What is a Condition of Patentability

RPost v. GoDaddy (Supreme Court 2017)

A new amicus brief supports RPost petition for writ of certiorari – arguing that lack-of-eligibility is not a proper defense to patentability. The brief has an interesting quote from P.J. Federico (co-author of the 1952 Patent Act) suggesting (by omission) that eligibility is not a litigation defense.

I’ll add a different quote from the same work where Federico explains that the old statutory provision was split into two sections: 101 (subject matter) and 102 (conditions of patentability):

One of the basic and most important sections of the old statute was R.S. 4886, which specified the subject matter for which a patent could be obtained and recited conditions for patentability. In the new code, this section has been divided into two sections, section 101 relating to the subject matter for which a patent may be obtained, and section 102 which defines statutory novelty and states other conditions for patentability.

The distinction here is important because Section 282 makes “conditions of patentability” defenses.

I will note that Federico’s commentary might not be the best source of evidence. The same passage as that quoted indicates that “lack of invention” remains a defense under the new law.  Elsewhere, Federico indicates that “the requirements for patentability of an invention are stated in sections 101, 102 and 103” and that utility, under 101 is a “condition.”

What are the Defenses to Patent Infringement?

37 thoughts on “What is a Condition of Patentability

  1. There’s no rational basis for making the suggested distinction.

    1. “Because you do not like it” is NOT synonymous with “no rational basis.”

      Get over yourself.

  2. Alice is a Constitutional argument. When Alice is raised, the real argument is that it is unconstitutional to sue me because the patent was unconstitutionally granted. And, I think you can always raise Constitutional issues.

    1. And, in my opinion, there is no way that Alice is even close to being Constitutional.

      The holding in Alice–which no one seems to get–is that the any claim that is abstract according to the test outlined in Alice was unconstitutionally granted because the claims may tend to not promote progress.

      That really is the holding in Alice. There is nothing in the Constitution that says the justices can magically create exceptions to any legislation they want.

      1. may tend to not promote

        Future prospective (and subjective) “may” is not a legitimate use of Article III power.

      2. The holding in Alice… is that the any claim that is abstract… was unconstitutionally granted because the claims may tend to not promote progress.

        You are being too generous to Justice Thomas’ opinion here. I suppose that one could extract this reasoning from that mess of verbal pottage, but it is by no means certain. Basically, the Court simply does not understand patent law, so it should come as no surprise that every time they take a patent law question, their likelihood of resolving it in anything like a coherent manner is no better than the proverbial squirrel that, notwithstanding its blindness, still finds an occasional nut. The whole nation would be better off (the nine themselves very much included) if they would simply resolve to leave patent law alone, and simply send letters to the CAFC urging more frequent en banc review as necessary.

      3. Re “there is no way that Alice is even close to being Constitutional.”
        Saying that a recent and unanimous Sup. Ct. decision is unconstitutional? Not on this planet.

        1. Not on this planet.

          Unequivocally wrong there Paul. You are falling to the fallacy of the Supreme Court is Supreme “just because.”

          Most all*** states have attorney oaths that do NOT place the Supreme Court above such reproach.

          We have a duty to chastise even the “Supreme” Court when they are out of line. They TOO are merely one of three branches under the Constitution, and the undue fealty that you express is very much a part of the problem.

          ***As we have seen, the Commonwealth of Massachusetts is an exception.

          1. Most attorney oaths do not explicitly place it above reproach from the lay attorney tis true, but the vast majority of lay attorneys consider it to be such anyway.

            1. Thanks 6.

              But being wrong is no excuse for ignoring what is right.

              And certainly, will not – and cannot – vindicate the incorrect view.

  3. A court holding that a patent is not infringed because the claims are drawn to ineligible subject matter??? After the court concludes ineligibility, the complaint is dismissed for failure to state a claim. I need to check this case; maybe the court did not use the usual language and held the patent not infringed. That would be weird though.

