Supreme Court Update: Are Secondary Indicia of Invention Relevant to Eligibility?

by Dennis Crouch

The Supreme Court is on recess until Feb 17.

I don’t know if my end-of-April prediction will hold true, but I do expect Neil Gorsuch to become a Justice on the United States Supreme Court.  As a 10th Circuit Judge, Gorsuch never decided a patent case, but does have a handful of interesting IP cases.

There are a few petitions filed that we have not discussed here: 

 In its newest petition, DataTreasury takes 101 for a new spin by taking the 101/103 analysis to its next logical level.  If we are going to include a 103 analysis as part of the eligibility doctrine then lets go whole hog.  Thus, DataTreasury asks: whether a court must consider secondary indicia of invention as evidence in its eligibility analysis? In the case, the Federal Circuit had affirmed the PTAB judgment without opinion under R.36. A second eligibility petition is found in TDE Petroleum Data Solutions, Inc. v. AKM Enterprise, Inc., dba Moblize, Inc. TDE asks the court to “please reconcile Diehr and Alice.” (I’m not literally quoting here).  The patent at issue (No. 6,892,812) claims a four-step process of “determining the state of a well operation.” (a) store several potential “states”; (b) receive well operation data from a plurality of systems; (c) determine that the data is valid by comparing it to a threshold limit; and (d) set the state based upon the valid data.

In Wi-LAN v. Apple, the patentee revives both Cuozzo and Markman claim construction arguments – this time focusing on “whether claim terms used to define the metes and bounds of an invention are generally given their “plain and ordinary meaning,” or are redefined (limited) to match the scope of the exemplary embodiments provided in the specification.”

duPont v. Macdermid asks whether summary judgment of obviousness is proper because of the factual disputes at issue.  Similarly, in Enplas v. Seoul Semiconductor, the petitioner argues that a finding of anticipation by the PTAB must be supported by findings each and every element of the subject patent claim is disclosed in the prior art.  In Enplas, the Federal Circuit affirmed the PTAB on a R.36 Judgment Without Appeal — it difficult for the petitioner to point to the particular deficiencies.

 

=== THE LIST===

1. 2016-2016 Decisions:

  • Design Patent Damages: Samsung Electronics Co. v. Apple Inc., No 15-777 (Total profits may be based upon either the entire product sold to consumers or a component);  GVR order in parallel case Systems, Inc. v. Nordock, Inc., No. 15-978.  These cases are now back before the Federal Circuit for the job of explaining when a component

2. Petitions Granted:

3. Petitions with Invited Views of SG (CVSG): 

4. Petitions for Writ of Certiorari Pending:

  • Claim Construction: Wi-LAN USA, Inc., et al. v. Apple Inc., No. 16-913 (“plain and ordinary meaning”)
  • Is it a Patent Case?: Boston Scientific Corporation, et al. v. Mirowski Family Ventures, LLC, No. 16-470 (how closely must a state court “hew” federal court patent law precedents?) (Appeal from MD State Court)
  • Anticipation/Obviousness: Google Inc., et al. v. Arendi S A.R.L., et al., No. 16-626 (can “common sense” invalidate a patent claim that includes novel elements?) (Supreme Court has requested a brief in response)
  • Anticipation/Obviousness: Enplas Corporation v. Seoul Semiconductor Co., Ltd., et al., No. 16-867 (“Whether a finding of anticipation under 35 U.S.C. § 102 must be supported by findings that each and every element of the subject patent claim is disclosed in the prior art?”)
  • Anticipation/Obviousness: E.I. du Pont de Nemours and Company v. MacDermid Printing Solutions, L.L.C., No. 16-905 (summary judgment of obviousness proper)
  • Jury Trial: Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al., No. 16-712 (“Whether inter partes review … violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.”) [oilstatespetition]
  • Jury Trial: Nanovapor Fuels Group, Inc., et al. v. Vapor Point, LLC, et al., No. 16-892 (Can a party forfeit a properly demanded trial by jury without an explicit, clear, and unequivocal waiver?)
  • Is it a Patent Case?: Big Baboon, Inc. v. Michelle K. Lee, No. 16-496 (Appeal of APA seeking overturning of evidentiary admission findings during reexamination – heard by Federal Circuit or Regional Circuit?)
  • LachesMedinol Ltd. v. Cordis Corporation, et al., No. 15-998 (follow-on to SCA); Endotach LLC v. Cook Medical LLC, No. 16-127 (SCA Redux); Romag Fasteners, Inc. v. Fossil, Inc., et al, No. 16-202 (SCA Redux plus TM issue)
  • Eligibility: TDE Petroleum Data Solutions, Inc. v. AKM Enterprise, Inc., dba Moblize, Inc., No. 16-890 (Please reconcile Diehr and Alice)
  • Eligibility: DataTreasury Corporation v. Fidelity National Information Services, Inc., No. 16-883 (secondary indicia as part of eligibility analysis).
  • Eligibility: IPLearn-Focus, LLC v. Microsoft Corp., No. 16-859 (evidence necessary for finding an abstract idea)

