Life Tech v. Promega: Supreme Court Limits Contributory Liability for Exports

Life Technologies Corp. v. Promega Corp. (Supreme Court 2017)

In a largely-unanimous opinion, the Supreme Court has ruled that the “supply of a single component of a multicomponent invention for manufacture abroad does not give rise to §271(f)(1) liability.”

The case interprets the patent infringement statute 35 U.S.C. §271(f)(1) that creates liability for supplying from the US “all or a substantial portion of the components of a patented invention” to be combined abroad in a manner that would infringe the US patent (if it had been combined in the US).  The patent covers a genetic testing kit that includes five different components.  The accused infringement was shipping one component of the kit (Taq polymerase) to the UK for combination with the other components. The Federal Circuit had ruled that a single component could constitute a “substantial portion of the components” under the statute.

Writing for the court, Justice Sotomayor found that the “substantial portion” should be seen as a quantitative requirement and that a single component is not sufficient.

Although they joined with the bulk of the opinion, Justices Alito and Thomas did not join the portion suggesting that 271(f) was intended as a narrow provision enacted by congress only to fill the gap left by Deepsouth Packing Co. v. Laitram Corp., 406 U. S. 518 (1972).  Rather, in a concurring opinion, justice Alito writes that congress intended “to go at least a little further.”  The concurrence also includes its interpretative statement on the majority opinion:

I note, in addition, that while the Court holds that a single component cannot constitute a substantial portion of an invention’s components for §271(f)(1) purposes, I do not read the opinion to suggest that any number greater than one is sufficient. In other words, today’s opinion establishes that more than one component is necessary, but does not address how much more.

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260 thoughts on “Life Tech v. Promega: Supreme Court Limits Contributory Liability for Exports

  1. The perpetually tr0 lling Bobbsy Twins (Night Writer and “anon”) are really doing their best to kick up dust around this decision — probably the least controversial Supreme Court patent decision written in 20 years.

    Gee, I wonder what their problem is?

    LOLOLOLOLOLOLOLOLOL

    Just kidding. We all know what their problem is.

    1. Talking about kicking up dust and tr011ing….

      What exactly was your point?

      Did you address any point actually brought up?

      The obvious answers are that you have no point, and no, all that you did was try your typical ad hominem.

      “Go figure Folks”

    2. This fits here as well:

      It’s rather telling that Malcolm supplied the link to the Duffy article in the first place, but then turns around and refuses to even bother with a careful reading of that very link.

      It’s not the first time that he has done this type of premature dance.

      Perhaps Malcolm should take a moment to go beyond surface reading of something that he thinks may feels like an affirmation of his desired Ends and contemplate the Means by which those ends are achieved…

      1. It is just ridiculous that MM posts an article and claims it supports his positions and then won’t engage in substantive debate.

        1. Of course not – 11 years of that, but we are to believe that the good Prof. wants a healthy “ecosystem”…

          While there may in fact be no tie between the two, this is exactly the type of thing that creates the perceptions of such.

          And yes, that should pain you Prof. – but that is a pain that you control.

  2. Pretty clear that this opinion is just another anti-patent opinion from the SCOTUS. Sotomayor fabricates some structure around f(1) and f(2) that was never intended and is against the plain meaning of the statute and says it makes it cool for one vs. more than one element. But, the statute was clearly talking about how valuable the element was not how many there are.

    So, Sotomayer just said, gee, wouldn’t it be cool to weaken patents further and here is this neat trick where we can say the number of elements is relevant. Only a person who knows nothing about patent law would misread the statute as she has done. And, Duffy, has shown that he is nothing but a hack with his analysis.

    1. To anyone that cares about this country, this opinion should be deeply disturbing. Again, we have the SCOTUS just rewriting a statute to fit their judicial activism goals. Just wrong and out of bounds.

      And, at some level, insane. Anyone can look at a statute and generate this type of post hoc analysis and rewrite the statute or improve it (as it seems to be pretty clearly implied that she has improved the statute by her efforts.)

      Just. Wrong.

    2. Duffy is reflecting on what the Court has done.

      I do think that he probably should have taken them to task for their re-writing of the words of Congress under the guise of “ambiguity.”

      Just because a word may be broad, does not mean that it is ambiguous.

      Truth be told – and as mentioned prior to the decision, the word “substantial portion” in IP law is meant to be broad and is meant to include both the quantitative and qualitative meanings.

      By rewriting the statute to achieve their desired Ends (and to REPEAT the very reason why Congress acted in the first place to change one of their own decisions), the Court simply shows a LACK of understanding of patent law and the history of patent law.

      At least one of the Justices recognized that the change by Congress was intended to do more than merely undo the single (bad) decision of the Court.

      And at least lip service was given to 1 U.S. 1, so that naysayers could not claim that the lack of mention has to mean that THAT bastion of statutory interpretation (as opposed to the re-wrtitng here) remains controlling precedent.

      1. Duffy didn’t “reflect” on what the court did. Duffy analyzed and approved of what the court did. Duffy has just lost all credibility.

        1. Night Writer,

          I did take another read at what Prof. Duffy did in his work, and if he were my student, he indeed would receive an “F” (or perhaps if I were in a generous mood, a “D”).

          Whet he neglected to do in looking at 271(f)(1), was the very thing that Malcolm glommed onto here (and that I suggested previously, but that Malcolm refused to even acknowledge back then): there is more than just the “pieces” parts of 271(f)(1). This leads to his faulty and incomplete “extra-territorial” analysis. This if by itself is not damming, just incredibly sloppy.

          What Prof. Duffy also plainly got wrong (mirroring the Court, by the way), is that “substantial” in other IP laws – most immediately, copyright law, which comes from the same Constitutional mooring – clearly uses both the quantitative and the qualitative meanings of the word – WITHOUT any hint of “ambiguity.”

          So even though he does recognize that Congress reacted against the DeepSouth loophole, with MORE than just the strict item within DeepSouth, he lets his sloppiness from the first error above cascade into a deeper error with (as you put it, his approval):

          If only a small portion of components counted as a “substantial portion,” then U.S. patent law would have broader effects on what is largely foreign economic activity.

          The Supreme Court’s ruling – that a single component never qualifies as a substantial portion of the components – tends to curb the extraterritorial effects of Section 271(f), and that result is sensible given that the baseline rule of U.S. patent law is still a principle of territoriality.

          He is simply wrong on the “curbing” portion, and is further wrong in NOT pointing out that it is simply NOT UP TO THE COURT to decide to “read” the statute to reach the End that the Court wanted to reach.

          There is no “ambiguity” in a word that reflects – as in other sections of IP law – a desire for both quantitative as well as qualitative protection.

          Breadth is not ambiguity.

          Also, “portion” – the subject of the clause in question; and being a singular noun – would lead to a better structural argument, which Prof. Duffy did not see in his “drinking the Kool Aid” of the Supreme Court nose of wax treatment.

          He also allows himself to be confused and conflated with 271(f)(2), which is a separate section, with a separate intent.

          Lastly, as far as his last comment of “rigid rule versus flexible standard,” he too misses the obvious connection as to exactly when the Court has chosen one or the other: that underlying animus is when the patent holder is less well off.

          As far as people not wanting to think that the Supreme Court could (dare?) have such an animus, one only has to look back to the 1930’3 and 1940’s when the (self) characterization of “the only valid patent is one that has not yet appeared before us” took shape.

            1. Gee Malcolm, here is your chance to be a trend setter by reading and engaging in an inte11ectually honest dialogue on the points presented…

              What are the odds of that happening?

            2. It’s rather telling that Malcolm supplied the link to the Duffy article in the first place, but then turns around and refuses to even bother with a careful reading of that very link.

              It’s not the first time that he has done this type of premature dance.

              Perhaps Malcolm should take a moment to go beyond surface reading of something that he thinks may feels like an affirmation of his desired Ends and contemplate the Means by which those ends are achieved…

  3. It appears from my email that Ned Heller attempted to post in response to my attempts to answer his question in 5.5.3.1.3. The attempt seems came through to my email over 9 hours ago, but have haven’t found it on the website (despite using ‘Find’ in the browser to search for keywords). Therefore I am posting Ned Heller’s comment below.

    Distant Perspective, since it has been days since I requested that Dennis pass my long post through the filter with no response, I would just like to say that just having mental steps in a claim is not sufficient to declare it ineligible.

    The historic analysis of “abstract” is set forth in cases such as Le Roy v. Tatham and O’Reilly v. Morse. All it stands for is that inventions cannot be claimed at the level of the idea, but must be claimed at the level of implementation. This has nothing to do with mental steps.

    We learned in Diehr that the presence in the claim, even the only novel subject matter in the claim can be a mathematical algorithm provided that it is applied to a traditional process or machine to transform it into a new state or thing.

    While it is true that contracts are abstract, claims may include contracts if the claim taken as a whole is directed to otherwise patentable subject matter – when there is novelty in the means or other statutory processes. Thus a novel way of displaying information about contracts is patentable subject matter.

    If the Bilski claims are not ineligible for failing the MOT, are not categorically excluded because they are business methods, or not categorically excluded because they involve abstractions such as contracts, not categorically excluded because they include mathematics, and are not categorically excluded because they are not abstract in the sense of Le Roy v. Tatham and O’Reilly v. Morse, what is the reason they were held ineligible?

    You simply have not given an explanation just as the Supreme Court did not in Bilski.

    1. I think the short answer would be that the claims in Bilski would be excluded because they are directed do (and arguably contain nothing else than) abstract ideas in the sense of Benson.

      Whether the concept of abstract in the sense of Benson coincides with or merely comprises “abstract in the sense of Le Roy v. Tatham and O’Reilly v. Morse”, as you have defined the latter, is an arguable question, and I believe that, if they could or would answer you, SCOTUS would say that their understanding of the meaning and scope of the term “abstract idea” doesn’t coincide with yours, subsuming yours perhaps, but being broader, as suggested by the fact that they are joined with “laws of nature” and “natural phenomena”.

      If the Supreme Court construed “abstract” as you have, it is difficult to see how it could be argued that Benson and Tabbot had not reduced their invention to practice, or claimed at a level of “abstraction” (in the sense of the 19th century cases you mention) too far above the claimed invention described in the specification.

      I put forward the hypothesis that the “judicial exceptions” and other common law doctrines arose largely because SCOTUS, then as now, considered them necessary in order to interpret 101 and its predecessors consistently with the constitutional requirement “to promote the progress of science and the useful arts”. The text and legislative history surely showed that the reach of “process” under 101 was no wider than the joint reach of “art” or “process” under 19th century acts. The mechanism for granting a monopoly described in a “utility patent” is through the issue of letters patent. Under English law, the issuance of letters patent is an exercise of the royal prerogative (in practice exercised by the government on behalf of the monarch), and provides a general mechanism for granting titles of nobility, royal charters and the like. In order to seek to revoke such a grant in the 18th century, the mechanism was to seek a writ of ‘scire facias’ from the Lord Chancellor. If my understanding is correct, the President of the US and the members of the executive do not have such wideranging power to issue letters patent, but Congress is authorized to make laws to permit designated members of the executive (originally the President) to issue letters patent to inventors, subject to the requirement to promote the progress of science and the useful arts, and subject to a time limitation. I looked at 18th century US patent acts. The 1793 act states that, if inventors allege that they have invented a new and useful … it shall be lawful (emphasis added) for the Secretary of State to cause letters patent to be made out and sealed by the teste of the President of the United States. I further suggest that 101 is the section of the current US patent act whose requirements are intended to ensure that letters patent comply with the constitutional requirements.

