What are the Defenses to Patent Infringement?

RPost Comm. v. GoDaddy, LLC (Supreme Court 2017)

Like Oil States, the new petition for certiorari by RPost is a home-run swing — but will it connect?  The question presented:

Is patent ineligibility under 35 U.S.C. § 101, which Congress did not codify in 35 U.S.C. § 282(b), not a cognizable defense in a patent litigation?

This question stems from Prof. David Hricik’s 2012 Patently-O post on the topic where he similarly asked: Are the Courts Correct in Their Assumption that a Patent Issued on Non-patentable Subject Matter is Invalid?

The idea here is that the defenses to patent infringement are expressly codified in 35 U.S.C. § 282(b).  Some failures of a patent can be raised in court as defenses to take-down an issued patent (such as lacking written description) while others simply cannot (such as improper revival or lack of best mode).

The petition here is timely – not only because so many patents are being invalidated under Section 101 – but also because the Supreme Court in SCA Hygiene (2017) reaffirmed the power of Section 282(b) — holding that laches was not a congnizable defense under the provision.  The petition argues:

The same type of statutory analysis [applied in SCA] must be applied here because no word or phrase in § 282(b) codifies ineligibility as a litigation defense.


Note here, that the same question was asked in Retirement Capital Access Mgm’t Co. v. U.S. Bancorp and Michelle Lee (cert denied 2015).  The Federal Circuit has refused to rule directly on this issue — instead affirming the lower-tribunal holdings without opinion (R.36).

A difficulty with the the whole approach is that the Supreme Court has already expressly refused to be bound by the statute in its eligibility analysis.

Top-side amicus briefs will be due in early December.





72 thoughts on “What are the Defenses to Patent Infringement?

  1. 13

    Although I am opposed to much of the key REASONING in Alice, Mayo and Myriad, and thus the poor jurisprudence they provide, the question posed by RPost is meaningless. If a patent is invalid, regardless of the proper or improper reason(s) for which it is determined to be so, it is not enforceable and thus cannot be infringed, so no defenses to patent infringement are required. The invalidated patent would have to be reinstated in order to be enforceable.

    Now the better thing for all of us to pursue would be legislature overturning/overriding Alice, Mayo and Myriad and reinstating all patents found to have relied upon 102 or 103 reasoning in their respective subject matter eligibility analysis during invalidation proceedings. The patents should retain the remainder of their statutory term (if any is left) plus the portion of term lost during the period of invalidity. Why are corporations not lobbying congress for such legislature? I can’t imagine the current administration opposing legislature bolstering business interests.

    1. 13.1

      Yes Rick the change needs to be by legislation, but the answer to your question “Why are corporations not lobbying congress for such legislature?” is simple. Many companies have paid many PAEs to escape the high litigation costs needed to prove non-infringement or invalidity of broad patent claims, especially internet related claims, and like having the option of a fast and cheap patent suit defense which can be raised by a 101 motion as soon as the complaint is filed. Remember that more than 95% of patent suits are settled – not tried.

    2. 13.2

      Another reason is that a lot of companies understand that evaluating the eligibility of a claim requires, in most instances, evaluating the relationship of the claim to the prior art.

      The reason most companies understand this is because it’s not difficult to understand.

      Also it’s a fact that’s never going to change so grow up and get used to it.

      1. 13.2.1

        ” that evaluating the eligibility of a claim requires, in most instances”

        No. You don’t have to look at the prior art to know if a claim is directed to a process, machine, manufacture or composition of matter.



          Malcolm’s mindless rants on that point have only verified the “Tell a L I E often enough….” rhetoric.

          (leastwise for Malcolm, who appears to be the only one that believes it)

    3. 13.3

      The question isn’t meaningless unless you choose not to read and apply the relevant statute.

      Per 282(a):”A patent shall be presumed valid”

      It’s literally the first sentence of section 282 that precedes the enumerated defenses in 282(b).

      You cannot determine a patent to be invalid without navigating one of the options in 282(b).

      While many statutes are hard to construe, this aint one of them.

      1. 13.3.1

        The burden to establish that such a patent is invalid clearly rests on the challenging party. This really isn’t that difficult. The statute is not ambiguous.



          Are you saying that something (the thing at point being a granted patent) can be BOTH presumed valid and NOT presumed eligible?

          That’s a neat trick.


