “I” want the law to be, as I’ve said many times, I would have made 101 quite different than what the law is and what the statute says. The law today is as the supremes want it to be in order to govern the country. I am not on the surpreme court brosefus.

                  “and do not recognize the item itself in relation to his other work.”

                  Sure I do. He appears to have evolved on the subject somewhat in the 60’s. Probably after talking to his bros in the patent bar after they even more fully figured out just how “good” the new statute was for them arguing for patentability. Though I don’t know that part for sure, he seems to have done quite a bit of it in the early 60’s from what he said, so I wouldn’t be surprised if it continued.

                8. The law today is as the supremes want it to be

                  Yet another classic mistake.

                  6, statutory law – and explicitly the statutory law that is patent law – is not up to the Supreme Court.

                  Go back and revisit your basic civics and separation of powers.

                9. “6, statutory law – and explicitly the statutory law that is patent law – is not up to the Supreme Court.”

                  Well you should tell the supremes. Oh wait! Someone already did! Wahmp Waaaaa.

                10. Not seeing the funny in your attempted joke of a “Wahmp Waaaaa.

                  Who is this someone and what did this someone actually say to the Supreme Court? Was the separation of powers elucidated in that discussion?

                11. It was several someones anon. Check the oral arguments and case briefs for all the recent 101 cases there will be plenty of people arguing similarly. The supremes got plenty of treatment on separation of powers. And more generally had plenty of people urging them to just leave it up to congress. Amici even brought it up.

                12. Thanks 6 – I misunderstood you and thought it was a party to a case (a lot of that Amici stuff is not worth reading).

                  Do you have a specific example in mind?

                  I have to ask as I have personally busted you far too many times for simply making stuff up, so if you don’t mind, I’d like to see you supply a specific one (or more).

  15. 5

    The upfront or “gatekeeping” point in TIME of the D.C. application of the Alice or Mayo unpatentable subject matter tests is undoubtedly its most unpopular feature and its biggest impact. When this defense can be effectively raised it can be raised up front, before most discovery costs, and well before trial. Thus, it can be effectively used by defendants in many of the approximately 97% of prior patent suits that used to settle before trial. Disposing of a considerable number of recent patent suits at relatively low total billings or other costs, and with no or very small license payments. Whereas before, as a practical manner, 103 issues were of no benefit to defendants unless either the jury or the Fed. Cir. on appeal could be convinced of their effectiveness. Successful S.J. on 103 was quite rare.
    Another sore point of this “gatekeeping” required by the Sup. Ct., is that it means that there is no real 103 trial on those parts of the claim adjudged to be well known in the prior art. But that raises an important question. In how many of these D.C. preliminary 101 decisions have the court’s findings of the parts of the claim adjudged to be well known in the prior art been successfully contested on appeal as erronious or unproven under a burden of clear and convincing evidence? Are such appeals pending, as they should be, or did the subject patent owners effectively concede this point for those claim elements in these cases so far?

    1. 5.1

      If the decision is on 101 and 103 is not even reached, then there will be NO appeals on the not-reached 103 angle.

      How could there be?

    2. 5.2

      So, in other words, the SCOTUS came up with a way for a judge to dispense with any case because they don’t like the claims. Your argument about appeals of the judge’s musings may be difficult because there was never an opportunity to even contest anything factually.

      1. 5.2.1

        Re both 5.1 and 5.2: because, as you know, the Alice 1o1 step 2 requires the defendant to prove that those claim elements that are not part of the claimed abstraction itself are all in the prior art and add nothing patentable. Hence, obviously, the absence or inadequacy of such proof could be appealed. If there really was “no opportunity to even contest anything factually” that itself would clearly be appealable.
        Just because the Alice 101 test is so ambiguous does not require simply giving up, rolling over, and playing dead while preoccupied with useless foaming at the mouth.

        1. 5.2.1.1

          Paul,

          Alice 101 Step 2’s “transform the nature of the claim” vis a vis “adding something significant (which is neither defined nor measured under ANY version of the law as written by Congress” is NOT a novelty or obviousness test which would be (strictly) fact based. The example (and only an example) given by the Court was both conventional and high level of generality. Chasing the windmill of only “conventionality” provides NO BASIS for factual challenge in order to overturn something that is just not there in the law as written by Congress. Let’s not forget that the Office attempt to flesh this out was just thrown out by the courts.

          This is very much similar to the non-definition of “Abstract” in the first place. Both of which render a better argument that the law as written by the Supreme Court is itself unconstitutional for being Void for Vagueness (better than rolling over or pursuing your windmill).

          Furthermore, parsing a claim and demanding that an element of the claim (alone) be the invention (inventive step) is exactly part of the problem under discussion.

          You seem to want to suffer the f00l and give credence to the take away instead of fighting that wrongness. Calling it “useless foaming at the mouth is the coward’s path.

          That or the path of someone who does not want (suitably) strong patents.

          Or both.

          And since you have voluntarily relinquished your registration number and therefore no longer serve to protect those who are attempting to get patents (prosecution), it is safe to say that at least one of these two paths apply to you.

          1. 5.2.1.1.1

            I am sure that both the Supreme Court and Congress are duly impressed with the constant repetition that everything you disagree with must be unconstitutional [in your grasp of Constitutional Law superior to anyone on the Supreme Court], and therefore any attempt to present realistic or objective views from someone no longer having your own financial self-interests should be attacked.

            1. 5.2.1.1.1.1

              Hahaha, nice attempt at diversion there Paul.

              Of course, it is a rather feeble strawman to say that everything I disagree with is a Constitutional issue, as we both know that such is simply not true.

              On the other hand, issues that truly are Constitutional, you seem more than pleased to NOT stick up for the right thing to do.

