Patent Eligibility in 2018

MBHB Partner Dr. Michael Borella has an upcoming free webinar: Patent Eligibility in 2018: Current Status and Best Practices:

Topics include: Overview of the most recent Federal Circuit case law regarding Section 101; Where this law is relatively clear, and where it is not; The impact of the USPTO not making any significant updates to its subject matter eligibility guidelines; Best practices for drafting and prosecuting software and business method inventions in light of the above.

Advanced registration is required.

77 thoughts on “Patent Eligibility in 2018

  1. 8

    What Martin says below is really at the core of Benson and all 101 matters.

    Martin — 3) Night, when we talk about the “structure” of a novel, or the “structure” of a business deal, or the “structure” of a football play, or the “structure” of a runtime routine, we are using the word as an abstraction to describe organization and sequence. When we use the word “structure” in relation to a building, or a machine, or a molecule, we are describing chemical and mechanical relationships in addition to spatial organization and sequence. They are not the same, they will never be the same, and the maximilaists insistence that they are they same is a legal dead-end, as we can see.

    response >>>Martin,

    The structure of the machine that provides the functionality counts for patents.

    Just really weird that you think that a novel is the same as software. The novel does not provide new functionality.

    1. 8.1

      Plus, Martin just ignores the equivalency of hardware/software/firmware. He says structure of a machine counts as structure, so if there is a machine in a black box, then Martin is saying you have to open it up to see if it is structural where the software is not structural and the hardware is.

      That simply is nonsensical.

      1. 8.1.1

        Y’all build strawmen up faster than they can be torn down.

        If there is no improvement to the structure of the computer AND

        there is no improvement to the art of instructing a computer, THAN

        the improvement has to be in the use to which the instructed computer was put. If THAT

        use is not a machine, composition, process, or manufacture, where is the eligibility?

        Is stock-trading a “process” for patent purposes? Are cartoon mouth shapes “manufactures” for patent purposes?


          Y’all build strawmen up faster than they can be torn down.

          You use that term “strawman,” but I do not think that you understand what that term means.

          Further, one cannot have the same structure and NOT have the capabilities.

          Software simply is not “magic” that provides new capabilities with the same exact structure.



            anon how can you not understand simple propositions ? (that’s rhetorical, I know why you don’t understand:

            If the physical machine is the same, there is no improvement to the machine. If the art of instructing the machine is not improved, where must the improvement be?

            are you saying that any common variation in programming is an improvement to the art of programming?

            that’s utter nonsense.


              You are not responding to my comments Martin.

              And, of course, any variation of programming is structure. That is why 102 and 103 are there.

              Think about other machines, etc. Are you saying if I add a gear that adds functionality that it doesn’t count? Or if I add some more wood that changes the function that it doesn’t count?


              I am not the one showing an inability to understand simple propositions, Marty.

              That would be you and your penchant to think that software effects some “magical” change to bring new capability (somehow) without an actual physical change.

              Then again, you do not seem to grasp even the simple analogies (like the two sets of three resistors in different configurations).

              are you saying that any common variation in programming is an improvement to the art of programming?

              LOL – did I EVER say that? Looks like you are also doing that Accuse Others thing with the strawmen.

              You would be better off paying attention to what I actually say. For example, compare a computing machine with NO software with one that has been reconfigured WITH software.

              To you, any improvements come from some “magical” land.


                Night, you already lost this argument legally. Software code is not “structure” like gears and posts – it may or may not be printed matter.

                Lets try again. Lets say you put a computer to a new use without changing ANYTHING on the machine. Not even new code. You just use software that’s entirely present and “configured” – like photoshop, email, etc.

                Then what? What exactly has been improved or is a patentable process, machine, composition, or manufacture?

                1. You keep on missing Marty – even in the current anti-patent broken scoreboard era.

                  Software IS printed matter.
                  It also inures the exception to the judicial doctrine of printed matter. (I’ve provided a very easy to understand set theory explication of this)

                  Lets say you put a computer to a new use without changing ANYTHING on the machine.

                  That cannot be done.
                  This is the lesson of the inherency doctrine.

                  New code “on the machine” necessarily changes the configuration of the machine.

                  Software is NOT “already there” and configured on a machine until you change that machine by adding that component.

                  Come man – this is something that you should readily understand, given how software is where you earn your keep in the real world.

                  I pointed out to you the easy to understand “Three Resistors” analogy, and you STILL fail to grasp the lesson provided.

