In Blue Spike v. Google, the patentee has asked the Supreme Court to further elucidate its test for eligibility under Mayo, Alice, and Myriad with the following three questions presented.
- May patentable subject matter under § 101 properly be assessed by over-generalizing patent claims to a “gist”?
- May a district court properly assess patentability under § 101 prior to authoritatively construing the patent’s claims?
- May a district court adjudicating a motion for judgment on the pleadings on § 101 patentability grounds properly consider questions of patent enablement under 35 U.S.C. § 112?
We have an interesting case here where the district court expressly stated its approach to Mayo/Alice Step 1 is to distill the claimed invention to its “gist” and ask whether that gist is an abstract idea.
In its lawsuit against Google, Blue Spike asserted five related patents: U.S. Patent Nos. 7,346,472 (the “’472 Patent”), 7,660, 700 (the “’700 Patent”), 7,949,494 (the “’494 Patent”), 8,214,175 (the “’175 Patent”), and 8,712,728 (the “’728 Patent”). Looking at asserted claim 1 of the ‘472 patent as an example: the claim requires comparing a query signal with a reference signal. The process involves creating an “abstract” (essentially a hash or digital fingerprint) of each signal that uses “perceptual qualities” of each signal, and then comparing those abstracts.
The district court dismissed the case on the pleadings – holding that the asserted claims were all invalid as a matter of law for effectively encompassing an abstract idea. On appeal, the Federal Circuit affirmed without opinion.
In its decision, the district court expressly “distill[ed] the gist of the claim[s]” and found that the gist of the claims is to “model, on a computer, ‘the highly effective ability of humans to identify and recognize a signal’ [using a method that] mirrors the manner in which the human mind undertakes the same task.” (quoting the patent specification). Essentially, the court found, all of the claims are directed to the abstract idea – “the idea of comparing one thing to another.” Moving on from there, the court recognized the computer implementation, but found no inventive concept in that implementation. The patentee argues here that the court erred in its gist analysis, and compounded that error by failing to construe the claims prior to the gisting process:
[M]any trial courts have adopted the practice of reducing patent claims to a highly general “gist,” then assessing that gist to determine whether it is so abstract as to be unpatentable. Because distillation to a “gist” inherently abstracts from a patent’s specific claims, this approach builds in a bias towards invalidity. . . . Deciding eligibility before claim construction exacerbates the tendency noted above to ignore a patent’s specific claims and over-generalize its “gist.”
The petition also spends substantial time discussing the Federal Circuit’s new status quo of issuing a substantial number of no-opinion judgments under Rule 36:
[T]he Federal Circuit appears unwilling to shoulder the responsibility for clarifying the Alice/Mayo analysis. That court’s use of summary Rule 36 affirmances seems to be both commonplace and increasing. This is particularly true in cases concerning patentable subject matter under § 101. One recent report identified a dozen Federal Circuit appeals raising this issue decided by Rule 36 affirmances in 2016 alone. . . . [P]recedential opinions in § 101 cases are important not just for trial courts reviewing issued patents, but also for the PTO’s examiners who must determine whether to issue patents in the first place. When the Federal Circuit fails to write a written opinion, it fails to provide the USPTO with necessary examples to use in granting patent applications.
In this particular case, the R.36 judgment is not a law violation (since the case arose from the district court rather than the PTO) but should also not be an excuse for failing to properly resolve the case – certainly the issues raised are not resolved and there is need for explanatory precedent.
[Blue Spike Petition (April 6 2017)]
Let’s put this front and center and see if Ned will keep running away.
Tell me Ned (for the first time, although asked of you numerous times), what is the difference between statutory law and common law.
Tell me Ned, (for the first time, although asked of you numerous times), what does the Constitution say as to which branch of the government has the authority to write patent law (said patent law thus being necessarily statutory law).
And this is something that you are admitting to “appreciate what the Supreme Court did“…?
Tell me Ned, (for the first time, although asked of you numerous times), what does your actual state attorney oath say as to the law that you are sworn to uphold? Hint: that oath does not place one branch above the other two, does not allow that one branch to run roughshod over the Constitution itself.
Appreciating what amounts to treason (and how else would you classify the subjugation of the proper designations of authority of the Constitution), does not speak well of your view of our laws, our system of laws, and the Rule of Law.
The common law is the law of the people. Statutory law is also law made by the people but through their representatives with the consent of the King or president.
Statutory law is deemed to incorporate common law and operate according to common law principles unless the lawmaker is clear when it is not. Statutory law tends to create new laws as opposed to overruling common law.
The courts follow both common law and statutory law and try to reconcile them rather than find them in conflict. At times, when statutory law is in conflict with common law, courts find the statutory law unconstitutional as violating fundamental principles of liberty or privacy.
I recall that Lord Coke had struggles himself about the primacy of common law or statutory law. But as we have seen over the centuries, they coexist peacefully except when the legislature does something truly and fundamentally and radically different from the common law, such as strip patent owners of fundamental rights.
Now then take the difference as to the laws and place that difference in context to patent law and the U.S. Constitution as to which branch has been allocated authority to write that law.
I notice that you reflect on a limitation of the legislative branch, but more importantly to the point here fail to reflect on the limitation of the judicial branch.