      1. I would also add for Distant Perspective’s perspective, that the theory of Mental Steps arose – and d1ed – in the course of patent history, and that the zombie version of mental steps being tried to be trotted out today as some bulwark of 101 guidance suffers tremendously from the coined term of Anthropomorphication – or, trying to use the software and computer combination as merely some type of [Old Box] and mere proxy for human though.

        Since my laying such a thing out in clear detail would not be accepted by the (sAme) naysayers, I have repeatedly inquired as to Prof. Crouch or one of his academic friends to set the record straight on the topic.

        To this date, no takers for what obviously is a point of obfuscation in the 101 discussion.

        As to “I put forward the hypothesis that the “judicial exceptions” and other common law doctrines arose largely because SCOTUS, then as now, considered them necessary in order to interpret 101 and its predecessors consistently with the constitutional requirement “to promote the progress of science and the useful arts”.

        I would remind you that the Act of 1952 removed the power of the Court to use that self same common law approach to set the meaning of the word “invention.” Yes, the Court had become addicted to that common law power that Congress had shared with the judicial branch, and the power addiction remains to this day.

        Even to the point, that the Court would violate separation of powers as well as other Constitutional provisions. For example, the use of the Court with the speculative and future looking “may impede promotion” ventures into the advisory opinion realm, which is compounded by the Court not overturning the law itself that would cause the problem, but instead re-writes the law – where no ambiguity exists, mind you – and uses its desired version to rule on a specific case.

      2. Distant, your understanding of the patent laws largely correct. Because our laws originated in England they largely subsumed English interpretations. Thus Art was comprised the techniques involved in making things – making manufactures. They involved transformations of physical things from one state to another.

        Abstractions in the sense that you are speaking exist solely in the mind and do not involve physical phenomena. Thus I would agree that a series of steps all of which are abstractions do not involve the transformation of physical things from one state to another. Effectively, this is another way of saying that the claims in Bilski failed the MOT.

        But what confuses is that the Supreme Court seems to link this newfound “exception” to the historical cases which are talking instead about an entirely different concept – claiming inventions at the level of the idea. The inventions themselves can involve physical transformations or new machines, they just are two broadly stated. Thus by calling the claims in Bilski “abstract,” and linking the justification for doing so to the historical cases, only confuses.

        Perhaps the source of the problem originated in Benson because the claims in Bilski are indeed like the claims in Benson. Mathematics entirely involves abstractions.

        So understood, we are in agreement with what is actually going on: the Supreme Court and the lower courts are following the MOT without saying they are doing so. There has been no case that I can think of that has been found eligible that does not involve a special machine or a transformation of something physical from one state to another.

        1. Ned,

          Further and once upon a time, you engaged in a discussion with the realization that Benson was wrong in at least claim 8.

          Do you remember that?

          1. As for your history lesson of “Arts,” Ned, it would be an (unethical) and critical omission to leave out how Congress changed that in 1952 with 35 U.S.C. 100(b), now wouldn’t it?

            Given as you are discussing the actual law with a non-lawyer, you do have an obligation to NOT omit such a critical understanding – even (and especially) if the FACT of that matter is detrimental to your desired version of the law.

            You may bend your oath, but such does more than bend it.

        2. The MOT and examination of the claims for “abstract ideas” give the same result. This should be no surprise. SCOTUS said that MOT was an “important and useful clue”. I would imagine that SCOTUS’s (unstated) version would say something like “if no machine, then at least transformation”. But MOT as an absolute precondition for patent-eligibility was expressly excluded from the holding in Benson:
          “It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a ‘different state or thing.’ We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents.” Thus the Bilski majority saw no need to go beyond Benson in this regard. And, more importantly, SCOTUS provided no warrant for assuming that a claim that passes MOT must necessarily be patent-eligible.

          The majority in Bilski expressly stated that they were ruling narrowly. Claims 1 and 4 were certainly drawn to abstract ideas, Why? Surely apparent from the face of the claims, and if one really cannot see this immediately, then note that “Indeed, all members of the Court agree that the patent application at issue here falls outside of § 101 because it claims an abstract idea.” Claim 1 is said to claim “hedging”, pure and simple, and if claim elements such as “historical averages” modify in any way the concept of hedging, they do not do so in any way that makes Claim 1 any less abstract. The mathematical formulae in Claim 4 are so banal, they could just as well have been stated in words. They add nothing meaningful to the claim, and, being no more than a rudimentary formula to calculate a bill, add nothing to make the claim less abstract. Pace Judge Rich, bills and prices are abstractions, irrespective of how specific the formula used to calculate them. The fact that Bilski’s claims could be deemed ineligible on the basis of governing precedent in Benson and Flook is possibly something the majority in Bilski wanted to emphasize. They saw no need to discuss at length why Bilski’s claims were drawn to “abstract intellectual concepts”.

          Looking at other claims, note that 7(c) is the claim limitation of “assuming that the summed payoffs are normally distributed”. Only humans “assume”!

          Justice Steven’s criticisms? Well SCOTUS addressed them in Mayo and Alice, with no dissents.

          The real import of the majority holding is that all of Benson, Flook and Diehr are binding precedent (with dicta in Flook somewhat modified in Diehr). Nothing in Diehr impugns Benson. After all Diehr (as the Diehr court explained, and the Bilski court emphasized) was directed to an improvement in a traditional industrial process for curing rubber, which happened to involve a computer. There was surely nothing innovative with regard to the equation repeatedly calculated, or the programming of the computer. Whatever the claims in Benson were drawn to, they weren’t drawn to an improvement in such a traditional industrial process. And surely today, a claim to an improvement in (say) a freezer cabinet or a car should not be barred simply because the design includes a microchip. And a claim is surely eligible if it improves the microchip or car.

          Surely, in Diehr, the final paragraph IV is intended to summarize the holding, and the most important parts of the reasoning.

          Comparing Diehr’s characterization of the holding in Flook with Mayo/Alice, note that whatever else is in the claims besides the ineligible subject matter can fail to be “insignificant” (Diehr) if and only if there is “something more” (Mayo/Alice). So one way of reading the Mayo/Alice framework is that it generalizes aspects of Flook affirmed in Diehr. If “insignificant” postsolution activity fails to transform an unpatentable principle into a patentable process, then the claim elements, individually or in combination, fail to supply that “something more”. The term “insignificant” is no less vague than “something more”.

          1. But MOT as an absolute precondition for patent-eligibility was expressly excluded from the holding in Benson

            So was software qua software.

            But that has never stopped the likes of Ned and Malcolm from proclaiming their feelings otherwise.

          2. The real import of the majority holding is that all of Benson, Flook and Diehr are binding precedent (with dicta in Flook somewhat modified in Diehr). Nothing in Diehr impugns Benson.

            Not quite correct – read again Bilski which plainly indicates that both Benson and Flook were cabined by Diehr.

            Then for further measure, note that no such reciprocal language cabining Diehr can be found, and quite in fact, the Court lauds Diehr as the case “most on point” even as they do not follow their own writings in Diehr.

            The Court has cherry-picked its way into a legal logic corner.

            1. I would also recommend – since you do seem earnest in your attempt to gain a better understanding – that you note which Justices were on which sides of the series of patent eligibility decisions.

              These decisions did not happen in a vacuum.

              And further, the culmination in Bilski of Justice Stevens losing the role of writing the majority position cannot be overlooked as to the dynamics of the Court.

      3. So here lacking a chancery, are you saying DP that the judicial exceptions are best seen as expressions of judicial equitable discretion? If so, I agree fully.

        Night Writer, better that 10 innocent firms re destroyed rather than one infringer go free. It takes some kind of ideologue not to immediately understand the unfairness, unpredictability, and untold chaos potential of holding exporters of any single commodity liable for patent infringement when that commodity is used in a patented invention.

        Congress would never have intended such a result. Indeed the “plain words” of the statue clearly recognize the case where the item exported is not a commodity in situ but a critical portion of the invention. Again, only an ideologue…..ahem anon….and CAFC…could fail to see the different purposes of the two sections.

        1. Martin, I don’t think I am saying that judicial exceptions best seen as an expression of “judicial equitable discretion”.

          Aside, with regard to state law, there is always Delaware’s Court of Chancery, if you are a corporation incorporated in Delaware, or come within its jurisdiction. Delaware has not merged common law and equity. But this is not relevant to federal law.

          To come back to what I thought I was saying…

          Under what circumstances does SCOTUS grants certiorari on a patent case, what prompts to do so? What are the basic principles that it seeks to follow in deciding the case? How are they grounded in the constitution?

          What is the basis for the issuance of a patent? Is it an entitlement? Or is a grant that can be withdrawn, provided that due process observed?

          Though of course IANAL, I am putting forward the position that the patents and copyrights clause of the US constitution, gives to congress, not the states, the authority develop patent laws, subject to the constraint that the operations of those laws must further the constitutional purpose of promoting the progress of “science and useful arts”. (The word “science” here of course has its eighteenth century meaning. I seem to recall that the word “scientist”, with its current meaning, was coined by T.H. Huxley in the latter part of the 19th century. What we now call “science” was referred to as “natural philosophy” up to at least the early part of the 19th century.) It follows that patent laws passed by Congress must be construed so that the operation of the patent laws is consistent with the constitutional purpose.

          This presumably makes it highly unlikely that SCOTUS would step in to resolve, say, a claim construction dispute between battling pharmaceutical businesses. But they might be more inclined to grant certiorari in cases where it is pleaded that the patent law developed by CAFC does not respect the public interest, or if they want feel they ought to take a closer look at, for example, how the doctrine of patent exhaustion applies to self-replicating manufactures (as in Bowman v. Monsanto). So it is probably to be expected that, in the majority of cases where they grant certiorari SCOTUS will overturn the CAFC judgment, the SCOTUS judgment may overturn “settled” CAFC law and principles, and that some patent lawyers will generally say that SCOTUS does not understand patent law, and the Justices are fools. But of course they will only grant certiorari on case where they consider it appropriate to consider the case themselves, perhaps to balance CAFC jurisprudence against their reading of constitutional, public interest and general commercial law – or so it seems to me. Again IANAL.

          1. In your efforts to understand law, Distant Perspective, you may want to focus on the proper application of the judicial power under the Constitution and realize that the Supreme Court itself is not above the Constitution.

          2. Distant, I hope we all can agree that a lot of what is copyrighted has nothing to do with advancing science and the useful arts. The only requirement for copyright is that the author create some new work that he personally did not know about. Similarly, for inventions, the inventor must create something new that he personally did not know about any qualifies as an inventor.

            There also limits in the Constitution about what Congress can do. They can create exclusive rights to secure to the authors and inventors their rights. They can create these exclusive rights only for limited times. But beyond that I do not know if the purpose clause operates as a constitutional limit. It certainly does not with respect to copyrights.

            1. Ned,

              This ties directly into the misconception of requiring a linear advance in the art.

              That is simply not either required, or even possible to know a priori.

              Innovation simply does not work that way.

              Refer to my past analogies contrasting a grid of streets and a parking lot. What you see is people wanting the grid of streets.

              Further, the Constitutional directive is also geared to another meaning of the word “promote” – as in, the advertising derivative of “promotion,” or merely spread of knowledge.

              THIS meaning DOES tie into the way that innovation works.

        2. expressions of judicial equitable discretion?

          Two words:

          Ultra vires

          As to the Ends you seek, the Means employed really do matter.

          Look up Sir Thomas More, and then realize that you are casting your lot to mow down the laws to get to the “devi1” in your own personal bias.

      4. Distant Perspective, may I also recommend that the use of the term “granting a monopoly” contains within it a critical misunderstanding of the patent right.

        Gene Quinn runs a patent blog and addresses this very item on a most recent thread.

        Give it a read.