                  Near as I can tell, you are still letting the emotional experience block your reasoning.

                2. Marty: “Lets try again. Lets say you put a computer to a new use without changing ANYTHING on the machine. Not even new code. You just use software that’s entirely present and “configured” – like photoshop, email, etc. ”

                  I’m not sure I understand this. Would this be an example of what you are suggesting… say photoshop has a set of features/functions and a macro feature so that a sequence of steps can be captured or written and performed automatically. In that context someone creates a process, or series of steps to perform some function, say receiving a set of photographs of horses warming up before a race and an email with a predicted outcome of the race and the macro automatically extracts the images of the horses from the warm up photos and arranges them in a photo of the area around the finish line to provide an illustration of the predicted result?

                  Yes, that would be a new use and an eligible process.

                  Just as a new process for combining chemicals to manufacture another chemical is a eligible process even though chemists are able to stir and heat chemicals generally.

                3. Also to Les’s example, it would not be possible to create that new process without new structure.

                  Simply not possible. The laws of information theory, physics, and theoretical computer science all tell us this.

                4. But Marty likes his “magic.”

                  After all, he has built his business on that magic. How would he know any different?

  2. 7

    Clearly there is a disconnect between the courts and the USPTO as to what is patent eligible under 101. GQ just posted an article stating that IBM inventors received more than 9,000 patents in 2017. Among those epic wins are:

    U.S. Patent No. 9,755,923 for a system that uses unstructured data about world or local events to forecast cloud resource needs;

    U.S. Patent No. 9,601,104 for a system that can help AI analyze and mirror a user’s speech patterns to improve communication between AI and humans;

    U.S. Patent No. 9,560,075 for an AI system that baits hackers into email exchanges and websites that expend their resources and frustrate their attacks;

    U.S. Patent No. 9,566,986 for a machine learning system to shift control between an autonomous vehicle and a human driver as needed, such as in an emergency;

    U.S. Patent No. 9,824,031 for a method that leverages blockchain technology to reduce the number of steps involved in settling transactions between multiple business parties; and

    U.S. Patent No. 9,762,722 for automatically elevating the security protection of a mobile device when it determines that device is located far from its owner and is likely being used by someone else.

    What are the “best practices” (file or not file) for this kind of “stuff” since it is still passing through the USPTO like sh** through a goose?

    1. 7.2

      Where do you see a disconnect between the courts and the USPTO in allowing this claim:

      1. A computer system, comprising:
      a processor for executing the computer readable instructions to perform a method comprising:
      monitoring a collection of world or local events relating to a customer application, wherein monitoring comprises evaluating a plurality of data feeds comprising a selected one or more of news feeds, network statistics, weather reports, social networking data, and company data;
      monitoring an infrastructure load on resources for the customer application;
      evaluating a causal relationship between a particular event from the collection of world or local events and the infrastructure load based on historical data obtained from a heuristic database, wherein evaluating the causal relationship comprises heuristic analysis to update a behavioral rule based on a causal link in human responses to the particular event;
      constructing a predictive rule based on the causal relationship, wherein the predictive rule forecasts future human responses to a future occurrence of the particular event;
      anticipating resource requirements based on the predictive rule; and
      requesting a provisioning of cloud resources in a service domain for the anticipated resource requirements.

      Its directed to an apparatus (eligible) and it is directed toward an improvement in the operation of the machine (the network). Looks like its dead center in the Enfish zone to me.

      1. 7.2.1

        Les, it does seem to have a tie-in to improving computer systems. The problem may be is that the various steps are stated at too high a level of abstraction.

      2. 7.2.2

        Abstract idea: Look for events in the news, match the event to historic spikes in ‘cloud resource’ usage and provision ‘cloud resources’ accordingly.

        Something more: Conventional use of computers.

        Alice rejection: Substitute ‘police resource’ for ‘cloud resources’ and it is pretty clear whats going on.

        Enfish angle: Looking for “an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.” Timely cloud resource provisioning is an ordinary use of a computer make more computers available to a needed task.


          “Something more: Conventional use of computers.”

          Apparently not. The inventors didn’t think it was conventional and the Examiner, after a thorough search, couldn’t find anything like it in the prior art….

          Just saying its conventional doesn’t make it so.


            LOL – that would be like (exactly like) saying that my Big Box of Protons, Neutrons, and Electrons conventionally used makes obvious ALL configurations of those elementary particles (and – I should note – that the “invention” per Ned must be outside of those elementary particles… )


                ALL claims in the “hard goods” categories uses Protons, Neutrons and Electrons conventionally.