As you can only be too well aware that such is the focal point, your choice of “not seeing” that focal point and instead wanting to move the focal point to a different place can only be termed obfuscatory.
Why is it then that you cannot bring yourself to reflect on the validity of what I say?
The judges are present to assure orderly procedure and that the rule of law be affirmed. But the trial of facts had to be to a jury – this is a fundamental right that all Germanic peoples had from ancient times. It was the point of the Magna Carta to preserve these rights.
Now when a judges deciding on the law of a particular case, the common law applies unless changed by statute. But the presumption is that the change has to be clear otherwise it is to be assumed that the legislation was enacted with the view of the common law in place. Thus when patents provide exclusive rights, the common law remedy was damages. Thus legislation did not have to enact a remedy for violations of exclusive rights. Furthermore, when the validity of a property right is challenged since that the owner may lose it, the common law provided for a trial by jury with respect to disputed facts.
Stripping the owners of property of their fundamental rights to a trial by jury that the people have had since ancient times is plainly unconstitutional in my view.
Ned,
You are conflating different legal concepts – as Ron notes herein.
…and Ned, your obfuscation of why statutory law would be deemed unconstitutional is simply false. You impliedly hold that all common law trumps statutory law, unless the statutory law is explicit as to the particular common law being displaced.
That is just not how it works with the patent law, which from its constitutional start is what this country decided upon at its onset.
still two and a half more steps needed for completeness, Ned….
Ned – but what about international law? I had understood that the US had a “monist” constitution, in that legal provisions of international agreements that have been properly ratified by the US government are directly binding on national courts.
Is that correct? If so, then there is an elephant in the room here that is called TRIPS. It is just a shame that the US courts, including the Supreme Court, have so far been doing their level best to ignore that rather important elephant.
International treaties that the US enters into are NOT typically self-enacting into US law (witness the great span of years for some elements of the Berne convention).
Confused, they are not self enacting unless the treaty themselves provides otherwise, in which case, Congress by ratifying also enacts.
Ned, thanks for clarifying. However, that does not really answer my question: Congress approved GATT (which includes TRIPS) on 1 December 1994. This surely means that the US courts are bound by the provisions of TRIPS, does it not?
Confused,
I believe that GATT/TRIPS was NOT approved in total, and that what was approved by Congress in its law making (turning the treaty into a US functional law) was limited to what Congress included in its own bill.
And yes, to the extent that provisions were enacted by Congress, the courts would be so bound. But to be a bit “cheeky,” when has that type of binding stopped the Court (and then by natural flowdown, the courts) from merely trying to achieve their own desired Ends?
Well, I cannot find the bill ratifying GATT, so it is hard to comment. However, it is possible to make one very pertinent observation: to my knowledge, the US courts have NEVER taken the provisions of TRIPS into account, nor even analysed the extent to which those provisions may (or may not) have an effect under US law… which is a pretty astonishing omission, you have to admit.
Does this mean that there really are no guarantees whatsoever that the US is honouring its obligations under TRIPS? If so, then that would be rather ironic. It could also lead to some interesting cases at the WTO’s dispute resolution body.
Perhaps it is time for someone to tell SCOTUS that their decisions really ought to take account of the broader (international) context before deciding whether or not it is safe to embark on the kind of “judicial activism” that we have seen from them on section 101?
Confused,
I am not sure that there is a “single bill ratifying GATT.”
Outside of my direct knowledge, and not having the bandwidth to confirm, I will share only that I think that you will not have such a bill. Instead what you may have are one or more bills enacting provisions that were in the GATT agreement proper.
Sometimes Congress will enact by simple “ratification,” but I do not think that such was the case with any of the international IP treaties.
And might I note, anon, I neatly tied your emphasis that patents are property in the constitutional argument we advance the Supreme Court today about whether we have a right to a trial by jury in patent revocation actions. The reason we have a right to a trial by jury in the first place is because of the ancient traditions of the German people carried in England by the Anglo-Saxons that were affirmed in the Magna Carta. Those traditions said that one’s life, liberty or property could not be deprived without due process of law and that meant that disputed facts had to be tried to a jury.
More on the origin of the jury trial. It apparently was in use from the earliest days of the Saxon’s in England. But it was also in use by the Normans from their days as vikings.
“I can not help feeling persuaded that the rise of the jury system may be traced as a gradual and natural sequence from the modes of trial in use amongst the Anglo-Saxons and Anglo-Normans, — that is, both before and after the Conquest….”
WILLIAM FORSYTH, “HISTORY OF TRIAL BY JURY”
link to constitution.org
You have actions on this still going on before the courts? Do you have a link?
Remember, folks: this is the same “anon” who advocated using mailroom staff to screen registered mail so attorneys could avoid learning about relevant prior art.
Yay – taking that old snippet out of context yet again, eh Malcolm?
You have to reach that deep into your bag of dissemblings?
Maybe try to say something on point here, instead of dust kicking goal post moving ad hominem…
It’s been 11 years – perhaps you should try something honest for a change.
What, pray tell, is the “correct context”, in your non-credible opinion? Remember, before you dissemble all over your shorts: I’ve got the thread archived.