    2. Ed the Ned will yap endless about these topics and not budge an inch from his anti-patent judicial activist position.

      1. Also, the statement by Ginsburg that patents were not meant to for changing human behavior is perhaps one of the most ignorant vile statements ever made in a patent case.

        Does she think that machines that perform physical labor for us do not change our behavior and are not meant to work with us and change our behavior to optimize the productivity (or improve.)

        The information processing machines are merely doing this for information processing rather than the physical labor (although we know that information processing is physical labor too).

        There are so many other levels why this statement by her and signed on by Sotomayor is wrong.

    3. We see Ned once again struggle to have his version remain in place:

      If the Bilski claims are not ineligible for failing the MOT, are not categorically excluded because they are business methods,

      He cannot grasp that MoT is but a clue (albeit an important clue).

      He cannot grasp that once again he slips back to his Windmill Chase of business methods being categorically excluded – when no such language exists – or has ever properly existed under the law as written by Congress.

      He has been instructed many times by many people, but insists on playing his unethical game of advocating a change in law by misstating the law as it actually is.

  4. If there is any lesson from this train crash, it is: don’t take weak and unmeritorious cases to court, and especially don’t pursue them to the Supreme Court.

      1. There is but one long term solution: Congress must employ jurisdiction stripping to remove the non-original jurisdiction of patent appeals from the Supreme Court coupled with creating a new (untainted) Article III patent court (to preserve the actual holding of Marbury).

        Anything less just allows the Court to re-write the law, eventually.

  5. There is a typo at the top of page 5 of the opinion correct? The opinion describes “271(f)(2)’s requirement of a ‘substantial portion’ . . .” Shouldn’t it be “271(f)(1)” and not “271(f)(2)”?

  6. There’s a nice write up by John Duffy over at SCOTUSblog:

    link to scotusblog.com

    Key excerpts:

    The court’s decision yesterday also highlights an important point about statutory interpretation: Paying careful attention to the entire structure of a statute is very much consistent with – indeed, really required by – a textualist approach to statutory interpretation.

    Yup. Fundamental stuff that every first year law student should know.

    So what was helpful to the court in interpreting the phrase? It was all of the text surrounding the phrase “substantial portion” within Section 271(f). In considering that text, the court found a very important clue for interpreting the statute properly. The phrase “substantial portion” appears within paragraph (1) of Section 271(f), but the statute has a paragraph (2) that specifically addresses when infringement liability should be imposed where “any component” is supplied from the United States. Paragraph (2) requires that, if liability is to be imposed for supply “any component” of an invention, that component must be pretty special – it must be “especially made or especially adapted for use in the invention” and also “not a staple article or commodity of commerce.”

    To the court, the statutory text in (f)(2) helped nail down the meaning of the phrase “substantial portion of the components” in (f)(1). The court reasoned that reading (f)(1)’s “substantial portion of the components” as referring to more than one component allows (f)(1) and (f)(2) “to work in tandem,” with (f)(1) controlling supply of components “plural” and (f)(2) controlling supply of “‘any component,’ singular.”

    That reading makes sense given that supplying a single “commodity” component of an invention (which is all the petitioner in Life Technologies did) cannot generate liability under (f)(2). Under the court’s decision, the apparent meaning of the textual limitations in (f)(2) is not undermined by a broad interpretation of (f)(1).

    1. I don’t know. I suspect the differences between f(1) and f(2) were there for the case when the component was particularly needed. So, (1) and (2) were to differentiate between essential components and the combination of less essential components.

      I think Duffy is wrong. He has always been hit and miss. He has a giant ego and is always trying to score a big hit. But here, he misses.

    2. Yup. Fundamental stuff that every first year law student should know.

      As should 1U.S. 1 – which got the nose of wax treatment here.

        1. And your point is..?

          Other than empty ad hominem, that is…

          Oh, that’s right, nothing.

          Yay 11 years of “swagger” – my the ecosystem is lovely today yet again with Malcolm’s swagger…

          (The “S” sign is held up vigorously)

  7. As I think many readers in the US will be aware, Taq polymerase was invented by Kary Mullis in the 1980s and is now available in the US from a number of suppliers. Effectively it has become a generic material in widespread use in biotechnology.

    If it were argued under35 U.S.C. §271(f)(1) that the defendants were liable for supplying from the US “all or a substantial portion of the components of a patented invention”, the Taq polymerase was not one of the distinctive components of the patented combination with which inventive ingenuity would have been most associated, and it would be surprising, as I have said, if any court were willing to impose liability for the supply of that generic material.

    The claim in issue reads:

    A method for determining length polymorphisms in a simple or cryptically simple sequence in one or more DNA regions of one or more subjects, which comprises:
    (a) providing at least one DNA sample, comprising a template DNA having a nucleotide sequence that includes a simple or cryptically simple sequence comprising trinucleotide repeats, from at least one subject;
    (b) annealing at least one primer pair to the template DNA of each of said DNA samples, wherein said primer pair is composed of a first primer complementary to a nucleotide sequence flanking the simple or cryptically simple DNA sequence on the 5′ side of said simple or cryptically simple DNA sequence and a second primer complementary to a nucleotide sequence flanking the simple or cryptically simple DNA sequence on the 3′ side of said simple or cryptically simple DNA sequence; wherein said first and second primers each anneal to a single site in said template DNA and the sequence of the template DNA between the sites where said primers anneal is 50 to 500 nucleotides in length;
    (c) performing at least one primer-directed polymerase chain reaction upon said template DNA having said primers annealed thereto, so as to form at least one polymerase chain reaction product;
    (d) separating the products of each polymerase chain reaction according to their lengths; and
    (e) analyzing the lengths of the separated products to determine the length polymorphisms of the simple or cryptically simple sequences.

    Taq polymerase is simply a material used in the polymerase chain reaction together with nucleotides which provide the raw material for the polymerization reaction to take place. The key materials in which inventive ingenuity mainly resides are the primers flanking the 5′ and 3′ side of the sequence of interest, and it is not apparent that these came from the US. It seems very plain that the Taq polymerase could not be regarded in all the circumstances as a substantial part of the components of the patented invention, even if we are looking simply at starting materials and not at the method features which are also important. There are further method and kit claims but they all require the flanking sequences. The insubstantial nature of the material being supplied in the context of the claimed methods and kits will be readily apparent and should have been sufficient in and of itself to dispose of the case.

    I therefore stand by the view I expressed at 14.

    1. Paul Cole: it would be surprising, as I have said, if any court were willing to impose liability for the supply of that generic material.

      LOL

      Except the CAFC did just that because, apparently, they were unable to understand the relationship between 271(f)(1) and 271(f)(2), in spite of the fact that they were walked through the “analysis” by the defense (I put the term in quote because it’s an “analysis” in the same way that pointing out that 2+2=4 is an “analysis” of how addition works).

      It’s true that the Court didn’t need to get to the question of how to define when the number of uncombined components being exported is a “substantial portion” of the total number of components in the claimed invention. And at first reading I was uncomfortable with the “quantitative” construction the Court gave. In part, that’s because it leaves open the possibility that shipping, say, a Taq polymerase plus a buffer, could lead to liability when combined overseas with some non-obvious molecule (i.e., in the hypothetical case where the claim recites these two staple components plus the non-obvious molecule).

      But then I realized that there is still a reasonable way to avoid this absurd result, even if the 2 out 3 situation described above meets the “substantial portion” standard. Specifically, the argument would be that this kind of export of two staple components doesn’t satisfy the “in such a manner as to actively induce infringement” requirement. I think that’s a winning argument. We’ll find out soon enough if the CAFC bends over backwards again to help an undeserving patentee.

      1. Specifically, the argument would be that this kind of export of two staple components doesn’t satisfy the “in such a manner as to actively induce infringement” requirement. I think that’s a winning argument.

        Way too funny (and not in the ha ha way), as that was one of the things that I told you prior to Supreme Court decisison AND their is no reason why that same logic cannot work with a single component making up a substantial (in its full meaning) portion (yes, portion is a singular word, no matter how many items it may comprise).

        Winning strategy you say?

        I say thank you for agreeing with me at least to that point (something you refused to even understand previously).

        1. “anon”, remember to never underestimate your narcissistic ability to self-delude yourself. You are the world champion and nobody can take that away from you.

          You lost. 7-0. This was an easy case to predict. I predicted it. You didn’t.

          And this happens all the time. Take a break for a while and lick your wounds. You’re b0 ring and you lack the intelligence and maturity to have a sustained conversation about anything.

    2. The claim in issue reads: A method…

      No, that is not the claim in issue. The claim in issue was RE 37,984 Claim 42 (Promega Corp. v. Life Tech., 773 F.3d 1338, 1343 (Fed. Cir. 2014)). Claim 42 reads:

      42. A kit for analyzing polymorphism in at least one locus in a DNA sample, comprising:
      a) at least one vessel containing a mixture of primers constituting between 1 and 50 of said primer pairs;
      b) a vessel containing a polymerizing enzyme suitable for performing a primer-directed poly-merase chain reaction;
      c) a vessel containing the deoxynucleotide tri-phosphates adenosine, guanine, cytosine and thymidine;
      d) a vessel containing a buffer solution for performing a polymerase chain reaction;
      e) a vessel containing a template DNA comprising i) a simple or cryptically simple nucleotide sequence having a repeat motif length of 3 to 10 nucleotides and ii) nucleotide sequences flanking said simple or cryptically simple nucleotide sequence that are effective for annealing at least one pair of said primers, for assaying positive performance of the method.

      There really is no other way to do the §271(f)(1) analysis for this claim, except to count up the kit components (5 total), and then decide “is one out of five a ‘substantial’ portion of the kit components?”. That is what the SCotUS did, and I cannot find the fault in their approach.

      1. They were slovenly adhering to a legislative plural use when 1US1 clearly states that such slovenly treatment is a clear mistake.

        Their “but the rest of the text indicates ONLY a quantitative approach is bullocks.

      2. There really is no other way to do the §271(f)(1) analysis for this claim, except to count up the kit components (5 total), and then decide “is one out of five a ‘substantial’ portion of the kit components?”.

        Actually there is a way and it’s right there in the Supreme Court decision: 271(f)(1) does not apply to the export of single items, period. You never get to the question of whether item can be a “substantial portion” because (first) 271(f)(1) on its face requires a plurality of components (plural) to be exported, and (second) permitting 271(f)(1) to apply to single components nullifies 271(f)(2).

        That’s the analysis.

        1. Paul,

          You are trying to use the word substantial for its known common meaning and you are not torturing it to mean a limited subset in order to reach a desired Ends.

          How dare you try to be normal here.

        2. PM the rest is commonplace

          Paul, characterizing the components as “commonplace” sounds like a qualitative analysis of the components. That kind of analysis, at least with regards to the question of whether a subset of uncombined components represent “a substantial portion” of all the components, is incorrect, per the Supreme Court.

          1. You kind of missed the point that Paul was suggesting that the analysis by the Supreme Court to reach their desired Ends vis a vis “ONLY quantitative” is rubbish.

            1. You kind of missed the point

              In fact, I didn’t miss anything. Paul is free to articulate his own thoughts if he thinks he’s been misunderstood. Gob knows that you couldn’t articulate yourself out of a paper bag if it was soaking wet with Gene’s fl0p sweat.

                1. I’m not “obsessed”, O Super Serious Puppy Protector. That would be you.

                  Gene is a perfect example of the worst patent attorneys out there: an ign0rant, dishonest, self-serving entitled shill.

                  He exists to m0ck and as long as he presents himself as a bloviating punching bag, I’m going to punch. Because it’s easy and fun.

                  Note that he never had one intelligent thing to say about this case. Just like you.