  4. Reporting hopeless* Sup. Ct. cert petitions challenging recent Sup. Ct. decisions just encourages other clients to waste money by not getting independent second opinions from experts other than the attorneys getting paid for it.

    *[Other than perhaps certs by some losing defendants doing so to delay an injunction putting them out of business.]

      1. Nope, I did not, because the mere prior cert denials of AIA unconstitutionality challenges is not the same thing as challenging actual recent decisions of the Sup. Ct. Constitutionality of the AIA has not been decided before, but the Sup. Ct. has expressly shot down patent claims for claiming ineligible subject matter several times over the years.

        1. I read Prof. Crouch’s comment a bit differently (based on the combination of your defense of IPRs and lack of any real engagement on the merits of “C” legal discussions.

    1. Reporting hopeless* Sup. Ct. cert petitions…

      Objectively, are not all cert. petitions asymptotically approaching hopelessness? If you petition for cert., you are nearly certain not to succeed. It seems a strange thing to criticize a cert. petition as hopeless, given the nearly universal applicability of that critique when talking about cert. petitions.

      [P]rior cert denials of AIA unconstitutionality challenges [are] not the same thing as challenging actual recent decisions of the Sup. Ct.

      Not so. For the petitioner to succeed here does not require that the Court go back on any particular precedent. If I recall correctly, the first time that the Court invalidated an issued patent on §101 grounds was in 2012 with Mayo. Prior to that, the Court had only tackled §101 in the context of appeals from the PTO. Meanwhile, Mayo and Alice never raised the issue of whether §101 is a litigation defense, so the continued applicability of neither case would be prejudiced if the Court were to hold here that §101 is not a litigation defense. The holdings of Mayo and Alice (for better or worse) would retain their ongoing validity during examination in the PTO, which appears to be the only instance where Congress intended §101 to apply.

  5. The distinction here is important because Section 282 makes “conditions of patentability” defenses.

    Exactly, just in case one might think they were no longer defenses to infringement.

    1. With a different statute, this would strike me as a perfectly sensible reading, Ned. In view of the exact language of Title 35, however, your proposed reading is less tenable.

      § 282 does not merely specify that “conditions of patentability” are a defense. It specifies that “any ground specified in part II as a condition for patentability…” (emphasis added) is a defense to infringement. In other words, on the statute’s own terms, it is not enough for something to be a condition for patentability. It needs to be specified as such in part II. Then, when we go look in part II, we find two (and only two) requirements specified as being a “condition for patentability” (§§ 102 & 103). In view of this extremely careful and refined cross referencing of statutory text, it seems to me that the better reading is that Congress intended nonconformity to §101 not to be a defense to infringement.

      I really cannot understand why Congress intended that. §101 gives us not only the eligibility categories, but also the utility requirement and the prohibition on double patenting. All of these seem to me to be just as relevant to a well functioning patent system as the novelty & nonobviousness requirements.

      I think that this “why would Congress do that?!?” reaction is getting in the way of understanding what the text clearly conveys. People say to themselves “it just does not make sense to treat utility differently than novelty, so clearly that text cannot mean what it says.”

      I sympathize with this incredulity. As I just said, I cannot understand why Congress did this. Still and all, however, what the statute does say is a different question from what it should say. When considering what it does say, it seems clear enough that the statute says that only novelty, nonobviousness, and 112 compliance defenses.

      1. From what it should…

        You seem to have a LOT of that lately…

      2. Greg, there use to be separate defenses to infringement dating from the original statutes. By removing them as defenses, and setting them forth as conditions for patentability, Congress wanted to make entirely sure that it was understood that they remained defenses to infringement.

        1. Ned, one thing we should all be able to agree on, since I have never heard it challenged, was that the 1955 patent act was sold to and accepted by Congress as an uncontroversial non-partisan “codification” of existing patent law – a codification of the prior patent statutes and major case law. [Even though it did make some substantive changes in prior statutory language – for example, broadening-reissue grounds and 112(6).] But the point is that trying to make a “codification” that did not look that different from a historical amalgam of prior statutes is not the same as starting from a clean slate for getting statutory clarity or even removing prior language inconsistencies. Many prior statutory provisions containing unintended ambiguities, like the “false marking” statute, remained unchanged, to only be addressed many years later.
          Furthermore, the Sup. Ct, the final arbiter of federal statutory interpretation, has demonstrated, in interpreting , for example, the design patent damages statute, that it is not bound to accept disputed academic literal statutory scope interpretation arguments that lead to what it considers to be absurd results.