              As for “financial self-interests,” your attempt slight and intimation that I place my financial self-interests above the needs of my clients – or more critically – a proper understanding of the law, is baseless and without support of any kind.

              Once again, your reply attack is simply wrong.

              Maybe instead of painting yourself as the “v1ctem” under attack, you want to actually discuss the points I present so “repeatedly.”

              (here’s a hint: stop running away from the points and I won’t have to present them so many times)

              1. 5.2.1.1.1.1.1

                my clients

                I thought you were still working the mailroom, screening letters to your employers.

  16. 4

    Judicial nonsense. Look, a claim is A, B, …, Z elements. There is nothing in patent law in the US to say elements A and B are a witch. In Europe, there is a law to look if the elements are technical.

    Please show examples where your witch law is necessary instead of 102/103/112.

    Please go away you judicial activist anti-patent people. You are not fooling anyone. You are acting like criminals.

  17. 3

    For example, if the novelty or nonobviousness analyses would devolve into an evaluation of the novelty or nonobviousness of an idea or natural phenomenon itself, without significantly more to that inquiry, that may indicate to the inventor, the patent examiner, or the court that the invention is treading near the borderline of patent-ineligible subject matter.

    Yup. That’s where the sentiment in Sequenom goes wrong. The judges say “Man this natural phoenomenon is really really non-obvious and really really has utility, so we should want to protect it, and Congress has expressed a desire to protect as much as possible, so it should be eligible” without questioning whether the framers intended patent law to be the mechanism by which the act should be protected.

    Nobody is questioning that some natural facts or logical proofs are difficult to achieve, that is undoubtably the case. The only question is whether patent law is the intended mechanism for encouraging the difficult path to discovery. In Sequenom’s case, it clearly isn’t. That isn’t to say the inventors shouldn’t be rewarded, and that disclosure cannot be either coerced (through praise or money) or even compelled, simply that it isn’t patent law to do it.

    1. 3.1

      Random, the whole point is that one cannot protect the product or law of nature per se. The issue never is whether the product or law is novel or non obvious. Going down that rat hole will always lead to patentability of the newly discovered whatever.

    2. 3.2

      What type of “utility” does the item – in and of itself – have?

      Is there some form of intrinsic utility? Or is this utility actually in the interaction of that item in order to obtain some end?

      Not meant as a slam, Random, just ruminating as to what “utility” is being discussed….

  18. 2

    “but for § 101 eligibility principles, a patent could be awarded for originating a new musical composition—something generally agreed to be outside the subject of patent law—by claiming the song in a generic physical form such as a CD”

    Exactly my point, that I have been urging here for years, that at the EPO the examination under 103 is confined to an enquiry whether the contribution, made by the inventor and asserted to be the justification for the award of exclusive rights, is within the ambit of the useful arts but not so confined in the USA or the UK. This is why the USA and the UK need a powerful and effective eligibility filter while the EPO needs none.

  19. 1

    Rather, we write to shed more light on the gatekeeping function of patent eligibility which we see permeating judicial decisions on § 101, making it worthy of careful contemplation when considering any one of the positions expressed above.

    Right off the bat, this smacks of having a presupposition that the judiciary has a “rightful” place in that selfsame “permeation.”

    Analysis of § 101 patent eligibility generally involves discourse using the term ‘preemption.’
    And true to that “leaning,” the infusion of the ‘preemption’ view – but here’s a bit of clarity for the authors: ALL claims preempt – that is what they do.

    But, at the same time, we see in the cases that complete preemption by a patent claim [ ] has not been the sine qua non of patent ineligibility.
    That is NOT quite a valid takeaway. That is not supported by the errant “brush off” of “we have seen the Supreme Court reject eligibility arguments that merely contend that the claim in fact recites some physical structure, and so does not completely preempt the underlying abstract idea or natural phenomenon itself (putting aside for the moment what that structure is).
    You have taken a fault in the logic and not addressed that fault directly, but have attempted to twist that fault into something else entirely. This NEITHER address the fault itself, nor supports the desired takeaway. (it should be a clue that you reach back to a losing dissent in Alappat to try to make an affirmative controlling law ‘view’).
    Also, the attempted retelling of history here with the whitewashing of “As Chief Judge Archer observed, if patent eligibility was necessarily satisfied by reciting any physical structure, then Diamond v. Diehr would have been a much shorter opinion, and Flook and Benson would have come out the other way. completely obliterates the actual historical battle and give and take between different philosophical camps in those days.
    This is a disservice to the understanding of this topic.

    And I haven’t even gotten to your view on gatekeeping…

    1. 1.1

      ..and the next paragraph puts this article directly in the garbage can with its mixing in of Non-Useful Arts….

      Not even wrong” – in the best Wolfgang Pauli tones.

    2. 1.2

      ..and the next paragraph puts this article directly in the [refuse]** can with its mixing in of Non-Useful Arts….

      Not even wrong” – in the best Wolfgang Pauli tones.

      **the filter is wound WAY too tight here

    3. 1.3

      “(it should be a clue that you reach back to a losing dissent in Alappat to try to make an affirmative controlling law ‘view’).”

      A losing dissent that today would have been the majority. Because the good chief judge was trying to follow the law.

      “completely obliterates the actual historical battle and give and take between different philosophical camps in those days.”

      Anon, there never was a “historical battle” and “give and take” between different “camps” in the old days on this topic. There was simply the supreme court laying their thing down, and then judge rich and some other folks ignoring it for awhile, and then it being brought back to the fore. That’s all that happened bro. No give. No take. No battle. All that sht is only in your mind bro.

      1. 1.3.1

        Attempts to close your eyes to realty and say “it never happened,” or “it only happened in your mind,” only point out that you are in denial, 6.

        Now why would you attempt to deny such?

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