                2. You are the one 0bsessed as you are the one constantly making reference to him (and projecting se x ual connotations in those references).

                  Maybe you should be aware of how much (and just how) he is on your mind…

                3. ou should be aware of how much (and just how) he is on your mind…

                  I’m very much aware of his steadily diminishing credibility.

                  Thank you.

                4. Ned,

                  I do not – but I am sure that Malcolm does, as he appears to be aware of every move (and movement) by Mr. Quinn.

  8. Justice Sotomayor is just a nightmare for patent law. What I don’t understand is why someone who has admitted to being completely and totally ignorant of science and technology would decide that she should be an intellectually leader in patent law.

    Just arrogance plus ignorance. A toxic mix.

    1. Just bizarre that they are now counting elements and then comparing a count to determine contributory infringement. But, as Paul says below that in Alice everything can be boiled down to a “directed to” argument where a page of elements are all boiled down to one.

      It is the dismal tide of ignorance and Justices that have no knowledge of real life outside of briefs they read. Maybe they should all be forced to take leave and work in the real world in real jobs for 5 years and then be evaluated whether they can come back.

      1. I actually agree that counting the elements is difficult, which is also why I do not like elements rule in the doctrine of equivalents, either.

        But the parties stipulated to 5, and its easy enough to count “1” in this case, at least.

    2. For whatever little my opinion is worth, I really cannot agree. Justice Sotomayor actually strikes me as one of the better justices when it comes to patent law. Her decision in i4i was excellent. Her decisions in Octane and Highmark were a bit vague, but given the statutory text with which she was working, maybe that was the best that could be done. The whole debacle of Alice is a mess, but her concurrence was at least a better and more intelligible ground of decision than Justice Thomas’ majority opinion. This latest opinion seems a very sound and workmanlike piece of legal reasoning.

      All in all, if we are going to let the SCotUS decide patent cases, I wish we had more justices like Sotomayor to do the work.

      That said, I can cheerfully agree that to say that she is better than most of her colleagues is not to say that she is especially good at patent law. None of the SCotUS are. The CAFC do a much better job. It would be better if we relieved the SCotUS of a task for which they do not seem particularly well suited, by removing patent appeals from their jurisdiction.

          1. Not to mention that Greg’s premise is flawed. The Supreme Court is just as well suited to intepret the patent statute as they are to interpret any other Federal law. And, lately anyway, they’ve been doing well enough overall.

            The Supremes, like most courts, go to bat swinging at the balls that lawyers throw at them. Pointing fingers solely at the Court for patent decisions that are “confusing” (which in most cases simply means “I can’t accept the result so I’m going to interpret the case as if I was born yesterday”) ignores the fact that in many Supreme Court cases the defendants in patent cases are making weirdly hedged arguments (because they don’t want to undermine their own patents) and the patentees are making completely off-the-wall arguments because they’ve decided that it’s an existential moment for them (hence the trip to the Supreme Court).

            What is the Supreme Court supposed to do with an assertion (actually made before the Supreme Court with a straight face) that “everything useful is eligible for patenting”? Or that “exporting a single screw across the border can lead to patent infringement liability”?

      1. Sotomayer is one of the justices that is on the side of the Stevens dissent in Bilski. She has said that patents aren’t for a wide class of inventions, ’cause she says so.

        There is much, much more. I won’t dispute what you said above since I don’t have time to add substance, but reserve my right to dispute next time.

        1. Sotomayer is one of the justices that is on the side of the Stevens [concurrence] in Bilski.

          Sure. But then there were no dissents in Bilski. The whole court was solidly behind the same outcome in Bilski. Justice Sotomayor’s position—as a signatory to Stevens concurrence—was no worse than any of her fellow justices.

          That is my point. The whole supreme court is objectively suboptimal for deciding patent cases. Objectively, none of them deserve better than a “D.” If we grade on a curve, however, then either Sotomayor or Kagan might well merit an “A,” because they seem to do better patent work than their colleagues (small praise thought that might be).

          1. The whole supreme court is objectively suboptimal for deciding patent cases.

            LOL

            And the Federal Circuit? You really want to revisit their “analysis” in Mayo? Or this case?

            Please say yes, Greg! Then we can try again to walk you through the basics.

        2. Who said this?:

          “Of course, not every kind of invention can be patented. Invaluable though it may be to individuals, the public, and national defense, the invention of a more effective organization of the materials in, and the techniques of teaching a course in physics, chemistry, or Russian is not a patentable invention because it is outside of the enumerated categories of “process, machine, manufacture, or composition of matter or any new and useful improvement thereof. Also outside that group is one of the greatest inventions of our times, the diaper service”.

          1. Judge Rich said that. It seems to me that he is correct about the diaper service (a diaper service is not a process, a machine, a manufacture, or a composition of matter). Much as I admire Judge Rich, I really cannot follow his reasoning about techniques in teaching a course in Russian. I do not happen to have a more effective process for teaching Russian, but I can well believe that someone could contrive a more effective process for teaching Russian, and if so, we should want that person to disclose and commercialize the process, so that more Americans can benefit from the process.

            In other words, I cannot agree with Judge Rich about the ineligibility of processes for teaching. Indignor quandoque dormitat bonus Homerus.

              1. “A process is… an act, or a series of acts… .” Gottschalk v. Benson, 409 U.S. 63, 70 (1972). A diaper service is an incorporeal entity, not an “act or series of acts.”

                If one invented a series of orderly steps for cleaning diapers, that could well be 101 eligible. A diaper service, however, is not itself such a set of orderly steps. A diaper service might well use processes, but a diaper service is not a process.

                1. Ah, so it’s the term “service” that makes all the difference.

                  Totally different from “system”, though! Right, Greg?

                2. A diaper service is an act, or series of acts Greg. First a poopy or pluarlty of poopie diapers are generated…do I need to go on?

                  A currency hedge may useprocesses but is itself not a process?

                  An encryption software may useprocesses but is itself not a process?

                3. A diaper service is an act, or series of acts…

                  No. A diaper service very likely performs an act or series of acts, but the diaper service is not, itself, an act or series of acts.

                  Let me put it this way. I can rent some shop space and hang out a sign “DeLassus Diaper Service,” and this does not commit me to performing any particular act or series of acts. I cannot get a patent on “DeLassus Diaper Service.”

                  If I or my employees think up some uniquely clever way to launder the diapers, maybe we can try to patent that method. But that method is not the diaper service itself.

                4. Software is not a process.
                  The execution of software may be a process.

                  Isn’t this in your own “back yard,” Mr. Snyder? How is it that you seem confused about this simple difference?

                5. Martin First a poopy or pluarlty of poopie diapers are generated…do I need to go on?

                  LOL

                  Now all you need is a sensor and a processor and a transmitter and the universe of “innovation” just opens up like a wonderful jungle flower.

                1. I expect that he was remarking on how great it is that he does not have to wash the smelly things himself. In other words, he was totally unconcerned with the processes they use. He just wants to see dirty dipers go and clean ones arrive. That is not a process.

                  One can contrive a process that achieves such an outcome. If the process contrived is also novel and nonobvious, it seems to me that the statute as written would permit a patent if the process is properly described and disclosed.

                  The outcome, however, is not the process. The diaper service is not the methods used by the diaper service.

                2. “A method comprising: seeing dirty diapers be taken away; and receiving clean diapers.”

                  I would agree that this process was obvious 10 seconds after the first use of a diaper.

                  But I don’t see why its not a process. I think both Rich circa 1960 and Rich circa 1998 would both acknowledge that it is a process, but only one would conclude that it is eligible.

                3. I am not wrong, Ben.

                  Read your comment again.

                  If you meant to type something else, but only typed what you did type, then the error is still on you.

                  If you meant to add more to distinguish what you typed, but did not, then the error is still on you.

                  As it is, I am most certainly not incorrect.

            1. Greg: Much as I admire Judge Rich, I really cannot follow his reasoning about techniques in teaching a course in Russian.

              As opposed to his reasoning about teaching a course in math or chemistry? Is there a difference, in your mind, with respect to the eligibility analysis? If so, what is it?

              I’m pretty sure Rich was contemplating “process of teaching” claims that differ from old teaching processes only by the recitation of “new” information content, or by the presentation of old information content in a new order. That’s some quintessentially abstract stuff there.

              These are also the easiest “innovations” in the world to dream up, the most difficult to examine, and the worst kind of junk to have interfering with education and communication of information/facts (aka as the fundamental building blocks of knowledge and scientific progress).

          2. Presumably Justice Breyer had Judge Rich’s remark in mind in the question he put to Bilski’s lawyer (p.9 of the Bilski oral argument transcript):

            “JUSTICE BREYER: So you are going to answer this question yes. You know I have a great wonderful really original method of teaching antitrust law, and it kept 80 per cent of the students awake. They learned things —

            “(Laughter.)

            “It was fabulous. And I could probably have reduced it to a set of steps, and other teachers could have followed it. That you are going to say is patentable, too?

            “MR JAKES: Potentially.”

  9. A decision from a superior court that is completely wrong is very damaging, but a decision with a correct outcome on the facts but with reasoning that is either wrong or unduly wide is equally damaging. This decision is more widely expressed than was needed on the facts of the case and unfortunately falls squarely into the second category.

    1. Careful Paul, with such recognition of “the Ends justify the Means,” you might be labeled as one of my “cohorts.”

      😉

    2. I am afraid I am not really understanding. What is the narrower rule that you think would have been better used to decide this case?

  10. This line from the decision jumped off the page:

    “Surely a great many components of an invention (if not every component) are important.”

    I’m confused: this is the same court that told us that, when determining patent-eligibility, we can distill “the invention” to its “essence” or “gist”, without reference to the claims and ignoring elements of the claims under consideration that are “routine” or post-process activity. That doesn’t seem to square with identifying all the “components” of an invention.

    It seems that when it’s necessary to ignore claim elements to invalidate a patent, that’s acceptable; but when it’s necessary to include claim elements in order to reach a finding of non-infringement, then those elements can’t be ignored.

    Have I reached the correct conclusion?

    1. It is more witch thinking. One cannot be enough. G*d says everything is in pairs so one cannot be enough. So say we all the grand inquisitors of the U.S.A.

      1. You are missing the point Malcolm with your feelings of “makes a difference here

        That point being a lack of consistency in the treatment of the statute – and most definitely a lack of consistency against patent holders.

        Wake up son.
        Open your eyes.

        And if you are awake, then stop obfuscating and pretending not to grasp the point presented.

        1. You are missing the

          *click*

          It appears that tr0ll b0y is losing his shirt again. Nobody could have predicted that he would compensate for his Life Tech drubbing by turning up the st 00 pit to 11.

          Well, except for me. That was easy.

  11. Another outcome-driven patent decision from SCOTUS, cloaked as an ostensibly neutral exercise in statutory interpretation. Bleah.

    1. It seems to me that your comment would have been just as fair if the case had gone the other way (assuming that they had used 1 U.S.C. §1 as a statutory basis to reach the contrary decision). I am not sure how one avoids an “outcome-driven patent decision” in this case. It rather goes with the territory.

      1. The “it seems to me” part tends to get overshadowed in the lack of ability to see the thumb on the scale against patent holders, Greg.

          1. Not following your point, J.

            If you are thinking that every once in awhile actually following the law as written by Congress is a thumb on the scale, you have drifted far too much into an anti-patent mindset (and may not even be aware of it).

            1. No, you get my point, you are just ignoring the exception to your thumb on scale rule.

              Just wait till SCA Hygeniene comes out. Statutory interpretation in favor of patentees that is, dare I say, AGAINST what might be considered a plain meaning. I mean, you will concede right now that if SCA reverses the Fed. Cir., that is a serious exception to your rule, right?