                Slashdot, you have glommed onto a broken score board indicator.

                See if you can figure out just why that is such.


            Editor to Press Operator: War has been declared! Print an extra!

            Press Operator to Editor: Looks like war is about to be declared. Should I print an extra?

            Editor to Press Operator: How many did you print last time?

            Improvements to computers or networks in this patent? Zero. Nothing. Nada.

            Purpose of buying a computer? So the Press Operator does not have to remember how many were printed last time.


              But the computer doesn’t remember how many were printed last time when you take it out of the box. Watch the unboxing video on Youtube. Someone has to modify the computer after it is taken out of the box to get it to remember print quantities. This is a value added improvement to the computer (at least from the viewpoint of the printer and editor).

              Your “zero, nothing, nada,” estimate is in clear error.


                The computer is not modified.

                Instructions the computer uses are modified.

                Improvements to the art of instructing the computer in this patent?

                “zero, nothing, nada”

                Thanks for playing.

                1. Changing the instructions is analogous to changing the gears in a machine to get it to do something else. The instructions are a component of the machine. The machine is physically different. The machine is transformed from doorstop to print quantity rememberer.


                2. So, Martin.

                  I can hook-up a general purpose computer to a machine that makes molecules.

                  By your reasoning every molecule that is possible is anticipated by the GPC that controls the machine to make molecules.

                  Please respond to this antis.

                3. Night Writer,

                  They will not because they cannot.

                  The only thing that you will see in reply is the typical mindless ad hominem from the sAme ones.



              …because – somehow- ALL future improvements are “already in there,” eh Marty?

              You do realize that if that were true, your entire livelihood is an absolute sham as you add “Zero. Nothing. Nada.” value to those machines with everything “already in there.”


                The other thing about this too is new functionality.

                Martin’s argument is that new functions can be performed without new structure. That formal education that you are missing would tell you that this is not possible.

                1. The other thing about this too is new functionality.


                  And this is why I stress the existing patent doctrine of inherency.

                  That doctrine clearly and unequivocally dispels the notion that “all future improvements to the machine by way of software” are somehow (magically?) “already in there.”

                  The fallacy that you address has another name: the “House” fallacy (after the television show with the character of Dr. House who once quipped that only the very first computer may have earned a patent and that all “software improvements” was only “using” that first invention.

                  The typical anti’s here of BOTH Malcolm and Ned routinely ploy that fallacy.

                  As to Marty, it is not only “formal education,” but also merely appreciating reality and the fact that new functionality is NOT “by magic.”

                2. The chutzpah of anon is still gobsmacking years later…amusing in it’s way…but moving on.

                  1) Y’all are already losing (have lost) the argument decisively. The law recognizes it in hundreds of district court cases, CAFC cases, and the key subject matter cases at the court. If you aren’t improving the computer as a computer or the art of programming, you are going to need something novel to get a patent on.

                  2) A change in instructions using standard instruction techniques is not analogous a a “new gear” or any other change of structure. It’s analogous to new content on a player, or new instructions for a tool. There is intellectual property protection available for those things, but patents are the wrong form of that protection. Copyright is far closer, and this is well understood already.

                  3) Night, when we talk about the “structure” of a novel, or the “structure” of a business deal, or the “structure” of a football play, or the “structure” of a runtime routine, we are using the word as an abstraction to describe organization and sequence. When we use the word “structure” in relation to a building, or a machine, or a molecule, we are describing chemical and mechanical relationships in addition to spatial organization and sequence. They are not the same, they will never be the same, and the maximilaists insistence that they are they same is a legal dead-end, as we can see.

                  4) I am open-minded about novel ways of instructing a computer and patents.

                  5) Novel does not just mean different. It has to be “something more”. That’s the meaning of KSR. Flash of genius required? No. Bog-standard minor variations each and every protected for 20 years with the full weight of federal litigation? Never again. You lost, and should have long ago.

                  6) anon you could not code your way out of an ATM, so the aforementioned chutzpah of telling everyone they don’t know their business is just sad. I know what’s easy and what’s not after 20 years of actually making money at this. As you likely could never do.

                  7) Thanks again for playing.

                3. Marty,

                  What you call “The chutzpah of anon is still gobsmacking years later…” is nothing more than the assurance that I understand the topic of which I partake.