          Not eligible = invalid. Nice try though. There is no defense of ineligibility that is distinct from invalidity.

  2. 12

    “A difficulty with the the whole approach is that the Supreme Court has already expressly refused to be bound by the statute in its eligibility analysis.”

    Thanks for noticing.

  3. 11

    35 U.S.C. 282(b)(2) “codifies” the following defense: “Invalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability.” Section 101 is a condition of patentability in part II of the Patent Act.

    1. 11.1

      Dispatches with the claim that a patent can be revoked for invalidity because it’s “unconstiutionally” granted.

      1. 11.2.1

        Some people simply do not want to recognize that patent eligibility and patentability are different concepts (oft purposefully conflated by the “whatever” type of Ends-justify-the-Means proponents).

  4. 10

    All of the arguments below assume that the Alice line of thinking is merely a statutory interpretation issue as opposed to being constitutionally necessary to save the validity of 101.

    Assuming that Congress specifically prevented the defense, the Court could still consider the issue and could still strike the patent down, it would just be under the constitutionality of the grant in the first place.

    1. 10.1

      Has anyone ever challenged a patent before on he basis that it was granted unconstitutionally?

      101 was codified into the statute so the statute would control.

    2. 10.2

      I am sure that you are correct here, but let us pause and consider what you are suggesting. Yes, the Court could strike down a patent as having been granted under an Act that exceeds the Congress’ limited powers under the Constitution, but only by virtue of striking down the whole patent act as unconstitutional. Consider me skeptical that the Court is actually prepared to go that far.

      1. 10.2.1

        Greg – you (at least) recognize what has been so loosely bandied about as being somehow “proper” Means to a (rather specific) Ends.

        The “Constitutionality” angle is NOT a precision instrument for any one patent claim. That angle is an atomic b0mb for the Act of Congress.

      2. 10.2.2

        Pretty sure that Supreme Court approval of patents on methods on thinking new thoughts about the meaning of old data would do more damage to their credibility than Bush v Gore.

        You guys never cease to amaze. You just can’t come to terms with reality. Really really strange.


          I doubt it. The general public could not possibly care less about patent esoterica. If you stop 100 random people on any street in America — urban, suburban, rural, doesn’t matter — and asked them to explain the differences between patents, copyrights, and trademarks, you may get five answers that are even remotely accurate … maybe.

          I just read that something like 60% of the American public cannot name the three branches of the federal government (it might have been greater than 60%; I do not recall the number). Yikes!


            It was 75%. Sorry MM, no populist backlash if SCOTUS or Congress explicitly authorizes abstract logic patents. We have our bread and circuses.


              Sorry MM, no populist backlash if SCOTUS or Congress explicitly authorizes abstract logic patents. We have our bread and circuses.

              On the contrary. That’s an issue that could be easily ridden all the way to national office.

              But it’s never going to become a big issue (at least not at Mayo v.Prometheus level) because other than a tiny tiny tiny handful of extremely petulant and loudmouthed entitled (and mostly rightwing) whiners everybody’s on board with the Supreme Court (and me) here. And I do mean everybody. You really have to be incredibly naive and ignorant
              (or willfully blind) not to understand this stuff. You want me to break it down again at the kindergarten level for you and everyone else? Happy to do so.



                All you are happy to do throw insults. I guess it helps you to feel better about yourself.


                No. And if you think that an aspiring politician can easily ride patent subject matter eligibility to national office (I assume you mean Congress, here), you’re delusional. Nobody cares but industry players, practitioners, and fanatics.

  5. 8

    Just trying to keep up with the maximalists here.

    So now if the PTO decided to grant 80,000 patents tomorrow on methods of thinking about a non-obvious correlation after looking at some data, not only could those claims not be challenged in any post grant proceeding (because unconstitutional) but they also couldn’t be challenged in litigation.

    Ah, the wealthy and their super important entitlements. They sure do come up with some strange stuff when that third vacation home starts slipping out of reach.

  6. 7

    Someone ask Professor Hricik if the PTO can deny a patent on a novel non-obvious process of praying to an invisible sky daddy.

    I mean, praying totally works and is a very useful tool for achieving goals in all sorts of endeavors. I keep hearing that anyway from some very important and totally serious people who would never mislead anybody for any reason, and especially not for votes.