              1. No J, the absence of a thumb does not mean that the thumb is pushing in the other direction.

                As I said: you might want to check yourself for anti-patent bias that may have creeped in on you.

                1. “the absence of a thumb does not mean that the thumb is pushing in the other direction.”

                  Did I say they are ‘pushing’ it in the other direction? Personally, I think the Supreme Court sees the benefits and the costs of a patent, and are trying their best to give effect to Congressional intent in that framework. They are trying to be deferential to the Federal Circuit in crafting rules as the FC are the specialty court entrusted by Congress to help make the patent system work, but sometimes the lines are too bright, those lines usually favors patent owners (but not always), so the Supreme Court’s course correction makes them seem they have a thumb on the scale, or that they personally hate the patent system.

                  Hence the absurd suggestion that Justice Sotomayor hates patents because she is divorced from a patent attorney. Absurd, and wonder why no one has said something similar of Justice Thomas though he is the most consistent Justice that goes against patent owners, it seems.

                  But its awfully convenient for you to dismiss examples of where the Court sides with patentees as unimportant. What’s especially ridiculous is that you are trying to turn it on me and call me bias.

                2. Your “belief” J is simply not in accord with the actions of the Court.

                  I am not sure why you feel the way that you feel, but the fact that you feel that way impugns your views on the matter.

                3. So your beliefs are purely objective and correct irrespective of case law that is contrary to your point of view? I am going on “feelings”, but not you?

                  Sure.

                4. I’m not saying that they don’t have their biases, and some of those biases may not be favorable to patent holders, but that’s different from what you are saying. You said they put the thumb against the scale. That impugnes the integrity of the Court, and if you were to present your case to any neutral observer, you would not convince many.

                  For someone who pretends to care about the law, your comment was outrageous.

                  Since I typically do not respond to internet trolls, that’s the last thing I’m going to say to you regarding this. I’ll go back to discussing the law, have the last word if you like.

                5. So your beliefs are purely objective and correct irrespective of case law that is contrary to your point of view? I am going on “feelings”, but not you?

                  Did I say that, J?

                  I feel very strongly about patent law issues – surely, there is no doubt about that.

                6. I typically do not respond to internet trolls, that’s the last thing I’m going to say to you regarding this. I’ll go back to discussing the law, have the last word if you like.

                  An excellent maxim, that. I recommend it highly. You will not regret it.

                7. The maxim even doubles as a rather convenient excuse not to engage in conversation where one’s philosopihical or political viewpoints are called into question and one is stumped as to how to square those viewpoints with solid counterpoints put on the table of discussion.

                  Kind of like Greg does quite often.

                1. Should laches be a defense to patent damages?

                  The language of the statute is pretty simple. Defenses shall include… “Noninfringement, absence of liability for infringement or unenforceability.” Federico says, “Noninfringement, absence of liability for infringement, or unenforceability” (the last word was added by amendment in the Senate for greater clarity); this would include the defenses such as that the patented invention has not been made, used or sold by the defendant; license; and equitable defenses such as laches, estoppel and unclean hands.”

  12. [W]e must consider petitioner’s claim in light of this Nation’s historical antipathy to monopoly 11 and of repeated congressional efforts to preserve and foster competition. As this Court recently said without dissent:

    “[I]n rewarding useful invention, the `rights and welfare of the community must be fairly dealt [406 U.S. 518, 531] with and effectually guarded.’ Kendall v. Winsor, 21 How. 322, 329 (1859). To that end the prerequisites to obtaining a patent are strictly observed, and when the patent has issued the limitations on its exercise are equally strictly enforced.” Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 230 (1964).

    It follows that we should not expand patent rights by overruling or modifying our prior cases construing the patent statutes, unless the argument for expansion of privilege is based on more than mere inference from ambiguous statutory language. We would require a clear and certain signal from Congress before approving the position of a litigant who, as respondent here, argues that the beachhead of privilege is wider, and the area of public use narrower, than courts had previously thought.

    Supreme Court of the United States, DeepSouth Packing (1972)

    1. How can this be good law? DeepSouth was decided six months before Benson, and how can one suppose that SCOTUS decisions from that ancient era are in any way relevant to today’s US Patent Law.

      (Sorry, couldn’t resist, on seeing the date.)

            1. he does it in such a classy way.

              LOL

              Gene should have a reality TV show called “The Patent Maximalist.” The winner is whoever can come up with the most extreme excuses for maximalizing patent rights. Each week someone is eliminated from show with the catch phrase “You’re banned!”

              1. The rules for being banned are quite clear:

                No twisting of the law.

                Limited snark.

                No snark if you are not going to have a substantive point.

                Most people –whatever their their viewpoints – don’t have a problem following these rather simple guidelines.

                Others run into problems and then realize that, hey, they rules are actually enforced (imagine that), and then have to revert to false email addresses in attempts to skirt the rules they have violated. And even then, cannot contribute to a meaningful conversation.

                It is more than clear that the animosity that runs rampant over on THIS blog for someone not even here has more to do with those people than with anything actually related to Mr. Quinn.

                1. Sorry Malcolm, what is the point that you are trying to make? Did I misspeak on the substantive aspects of the blog control of another?

                  No.

                  Did I misspeak on the animosity?

                  No.

                  What then do you have to say – of a substantive nature?

                  Nothing?

                  That’s what I thought.

                2. Mr. Snyder, you confuse getting the law right with somehow twisting the law in benefit of the patent holder.

                  This merely reflects your anti-patent bias.

                  Given your own published personal vendetta, this bias, while detrimental to your objectivity, is rather noticeable to your inability to recognize the law as written by Congress.

      1. Celebrating DeepSouth

        No celebration. Just a reminder. This is a consistent thread in the Supreme Court’s patent jurisprudence. Ignore at your peril.

        Or you can fill your diapers and beg mommy to eliminate the bad ol’ Supremes from patent jurisprudence. Sure! That’s going to happen right after the tooth fairy brings you a million dollars.

        Go ahead and tell everyone if you’d rather celebrate the dissent in DeepSouth, and why. You’re a very serious person! And totally not a hypocrite.

        1. That “consistent thread” is an anti-patent thread.

          It is most definitely not being ignored.

          In fact, it is spawning a growing movement to have Congress exercise its Constitutional power of jurisdiction stripping.

          Maybe you have heard of that power?

  13. “I note, in addition, that while the Court holds that a single component cannot constitute a substantial portion of an invention’s components for §271(f)(1) purposes, I do not read the opinion to suggest that any number greater than one is sufficient. In other words, today’s opinion establishes that more than one component is necessary, but does not address how much more.”

    Well, what if there are only two components. Are half the components really not a substantial portion?

    What if the one component is unobtainium and the other 37 components are screws and Elmer’s Glue available and any local hardware store? Is the unobtainium really not a substantial component of the inventions.

    Jeeeez

    1. Les Well, what if there are only two components. Are half the components really not a substantial portion?

      271(f)(1) doesn’t apply to a single staple component that is shipped out and combined with a component overseas, period. The single component situation is dealt with by 271(f)(2).

      This was never a difficult analysis and it certainly shouldn’t be difficult now that the Supremes have spelled it out for you.

      What if the one component is unobtainium and the other 37 components are screws and Elmer’s Glue available and any local hardware store?

      Single component import/export presents questions for 271(f)(2), not 271(f)(1). The answer depends on whether unobtainium is a staple item of commerce.

      Please read the Supreme Court decision. Your clients will appreciate it.

    2. What if the one component is unobtainium and the other 37 components are screws and Elmer’s Glue available and any local hardware store?

      Today’s opinion does not say that your hypo is not an infringement. Today’s opinion merely says that your hypo is not an infringement under § 271(f)(1). There are other statutory sections to cover your hypo.

  14. Ok… What happens when the invention is a combination of two components, one of which is sold from the U.S.? What happens when the invention is a 5 component invention in which 5 different companies sell one and only one component?

    1. What happens when the invention is a combination of two components, one of which is sold from the U.S.?

      If the component is a staple item, no infringement.

      If the component is a non-staple item, 271(f)(2) applies.

      What happens when the invention is a 5 component invention in which 5 different companies sell one and only one component?

      Interesting question. Assuming staple components and the 5 component manufacturers in the US, none of the 5 companies would be liable under 271(f)(1). An overseas company might be held liable under 271(f)(1) if it could be shown that the manner in which the 5 items were supplied from the 5 companies “actively induced” the making of the combination overseas (this assumes you can get jurisdiction over the overseas company). Query what happens when the foreign company is important 200 other staple items from the same companies (to be combined in different manufactures).

    2. I think that today’s opinion signals that the Court meant what they said in Microsoft v. AT&T, 550 U.S. 437, 444 (2007)—infringement is a creation of Congress, and the statutes defining infringement will be narrowly construed. If you are concerned that there is something that should count as infringement but might not be under today’s holding, you need to take it up with Congress. The SCotUS is going to presume that commerce is not infringing unless Congress makes it crystal clear that § 271 is supposed to cover the putatively infringing act.

      In other words, I would bet against either of those hypos being infringement, because Congress has not drafted the statute in such a way as to make clear that either should be regarded as infringement. To my mind, that is how it should be, with the Court acting as merely the handmaid of Congress (rather than—as is so often the case in these patent disputes—a midwife to the birth of the Court’s own idiosyncratic alternative view of how patent law should be).

      1. The “handmaiden” reference suffers greatly because the Court consistently chooses to “play that role” when it can harm the patent holder, and violates that role in those cases that is also needs to reach a point of harming the patent holder.

        Way too much assuming their own conclusion in today’s decision.

        1 US 1 was mentioned – but suffered from its application by a Court with a certain End already in mind.

        1. Way too much assuming their own conclusion

          LOL

          Give just three examples of the Court “assuming their own conclusion” in this case, including citations to the specific passages in the opinion.

          I’m only kidding, of course. Nobody cares about your analysis of this statute and nobody ever did. You’re not only the world’s biggest hypocrite but you’re also the world’s most reliable crybaby.

          Chalk another one up to the “anon was 100% wrong” column. Boo hoo hoo!

  15. The lower court:

    Before PROST, Chief Judge, MAYER and CHEN, Circuit Judges.
    CHEN, Circuit Judge.

    Seth P. Waxman, Wilmer Cutler Pickering Hale and Dorr LLP, of Washington, DC, argued for plaintiff-cross-appellant.

    Edward Reines, Weil, Gotshal & Manges LLP, of Redwood Shores, CA, argued for defendants-appellants.

    1. Chen will take the fall for this, but from her involvement in cases like Achates, I think that the Chief Judge is gaining herself a reputation.

        1. Way to give a partial (and misleading) response, Malcolm.

          Footnote 4 states:

          Chief Judge Prost dissented from the majority’s conclusion with respect to the “active inducement” element of 35 U.S.C. 271(f)(1).

          You also conveniently forget that I had alluded to more than just a mere portion (be that qualitative, quantative or any mixture thereof) would be needed for the culpability under law.

          Dictionary definitions apply – except when they don’t.

          1. Way to give a partial (and misleading) response, Malcolm.

            Indeed. I forgot that Prost’s dissent was only partial. I apologize to everyone for this error which, upon correction, I repeated … zero times.

            I had alluded to more than just a mere portion (be that qualitative, quantative or any mixture thereof) would be needed for the culpability

            LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

            Nobody cares what you “alluded” to. You spent a solid year here bloviating about how “portion included the singular!!” and whining that everyone wasn’t kissing your behind and “addressing your point” sufficiently. Same old same old.

              1. Portion – itself – DOES include the singular

                And “components” doesn’t.