It surely is not the context that you attempt to kick up dust with here.
That should be clear – even to you.
The “context” here is you sitting astride your white pony and blathering about “attorney oaths” that other people are “sworn to uphold” while you instruct the mail room clerks to screen registered letters so you can remain blissfully ignorant of the contents of those letters.
Fun times. Shall I pull the archives for everyone, Mr. Ethics?
The context is you trying to kick up dust while the point about which I stress the duty of an attorney (you know, WHY that point is being discussed) is attempted to be covered with your dust.
And sure, provide your link. That way we all can see that you are not putting that prior discussion in context as that prior discussion spanned more than one thread and you are likely only pointing to one comment out of context of the several-thread discussion.
By all means, point out (again) your own dissembling.
11 years of the same old same old.
“Appreciating what amounts to treason (and how else would you classify the subjugation of the proper designations of authority of the Constitution)”
I’m 100% sure that such is not “treason” lol. In this instance it might push the upper boundary of “some everyday bs going on in the court system that basically nobody cares about”.
Reply stuck in the mod’s 6 – “treason” is a term of art, and has definite legal elements to which I make reference to.
Not to say, given its dire penalty, that your questioning is out of place – it is not out of place.
I’m interested in what “common law” connotes. Why? Because the world knows two systems of law, designated, respectively, English “common law” and Roman civil law. Jurisdictions like Canada and Louisiana understand this.
Of course, within an English law jurisdiction, the difference between statute law and judge-made law is fundamental and inherent. Therefore, asking a qualified US attorney at law (and not rhetorically) whether he understands “the difference” strikes me as less than polite.
MaxDrei,
Your concern for “politeness” is noted, as well as your lack of concern for the abundant postings that generates the question asked.
Please kindly stuff your PC with someone who may care and place the PC above the content.
Thank you.
I have been taking a day-and-a-half holiday from keeping up with postings on this blog, or posting myself.
But, by coincidence, particularly over the past few hours, I was thinking about the relationship between common law and statute law, both in the UK now, and in the 18th century, and how this would apply in the different constitutional situation in the US.
(And I need to tread with care: I am conscious of venturing onto hot ground here.)
(I also acknowledge here that, in a discussion with Anon some weeks ago, I did not take proper account of the implications of the Exceptions Clause in the US Constitution. I do not pretend to be an expert.)
It seems to me, and I also seem to recall US Supreme Court cases saying the same, that any common law in the US not based on statute must be part of state law. The argument is that, following Independence, the individual states would be sovereign, and the inheritance of common law and equity would therefore combine with the acts of the state legislature to constitute state law. The jurisdiction of the Federal government would derive from the ratification of the Constitution by the states. It would seem to follow from this that rights under patent law and copyright law derive from statute.
Maybe if, say, a citizen of Massachusetts were oppressed by a monopoly granted on the importation of tea, then, assuming the principles of Sir Edward Coke are valid in those circumstances, that citizen could possibly seek to have that monopoly declared illegal and void under Massachusetts state law as being contrary to the ancient common law. (I hasten to add that I know nothing about Massachusetts state law.)
But, it would seem that rights under Federal patent law, as under Federal copyright law, must derive from Federal statutes.
One case I came across in the old American texts was Tyler v. Tuel (SCOTUS, 1810). A deed was executed which purported to transfer title to a patent, except in four counties of Vermont, and SCOTUS decreed that, because the deed did not transfer all rights under the patent, title to the patent did not transfer, and therefore the intended assignees did not gain title, and therefore had no standing to sue for infringement. This case of course was not taken under the current law. But cases like this surely show patent rights being considered at the time to be property rights.
If patentee sued an alleged infringer, the defendant could seek to prove invalidity. Thus proceedings in Federal courts regarding damages for past infringement or invalidity were actions in common law. On the other hand, injunctions and accounting of profits were granted by courts sitting in equity.
Now move back to England. If letters patent had received the Great Seal, the king’s officials did not have the power to vary the grant. Indeed, in 1802, the Lord Chancellor, Lord Eldon, said that he did not have the power to change the terms of the patent once the patent received the Great Seal. But patents were long legal documents which incorporated provisions under which, for example, they could be voided by the Privy Council. Thus if the Privy Council were convinced that the patent was invalid, they could void it without the necessity of a jury trial, because their power to do so was included in the terms of the patent grant. (The fact that they ceased exercising this power in the mid 18th century would not have taken away their power of voiding patents that included the provisions allowing for this.)
And the terms of letters patent could be amended by act of Parliament. There were lots and lots of acts of Parliament at the end of the 18th century impinging on property rights and common-law rights: acts for the building of canals and roads; enclosure acts etc.
(Reflect on the Takings Clause in the Fifth Amendment of the US Constitution.) Note that in the UK the sovereign was the King-in-Parliament (or Queen-in-Parliament). Accordingly Parliament was sovereign legislative authority, and thus,in particular, Parliament (not the King acting on his own authority without the consent of Parliament) had the authority to vary the terms of patent grants. Patentees accordingly applied to Parliament to get the terms of their patents varied or extended.