    Surely the PTO would never ever suggest otherwise! That would be totally discriminatory against religion. It’d be like asking an Amish baker not to discriminate against someone who drives a car. Our society will crumble if we make such demands of people, especially religious people who are simply the best people ever.

    1. 7.2

      The last section of the Brief in Opposition (linked above as RetirementCapResponse) concisely explains why Hricik’s argument is wrong. For example, “Petitioner’s textual argument unduly hinges on the section titles within part II of Title 35. Pet. at 8-9. As this Court has explained, the titles cannot overcome or constrict the plain language of the text. See Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241,256 (2004); Brotherhood of R.R. Trainmen v. Baltimore & Ohio R.R., 331 U.S. 519, 529 (1947).”

      Interestingly, the Brief in Opposition was written by Matthew Dowd, who also authored article that disproved another creative theory floated on Patently-O.

    2. 7.3

      And more:

      To adopt Petitioner’s interpretation would render the Court’s decision in Alice nonsensical. Alice affirmatively ruled that the asserted claims were invalid under § 101. The only way to read that case is that the Court understood § 101 to be “a condition of patentability.”

      1. 7.3.1

        Possibly because SCOTUS floated an opinion that itself proposes a nonsensical standard? Had SCOTUS intended 101 to be “a condition of patentability” you’d think they might have bothered to mention this in their opinion, especially in light of the fact that such a position creates a conflict with the controlling statute. Of course this is the same court that held a fine to be a tax or a tax to be a fine, whatever you need it to be.

        Here’s a hot take — SCOTUS and particularly Justice Thomas have no regard or understanding of patent law at all.


          Bluto, what is the legal basis, if any, for invalidating a patent based on double patenting?


            Good point, Ned (as usual). Double patenting is also grounded in §101. If lack of subject matter eligibility is not a defense against infringement, then it follows that neither is double-patenting (or lack of utility, not that the last one sees much use in litigation anyway).


              Until the last 10 years or so (likely less). Challenges to eligibility under 101 were as rare as cases where utility was challenged.


            I’ve never heard of a patent being “invalidated” based on non-statutory double patenting other than some strange complications that arise based on PTA or patents in a family that do not have co-terminal expiration dates. Even in these cases terminal disclaimers can fix the issue. This is a mere procedural issue.

            How in the world is this anything akin to the invalidation of a freestanding patent under 101?


              BB, there have been a few but important pharmaceutical patents shot down on double patenting in their litigation in which terminal disclaimers were not allowed at that late date. But yes, as pre-AIA patents expire, there should be less situations of patents with the same spec but widely differing patent expiration dates. Yes OTDP is based on two or more patents with patentably indistinct claims. No relation to Alice type 101 rejections. But identical patent terms alone does not preclude an OTDP rejection.


              I’ve never heard of a patent being “invalidated” based on non-statutory double patenting other than some strange complications that arise based on PTA…

              * Gilead Sci. v. Natco Pharma Ltd., 753 F.3d 1208 (Fed. Cir. 2014)
              * AbbVie Inc. v. Kennedy Inst., 764 F.3d 1366 (Fed. Cir. 2014)
              * GD Searle LLC v. Lupin Pharma., 790 F.3d 1349 (Fed. Cir. 2015)

              Just to name a few recent ones (with literally hundreds of millions of dollars at stake).


            I’m not arguing that non- statutory double patenting might not also be amendable to reconsideration as well.

            Eligibility just happens to be a much hotter issue due to the number of applications implicated.

  7. 6

    Procedurally speaking, isn’t a 12(b)6 motion essentially saying that the subject non-invention cannot be litigated? Wouldn’t that make it more of a jurisdictional question, which precedes the presentation of defenses?

    1. 6.2

      I think the presumption of validity that attaches to an issued patent makes that argument hard to accept. There is no non-invention in am issued patent until you prove its invalid. The statute calls out ways to invalidate a patent.

      1. 6.2.1

        There is no non-invention in am issued patent until you prove its invalid.

        Nobody is suggesting that the 12(b)(6) motion be granted without “proof”.

        In many patent cases, the evidence that an alleged “invention” falls outside of those permitted by the patent statute is pretty easy to identify and present to the judge.


          Presumption of validity built into the statue argues against this type of collateral attack against an issued patent. Those drafting the law knew the USPTO would be in the best position to know if a patent is valid or not, not a court operated by a judge with limited or no technical training.