          1. Another recent example of the latter re patent law interpretation is in Cuozzo. As the Court noted, the literal text of §314(d) expressly states that the Patent Office’s determinations whether to institute inter partes review “shall be final and nonappealable.” Yet this Sup. Ct. decision specifically indicates some situations in which such Patent Office determination would NOT be “final and nonappealable.”

            1. Paul —

              I think what the Supreme Court did in Cuozzo is entirely consistent with statute — §314(d) says what it says and no more.

              The Federal Circuit in earlier precedent had erred in reading the statute rather naively (as Judge Dyk is wont to do when ruling against a patent owner), precluding far more issues from review than the statute specifies.

              My article in ABA Landslide from about a year ago explains it.

              Administrative Law Observations on Cuozzo Speed Technologies v. Lee, ABA Landslide

              At the ABA web site link to americanbar.org

              at Academia.edu link to academia.edu

              1. The Federal Circuit in earlier precedent had erred in reading the statute rather naively (as Judge Dyk is wont to do when ruling against a patent owner), precluding far more issues from review than the statute specifies.

                Too true, on all points addressed.

            2. The Feds have always ignored the words of the statute itself, entirely reading out the limitation of Secton 314(d) regarding this “section,” as if it meant, “this chapter.”

          2. Paul,


            “Mere codification” is a fallacy and has no place in any serious discussion of the Act of 1952.

          3. You also seem unable (unwilling) to recognize the Supreme Court OVER-reach when it comes to legislating from the bench and the (purposeful) blurring of what is interpretation of statutory law and what is re-writing of statutory law.

            The bigger issue (that SHOULD) to be addressed is the “broken scoreboard” effect.

          4. Paul, agreed. The starting point of interpretation is the overall goal of codification without substantive change. That is why I said what I said. When it moved the defenses to infringement into the new 102, it had to make clear that they were still defenses to infringement.

            1. …except for the fact that “without substantive change is KNOWN to be a fallacy…

              No surprise that both Ned and Paul get this history wrong.

            2. “The starting [and ending] point of interpretation is the [text in context].”

          5. Paul, mainly codification, but there were some changes that were explicitly made to existing case law and you know that.

        2. Fine, but this still seems to land us in the same place that I just outlined. The 1952 Congress sought to recapitulate 69 of the 1946 Title 35, so they wrote up 35 U.S.C. §282, but they still wrote it up in such a way that §101 is not made a defense to infringement. I just do not see how one gets around this rather glaring fact by noting (perfectly accurately) the history of the legislation and previous iterations of the act.

          1. I don’t either Greg. The only argument I see is that it is a Constitutional challenge to the infringement suit.

          2. Greg, perhaps I am missing a more than semantic argument here, but what practical difference does it make whether something is called or listed as a “defense to infringement” if it is a Sup. Ct. accepted defense that kills asserted patent claims in patent infringement suits?

            1. [W]hat practical difference does it make whether something is called or listed as a “defense to infringement” if it is a Sup. Ct. accepted defense that kills asserted patent claims in patent infringement suits?

              If the SCotUS accepts §101 challenges as defenses to infringement, then of course the distinction being urged makes no practical difference. The whole point of this cert. petition is to urge the Court to read the statute and acknowledge that §101 challenges are not defenses to infringement, but rather can only be raised in the PTO.

              1. read the statute and acknowledge” gets in the way of the addiction of sticking their collective fingers into the nose of wax.

                One only has to look back at Justice Stevens who warns of treating patent law as a “nose of wax,” and then directly set out to treat patent law as a nose of wax.

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