This would transfer, in the US context, to a legal setup in which Congress had the power to pass acts to vary patent grants. One such act would be the Act for the Relief of Oliver Evans (1808). There were later instances of acts of Congress extending patent grants in the later 18th century, and some of the early patent exhaustion cases arose on account of such extensions of patent grants.
Questions?
1. For patents granted after the AIA act, given that the rights of patentees derive from that act, are the provisions for post grant review also incoporated within the patent grant? (An analogous situation might be a contract for employment for a given number of years that would provide for a review after, say, one year to ensure satisfactory performance before confirmation of employment for the full term of the contract.)
2. Can an act like the AIA act vary the terms of all patent grants dating from before the passage of the act?
3. If an executive agency (such as the USPTO) conducts an enquiry into the validity of a patent, and determine that the patent is invalid, what, if any, are the implications under the US Constitution is the patent is annulled? Does a patent deemed to be invalid but nevertheless not actually annulled have any value?
(Of course, usual disclaimer: I am not a lawyer, and certainly not a constitutional lawyer.)
Regarding the continuation of existing laws in the states of the USA, see for example the Massachusetts Constitution, Chapter VI, Article VI:
link to malegislature.gov
“All the laws which have heretofore been adopted, used and approved in the Province, Colony or State of Massachusetts Bay, and usually practiced on in the courts of law, shall still remain and be in full force, until altered or repealed by the legislature; such parts only excepted as are repugnant to the rights and liberties contained in this constitution.”
Thus any rights under common common law prior to Independence would have carried over into state law unless and until amended or deemed to be repugnant to the constitution.
There is an important concept for you to add to your list concerning US law: federal preemption of state law.
You may note (as I have indicated to Ned), that patent law is expressly such an item, being specifically articulated so in the Constitution.
Distant, from Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 18 (1829):
It is obvious to the careful inquirer, that many of the provisions of our patent act are derived from the principles and practice which have prevailed in the construction of that of England. It is doubtless true, as has been suggested at the bar, that where English statutes, such for instance, as the statute of frauds, and the statute of limitations; have been adopted into our own legislation; the known and settled construction of those statutes by courts of law, has been considered as silently incorporated into the acts, or has been received with all the weight of authority. Strictly speaking, that is not the case in respect to the English statute of monopolies; which contains an exception on which the grants of patents for inventions have issued in that country. The language of that clause of the statute is not, as we shall presently see, identical with ours; but the construction of it adopted by the English courts, and the principles and practice which have long regulated the grants of their patents, as they must have been known and are tacitly referred to in some of the provisions of our own statute, afford materials to illustrate it.
link to scholar.google.com
See also this from Fessenden (1810) (linked to elsewhere on this page). The following footnote is to be found on pages 41 and 42:
“To those who may object that the privileges of patentees in the United States, being derived solely from our own statutes, the laws and decisions of foreign nations on this subject, have no validity in the United States, I would reply in the sentiments, and nearly the words of Sir William Jones, expressed in his excellent treatise on the Law of Bailments. In questions of law, no cause can be assigned why we should not shorten our labors by resorting, occasionally, to the wisdom of foreign Jurists, many of whom were the most sagacious of men; what is good sense in one age or country, must, all circumstances remaining, be good sense in another; and pure unsophisticated reason is the same in Italy, England and the United States: in the mind of a Papinian, a Blackstone, A Marshall, or a Washington.”
Moving on the subject matter, on pages 58 and 59 of Fessenden (1810):
“The words ‘any manner of new manufactures’ in the statute of Jac 1. as understood and explained in British Courts of Justice, (which will appear fully as we proceed in this work,) are co-extensive in signification with the words ‘new or useful art, machine, manufacture, or composition of matter,’ made use of in our statute. British authorities, therefore, so far as circumstances are similar, and the reason of the cases remains the same, will be pertinent for determining what kinds of new invented things may be the legal subjects of patent monopolies.”
That sure was not a legislator (or drafter of OUR Constitution) that said that, DP.
Thus, that carries no actual legal weight. Further, it only invites the mis-apprehension of what is “good sense” and quite in fact is disrespectful of the notion that sovereigns may very well choose differently on any number of items for any number of reasons.
The invitation to the “one world order” law applies everywhere is thus declined.
Distant, I have been saying this for some time, but it is not new. Curtis said it as well in his treatise.
You will note that Story constantly referred to the common law in his patent cases riding circuit, include the general principle that a patent that claimed more than it had described was void. This goes back to such cases as Darcy v. Allen, I believe.
Further, the UK patents issued with a consent for the Privy Council jurisdiction to revoke the patent for inconvenience, not for invalidity. The Privy Council recognized in 1753 that their attempt to decided validity, based as it was on evidence and which required a jury trial, conflicted as a constitutional matter with the jurisdiction of the common law courts to decide validity. That is why they stopped deciding validity entirely. They never really had the authority.
Conflicted with what Ned?
You use the word “Constitutional,” but clearly – given the date of 1753 – you are not talking about the US Constitution.
Commenting some of the points made in this thread, on the basis of my own understanding.