5. Petitions for Writ of Certiorari Denied or Dismissed:

  • Civil Procedure – Final Judgment: Johnson & Johnson Vision Care, Inc. v. Rembrandt Vision Technologies, L.P., No. 16-489 (Reopening final decision under R.60).
  • Post Grant Admin: SightSound Technologies, LLC v. Apple Inc., No. 16-483 (Can the Federal Circuit review USPTO decision to initiate an IPR on a ground never asserted by any party)
  • Licensing: DataTreasury Corp. v. JP Morgan, No. 16-359 (appeal from 5th Circuit) (Whether a most-favored licensee (“MFL”) clauses in an intellectual property license agreement applies retrospectively to require refund if better terms are later given to another licensee?) [DataTreasuryPetition]
  • ITC Jurisdiction: DBN Holding, Inc. v. International Trade Commission, No. 16-63 (Does the USITC have jurisdiction over articles imported in order to infringe, but that do not themselves practice the invention at import)
  • Patent Claim Construction: David Netzer Consulting Engineer LLC v. Shell Oil Company, et al., No. 16-713
  • BPCIA – Notice of Commercial Marketing: Apotex Inc., et al. v. Amgen Inc., et al., No. 16-332 (effectively extending exclusivity to 12 1/2 years; complement to the Sandoz petition)
  • Anticipation/ObviousnessMerck & Cie, et al. v. Watson Laboratories, Inc., No. 16-493 (pre-AIA, do secret sales count as prior art?)
  • Extraterritoriality – Trade Secrecy: Sino Legend (Zhangjiagang) Chemical Co. Ltd. et al. v. International Trade Commission, et al., No. 16-428 (Whether Section 337(a)(1)(A) permits the ITC to adjudicate claims regarding trade secret misappropriation alleged to have occurred outside the United States.)
  • Post Grant AdminEthicon Endo-Surgery, Inc. v. Covidien LP, et al., No. 16-366 (separation-of-function – can the PTO Director delegate IPR institution decisions to PTAB); Same question presented in LifeScan Scotland, Ltd. v. Pharmatech Solutions, Inc., No. 16-377
  • Claim Construction: Google, Inc. v. Alfonso Cioffi, No. 16-200 (holding prosecution history against the patentee)
  • Civil Procedure – Personal Jurisdiction: Mylan Pharmaceuticals, et al. v. Acorda Therapeutics, et al., No. 16-360 (does an ANDA filing create nationwide specific jurisdiction?)
  • Civil Procedure – Preserving Appeal: EON Corp. IP Holdings LLC v. Silver Spring Networks, Inc., No. 16-551 (Appeal of question of law without Fed. R. Civ. Pro. R. 50 JMOL motion)
  • Farstone Technology, Inc. v. Apple Inc., No. 16-651
  • Antitrust Reverse Payments: GlaxoSmithKline, et al. v. King Drug Company of Florence, Inc., et al., No. 15-1055 (antitrust reverse payment – appeal from the 3rd Cir.)
  • Anticipation: Grunenthal GmbH v. Teva Pharmaceuticals USA, Inc., et al., No. 16-296 (OxyContin patent – when is an element ‘inherently’ disclosed by the prior art for anticipation purposes)
  • Obviousness: Purdue Pharma L.P. v. Epic Pharma, LLC, 16-289 (whether the circumstances of invention can help prove non-obviousness) (The Purdue and Grunenthal cases stem from the same Federal Circuit decision but involve separate patents owned by the respective petitioners)
  • Claim Construction: CSP Technologies, Inc. v. Sud-Chemie AG, No. 16-238 (unduly narrow claim construction)
  • Eligibility: Trading Technologies International, Inc. v. Michelle K. Lee, No. 16-446 (Eligibility of new use of old manufacture – blackjack game)
  • Post Grant Admin: Automated Creel Systems, Inc. v. Shaw Industries Group, Inc., et al., No. 16-108 (Achates redux – review of statute-of-limitations for filing IPR requests)
  • Safe Harbor: Amphastar Pharmaceuticals, Inc., et al. v. Momenta Pharmaceuticals, Inc., et al., No. 15-1402 (scope of 271(e) safe harbor)
  • Post Grant Admin: MCM v. HP, No 15-1330 (separation of powers and right to jury trial)
