Denied Certiorari on Section 101.

In its first action for the October 2017 term, the Supreme Court has (inter alia) denied Certiorari in three pending Patent Cases:


Of these, only Synposis was truly interesting.  That case asked for a review of the law and procedure of the Abstract Idea inquiry under Section 101:

In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), the Court reaffirmed the two-part test for determining whether an invention is patent-eligible under 35 U.S.C. § 101: (1) whether the patent claims are directed to a patent ineligible concept, such as laws of nature, natural phenomena, or abstract ideas, and (2), if so, whether the elements of the claim contain an “inventive concept” that transforms the ineligible concept into an invention that is patent-eligible. Here, a panel of the Federal Circuit held that in determining whether a patent is directed to an abstract idea, a court must ignore the specification and evaluate only the express limitations in the claims. The panel further held that the accused patents failed the second step of Alice because the claims do not explicitly call for involvement of a computer and therefore could not be characterized as an improvement to computers. The questions presented are:

1. Whether the § 101 inquiry requires courts to ignore the specification, as the Federal Circuit held, or whether courts should ascertain the true scope of the claims in light of the specification and intrinsic record in determining whether they are drawn to a patent-ineligible concept.

2. Whether an otherwise revolutionary technological breakthrough is not an “inventive concept” under the second step of Alice merely because the court believed the breakthrough could theoretically be implemented without a computer.

Mentor Graphics v. Synopsys: Covering All the Bases


In his case, Oleksy faced an uphill battle against an affirmance-without-opinion.

28 thoughts on “Denied Certiorari on Section 101.

  1. 8

    The Supreme Court likes to take important legal issues squarely presented. Oil States is presented as such. Another possibility this or next term is the issue of whether Indian tribes have sovereign immunity for purposes of their patents being subjected to IPR. But if IPR are declared unconstitutional, is that issue even important?

    They must know that any declaraton that IPR are unconstiutional is going to have major reprocussions down the road generating a number of cases they will need to resolve.

    Next up, perhaps this year, is the issue of “on sale” in the new AIA.

    Anyone notice that the really tough cases are being assigned to Dyk? He wrote MCM Portfolio. He also decided the on sale bar case. It used to be Rich.

    1. 8.1

      Next up, perhaps this year, is the issue of “on sale” in the new AIA.

      Can you phrase that issue more precisely? Why is “on sale” in the new AIA an issue?

      Do you mean how the parties may be interacting within any consideration of “on sale”…?

      (me, I would like to see how the ‘on’ in “on sale” differentiates with a ‘for’ as in “for sale” and then how each of those relate to “offer for sale”)

      As to Dyk, I do not see him being assigned “the really touch cases” per se. Let’s not confuse the fact that his decisions may make an issue ‘tough.’ Also, he by far NOT alone in his anti-patentee leanings.

  2. 7

    It is not as if I know something that no one else here does, so my prediction on this point is worth just as much as you are paying for it. Nevertheless, I predict that the SCotUS is done with §101 for another decade. That is to say, I am predicting that they are not going to take cert on any more §101 cases until 2024 at the earliest. That goes both for §101 cases like Mentor Graphics (that go against the patentee) and for cases like McRo (that go for the patentee).

    The justices do not enjoy these sorts of cases anyway. They have now given a recent case on one of each of the three categories of non-eligible matter (laws of nature, natural products, and abstract ideas). Having said their peace on these subjects, they do not want to touch it again for at least ten years, maybe more.

    Please feel free to archive this prediction and throw it in my teeth if I prove wrong. 🙂

    1. 7.1

      Seems like a reasonable prediction. A lot can happen in 10 years, and sometimes a cert denial is just a cert denial, but Sequenom struck me as a signal that the Supreme Court considers it out of the 101 business for a while. 22 amicus briefs, some “please take this case and reverse” opinions from Federal Circuit judges, a narrowly-divided en banc vote, a well-written petition, and a few other considerations made Sequenom look like an ideal cert candidate. If that case doesn’t get cert, it’s difficult to imagine another case that does in the next 10 years.

      link to

  3. 6

    If the Section 101 case is Synopsis v. Mentor Graphics, the quote from the certiorari petition doesn’t seem to align with the earlier Patently-O posting. The paragraph headed Eligibility in that earlier posting seems to concern a patent that fell foul of In re Nuijten by claiming signals, expressly defined to cover carrier waves. To me this does not match up with seeking certiorari on a claim to a computer implementation of what has been deemed to be an ‘abstract idea’.