                Game. Set. Match.

                It really is over, “anon.” You lost. 7-0. That’s how it works.

                1. Except, which is the object of the sentence…

                  Oopsie for you.

                  (also YOU may want to read the Supreme Court case,a s they too mention the case that I suggested to you – the one that you never seemed able to even acknowledge…)

    1. “anon” reminds me of The Fonz.

      Remember when he couldn’t say that he was wrong? He just sort of froze up. Because he thought it was “uncool” to admit being wrong. The Fonz was immature that way. Audiences laughed and laughed and the ratings were huge. And then the Fonz jumped the shark.

      1. Lol – coming from someone who has never admitted when they were wrong (even after their own admissions against interets were put on the table of discusssion), the irony is…

        …stultifying.

        1. If anon wants to have an “I was wrong” counter running I’m pretty sure he can safely start at 0 times that he has said he was wrong in the last decade.

          1. To be very fair, most people (here and elsewhere) are reluctant to concede an error.

            “It was a bronze Leghorn or some such exotic breed, and Dora sold it to Jane at a rather exotic price. They both go in for prize poultry, you know, and Jane thought she was going to get her money back in a large family of pedigree chickens. The bird turned out to be an abstainer from the egg habit, and I’m told that the letters which passed between the two women were a revelation as to how much invective could be got on to a sheet of notepaper.”

            “How ridiculous!” said Mrs. Sangrail. “Couldn’t some of their friends compose the quarrel?”

            “People tried,” said Clovis, “but it must have been rather like composing the storm music of the ‘Fliegende Holländer.’ Jane was willing to take back some of her most libellous remarks if Dora would take back the hen, but Dora said that would be owning herself in the wrong, and you know she’d as soon think of owning slum property in Whitechapel as do that.”

            From The Hen, in Beasts and Superbeasts, by Saki.

          2. “To be very fair, most people (here and elsewhere) are reluctant to concede an error.”

            That is correct. But most people don’t have OCPD levels of that particular habit. And tis a sign of maturing and self-knowledge to be able to recognize such happening.

            1. LOL – sure 6, you are the poster child with all of your “mature” admissions as to how the things that you used to say that I was incorrect on (and that you were correct), how all of those things you have boldly stated that you were indeed incorrect and that I was correct….

              The “med” game – it is not working for you.

              Further, did you take the new psychology test I linked to yet? I am ready to compare results…

              1. Brosef I’m not even going to lie, I’ve been a. inside of and b. attempting to get inside of too many girls for the last couple of weeks to the point of practical exhaustion. And I have a lot of work to do. I’m not sure I’m ready to spend an hour taking yet another personality test just so I can figure out my mysterious “new” last letter on my chain of personality letters.

  16. Alito: I do not read the opinion to suggest that any number greater than one is sufficient. In other words, today’s opinion establishes that more than one component is necessary, but does not address how much more.

    Indeed. It’s absolutely true, for example, that exporting from the US two uncombined staple components (e.g., a Taq polymerase and magnesium) for combination overseas in a kit comprising ten components should also not fall within the statute. That should be true even where the relevant US claim recites just five of the ten components (including the Taq and magnesium).

    With respect to this issue, the Supremes did perhaps go farther than they needed to. There was no dispute that Taq was a staple item in the prior art and that it was a single component of a five component claim. So to resolve the case, the Court didn’t need to get into the question of whether the term “substantial” had a “qualitative” component (they held that it does not — it’s quantitative).

    That leaves open the possibility for a foreign country to freely import from the US an uncombined plurality of staple components that would be non-obvious when combined (e.g., three staple components that, when combined, form the non-obvious “core” of a ten component manufacture). There is, of course, an easy way for US patent holders to address that problem: write better claims.

  17. Somewhat interesting that they depended on noscitur a sociis to find a quantitative meaning for “substantial”, but rejected noscitur a sociis in Bilski for “process” because 100(b) allegedly defines “process”.

    Of course, 100 (b) only states a tautology rather than a definition….

    Another 8-0 smackdown. It’s getting to the point that the grant of cert is like the bell ringing between rounds for another beatdown of the CAFC.

    1. The view of 35 USC 100(b) as a tautology evidences your lack of understanding of the terms in the context of patent law history.

    2. It’s getting to the point that the grant of cert is like the bell ringing between rounds for another beatdown of the CAFC.

      Absolutely.

      It is just the psychological experiment of a group of simians in a cage with bananas hanging from the ceiling, and a step ladder, but the simians are firehosed when they try to reach for the bananas.

      The way out of this situation: jurisdiction stripping of the non-original jurisdiction of patent appeals from the Supreme Court and the estblishment of a new (non-beaten) Article III patent court (to preserve Marbury).

      Congress: Make it so.

    3. It’s getting to the point that the grant of cert is like the bell ringing between rounds for another beatdown of the CAFC.

      Yes, indeed. I leave it to the reader to draw the implications for the forthcoming Tam decision.

      1. Tam, being trademark, may not be as “easily drawn” as you appear to be implying, Greg.

        The bellwether here appears to be: does the decision below favor a patented? If so, then it must be wrong.

      2. This seems to hold only for patents and the CAFC. Otherwise, this court is a strange mash of ideology. For example, you would expect the conservative wing to always be in favor of more arbitration and the side of a business against an individual, but in today’s argument in KINDRED NURSING CENTERS v. CLARK, the script was flipped, with the liberals very skeptical that a state-law contract interpretation could preempt the Federal Arbitration Act, while the conservatives seemed more favorably disposed to the state’s common law limiting attorneys-in-fact to enter into arbitration agreements.

        Alito said this: “Now, I suppose that there’s a connection here to interstate commerce, I don’t know what exactly it is, but on the assumption that everything is connected to interstate commerce….”

        You just never know how this bunch will respond, except to CAFC rulings…

        link to supremecourt.gov

        1. This seems to hold only for patents…

          Don’t you believe it. The CAFC gets reversed on federal claims cases (United States v. Morton,,467 U.S. 822 (1984)), government employment cases (United States v. Fausto 484 U.S. 439 (1988)), veterans benefits cases (Scarborough v. Principi, 541 U.S. 401 (2004)), etc. There is nothing magical about patents.

          To be fair, the overwhelming majority of cert grants end in reversal—not just for the CAFC, but for all the circuits. For the most part, the justices do not take a case if they think the court below got everything right.

          So, as I said, the reader can draw the logical inference from the fact that they took cert in Tam…

          1. To be fair, the overwhelming majority of cert grants end in reversal—not just for the CAFC, but for all the circuit

            Do you have the actual stats – or is this a feeling?

            (no snark intended with the feeling comment)

          2. It occurs to me that I should have cited my favorite set of statistics for reversal rates from SCOTUS Blog. Those stats stop in 2014, so they are a few years out of date now. Just for the record, last term the CAFC was reversed 3 times (Medtronic, Halo, & Kingdomware Tech) and affirmed once (Cuozzo), for a 75% reversal rate.

            1. It occurs to me that Halo was consolidated with Stryker. Does this count as the CAFC being smacked twice (two CAFC holdings were reversed) or only once (only one opinion marked “reversed” was issued)? If we count Halo and Stryker as two reversals, then the CAFC suffered an 80% reversal rate last term.

          3. Greg of course any case granted cert has a better than even chance of reversal- but do you agree (and I dont have the stats in front of me) that for the past decade or so, patent cases seem to produce more unanimous reversals than any other kind of case?

            I consider a unanimous reversal as the most emphatic of smackdowns considering the multiplicity of split opinions on other matters and the general politicization of the court that is widely accepted to have occurred.

            1. Are unanimous reversals less common in other areas of the law? I confess, I do not pay as much attention to the less interesting (i.e., do not concern patent law) cases from the SCotUS. I have no clear sense as to whether non-patent cases are less likely than patent cases to be decided unanimously.

              Kingdomware Tech was a veterans benefits case from the CAFC, not a patent case, and yet it was unanimous. If it really is true that the CAFC draws more unanimous reversals than its sister circuits, I expect that this has much to do with the subject-matter defined ambit of CAFC jurisdiction. There are certain cases that only go to the CAFC (patents, to be sure, but also disputes over customs duties & tariffs, veterans benefits appeals, bureau of Indian affairs appeals, government employment disputes). None of these have as much political valence as, e.g., disputes over the reach of the commerce clause, or affirmative action, or first amendment rights. The Court is frequently unanimous when the issue at stake has no particular political valence.

              In short, if it seems that the CAFC is the target of more unanimous reversals than are the other circuits, it may have to do with the fact that the other circuits frequently send cases with a strong political valence, while the CAFC only very rarely sends such cases to the SCotUS. In other words, this is less about patents specifically, and more about hot-button culture wars issues (or a lack thereof).

              1. The Court is frequently unanimous when the issue at stake has no particular political valence.

                Agreed.

                For what it’s worth, I almost have to wonder if the Alito/Thomas dissent in this case was more “political” than anything else.

              2. Greg,

                So basically you just shuffled and danced right out of your original statement….

                And perhaps the “missing link” here is the one that ties patents to a particular Supreme Court anti-patent “hot button” culture war.

                The very same one that others (like myself) have been pointing to for a number of years now.

                1. (and by the way, the same one that dominated the Supreme Court in the 1930s and 1940s which inexplicably led to the Act of 1952)

                2. Maybe J should review that history before he gets all huffy about someone impugning the Supreme Court.

                  Not sure where the unjustified adoration of the Supreme Court comes from, but I certainly hope that he is not an attorney with such blinders on.

    4. IANAL!

      I am guessing that SCOTUS follow rigid canons of statutory construction that go back centuries. One of those canons ls ‘noscitur a sociis’, but the other would state that n.a.s. is inapplicable where the statute gives a definition of a term. But the drafters of the statute (presumably through lack of attention) provided a circular definition of `process’ that knocked out n.a.s. without effecting more than to classify arts and methods as processes. And the Bilski majority would have seen this, but nevertheless decided that they were obliged to stick rigidly to these canons, irrespective of how helpful they proved to be in the Bilski case.

      I finally tracked down in the Oxford English Dictionary the information that `noscitur a sociis’ dates from the mid 18th century.

      It struck me (particularly recollecting that some of the Justices were university professors) that part II of the Life Tech v. Promega opinion was explained with particular care, and maybe in a style suitable for a tutorial to undergraduates.

      A further speculation: suppose the late Justice Scalia were still sitting on the Court. Would he have signed onto IIC, onto the Alito concurrence, or onto neither? I am guessing that he would have disassociated himself from both IIC and the concurrence, on the grounds that both were illegitimate attempts to argue from the presumed intent of the legislature.

      1. I am guessing that [Justice Scalia] would have disassociated himself from both IIC and the concurrence, on the grounds that both were illegitimate attempts to argue from the presumed intent of the legislature.

        Huh? Justice Scalia believed that “[i]f the intent of Congress is clear, that is the end of the matter; for the court… must give effect to the unambiguously expressed intent of Congress.” City of Arlington v. FCC, 133 S. Ct. 1863, 1868 (2013). In other words, far from objecting decisions that rest on the intent of the legislature, he believed that this was the only legitimate grounds on which to decide a statutory construction case.

        He objected to use of legislative history to inform one’s statutory interpretation, but that is not what is happening in II-C or any other part of the opinion. The opinion hues very closely to the text of the statute itself. There is nothing about “Sen. X said __” or “Sub Committee K voted down an amendment that would have made the plaintiff’s position explicit.” These were the sorts of statutory construction practices that Justice Scalia (rightly, in my opinion) disparaged. He had no objection to reading the text itself, however, in view of the prior case law, as II-C does.