From the boilerplate text used in letters patent for inventions in England into the 19th century:
“Provided always, and these our letters patent are and shall be upon this condition, that if at any time during the said term hereby granted, it shall be made appear to us, our heirs or successors, or any six or more of our or their privy council, that this our grant is contrary to law, or prejudicial, or inconvenient to our subjects in general, or that the said invention is not a new invention as to the public use and exercise thereof in that said part of our united kingdom […], or not invented and found out by the said A. B. as aforesaid, then upon signification or declaration thereof to be made by us, our heirs or successors, under our of their signet or privy seal, or by the lords and others of our or their privy council, or any six or more of them under their hands, these our letters patent shall forthwith cease, determine and be utterly void to all intents and purposes, any thing herein before contained to the contrary thereof, in any wise notwithstanding.”
These words seem to provide for the patent to be annulled by the Privy Council if it is invalid. Of course the Privy Council might well decide that questions of invalidity should be tried in courts of law, enabling disputes over factual matters to be tried to a jury, but the words of the patent grant surely show that the Privy Council retained jurisdiction to annul the patent, even though they did not exercise it after 1753.
===
I would also point out that the wording of the Statute of Monopolies did not guarantee that the validity of a patent of invention could only be tried at common law. Article 2 of that statute declared that monopolies in restraint of trade are illegal and that they could only be tried in courts of common law. (The legislative intent was surely to ensure that the ruling King or Queen could not grant an illegal monopoly and preserve it from invalidation through the common law courts by moving it to a more pliable court.) Article 6 however declared that patents of invention satisfying the requirements of that article were outside the scope of the general declaration of Article 2. But of course a corollary of this is that the provision in Article 2 requiring trial only in common law courts was also inapplicable to patents of invention.
Next I would note that, where a grant of letters patent reserves the right to revoke the grant, or specifies conditions under which the grant is rendered “utterly void to all intents and purposes” it would be surprising if such provisos were ineffectual. In particular, the letters patent for the appointment of governors general of Canada, Australia and New Zealand reserve the right of the crown to revoke the grant, and web searches show that such letters patent have been revoked from time to time to allow for new grants.
In any case such questions regarding the limitations of the royal prerogative are surely questions for a specialist in constitutional law in the relevant constitutional monarchies. It is difficult to see how they would be relevant to the very different constitutional framework of the USA.
In England, and subsequently the UK, from 1689 onwards, parliamentary sovereignty has applied. Accordingly no court can strike down an act of Parliament that has received the Royal assent, and no parliament can legislate to bind a future parliament. (The last time a bill was refused assent in the UK was in 1708.) Thus in particular, nothing in the medieval common law or the Statute of Monopolies would prevent an 18th century parliament legislating in any manner it wished in order to regulate patents.
===
I read recently, in an authoritative source that in medieval England, the Courts of Common Pleas, King’s Bench and Exchequer developed the law, from the time of Henry II, by strict adherence to stare decisis. But they developed common procedures and precedents to ensure uniformity, and it was for this reason that the body of law they developed was called “Common Law”. Parliaments from the time of Edward I passed statutes modifying and codifying the common law, but the origins of common law predate statute law.
My understanding is that, in a common law system, where courts adhere fairly strictly to stare decisis, as SCOTUS aims to do, the binding effects of their interpretation of statutes creates new “common-law” doctrines such as the doctrine of patent exhaustion. The mechanism whereby such law is created is the same as that which created the original common law of medieval England.
Distant, well appreciated that.
Now, could parliament simply revoke and issued patent for invention for any reason whatsoever, and with no compensation to the patent owner?
Does the UK government pay patent owners for use of their inventions?
Ned,
Not sure your question has any meaning as to the merits of U.S. law (which is part of what DP is indicating).
I believe a Parliament could pass an act to the effect that, for example, all patent rights would be null and void three years from the date of enactment, with no compensation to patent holders. Maybe it would breach a gazillion international treaties. And maybe the UK Supreme Court might consider whether the act is compatible with the European Convention on Human Rights and, if not, issue a declaration of incompatibility. But my understanding is that Parliament is sovereign…
Maybe you took it to be axiomatic that the essence of a property right is the right to exclude? With regard to real property in England and Wales, consider the introduction of the right to roam, aka the Countryside and Rights of Way Act 2000. Some old webpages and newspaper articles:
link to naturenet.net
Quoting from this webpage:
“There are no provisions for compensation to landowners whose land becomes the subject to the right of access, but under certain circumstances, compensation my be payable for other reasons. If it is necessary to create new public rights of way to reach areas of open access, or if damage is sustained to any person in the exercise of powers conferred by the Act, there may be an entitlement to some compensation.”
See also
link to theguardian.com
Moving on to 2008, with regard to a coastal footpath:
link to telegraph.co.uk
Distant, you make a very good point that Parliament is now sovereign as opposed to the King. The Magna Carta was signed by the king in order to prevent deprivations of life and liberty and property without due process, and that included a right to a trial in the common law court and to a jury.
Over the years, various sovereigns had to reaffirm commitment to the essentials of the Magna Carta. One Coke was developing his idea of the rule of law, I believe he was relying heavily on the ideas of the Magna Carta and that the courts were superior to the sovereign at least in terms of providing a buffer between acts of the sovereign in the deprivation of life liberty or property.
Now you substitute in for the king, Parliament, and what you have: Unchecked power, if the sovereign can deprive individuals of life, liberty and property without due process.