          If the statue drafters intended for the validity of a patent to be challenged in a 12(b)(6) or (2) motion the statute would say so. Instead they decided to limit those challenges per the options made available in 282.


            Maybe some things are just so obvious they don’t need to be spelled out?

            The toddler-grade petulance of the modern-day patent monetization community was probably not fully appreciated by Congress at the time that section was drafted. [shrugs]


            Whya? jurisdictional / standing questions are part and parcel of court procedure regarding every statute.

            Lawmakers might just as soon draft separate rules of procedure for every law under that logic…..


              Patent law and a very small handful of other legal areas (such as maritime) have been treated with special regard since their inception. Many aspects of patent law are unique such as registration before the USPTO.

              Notwithstanding, a patent’s validity under 101 is not a jurisdictional or standing issue.

  8. 5

    One should note that a laches defense to infringement damages was not consistent with Supreme Court case law, but it was within the power of Congress to provide such a defense by statute. Because Congress did not include laches as a defense to infringement, the Supreme Court was justified in concluding that Congress did not choose to override prevailing Supreme Court case law.

    In contrast, the patenting of principals in the abstract, laws and phenomena of nature, was well-established prior to 1952. Thus Congress did not have to specifically include these defenses within any statute because they existed independent of the statutes based upon common law. (Another common-law defense is double patenting, recognized even at the time of Sir Edward Coke.) Thus their failure to appear in 35 U.S.C. §282(b) should not be construed by Congress to overrule the Supreme Court unless it is abundantly clear that Congress intended that the statute comprehensively include all defenses to infringement and, by not including pre-existing defenses, that Congress intended to exclude them.

    But the statute itself does not read as a matter of exclusion. It itemizes “statutory” defenses and requires that they be pleaded. There is no suggestion that existing nonstatutory, common-law defenses be excluded in future litigation.

    1. 5.1

      Yes, and as others have noted before here, 35 USC 282 says “The following shall be defenses ..” [which is not exclusionary of others].


          Expressio unius est exclusio alterius.

          Especially apt considering that these logic patents are the easiest for the common poor to obtain.


          BB, the “Expressio unius est exclusio alterius” interpretation doctrine does not fit many statutory interpretation situations.
          First, it does not apply when the same statute has a general “catch all” provision that expands the specifically listed items, such as 35 U.S.C. 282(b)(2) here for “Invalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability.” As noted above, Section 101 is a condition of patentability in part II of the Patent Act.
          One of many examples by a law professor of where this interpretive doctrine does not make sense is a “no dogs allowed” park ordinance. “Expressio unius est exclusio alterius” does not make that ordinance allow pet tigers being brought into the park just because they are not also specifically mentioned in that ordinance.
          Furthermore, if Congress wanted the defenses limited by Section 252 to only those specificallyl mentioned they could have simply said “The following shall be the only defenses ..”

    1. 4.1

      The Asserted Patents are (1) U.S. Patent No. 8,224,913 (filed
      July 17, 2012) (the “’913 Patent”); (2) U.S. Patent No. 8,209,389 (filed
      June 26, 2012) (the “’389 Patent”); (3) U.S. Patent No. 8,161,104 (filed
      April 17, 2012) (the “’104 Patent”); (4) U.S. Patent No. 8,468,198 (filed
      June 18, 2013) (the “’198 Patent”); (5) U.S. Patent No. 8,468,199 (filed
      June 18, 2013) (the “’199 Patent”); and (6) U.S. Patent No. 6,182,219
      (filed January 30, 2001) (the “’219 Patent”).

    2. 4.2

      Claims 1-3 of the ‘199 patent are at issue:

      1. A method of transmitting a message from a sender to a recipient through a server displaced from the recipient, the steps at the server comprising:
      receiving the message at the server from the sender;
      transmitting the message to the recipient;
      receiving at the server at least a portion of a data transport protocol dialog generated during transmission of the message from the server to the recipient; and
      receiving at the server from the recipient an indication of the failure to deliver the message to the recipient;
      forming at the server a first information from the at least a portion of the data transport protocol dialog and the indication of the failure to deliver the message by the recipient; and
      transmitting, before any authentication of the message, a copy of the first information to the sender from the server.
      2. The method of claim 1, wherein the copy of the first information is stored in a memory in communication with the server.
      3. The method of claim 1, wherein transmitting, before any authentication of the message, includes transmitting a copy of the message and the first information to the sender from the server.