  • Post Grant AdminCooper v. Lee, No. 15-955 (whether IPRs violate Separation of Powers; two amici now filed in support); same question presented by Cooper in Cooper v. Square, No. 16-76.
  • Post Grant Admin: Cooper v. Square, No. 16-76 (whether IPRs violate Separation of Powers; two amici now filed in support); same question presented by Cooper in Cooper v. Lee (denied)
  • Post Grant AdminTrading Technologies International, Inc. v. Lee, No. 15-1516 (mandamus challenging CBM initiation)
  • Post Grant AdminGEA Process Engineering, Inc. v. Steuben Foods, Inc., No. 15-1075 (Flip-side of Cuozzo: Can there be no appeal when the PTAB exceeds its authority by terminating an instituted IPR proceeding?)
  • Post Grant Admin: Merck & Cie, et al. v. Gnosis S.p.A., et al., No. 16-125 (standard of appellate review of PTAB fact-finding in IPR proceedings)
  • Eligibility: Genetic Technologies Limited v. Merial L.L.C., et al., No. 16-188 (Sequenom redux; also question whether ineligibility is a proper subject of a motion to dismiss on the pleadings)
  • Arbitration: Neev v. Alcon Lensx, Inc., No. 16-48 (limits on arbitrator autonomy in patent cases)
  • Interference: Edward Tobinick v. Kjell Olmarker, et al., No. 15-1544 (question of procedure in interference case involving allegations of fraud)
  • Post Grant Admin: Pactiv LLC v. Lee, No. 16-205 (Does the “substantial new question of patentability” identified in a reexamination order limit the scope of the ex parte reexamination)
  • Eligibility: Essociate, Inc. v. Clickbooth.com, LLC, et al., No. 16-195 (please clarify the meaning of ‘abstract idea’ and ‘inventive process’)
  • Obviousness: MacDermid Printing Solutions, LLC v. E.I. DuPont de Nemours & Company, No. 15-1499 (is proof of a “reasonable expectation of success” necessary to combine references in an obviousness case against a claimed combination invention)
  • Jurisdiction: GeoTag, Inc. v. Google Inc., No. 16-268 (Whether a compulsory counterclaim can satisfy the case or controversy requirement under Article III of the Constitution if there was no case or controversy at the time the complaint was filed?)
  • Post Grant AdminJames L. Driessen, et ux. v. Sony Music Entertainment, et al., No. 15-1518 (Claim construction in IPRs – pro se case)
  • Appellate Review: Commil USA, LLC v. Cisco Systems, Inc., No. 15-1446 (appellate disregard of factual evidence)
  • Eligibility: Jericho Systems Corporation v. Axiomatics, Inc., et al., No. 15-1502 (Eligibility of Patent No. 8,560,836 under Section 101 – Abstract Idea)[Jericho]
  • Patent Attorney Malpractice: Encyclopaedia Britannica v. Dickstein Shapiro, No. 16-305 (Does the fact that the search-system is no longer patentable under Alice Corp excuse patent prosecutors from alleged prosecution errors made well prior to that decision – the patent).

6. Prior versions of this report:

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

60 thoughts on “Supreme Court Update: Are Secondary Indicia of Invention Relevant to Eligibility?

  1. Re: “Samsung Electronics Co. v. Apple Inc. … now back before the Federal Circuit for the job of explaining when a component..”
    As predicted, that tough job got passed back down the D.C. with no such explanation. It needed to be anyway, for a review of an actual decision with a new damages award, or even alternative damages awards, rather than a theoretical discussion.

  2. This is interesting:

    In Wi-LAN v. Apple, the patentee revives both Cuozzo and Markman claim construction arguments – this time focusing on “whether claim terms used to define the metes and bounds of an invention are generally given their “plain and ordinary meaning,” or are redefined (limited) to match the scope of the exemplary embodiments provided in the specification.