While the parliament can provide for law, I would say that Parliament cannot violate the Constitution of England which includes the Magna Carta. Thus I would suggest that Englishmen cannot be deprived of life, liberty or property without due process even by Parliament.
Do you agree with this?
Ned,
Can you tie your question about the UK back into the US law discussion?
I am not sure that any answer to your question will have any bearing for our law.
There is the small matter of Constitutional rights under the Fifth Amendment and the Seventh Amendment of the US Constitution. To understand their context, and in particular to understand the implications of the Seventh Amendment for patent law under the “historical test”, it might be relevant to consider matters related to UK law. And if a USPTO brief makes assertions regarding English law relevant to Seventh Amendment rights that are demonstrably false…
Thanks DP,
However, as your discussion amply illustrates, “getting stuck in the past” without regard to sovereign differences is as equally as “demonstrably false” as anything else coming from the discussion.
(sorry for being harsh – just no way – or reason – to sugar coat that)
That being said, comparative legal analysis may help one become a better critical thinker, but truthfully, if one is “bent” on obtaining a certain End view of things, then NO amount of comparative legal analysis is going to help. Instead, what you might see is a LOT MORE WEEDS from someone who is only too willing to advocate a position regardless of what history may say otherwise.
Please pardon the potential double post….
Thanks DP,
However, as your discussion amply illustrates, “getting stuck in the past” without regard to sovereign differences is as equally as “demonstrably false” as anything else coming from the discussion.
(sorry for being harsh – just no way – or reason – to sugar coat that)
That being said, comparative legal analysis may help one become a better critical thinker, but truthfully, if one is “bent” on obtaining a certain End view of things, then NO amount of comparative legal analysis is going to help. Instead, what you might see is a LOT MORE WEEDS from someone who is only too willing to advocate a position regardless of what history may say otherwise.
Well Distant, the USPTO brief did suggest that because scire facias actions were filed in Chancery that for that reason alone there was no right to a jury trial in England for patent revocation actions. Obviously, the statement is widely misleading.
“where courts adhere fairly strictly to stare decisis, as SCOTUS aims to do,”
Perhaps you have not been paying attention to the complaints here in the US from the (impossible to align) discordant Supreme Court decisions that exhibit judicial law writing from the bench, particularly concerning the non-shared statutory law section of 101.
May I also remind you of this little concept traditionally held dear in US legal circles called separation of powers…? It comes into play especially in situations in which our Constitution was explicit about which branch of the government has which authority to create (or write) law; and another reminder that this does not mean that one branch cannot share its authority, but that any such sharing is (rightfully) scrutinized and needs to be properly kept within its bounds.
Finally, let me share that the Act of 1952 set bounds in regards to what was previously a single paragraph of patent law, removing the ability of the judicial branch to use common law to set the meaning of “invention,” and in its place, Congress opted to create section 103.
But anon, Congress has no power to legislate out of existence constitutional rights. But that is what they did in removing validity from the courts and placing it in the PTO where there is no independent Article III judge, nor right of access to a jury.
Ned,
You are talking passed Anon’s point. You are both correct. He is addressing SCOTUS’ overreach on Section 101 and you are addressing Congress’ overreach on the AIA’s IPR statute. And BTW, Congress did not “remove” validity from the courts – they allowed non Article III tribunals to also do what should be left exclusively to Article III courts, in what you and I believe is a violation of the Seventh Amendment of our Constitution.
It is only in this context – interpreting our Constitution – that we should look to the laws of England as they were as of 1790, including English common law. This is because it is relevant only to fully understand the scope of the issues to be tried in a jury trial as understood by our Founders in 1790. This mere interpretive tool does not mean, however, that common law should govern or control our patent law in any way. I think that is what Anon was trying to say.
Ron, if the PTAB cancels a claim, there is nothing left to litigate in a court. Thus, the right to a trial to a jury is in fact removed.
Regarding 101, the Supremes say only that they are interpreting 101 to be consistent with the common law rule.
Not sure where to place these loose ends.
It did occur to me that US Federal courts would need to construe terms like make, use and vend, and access to some body of common law must surely be necessary for this. But it would seem that this was provided for by Congress in enacting the Judiciary Act of 1789. Each of the states would have its own corpus of common law, so Federal courts are to use the law of the state of the district court where the case is brought. It is not clear, on reading that act, what happens with regard to SCOTUS’s original jurisdiction, but cases taken under that jurisdiction must be as rare as hens’ teeth. But, with regard to appellate jurisdiction, it appears that Federal courts apply statutes of Congress supplemented by bodies of law prescribed by acts of Congress.
===
Whatever the position in the US with regard to the Seventh Amendment, in England and Wales it seems that civil cases in common law were increasingly tried without a jury from 1846 onwards. Thus there is no right to trial by jury in suits at common law within that jurisdiction.
“Regarding 101, the Supremes say only that they are interpreting 101 to be consistent with the common law rule.”
Please provide a citation to this, Ned – on its face, this is nothing but pure nonsense given that patent law is purely (in the US) statutory law and does not have any such “common law rule.”
Ned, how is “validity” a constitutional right?
You are being a bit far too loose just when you need to be a little more tight with your phrasing.