        1. I stand corrected. Thanks!

          Rereading IIC and the Alito concurrence, whatever difference between them seems very nuanced, and I have difficulty seeing what it is in IIC that Alito and Thomas could not join. It is presumably incontestible that the legislation was passed to eliminate the adverse consequences of the prior SCOTUS decision. I suppose that Alito and Thomas feel that IIC could be read to imply that Congress only intended the reach of the relevant provisions to reverse in cases presenting the same facts as Deepsouth [I am trying to word carefully]. But it seems to me that the majority are only saying that the holding is consistent with the understanding that the legislative provisions are intended to ensure that patent infringement occurs when the facts correspond to Deepsouth. The IIC majority say that the decision “comports with” Congress’s intent, but this seems to me not inconsistent with the position that Congress’s intent may reach further than the facts of Deep South.

          Maybe someone more qualified to discuss the matter can see some more fundamental distinction, but it seems to me that all seven justices are saying: don’t presume that this opinion goes beyond the minimum holding that, applying canons of statutory construction, 271(f)(1) is inapplicable when only a single component is exported.

          1. The IIC majority say that the decision “comports with” Congress’s intent, but this seems to me not inconsistent with the position that Congress’s intent may reach further than the facts of Deep South.

            Congrats – you have found the self-serving nonsense that the Supreme Court can scriven away to their heart’s content because they answer to no one.

          2. DP, I think you’re correct in understanding that the concurrence’s point is a relatively nuanced distinction from the majority (maybe “trivial” is a better word). They want to express their view that Congress intended to do a bit more than just address the specific behavior at issue in Deep South [“shipping deveining equipment to foreign customers in three separate boxes, each containing only parts of the 1 3/4-ton machines, yet the whole assemblage in less than one hour”], i.e., shipping all the components.

            Congress said shipping a “substantial portion of the uncombined components” was an alternative means of satisfying 271(f)(1) and finding infringement. The Supreme Court (wisely) just held that a single item can not meet that requirement but a “substantial portion” “may” meet that requirement. The concurrence simply notes “in addition” that there is no reason to assume that shipping two uncombined components of multi-component invention is necessarily a “substantial” component. As I indicated above, seems like a trivial distinction to me but there it is.

      2. DP: I am guessing that he would have disassociated himself from both IIC and the concurrence,

        This was an incredibly straightforward statutory interpretation issue and Scalia would have concurred with the majority.

      3. IANAL indeed…however, when noscitur a sociis is inapplicable because the statute gives a definition of a term, and the definition is itself ambiguous, (or in this instance a tautology), wouldn’t that definition then be a nullity, and so back to noscitur a sociis ?

        1. Apparently not in the view of the five Justices who signed onto at least a large part of Kennedy’s opinion. But this might well have weighed with the four Justices that signed onto Stevens’s opinion. For what it is worth (i.e., not much) I read Bilski as the SCOTUS justices agreeing that they rejected CAFC and PTO and Government position (both “machine or transformation” as the sole test for patentability of a process under 101, and earlier CAFC State Street holdings etc.), but could not agree with regard to whether business methods should be categorically excluded. But they had the foresight to note that M or T as the sole test for patent eligibility was a Trojan horse for “do it on a generic computer” patents of the sort that currently fall foul of 101 under Mayo/Alice. The fact that former Judge Michel of CAFC seems in his public comments to be so agitated about Mayo/Alice suggests that maybe M or T was intended as a safe harbor for all “do it on a computer” patents. I recall an exchange between the lawyer representing the Solicitor General and Chief Justice Roberts in the oral argument that I suspect was the point at which M or T as the sole test for processes under 101 disappeared down the plughole as far as SCOTUS was concerned. See the official transcript of the Bilski oral argument starting towards the bottom of page 33. That official transcript is here:

          link to supremecourt.gov

          But the fact that “business methods” were once referenced in the statutes following State Street in a manner that suggested that patents on these could exist might have been the determining factor that led Scalia to sign on to much of Kennedy’s opinion (though he also signed onto to Breyer’s concurrence). But, at the time of Bilski, whilst the Justices were unanimous in rejecting M or T as the sole test for patentability of a process, they had not at that time found a common position amongst themselves, beyond the fact that they could all agree that Bilski’s claims were all invalid as directed to abstract ideas.

          1. P.S., a little nugget I came across a few days ago somewhere on the Web. Apparently Chief Justice Roberts clerked for (then) Justice Rehnquist at the time that Diehr was decided. So perhaps he might have the best knowledge of any person now living with regard to the positions and views of the Justices when Diehr and Bradley were argued.

            1. P.P.S., with the obvious exception of former Justice Stevens. who, though retired, is still with us and would of course have his own knowledge and understanding with regard to the Diehr and Bradley cases.

          2. But this might well have weighed with the four Justices that signed onto Stevens’s opinion.

            Only three signed onto Steven’s opinion.

            That number dropped to a total of three in a subsequent case (of course, after Stevens was gone).

          3. But, at the time of Bilski, whilst the Justices were unanimous in rejecting M or T as the sole test for patentability of a process, they had not at that time found a common position amongst themselves, beyond the fact that they could all agree that Bilski’s claims were all invalid as directed to abstract ideas.

            And this, Distant Perspective, is the point at which the Supreme Court as a whole through patent law into chaos because they never explained why the claims in Bilski were abstract or abstract ideas if there is a distinction to be made between those two terms.

            The claims in Bilski were directed to a detailed, step-by-step, process for balancing risk in a particular situation. The details were sufficient for one of ordinary skill in the art to carry out the claimed invention. Dependent claims gave the precise mathematics to carry out the invention. By any stretch of the imagination, these claims were not “abstract” in that they were only expressed at the level of an idea. So why with the declared to be abstract?

            Everybody recognize this problem as the central failing of Bilski from the very beginning. Even the concurrence of Stevens objected to the fact that the majority never explained its reasoning even though it might have had one.

            If, Distant Perspective, you know why the claims in Bilski were abstract, please explain here now that all of us may understand.

            1. The claims in Bilski were directed to a detailed, step-by-step, process for balancing risk in a particular situation.

              LOL

              What was this totally not abstract “situation”?

              1. MM, it had to with energy contracts.

                However, if you want to put words into the mouths of the Supreme Court, please explain why the claims in Bilski were abstract. (You know that I already think they are nonstatutory under 101 for failing to fail within any of the four classes.)

            2. I don’t have the time now to do more than hint at heads of a response.

              First of all, “What is an abstract idea?”. Well, if the patent law community want answers to this, then places to start would be John Locke, “An Essay concerning Human Understanding”, especially Book II (which provides a thorough taxonomy of types of ideas), moving on to George Berkeley “A treatise concerning the principles of human knowledge”, especially the Introduction (with the caveat that Berkeley argued that there were no ‘abstract ideas’), and David Hume, “A Treatise of Human Nature” (particularly Book I, Section 7). The above only hints at a small part of what mainstream philosophy could offer to someone seriously seeking to understand what is or is not an abstract ideas.

              Also, though he does not seem to want to admit it, Martin Snyder’s proposals with regard to computer-related eligibility under 101 seem to me to read fairly directly on the distinction between logical data (as in compression algorithms, error-correcting code, part of a machine-implemented process that causes a device for manufacturing rubber to turn off the heating and open a door) and representations of and labels for abstract ideas expressed in digital form.

              Coming to Bilski – I am going to the SCOTUS petition to see what the claims were. To me all the claims are riddled with `abstract ideas’. For example Claim 4 has a rather banal equation in it, and such an equation is of course (but maybe not “of course” to patent lawyers) an abstract idea expressing an abstract relationship between other abstract ideas. The entirety of mathematics consists of abstract ideas. An idea such as a mathematical idea can be more or less useful, or more or less specific and precise, whilst not changing by one iota its “abstractness”.

              Looking further down, claim 7(d) recites determining a “marginal likelihood”. This is a highly abstract idea, irrespective of whether or not you have a precise algorithm to calculate its value in a specific situtation.

              Where to go looking for abstract ideas? Claims that fall foul of Alice/Bilski are riddled with them: price, obligation, transaction, advertisement, software products on a tangible medium falling within a genus whose metes and bounds etc. are determined by their ability, when red by a computing device, to serve as data that configures the computer to act in a certain way.

              Judge Rich seems to have thought that what was claimed in State Street was not only useful but also `concrete’ and `tangible’. Tangible? I can touch a table, or a plough, or possibly a shrimp deveiner. But please tell me how I go about touching the “hub and spoke” system claimed in State Street (e.g., with my fingers).

              1. As DP suggests, legal and quasi-legal relations between humans and other humans, and between humans and objects, and between objects and objects, and between humans and abstractions, and between objects and abstractions, and between abstractions and abstractions … all such relationships are themselves abstractions. The specificity of the relationship is irrelevant.

                1. Let’s play with the semantics being toyed with here.

                  Even if for argument’s sake we start with what you state here, Malcolm, judicial re-writing of the actual words of Congress becomes necessary in order to reach the “blanket ban” on eligibility for things “abstract” as you would use that word.

                2. judicial re-writing of the actual words of Congress becomes necessary

                  The “actual words” of the statute are nonsensical and, if you were born yesterday and lacked any contextual knowledge, they would appear to have been written by a five year old on dr ugs.

                  Fortunately, “we” don’t need to rewrite anything anymore. That ship has sailed.

                  All “we” need to do now is use common sense reasoning and logic. Yes, we all know that you lack these things. But you can still try!

                  Good luck.

                3. The “actual words” of the statute are nonsensical

                  Your feelings are noted.

                  On the other hand, maybe you should try to know a little bit more about how the statutory law that is patent law works.

              2. DP: though he does not seem to want to admit it, Martin Snyder’s proposals with regard to computer-related eligibility under 101 seem to me to read fairly directly on the distinction between logical data (as in compression algorithms, error-correcting code, part of a machine-implemented process that causes a device for manufacturing rubber to turn off the heating and open a door) and representations of and labels for abstract ideas expressed in digital form.

                Not sure about that. Both the “logical data” you describe and the “digital representations” would fall in the “not for human consumption” and therefore eligible category according to Martin’s scheme (as I understand it).

                1. You understand it exactly MM. You may not agree with it, but at least you get it.

                  DP, there is no difference between logical data and representations/labels since they are all abstract, and the data is representative of something real (or why bother?)

                  If you wish, you should read Colins paper on Semiotics

                  link to papers.ssrn.com

                  because in it, he makes a cogent case in separating the objective representation, the vehicle of the representation, and the subjective meaning of the representation of a given symbol. Unfortunately, that analysis is impractical in the real-worlds of the patent office, industry, and courts.

                  My test is a shortcut to eliminate from patent eligibility the subjective representations, and only allow the vehicles or the objective meanings if they are new, non-obvious, and fully disclosed.

                  Human consumption of information cannot be separated from the means of expression of the information- a reverse merger doctrine in a sense.

                  Nothing consumed by a machine can be abstract, or have a subjective meaning

                  The objective meaning may or may not be be worthy and fair to protect by patent. When it comes to information inventions, the bar for obviousness must be intrinsically much higher, because we are talking about symbols, which are far easier to manipulate than items in the world.

                  At some point, it becomes impossible to talk about obviousness when there is no invention at all, which is why prior art must be reviewed in any subject matter analysis.

                2. Human consumption of information cannot be separated from the means of expression of the information- a reverse merger doctrine in a sense.

                  LOL – you still do not get the sum total of the concept of utility, do you, Mr. Snyder?

                  For if you did, you would realize that your statement here eliminates ALL patents.

                3. The objective meaning may or may not be be worthy and fair to protect by patent. When it comes to information inventions, the bar for obviousness must be intrinsically much higher, because we are talking about symbols, which are far easier to manipulate than items in the world.”