    My personal predilection is that the claims should be understandable and reasonably certain in their scope to one of ordinary skill in the art simply by reading them without reference to the specification or prosecution history. While one is entitled to be their own lexicographer, any special meaning giving a claim term should be published as part of the claim itself.

    But that is not how Nautilus came out. The Supreme Court ruled that the reasonable certainty had to be with respect to the claims in view of the specification and prosecution history. This is tantamount to saying that the claims themselves can be indefinite until clarified by the prosecution and specification.

    I do not like this at all. But the law is so well-established that we must accept it.

    What this means in practical reality is that the most important claim terms take on a special meaning in almost every case. Battles Royal rage and every litigation because of this. It is a primary reason why patents are so difficult to enforce and so expensively enforced. It is not a good system.

    1. My personal predilection is that the claims should be understandable and reasonably certain in their scope to one of ordinary skill in the art simply by reading them without reference to the specification or prosecution history.

      I take your point. It would be easier for claims to serve their notice function if they were to be interpreted without regard to the spec or file wrapper. That said, the public has an interest in claims being construed as narrowly as plausible. File wrapper estoppel frequently acts to narrow claims that would not otherwise be narrowed. I think that the upside to the public in having a bigger public domain is worth the extra effort necessary to understand what is and is not covered. At least that is my prediliction.

      While one is entitled to be their own lexicographer, any special meaning giving a claim term should be published as part of the claim itself.

      As I said above, I take your point. Nevertheless, I would really hate to have to put every act of lexicography into the claims themselves. This would invariably serve to make them clunkier and harder to read, which very well might sap the force of any supposed advantage in terms of their notice-serving function.

      1. The point (at least this time properly phrased as a personal predilection), has no connection with the law.

        In fact, it confuses the law and the roles of the claims with the role of the specification, making the specification obsolete – and in a rather odd way, returns us to the time of the omnibus claim (“as herein described”) which is what would happen if claims had to do the duty of the specification.

  3. “Are Secondary Indicia of Invention Relevant to Eligibility?” – sounds like less clarity and increased uncertainty in patent law… Urgh.

    1. sounds like less clarity and increased uncertainty in patent law… Urgh.

      Yes, remember when the patent-loving people who pretend to be soooooooo concerned about “uncertaintyy” complained and whined incessantly about the “judicial activism” that introduced those non-statutory factors into patent law?

      Me neither.

  4. I do expect Neil Gorsuch to become a Justice on the United States Supreme Court.

    Let’s hope not. The last thing we need on the Supreme Court is another spoiled rich white prep school f@ s c i st f e tus-luvver with extreme corporate su ck-up tendencies.

    In any event, if you sincerely believe that he’s going to be a Justice (and I don’t believe it), it’s probably not too early to get used to referring to him by his proper title: Stolen Seat Neil. Because that’s all he’s ever going to be.

      1. Drumpf: I was a good student. I understand things. I comprehend very well, better than I think almost anybody.

        But he’s totally not an incompetent deluded narcissist. Nope.

        The cwazy thing is that people actually voted for this guy. And bragged about it!

        And we’re supposed to respect his nominees. Because …. perznit!

          1. What has this to do with patent law?

            Pretty much everything.

            Oh wait — you’re thinking about your fantasy aka “fake patent law” where the Supreme Court doesn’t get to interpret the patent statutes. You bring up that “fake patent law” all the time. Because you’re a very serious person s00per d00per concerned about the quality of the discussion. Sure you are.

            1. Pretty much nothing.

              I don’t mean in your banal “all law is connected, law deals with policy, policy deals with things my feel1ngs are “hurt” about” rantings.

            2. As for interpretation, please try to remember the difference between interpretation that may be necessary for a vague law and the Court going beyond its authority to inject policy and rewriting law (either implicitly or explicitly) to arrive at an Ends that they desire.

              You purport to be an attorney, and should readily grasp the difference.

              1. the Court going beyond its authority

                I wonder if, here on Earth where human beings do the judging, the Court’s tendency (or perceived tendency) to “go beyond its authority” in a given situation is dependent on the specific Justices who make up the Court?

                Nah. Unpossible. They’re all the same! Right.