    1. 6.1

      Perhaps there were several issues/accusations:

      1. A method comprising the steps of:
      a) identifying at least one statement within a register transfer level (RTL) synthesizable source code; and
      b) synthesizing the source code into a gate-level netlist including at least one instrumentation signal, wherein the instrumentation signal is indicative of an execution status of the at least one statement.

  4. 5

    n Thursday, Fake Justice Neil “Stolen Seat” Gorsuch, gave a speech at the Trump International Hotel in Washington, D.C., for an organization with the same benefactor as the group bringing a case that may end up knee-capping public-sector unions.

    What an incredible corrupt f ing pile of sh t.

    1. 5.1

      knee capping public unions lol. At most it’ll just not force people to pay dues. And it probably won’t even win.

      muh knee cappin!

      muh knee cappin!

      muh union victims!

  5. 4

    My thoughts and prayers go out to the tiny fraction of gun-fondling Repu k k k es out there who have a little bit of conscience left.

    1. 4.1

      You mean because of the alleged pu ss y hat wearing leftist that just massacred hundreds of country music listeners (totally not at all associated with being right wing)?

      We both know you don’t pray. Or at least certainly not to Yahweh.

    2. 4.2

      I think this post unfortunately reveals more about you than any of your other posts. And I feel sorry for you.

  6. 3

    Here’s some advice for patent attorneys out there: don’t begin your cert pertitions with a bunch of l i e s and don’t refer to your computer-implemented junk as a “revolutionary breakthrough.”

    1. 3.1

      I tend to agree that no useful purpose is served by characterizing your invention as “revolutionary” or a “breakthrough,” at least in legal pleadings. You’re just setting the bar higher for yourself. Your patent may describe something that passes the new and non-obvious standards, but is unlikely to meet the “revolutionary breakthrough” standard.

      1. 2.1.1

        Being granted cert. I know your position on patents but there is a need for clarity on 101. The standard is too vague for such a technical field of law. If SCOTUS is going to maintain that software is patent eligible, they need to be clearer (more technical) with the standard.


          If SCOTUS is going to maintain that software is patent eligible

          There is no way to “maintain” that logic is eligible for patenting and have a “clear standard” about what is eligible and what is not.

          But go ahead and try. You’re a very serious person and nobody has thought about this before until today.


              I have quite a few girlfriends and some of them are therapists. None of them thinks that software should be eligible for patenting. They all think it’s an incredibly st 0 0 pit idea.

              Most people think that.

              The people who think otherwise tend to be self-interested or they’ve drunk too much kool-aid. You know this latter category well. It’s the type who thinks “software should be patentable” but as soon as you get into the details of how it should be examined and claimed they start hemming and hawing.

              Software patents are like mass sh0 0tings and people getting killed by cars. It’s something we’re all supposed to just put up with because, hey, “freedom.” Wave that flag, s u ckers!


                Your girlfriends, like your views on software patents, are imaginary.

                Software is patent eligible. It was under the Google/Lee administration and continues to be. And guess what, the pendulum is swinging back. Maybe your blow up dolls will be of comfort during these trying times.


            If SCOTUS is going to maintain that software is patent eligible

            There is no way to “maintain” that logic is eligible for patenting and have a “clear standard” about what is eligible and what is not.

            I see that (once again) you are pretending that software is the same as logic.

            Shall I ask then (once again) how it is that copyright may be obtained for an aspect of software (expression) JUST AS patent may be obtained for a different aspect of software (utility)?

            Like plain math or plain facts, you do know that one cannot obtain copyright protection on logic itself, right?

            You’re a very serious person

            I do not see why you insist on inserting such an obvious poker tell that you really have nothing meaningful to say on a topic. Do you even realize that you do this poker tell so often? What is it that you intend to accomplish by including this type of statement?

            (whatever it is, it is not working)


          Oil States followon. If Oil States is an affirmance, cert will be denied in Celgard. If not, Celgard is a possible GVR. I’d be surprised and a little disappointed if the Supreme Court granted cert on the R36 aspect of that petition.


            I actually wouldn’t be surprised. SCOTUS loves blasting CAFC, and if they hold their noses and affirm in Oil States, they may just want to stick it to CAFC by making them write opinions for every single IPR appeal they get.

            SCOTUS justices are human beings, after all, with all our frailties included.

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