                  The same (rather sadly) cannot be said of you – EITHER with the legal OR the technical matters at hand.



                  YOU are – and remain – way out of your league.

                4. Martin –

                  Regarding : “If you aren’t improving the computer as a computer or the art of programming, you are going to need something novel to get a patent on. ”

                  We always need something novel to get a patent. I don’t think anyone every argued otherwise.

                5. Martin,

                  The structure of the machine that provides the functionality counts for patents.

                  Just really weird that you think that a novel is the same as software. The novel does not provide new functionality.


            Hardly relevant to the Enfishiness of the claim which was your original point I think..


              What is funny about you slashdot people is that you don’t understand that patents are what gives programmers the freedom to move from job to job.


                As smart as many programmers are, the “lemming factor” is alarmingly high with the Slashdot and Techdirt crowd.

                It will be only on the way down once they crest the cliff edge will many of such realize that patents are in fact a good thing.


              Not surprising, since I was addressing a different issue.

              The Enfishiness is in the improvement in systems ability to anticipate and compensate for system resource demands.

  3. 6

    Wherein the World’s Most Overeducated Cryb @by Kevin Noonan bends over backwards to find sympathy for the worst attorneys who ever walked the earth.

    My Health, Inc. v. ALR Technologies, Inc. (E.D. Tex. 2017)

    No, I won’t link to his g@ rbage website. Also when you see anything offered by “My Health”, run away. Awful rotten people, totally worthy of the corporate de @th penalty.

    1. 6.1

      link to

      More of these coming.

      Keep asserting those incredibly junky and ineligible claims and payback will come in the form of sanctions. Keep getting sanctioned and then payback will come in the form of having ones license to practice revoked or suspended, as it should be.

  4. 5

    Certiorari Denied (SCOTUS order list, Jan 8, 2018):

    17-645 Recognicorp v. Nintendo

    17-697 Smartflash v. Apple

    17-716 Prism Technologies v. T-Mobile

    Not section 101, but patent-related:

    17-761 Li, Feng v. Matal

  5. 4

    Wi-Fi One v. Broadcom (CAFC en banc):

    We recognize the strong presumption in favor of judicial review of agency actions. To overcome this presumption, Congress must clearly and convincingly indicate its intent to prohibit judicial review.

    We find no clear and convincing indication of such congressional intent. We
    therefore hold that the time-bar determinations under § 315(b) are appealable, overrule Achates’s contrary conclusion, and remand these cases to the panel for further proceedings consistent with this opinion

    Decision written by Reyna; Hughes writes dissent, joined by Lourie, Bryson, Dyk dissenting

      1. 4.1.1

        But very welcome, nevertheless. A chorus of “Ding Dong the Witch is Dead” seems in order.


          Maybe we should wait until the inevitable petition to the Supremes is acted upon before we cue the Lollipop Kids.

      2. 4.1.2

        I was holding back, wondering whether a new posting on the en banc opinion might materialize – as it presumably will, eventually.

        I think Ned will see what I am getting at here. The decision reminds me of an aspect of Crowell v. Benson (in Chief Justice Hughes’s opinion. Adopting the description of the Hughes Court in the Wikipedia article entitled “Three Musketeers (Supreme Court)”, it seems that of the two “swing votes” on the Court, Hughes aligned with the (conservative) “Four Horsemen” (writing the opinion for the Court) and Roberts with the (liberal) “Three Musketeers” (joining Brandeis’s dissent). Seems reminiscent of … well the obvious difference of instinctive attitudes and approach between the wings of the current Court in the oral argument in that case that SCOTUS heard just over a month ago. (My memory is the Justice Breyer referred specifically to some issue raised in the Brandeis dissent, which is presumably he finds persuasive.) The Opinion of the Court delivered by Chief Justice Hughes argued that, in order to preserve constitutionality, although not specifically provided for in the statutory text, the district court must have jurisdiction at least to conduct a trial de novo regarding the two “constitutional” facts as to whether or not the boat was on the navigable waters of the United States (resulting in federal jurisdiction sounding in admiralty), and whether or not a genuine employer-employee relationship existed.

        Moving forward to IPR adjudication, and leaving aside “structural” issues with regard to separation of powers, there is surely a due process issue if an Article III court cannot inquire into whether of not, under the statute, the conditions permitting PTAB adjudication were fulfilled.



          Great question!