    1. shall: “used to express a command or exhortation b —used in laws, regulations, or directives to express what is mandatory ”

      “shall advise and consent”… Does it say “may optionally if it wishes to, per its discretion, advise and consent”?

      Also, if “advise” is interpreted as meaning there is no affirmative duty to vote, then the Senate could stop approving Justices. Voila, soon there is no Supreme Court. Interpreting the Constitution as not requiring action on a President’s nominee is wrong because the interpretation could lead to the absurdity of no Supreme Court.

      Let’s not even get into the history, including a nomination by Adams and a Senate affirmation after Jefferson was elected and before he was sworn in.

      So this is why I hope they fillibuster all nominees until Garland is considered. If they nuke the fillibuster, it will be best for Dems, who have won 6 of the last 7 popular presidential votes. The GOP would have to gamble that they will keep getting lucky with the Electoral College …

      1. Voila, soon there is no Supreme Court.

        Which would just fine for the white supremacists in the Administration who have bragged about wanting to completely destroy the existing establishment for their personal benefit.

        That’s why the blocking of Stolen Seat Neil needs to be accompanied by a massive parallel effort to get the r@ cist f@ scist c r e e p a zoids out of the government before they do further damage to the country.

    2. Supreme Court nominee Neil Gorsuch told a US senator Wednesday that President Donald Trump’s tweets about the judiciary are “demoralizing” and “disheartening

      Amen.

      Maybe you should do the right thing, Neil, and refuse the nomination from this incompetent fraud and recommend Garland instead. Then I might be impressed by your sense of justice.

        1. more words like that from Gorsuch and the Dems will want him nominated and Republicans will not.

          Gorsuch could intentionally run over a child in the street tomorrow and Republicans would still vote for him without any qualms whatsoever.

          Similarly, Gorsuch’s statement — although 100% accurate and appropriate — expressing his “feelings” on this subject really aren’t worth a hill of beans. The actual Supremes, you’ll notice, haven’t made a peep. But they should.

  5. Prof. Crouch: thank you for the recent article on the problem of the CAFC’s numerous non-opinion opinions (one is mentioned above). Practically speaking, would the CAFC grind to a halt if they had to issue a full analysis for every patent appeal?

      1. It’s a travesty. The only way I can digest it is if they really don’t have the capacity to issue as many full opinions as their docket would require. Otherwise, this looks like just another problem with the CAFC. The only Circuit which is not subject to criticism by peer courts. Peer review — it ain’t just for scientists.

        1. For the record, many of us — including Dennis, I believe — aren’t seeking anything close to the traditionally understood version of a “full opinion.” Even a facile summary of the claims/issues addressed would suffice. Or attaching a copy of the party’s briefs and the opinion below.

          Heck, the CAFC could simply make the parties summarize their briefs in two pages and just use that, the representative claims and a summary of the district court’s decision. That also would be a huge improvement.

          1. Yes, I agree. Aren’t all legal systems built on the foundation that like circumstances should produce like results? Lack of explanation makes it difficult to evaluate. No irony in the court chastising the PTO when the PTO fails to explain its decisions…

  6. Reasonable people who haven’t been drinking the k0 0l-aid know exactly how Alice and Diehr are “reconciled.”

    Diehr stands for the banal — but important — proposition that the mere presence of ineligible subject matter in a claim (e.g., an element that would be ineligible if claimed on its own terms) does not mean that the claim is per se ineligible. That’s the only important holding in Diehr. If Diehr ever stood for anything else, it was incorrect and obliterated by the Supremes in Prometheus v. Mayo. Nothing in Alice is inconsistent with this proposition. Done. Reconciled.

    [Aside: Are there any gr0 wn-ups here who want to talk about the facts and issues before the court in Prometheus? I’ll be shocked if that’s the case but go ahead and surprise me! Even our fearless “leader” Dennis seems to have a really hard time spelling them out for his readers and that’s a pity and a shame that has done the patent community no good. Yes, those facts are a bit offensive to the agendas of some folks, but that’s their problem ….]

    As for this:

    If we are going to include a 103 analysis as part of the eligibility doctrine then lets go whole h0 g. Thus, DataTreasury asks: whether a court must consider secondary indicia of invention as evidence in its eligibility analysis?

    …let’s break it down into bite-size chunks.