I noticed the same “looseness” edging into the historical conversations that you are having with DP.
“that common law should govern or control our patent law in any way. I think that is what Anon was trying to say.”
Absolutely correct Ron – Ned has a rather bad habit of playing far too loose with legal concepts. He will dive in with a boatload of details, perhaps hoping to overwhelm the person he is giving the details to, and then make up something completely out of the air and try to pretend that the massive amount of details ‘quite naturally’ carries his made-up law.
That trick does not work with those of us that actually know the law and its history.
Finally, Distant, States have no jurisdiction to decide validity or anything about US patents.
Ned,
DP alludes to this difference already.
He further ties this difference into the difference between
statutory law
(at the Federal level with US Patent law being an item with strict Constitutional allocation of authority to the US Federal legislative branch), and
common law
(which he denotes as not resolving to the Federal level apparatchik, but instead to the States, and in context of patent law is thus preempted by that very same Constitutional allocation of authority).
The use then of common law by the judicial branch in writing patent law should be viewed as ultra vires and a violation of the separation of powers unless Congress shares its powers.
Congress sharing its powers has been a perfectly legal “move” in the past (and current, and into the future), but such sharing does carry with it particular Constitutional safeguards.
These are points that I have previously many times now made note of in our discussions.
Anon, obviously Dennis still is blocking my post regarding the common law.
The common law is the law of the people. It is expressed in their jury verdicts and by their common law judges.
Judges decide the rule of law based on the particular case before them and no more. The rule of law they adopt is based upon the common experience of the people together with precedent.
Common law judges have no authority to bind the future by ruling beyond the facts of the case. That authority, to provide general rules, is the province of the sovereign, which is, in the United States, embodied in the legislature and the president. Both are elected by the people and therefore represent people. Therefore the acts of the legislature are acts of the people themselves.
In history, we have had many instances where invaders have occupied territories were the fundamental laws of the two people’s are different. Allowing people to be judged by their own laws is a form of recognition of common-law.
Recall at the time of King John and the Magna Carta, most of the high nobles were French-speaking Norman’s, while most of the lower nobles and of course the commons were of Anglo-Saxon dissent. It may have been more to the Magna Carta than simply asking that the sovereign not rule arbitrarily.
For example, it was my understanding from ancient Germany that a man’s life liberty or property could not be taken from him except to a trial by jury. It was the effort of the barons and the people that have the King respect these ancient rights that formed the basis for the Magna Carta.
Look at where the Saxons and Angles lived circa 100.
link to en.wikipedia.org
They lived in what is now Denmark and the home of the Vikings circa 800.
There is little wonder that the two ancient peoples had the same traditions.
Something for the weekend? Day job beckons.
Part of the story is here from page 270 onwards:
link to books.google.ie
Reports of Cases Argued and Determined in the Circuit Court for the United States for the First Circuit [1839-1845].
Associate Justice Joseph Story, riding circuit.
First a short case at, Stone v. Sprague, Newport, Rhode Island, June Term, 1840.(at p.270),
Then a longer caseWyeth v. Stone Boston, Massachusetts, October Term, 1840 (at p.273).
Essentially taking principles developed in English patent law, discussed in the standard treatises and reports of cases, and introducing the principles that principles are not patentable into US Federal law. Here “principles” explicitly include “abstract ideas”, as you can see from Stone v. Sprague.
Then onwards to Le Roy v. Tatham (SCOTUS 1852) and O’Reilly v. Morse etc.
Be careful of Story, “principles,” and concepts that were altered by the Act of 1952 (in particular, the response of Congress to the judicial “restraint” on “principles” in the form of process).
Story is someone known to have a too strict view (Ned has certainly adopted that view) as regards the statutory categories for eligibility, and had the (now clearly mistaken) view that only the “hard goods” categories were legitimate.
Our Congress explicitly said “No” to this view.
anon, I wonder if Rich even knew who Story was?
Let’s try again:
Perhaps a “public comment” to the effect of:
Multiple comments apparently do not fit the desired narrative and have been locked down….
Could be made when actual dialogue is so unceremoniously cut short…
Since it seems like some comments are now “breaking free,” let’s try this one:
I am more than sure that Rich was aware of both who Story was, and of the views that Story held that Congress was changing.
The better question is when are you going to give full faith and credit to the changes made (by Congress) in the Act of 1952?
For the particular attention of Ned Heller
See the following link to Google books:
link to books.google.com
William P. Mason, Reports of Cases Argued and Determined in the Circuit Court of the United States for the First Circuit, Volume I.
The following case might interest you, but I don’t see it listed in the Table of Authorities in the MCM v. Hewlett-Packard certiorari brief.
Stearns v. Barrett, page 153 [166 of the PDF].
More fully,
Abner Stearns in Error v. William Barrett, Massachusetts, October Term, 2016.
Quoting from the syllabus:
“The proceedings under the 10th section of the Patent Act of 21st of February, 1793, cb. 11, are in the nature of a scire facias at the common law, to repeal a patent.
“Upon a judgment rendered on such a suit, error lies to the Circuit Court.
“A verdict, which is repugnant or uncertain in a material point. is void.
“The refusal of a Court to amend a verdict is not matter, which can be assigned for error.