      1. 4.2.1

        Dear Patent Tr 0ll,

        You can’t tell me what information I can send to people over the Internet, whether I choose to send it “automatically” or not. You also can’t tell me what information I can store and what I can’t store. That’s what computers are for.

        You don’t own that and you never will and if some professor is telling you otherwise, he’s probably venturing far outside of his alleged area of expertise. It happens. Ask for your money back.

        In the meantime, take a shower. You stink.

        Best regards,

        Everybody who has a programmable computer hooked up to the Internet circa 1992

      2. 4.2.2

        The problem to be solved was providing reliable proof of the content and delivery of electronic messages.

        But, the specification states: “It is common practice for Internet e-mails to be relayed from MTA to MTA until they reach their final destination. The primary purpose for requiring a direct connection between the RPost server and the destination’s MTA is so that the RPost server can record delivery of the message, (this record taking the form of an SMTP dialogue) with the e-mail server which has proprietary responsibility for receiving e-mail for the recipient domain name. The existence of this record provides helpful evidence that the message was delivered, in much the same way that a registered mail receipt provides evidence of delivery.”

        The specification further states: “With the introduction of the Extended SMTP standard it became possible for sending MTAs to request notices of success and failure in the delivery of messages. These Delivery Status Notifications (DSNs) are e-mails which are sent by a receiving MTA to the nominal sender of the message when certain events occur: e.g. the message has been successfully deposited into the mailbox of the recipient; the message cannot be delivered to the recipient’s mailbox for some reason; the recipient’s message has been relayed on to another server which does not give DSN receipts.”

        The specification thus establishes that e-mail communication through a server, data transport protocols such as SMTP and ESMTP, and DSNs such as failure notifications were all in the prior art. Therefore, the advance over the prior art was the forming of information from a data transport protocol dialog and a failure notification and then transmitting such information to the sender (as proof of delivery).

        The claim therefore is directed to forming and supplying information to provide evidence of delivery. This concept is an ancient practice analogous to registered mail and can be performed by pencil and paper. The claim is directed to an abstract idea and fails Alice/Mayo step one. Limiting the information to a particular type, i.e. transport protocol dialog and failure notification, does not make the concept any less abstract.

        At step two, limiting the field of use to e-mail and employing a generic server to perform routine functions such as receiving, forming, and transmitting information do not qualify as significantly more than the abstract idea itself. The claim fails Alice/May step two and is invalid.

        Once the inventor came up with the good idea to use a data transport protocol dialog and a failure notification as proof of delivery, there was no technological problem to solve. No new technology was needed, and the idea could be implemented using the existing capabilities of a generic server.


          use a data transport protocol dialog and a failure notification as proof of delivery

          Also not “technology” but who’s counting.


            Yet using rules that relate sub-sequences of phonemes, timings, and morph weight sets is somehow considered “technology.”

            Still trying to understand the exceptions to the judicial exceptions.


              Still trying to understand the exceptions to the judicial exceptions.

              You and everyone else who pauses to think about patent law for more than 30 seconds.


                and yet, everything is eminently clear to Malcolm and his desired Ends, whatever the Means…


          “This concept is an ancient practice analogous to registered mail and can be performed by pencil and paper.”

          You can’t send an email or receive at the server at least a portion of a data transport protocol dialog generated during transmission of the message from the server to the recipient using pencil and paper.

          Don’t impermissibly distill the invention down to a “gist” please.

  9. 3

    Setting aside this silly petition, I’m curious as to whether Hricik believes that the Constitution can be relied on as a defense to a claim of patent infringement.

    [note: I realize that for most of us the question answers itself, but regular readers will understand that the folks who are usually “confused” by everything (or, more accurately, everything that dimishes the value of a patent) also tend to be confused by the Constitution’s applicability to patent law]

    Also curious as to whether Hricik ever figured out what Prometheus v. Mayo was about. I recall him struggling with the basics for a long long time.

  10. 1

    Slightly rephrasing the question presented here:

    “Please admit that you all wrongly decided Bilski, Alice, Mayo, etc.”

    1. 1.2

      More slightly modified:

      “Please admit you all wrongly decided Bilski, Alice, Mayo, etc., or make fools of yourselves trying to distinguish SCA from the present case.”

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