    If we are going to include a 103 analysis as part of the eligibility doctrine

    Just so we’re all on the same page, there is no “if.” Consideration of the prior art is a necessary part of any comprehensive eligibility test (although in extreme cases, e..g, claims to “method of thinking about X”, no consideration will be necessary). Consideration of the prior art is necessary because it’s the only way to determine in most ordinary situations whether “sufficiently more” has been added to whatever non-obvious but ineligible subject matter appears in the claim. And the prior art means not only art that anticipates the “additional” recited matter but also all of the art that renders that “additional matter” obvious. This is straightforward reasoning and it’s been discussed here for eons (e.g., by me, well before Prometheus was decided).

    A quick example: let’s say you want to claim a method of thinking about the likelihood of a forest fire view in of a non-obvious correlation between fire likelihood and apple bitterness. That correlation is ineligible. And thinking about that correlation is ineligible.

    So … can you add a step of “eating an apple” before the ineligible “thinking about a correlation” step and obtain an eligible claim? Of course not. That’s because “eating an apple” is in the prior art and we’ve all done it. You can’t make me an infringer because I think about a correlation after eating an apple! (Prometheus tried that — remember? It worked out very poorly and that’s why Mayo is a 9-0 decision that will never ever be reversed. It’s also why Underweiser and Sachs have zer0 credibility and should be universally scorned by reasonable people everywhere).

    But wait! What if we add “more” than just “eating an apple” to our ineligible “thinking about a non-obvious correlation” step? How about:

    “A method comprising: (1) eating an apple while wearing a fleece jacket with two zipped side pockets and an unzipped chest pocket, and (2) correlating the bitterness of said apple with the likelihood of a fire in the vicinity of the apple.”

    Let’s assume the prior art describes eating apples and separately describes wearing this fleece jacket, but it doesn’t describe anyone eating an apple while wearing that fleece jacket. The question then is: is this particular data gathering step obvious. And the answer is: yes, of course it is. Without belab 0ring the point, there is no way that you could get a claim on clause (1) by itself. End result? Claim is still ineligible. And that is absolutely the correct result as anyone with a fleece jacket who likes apples will tell you.

    And guess what: no reasonable jury is going to determine otherwise (in this example) just because you fly in some expert to testify about “secondary factors”. Summary judgment is just as appropriate. This is true of nearly every junky ineligible claim that has been tanked on SJ to date.

    Now, the patent maximalists know that in most cases the stuff they’ve scrivened into their claim to protect ineligible subject matter in some actual or obvious prior art context is worthless boilerplate that is put there simply to make the claim look more “complicated” or “techn0” than it really is. They’ll never admit this, of course, but the whole game is to pretend that we were all born yesterday.

    Lastly, let me just add this prediction: if the patent maximalists start pushing on “secondary factors” to grease up their junky claims so they slide past SJ, the end result is going to be that “secondary factors” become increasingly ridiculed. You can take that to the bank. Most of the “secondary factors” are already nonsensical “judicial activist” handouts to the maximalists already. Of course, it’s the kind of “judicial activism” that the maximalists just love. But they’re not hypocrites! Nope. They’re very serious and important people. Totally not self-dealers intent on clogging the patent system with the worst junk any patent system in history ever had to deal with.

      1. HoPB, if you find it challenging, I’m happy to write out the additional two sentences for you or anybody else who has trouble understanding why “eating an apple while wearing a fleece jacket with two zipped side pockets and an unzipped chest pocket” is obvious.

        Let me add two points.

        1) I will happily admit that this particular clause is less obvious — way less obvious — than the additional matter that is scrivened into the typical “do it on a computer” claim that gets tanked under 101.

        2) If the scriveners are soooooo certain that their additional matter is non-obvious, then it’s more than a bit strange that they pretty much never simply claim that matter on its own terms. Go figure.

        Thanks for playing.

  7. “Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al., No. 16-712 (“Whether inter partes review … violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.”)”

    Interesting…another bite at the apple, perhaps? The Court came rather close to taking this issue up last year (amici, re-listing, etc.).

    1. Sure. It would be helpful if the Court would take that one, just to settle the issue. I feel confident of an affirmance, but I would rather know that than merely think it.

      1. Well I’m not a fan of IPR (at least as currently set up…), and I agree with at least some of the constitutional concerns, but I too would rather just know for sure either way.

    2. Well three petitions have already come and gone, which means that at least 5 Justices have already voted “nay” on three occasions.