“Upon a trial under the general issue, under the 10th section of the Patent Act, the burden of proof, that the patent was obtained surreptitiously or upon false suggestion, lies on the plaintiff.
“If a patent has been obtained by the plaintiff, upon the defendant’s refusal to submit to an arbitration, according to the provisions of the 9th section of the Patent Act, and the defendant subsequently obtain a patent for the same invention, this is not conclusive proof, that the latter was obtained surreptitiously or upon false suggestion.”
Thanks, but this case is essentially the same as ex parte Wood & Brundage, 22 U.S. 603, 6 L. Ed. 171, 32 S. Ct. 589 (1824), which I did cite.
Next stop, same source as 13.2, i.e., William Mason’s First Circuit law reports, volume 1, that I linked to.
The case is Lowell v. Lewis (Massachussets, May Term 1817). The case is apparently best known for Justice Story’s statement, in his summing-up to the Jury, that, in order to be useful, “all that the law requires is, that the invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society. The word “useful” therefore, is incorporated into the act in contradistinction to mischievous or immoral. For instance, a new invention to poison people, or to promote debauchery, or to facilitate private assassination, is not a patentable invention.” (see page 186) [page 198 of the PDF].
But later on on the summing up, something more relevant to “section 101” of Title 35, beginning at “page 187” (presumably the 2nd edition using the page numbers of the 1st in the margin) [page 199 of the PDF]:
“The next question is, whether Mr. Perkins’s pump be a new invention. In the present improved state of mechanics, this is often a point of intrinsic difficulty. It has been often decided, that a patent cannot be legally obtained for a mere philosophical or abstract theory; it can only be for such a theory reduced to practice in a particular structure or combination of parts. In short, the patent must be for a specific machine, substantially new in its structure and mode of operation, and not merely changed in form, or in the proportion of its parts.”
Now onto Stone v. Sprague (Newport, Rhode Island, June Term, 1840), also decided by Justice Story.
[I am guessing that, at some point, I will find my postings “awaiting moderation”, but at that point I will probably continue commenting in the hope that any such comments will eventually appear. This particular comment may contain a lot of quotation from the judgment. We start at page 270 of the printed text, which is 283 of the PDF.]
“At the trial it appeared, that the patent was dated on the 30th of April, 1829, and the specification was as follows. ‘Be it known that I, Amasa Stone, of &c. have invented a new and useful improvement in looms not known or used before my discovery, which consists in the communication of motion from the reed to the yard beam, and in the connexion of the one with the other, which is produced and described as follows.‘ Then follows a minute description of the particular machinery. The specification then concluded as follows, after setting forth the advantages of the invention; ‘I claim as my invention the connexion of the reed with the yarn beam, and the communication of the motion from the one to the other, which may be done as above specified.’
“Several points were made at the trial, upon which a good deal of evidence was offered. The defendants contended (1.) That the invention was known before, (2.) that the loom used by them was not identical with the invention and machinery used by the plaintiff; but was a substantially different invention. (3.) That the patent was in fact a patent for an abstract principle, or all modes, by which motion could be communicated from the reed to the yarn beam, and the connexion of the one with the other, and not merely for the particular mode of communication specified in the machenery described in the specification; and that it was therefore void. On the other hand the plaintiff contended; (1.) That he was the first and original inventor. (2) that the machines used by the defendants were substantially the same invention as his, and an infringement of it. (3.) That the patent, if it embraced all modes of communication of motion from the reed to the yarn beam and in the connexion of the one to the other, (as the plaintiff insisted it did) was still good and maintainable in point of law. (4.) That if the specification did not justify this interpretation of the plaintiff’s claim, it was still good and clearly supported the claim to the particular machinery described in the specification, which the defendants had patented, and his patent had been infringed by the defendants.”
[Decided for the defendants in the lower court on a point of law, and appealed to the circuit court, where it came before Justice Joseph Story, riding circuit, and Judge John Pitman. We continue at the circuit court, page 272 of the text and 285 of the PDF.]
“STORY, J. Upon the question of the true interpretation of the specification the Court entertains some doubt. But, on the whole, ut res valeat, quam pereat,, we decide, that although the language is not without some ambiguity, the true interpretation of it is, that the patentee limits his invention to the specific machinery and mode of communication of the motion from the reel to the yarn beam, set forth, and specially described in the specification. We hold this opinion the more readily, because we are of opinion, that if it be construed to include all other modes of communication of motion from the reed to the yarn beam, and for the connexion of the one to the other generally, it is utterly void, as being an attempt to maintain a patent for an abstract principle, or for all possible and probable modes whatsoever of such communication, although they may be invented by others, and substantially differ from the mode described by the plaintiff in his specification. A man might just as well claim a title to all possible or practicable modes of communicating motion from a steam-engine to a steamboat, although he had invented but one mode; or, indeed, of communicating motion from any one thing to all or any other things, simply because he had invented one mode of communicating motion from one machine to another in a particular case. This is our decided opinion; and if the counsel are dissatisfied, it will be easy to take the case by a bill of exceptions to the Supreme Court.”
“Verdict for defendants; and a bill of exceptions was taken by the plaintiff accordingly.”