                  Meaningless to actual law. Mr. Snyder, you keep on pretending that your views do not rewrite – in their entirety – the actual law with your fantasies.

                  At some point, it becomes impossible to talk about obviousness when there is no invention at all, which is why prior art must be reviewed in any subject matter analysis.

                  You conflate subject matter and obviousness – two different inquiries.

                  PLEASE learn about the terrain upon which you want to do battle.

                4. I probably would reply directly to Martin Snyder’s comment below, which might be more courteous, but I don’t seem to find a reply link below his comment.

                  Maybe I will attempt to describe conclusions I had formed some time ago, with regard to understanding the nature of “processes” running on digital computers, in my own language, and trying to be more careful than in comments above.

                  Software patents impinged on my consciousness back in 1994, when Unisys asserted its patent on the LZW compression algorithm used in GIF images.

                  Thinking about how processes operated on a computer, it seems to me that there were three levels: physical, logical and semantic, related in a manner somewhat similar to the relationships between the disciplines of physics, biology and sociology.

                  At the physical level are the electrons scooting around on the silicon.

                  At the logical level are concurrent “processes” operating on bits (in patent-speak somewhat quaintly termed “signals”) and bytes. Processes at this logical level consisted of bits and bytes being shunted around with no “meanings” being attached to these bits and bytes.

                  And on top of that, the semantic level, where, for example, collections of bits get interpreted as ideas in the human mind.

                  It seemed to me that a logical process would be implemented as one of a multitude of physical processes, especially when the computer is multitasking, swapping between processes, swapping data in and out of memory etc.

                  Similarly a physical process could be the substrate for a multitude of logical processes, and a logical process can represent a multitude of semantic processes.

                  Suppose for example I were to write a short program in a standard programming language like FORTRAN to evaluate polynomials with integer coefficients using Horner’s method. The prior art for Horner’s method goes back centuries. Then, every time I evaluated the polynomial for x = 10, in an instance where the coefficients took values between 0 and 9, I would have infringed Benson’s patent, had it been granted and been in force. Thus Benson’s patent would have read on programs to implement very basic schoolroom algebra on an electronic computing device that utilized “signals” to represent numbers in binary arithmetic. And, at the time of Gottschalk v. Benson, schoolchildren aged 11 were being taught to calculate in binary and octal (or “octopus”) arithmetic.

                  So much for now. (I have started looking at Collins’s paper.)

                5. DP, you are on the right track in trying to break down what is happening with the symbols that a computer processes.

                  What you consider the silicon layer is what semiotically is called the “vehicle” of a symbol. For example, the fabric and dyes in a US flag. The objective meaning of the symbol is a social convention: that the US flag represents the nation of the United States. Everyone can and do easily agree on that meaning, and the underlying item being symbolized is not an abstraction- there really is a United States in the world. The subjective meaning, however, is entirely unique to each perceiving mind and is entirely abstract. You may see amber waves of grain while I may see a cracked liberty bell or any other myriad images, and how and where we place the nation in our minds can only ever be known to us.

                  The patent system has no business whatsoever in the subjective sense, arguably some in the objective sense, and fully in terms of new, useful, and non-obvious vehicles.

                  My test neatly removes the entire subjective area, allows for some of the objective, and fully supports the vehicles.

                  PS anon, the word is Balderdash, not Boulderdash. Know the lexical terrin you play on, or something….

              3. Judge Rich seems to have thought that what was claimed in State Street was not only useful but also `concrete’ and `tangible’. Tangible? I can touch a table, or a plough, or possibly a shrimp deveiner. But please tell me how I go about touching the “hub and spoke” system claimed in State Street (e.g., with my fingers).

                Here you are just misquoting Judge Rich. He did not say that the claimed invention was “tangible.” He said (149 F.3d 1368, 1373) that “the transformation of data… by a machine… produces a useful, concrete and tangible result” (emphasis added, internal quotations omitted). In other words, it was not the invention that was tangible, but the result. Who can argue with that? The result was a share price printed on piece of paper. You can definitely touch that printed number with your fingers.

                Meanwhile, as Judge Rich noted, regulatory authorities can act on that printed number when assessing market manipulations. When the federal agents slap the cuffs on a market fraudster, I dare say the criminal will find them quite tangible.

                It seems strange to me that State Street Bank is regarded as the paradigmatic case of 101 excess. I can agree that there are claims floating around out there that ought never to have issued, but the claims in State Street are not among them. Even those Supreme Court justices who believe that the law categorically excludes business methods cannot bring themselves to disallow the State Street claims.

                Judge Rich authored the State Street opinion that some have understood to make business methods patentable. But State Street dealt with whether a piece of software could be patented and addressed only claims directed at machines, not processes. His opinion may therefore be better understood merely as holding that an otherwise patentable process is not unpatentable simply because it is directed toward the conduct of doing business—an issue the Court has no occasion to address today.

                Bilski v. Kappos, 130 S. Ct. 3218, 3249 n.40 (2010) (Stevens, J. concurring).

                1. Greg, what does this mean?

                  His opinion may therefore be better understood merely as holding that an otherwise patentable process is not unpatentable simply because it is directed toward the conduct of doing business—an issue the Court has no occasion to address today.

                  Emphasis added.

              4. Continuing with an example.

                Consider the following two ideas: `content’ and `an advertisement’.

                We stipulate that the following are not “abstract ideas”: “video”, “video clip”, “broadcast”, “audio clip”, “digital image”, “display of formatted text”. Then we can consider “content”, at least for legal purposes, as a compound idea which comprises at least the above specific types of “content”. Therefore, in the context of a “judicial exception” analysis, the term “content”, in itself, arguably would not suggest that the claim is directed to an “abstract idea”.

                Moving to computer arts, one can store BLOBs in a relational database, together with information associated with the BLOBs annotating those blobs. This is positively ancient technology in the computer arts. But, with regard to the storage of such BLOBs in the database, it is irrelevant whether or not such BLOBs represent digital images or not. And even if the BLOBS are digital images, it is irrelevant whether or not they were taken with a traditional digital camera, a mobile phone, a tablet computer, or a webcam sitting on top of a desktop monitor. And it is irrelevant whether or not they were transmitted to the computer containing the database over an Ethernet cable, a USB connection, of through a wireless transmission. Granting a patent on a “process” involving unrelated limitations in no way furthers the progress of the “useful arts”.

                But then suppose that a claim element or claim limitation involves an “advertisement”. Each individual “advertisement” might take the form of a video clip, or audio clip, or image. However by no means all video clips, audio clips or images are advertisements. The metes and bounds of a claim involving an “advertisement” would presumably be determined by whether the video clip etc. was designed with the intention of notifying the viewer of the existence of services or resources, or with the intention of inducing the viewer to purchase some product. Thus the replacement of “content” by “advertisement” in a claim element or limitation ensures that the metes and bounds of the claim are not determined by criteria involving purely physical processes or manufactures. Suppose that an otherwise-Ultramercial-like embodiment, in response to an HTTP request, were to return a short display stating that “Your download will begin in one minute”, followed by nearly a recording of a minute of piano music from a Chopin nocturne, where the Ultramercial claims describe returning an “advertisement”, then presumably the claim, had it been eligible and valid, would not have been infringed. For such reasons the presence of words like “advertisement”, “price”, “payment” etc. would prompt a 101 Mayo/Alice.

                What about “eviscerating” patent law? Let us move to the “natural law” exception. Consider us consider a medical use claim. Claims directed to administering medications are routinely patented, as are improvements to such administration regimes. Scientific investigation may lead to the discovery of an improvement to the regime, where medications are administered in smaller or greater amounts, or are separated by greater or lesser periods of time. Provided that the revised regime differs (in terms of how much or how often the medication is administered) from prior art processes, one would expect the claim to be assessed in terms of novelty, nonobviousness, enablement etc. If a 101 eligibility analysis were instituted, then one might expect that the “something more” would be identified in the improvement resulting from the modifications to the administrative steps, probably characterized as being found the claim elements in combination.

                But the claims at issue in Mayo and Sequenom are problematic, in ways that resulted in those claims being deem ineligible.

                1. P.S., Paragraphs above inadvertently ordered incorrectly. The BLOB paragraph should not be between the two paragraphs immediately above and below.

                2. You are on the right track here, DP.

                  Pay attention (assuming you aren’t already, just for the sake of putting this out there) to the objections of the tiny crowd that is increasingly insisting that the alleged non-obviousness of the hardware connectivity describes in their claims needs to be addressed … or else unfair! Never mind that most grown ups in the patent biz wouldn’t lard up their claims with spurious content-based or logic “limitations” if there was non-obvious physical structure staring them in the face.

                  But these people are basically habitual l i a rs. They’re self-dealers who play transparent legal games because that’s the only way they’ve figured out how to make money. And boy they sure love that money. They’ll do and say literally anything for it. See, e.g., “anon” and NW if you’re confused.

                3. if there was non-obvious physical structure staring them in the face.

                  Yay – retreating to the meme of trying to make an optional claim format into something more than merely optional.

                  As if this obfuscation is not excessively apparent…

            3. One more bite at the cherry.

              A thought-experiment.

              Suppose that the aliens from Planet Zog arrive at the planet apparently populated by sentient meat.

              See Terry Bisson’s short story here:

              link to terrybisson.com

              Maybe unlike the aliens in the short story linked to above, the aliens from Planet Zog, though they detect evidence of some sort of sentience in the meat, they simply cannot analyse in any way the “thought processes” of the meat. But the aliens from Planet Zog are competent scientists who can observe in detail what is going on in the world around them. If these aliens are in principle capable of detecting and observing a process claimed in a utility patent, so as to distinguish between infringing and non-infringing processes through scientific observation, then the process is most likely not directed to an `abstract idea’. But if the aliens cannot distinguish between infringing and non-infringing processes, then this would be prima facie evidence that the process is “directed to” an abstract idea.

              1. if the aliens cannot distinguish between infringing and non-infringing processes, then this would be prima facie evidence that the process is “directed to” an abstract idea.

                No doubt about that. Of course, that’s not the only kind of “abstraction” that you can’t protect with a patent.

                Note also that if it were up to the IPO (or Sachs/Underweiser), then even these “undetectable by aliens” claims would be eligible. That’s how far out in weeds the maximalists are. It’s an embarassing level of desperation that gets even more embarassing when you point out the obvious problems to them.

  18. So parties will fight over the “components of the patented invention.” Defendants will say there are hundreds. Plaintiff’s will say there are just a couple. Somebody will have to figure it out.

  19. Supreme Court Limits Contributory Liability for Exports

    Respectfully, it was Congress that limited contributory liability and they did so with relative clarity.

    The Supreme Court here simply chucked Judge Chen’s absurdly expansive interpretation of the statute — an interpretation which completely gutted 271(f)(2).

    The CAFC should never have let this get up to the Supreme Court. They could have fixed the problem themselves easily and avoided another smackdown.

    Live and learn.

    1. Respectfully, making this purely “quantative” flies in the face of what Congress has done in this area (for example: copyright).

      But hey, you have the Ends you wanted.

        1. Way to be obtuse.

          Clearly I was not saying that there was a copyright involved in the present case.

          And just as clearly, jurisprudence that deals with both copyright and with patent DOES sometimes “cross-over.”

          Please tell me that you do understand that.

          Please.

  20. When’s the deadline for a cert petition in McWrong? Has it passed already? Because that one has “Supreme Court’s parakeet cage” written all over it.

  21. Once again, reason prevails over inanity at the Supreme Court.

    The CAFC really needs to get its act together. Chen’s decision should have been reversed en banc in five seconds. It was that bad.

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