      If the Court is merely waiting for the 9th Justice, then either Oil States or one of the two behind it will get cert.

      Conversely, if the 5 (at minimum) who voted nay on the first three did so because they believe Patlex, Joy, and MCM are intellectually and constitutionally sound, then these petitions will likely go belly up like the first three.

      It’s all guesswork, and no one knows what is going on behind the curtain. But the argument that a potential 4-4 split on a question of this variety would create chaos in the IP space has its merit.

      In short, either the Court cares or it doesn’t.

      1. Maybe if you guys could drum up some evidence that IPRs systematically eliminating really awesome patents you’d have a ghost of a chance.

        But that evidence is never going to show up. IPRs work very well for their intended purpose and if you eliminate them then be prepared for a solution that you like even less.

        1. For some Justices, perhaps the analysis is really that simple – ie are good or bad patents being invalidated by the administrators?

          For the sake of the rule of law and the separation of powers, I sincerely hope not.

  8. At some point patent lawyers might ask themselves the tough question: “Why does the SCOTUS think Diehr and Alice are consistent?” Then they might revisit Diehr with a more open mind and see that the conflict with Alice in fact isn’t.

    The problem with subject matter eligibility law right now isn’t “what’s eligible vs what’s not eligible.” It is the lack of evidence and reasoning to show “directed to….” employed by Examiners and the PTAB (maybe trial courts, too, I don’t work enough in the area to know). As soon as the PTO took the position that they didn’t need any evidence or reasoning the Federal Circuit should have addressed it head on.

    1. It is rather peculiar that you seek an “open mind” in order to not find incongruity which exists as plain as day, and for which the Occam’s explanation (also self evident) of the injection of policy and desired end results into the adjudicative process is what has tainted the plain words of Congress.

      You would also have to repaint history and the impetus of exactly why Congress changed patent law in 1952 in order to reach your (rather constrained) version of reality.

    2. H2H, while I have had a number of 101 rejections recently, I have successfully overcome all of them without appeal. When I point out that the claimed invention is directed to improvements in computers technology or utility, the argument seems to be accepted.

      However the examiner never actually explains why he accepted my arguments in the notice of allowance – which corresponds to the lack of reasoning in the rejection in many cases because the examiner never seems to explain why the subject matter is abstract in the first place.

      1. I have have had a lot of success too, except with a few applications where the relevant market is financial products or wagering/odds making. Generally those fall into the category of a new technological solution to a problem, and Examiners don’t seem as willing to accept that these class of inventions aren’t directed to abstract ideas.

      2. My understanding is that the Office is in heavy retreat mode for the blanket 101’s that were issued in the post-Alice frenzy.

        I would expect that the level of explanation for removing the 101 rejections would be close to the same level for them appearing in the first place (i.e., little to none).

  9. At some point patent lawyers might ask themselves the tough question: “Why does the SCOTUS think Diehr and Alice are consistent?” Then they might revisit Diehr with a more open mind and see that the conflict with Alice in fact isn’t.

    The problem with subject matter eligibility law right now isn’t “what’s eligible vs what’s not eligible.” It is the lack of evidence and reasoning to show “directed to….” employed by Examiners and the PTAB (maybe trial courts, too, I don’t work enough in the area to know). As soon as the PTO took the position that they didn’t need any evidence or reasoning the CFAC should have addressed it head on.

  10. TDE asks the court to “please reconcile Diehr and Alice.”

    In that case, I can say with supreme confidence that the SCotUS will not take cert on that one. I am not any sort of prophet, but I do know this: the SCotUS does not want the law of §101 eligibility to be clear and reproducibly applicable. It is quite possible to reconcile Diehr and Alice (not necessarily in a manner that is good public policy, but if all one wants is a bare conciliation that makes them both straightforwardly intelligible, that is easily achievable). To come out in the open and make that reconciliation, however, would take away the value that the SCotUS has created for §101 as a fudge-factor that allows a court to reach any arbitrary outcome it wants to reach regarding patentability.

    This is a shamefully poor way to run a legal system, but that is the law that we have for the moment. Yet another reason why appellate jurisdiction over patent cases should be taken away from the SCotUS.

    1. Most definitely agree, Greg.

      The Supreme Court has an addiction to the power that comes with its fingers in the (policy) nose of wax of 101.

      Congress already tried once (the Act of 1952) to change that, but step by step, ever bolder, the Court has aggregated that power (once “shared” by Congress through the allowance of the Court to use common law tactics to set the meaning of the word “invention” – and that taken away with the Act of 1952), unto itself once more.

    2. I am not a huge fan of some of the language in the 101 cases, but the system was broken. I wish some people would acknowledge this rather moan how the Court should never had touched it.

      I think the patent in Mayo is indefensible. It covered the observation, a mental recognition, of a natural phenomenon.

      1. Oops, hit submit too soon.

        How can you get an injunction on a doctor using his mental process to treat a patient? Completely nuts

        1. Three points:

          (1) You cannot get an injunction against a doctor. Even if the Prometheus patent had been sustained, this would still have been true. Injunctions are only available in patent cases under §283, but §287(c)(1) provides that

          With respect to a medical practitioner’s performance of a medical activity that constitutes an infringement under section 271(a) or (b), the provisions of section… 283… shall not apply against the medical practitioner or against a related health care entity with respect to such medical activity.

          In other words, the reductio ad absurdum that you are advancing here just is not legally possible.

          (2) Prometheus’ claims did not stop at observation or mental recognition. To infringe, one would have to “determin[e] the level of 6-thioguanine in said subject… .” This is very much a physical step. One does not determine blood concentrations by merely observing or thinking. One must draw blood and subject it to chemical or electrical assays.

          (3) If one cannot seek remedies against the physician (i.e., the direct infringer), why did Prometheus even want the claim? Because this sort of safety information is something that the FDA will require the 6-thioguanine manufacturer to print on the label, thus making the 6-thioguanine manufacturer and infringer by inducement. Prometheus really wants a remedy against its competitor drug companies, not against physicians or hospitals.

          By giving Prometheus this right, one incentivizes Prometheus to continue researching additional safety and efficacy strategies to get the most benefit out of existing drugs. By saying that these sorts of discoveries or safety or efficacy enhancement strategies amount to nothing more than a claim to the natural phenomenon, one disincentivizes such research. Do we really want less research on methods to make drug administration safer or more effective?

          1. Gregg,

            1) I take your point about not enjoining doctors, but my reduction as absurdem really goes mental imprsssions in and out of the medical field. And the enjoining part was more rhetorical than substantive. It makes no sense for a doctor to pay damages for mental impressions, either.

            2) the verb “determine” is a mental impression, even if there are facts that lead to that determination.

            Example, if I determine that any decent human being would pull for the Tar Heels over Duke tonight, that has to be a mental impression. The plethora of evidence (Grayson Allen and Laettner) doesn’t change the observation. Even if it’s almost self-evident

            The claim chose the word “determine”

            3) three things things. A) the exception to doctors do not take away my larger point, see part 1 above. Nor my point that Duke is terrible in part 2. B) You conflate remedies and injunction, you can get damages in 284. C) the fact that companies won’t or don’t go after the actual infringers but the inducer is not really the point, they still have the power.

            Let me add that I hope Carolina crushes Duke tonight. Go Heels!!!

            1. J,

              The statement “2) the verb “determine” is a mental impression, even if there are facts that lead to that determination.” is not true in all cases.

              Machines determine, but simply cannot make mental impressions.
              Directly calling to mind, one of my fav words on the topic:
              Anthropomorphication

      2. J, Smell a rat yet?

        Yeah, that’s right. The folks behind this are the likes of IBM who want to patent business methods or those who want to patent “discoveries” of the location of a human gene by patenting the gene, or who want to patent the information resulting from conventional processes.

        These are the very same people who brought us the AIA and IPRs, and who now defend them so vigorously against repeal or constitutional challenges.

        Now let us all chant: What’s good for IBM is good for the USA.

        1. The folks… who want to patent “discoveries” of the location of a human gene by patenting the gene, or who want to patent the information resulting from conventional processes… are the very same people who brought us the AIA and IPRs… .

          Well, I suppose I favor allowing patents on isoalted genes, and I favor IPRs, so there is at least one person in the Venn diagram where these two circles overlap. Still and all, the fact that there is one such person does not really support your assertion, which appears to treat the two categories as substantially overlapping.

          Incidentally, given that I am the only person we really know to exist in the Venn diagram intersection space, it is a bit much to attribute the AIA to us in that space. I was still in law school when the AIA passed. Nobody really asked my opinion before passing the AIA.

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