          FYI, Ned presented an argument regarding judicial review of statutory jurisdiction citing Crowell in MCM’s reply brief at the Fed. Cir. (MCM Portfolio, LLC v. HP, appeal no. 15-1091, document 56, p. 18). I presented arguments specifically emphasizing Crowell in the amicus brief I filed in Wi-Fi (document 77). They are both available on PACER, but if you provide an email address I’d be happy to send a copy of one or both of these.



            AMICUS BRIEF FILED for Jeremy Cooper Doerre, Esq. in 15-1944 (-1945, -1946) [76]. Number of Pages: 32. Service: 02/02/2017 by email. The paper copies of the brief should be received by the court on or before 02/10/2017. [404519] [15-1944]


            Thanks, JCD and Ned for your comments, and thanks also to Night Writer for the PACER information!

            Now that we have gone off-topic (and there has been a superfluity of occasions to restate positions on subject-matter eligibility this year), I would like to express where Oil States has been taking me (hopefully returning on-topic with regard to this subthread).

            I have been reading through amicus briefs, and chasing up the citations. A lot of interesting patent cases that I had never heard of before! And a mass of precedent, particularly in the 19th century, for the proposition that letters patent for inventions are on the same footing as land patents and mining patents with regard to the security of the granted property rights.

            Thomas, Alito, Gorsuch: I read through in particular Professor Caleb Nelson’s article on Adjudication in the Political Branches. It seems that Prof. Nelson once clerked for Justice Thomas, and Thomas appears to quote his work with obvious respect and alacrity. I found Prof. Nelson’s article measured and thoughtful, and it seems at least consistent with my expectation that Thomas might argue that the “inchoate” right of the inventor is a quasi-private right (being also, as Chief Justice Marshall pointed out, a right to exclude, in that the prior inventor can exclude others from prosecuting patents on the same subject matter), but that the formal grant of letters patent, with the appropriate “solemnities”, perfects the right to a private property right, of the sort that the common law in England and the U.S.A. has recognized for centuries, requiring due process of law (conducted in Article III courts).

            On the basis of Wellness International Network v. Sharif, I would expect that Alito, and I think also Kennedy, would argue that, when traditional “old” private rights are at stake, the consent of both parties is necessary in order for the dispute to be adjudicated to something resembling final judgment in a non-Article III forum (with at most “appellate” review in the judicial branch). Both justices joined or concurred with the majority in both Stern and Wellness, and the “consent” issue seems to be the only real distinction between the postures of those two bankruptcy cases. Also Kennedy volunteered a remark about the constitutional clause “securing rights” to the inventors in the oral argument. The consent of both parties was not even sufficient for Roberts in Wellness.

            To me, Chief Justice Roberts’s questioning of the counsel for the respondents (where he seemed to me to be within his element) suggests that, if it is necessary to reach the constitutional question, then he would require validity of rights to be decided only in Article III courts. But he might well need to be fully convinced that it is necessary to reach the constitutional question.

            Clearly, as constitutional questions were not before the court in Cuozzo, he was comfortable to treat that case as concerning bureaucratic decision-making of the sort that gets Chevron deference.

            Sotomayor, Ginsburg, Breyer? It seems clear that they want to rule that IPR is constitutional. But how to get there from Stern and Wellness? They garnered the concurrence of both Kennedy and Alito in the latter case (perhaps somewhat unexpectedly, hence the pointed remarks in Roberts’s dissent), by making the case turn on the consent of both parties to have the dispute adjudicated in the bankrupcy court. The consent of both parties is obviously not present in the typical IPR. So they would have to argue that, in their five-factor distillation of Schor presented in Wellness, where no one factor is dispositive, both the “Westminster in 1789” and “consent” factors together are outweighed by the strength of the congressional purpose. Maybe Roberts’s question on Schor, and whether that sort of multi-factor test is sufficiently “stable” reflects an expectation that the liberal-leaning justices would like to head out in this direction? But a multi-factored test, in which no factor, or pair of factors etc. is dispositive seems but an excuse for deciding the case by gut instinct and then weighting the factors to deliver the outcome. And of course there is the matter that security of title is a prerequisite for financial investment, raised by Breyer.

            Of course the sensible thing to do is to wait till the judgment is delivered. But then one does not get the satisfaction (for the uninvolved) of seeing how one’s predictions match the reality.


          JCD and Distant, “due process” of the Crowell type is involved only when private rights are being adjudicated — life, liberty, property. In Crowell, the Supreme Court decided that private rights were involved in that case because it involved the liability of one citizen to another. Of course the argument we made to the Federal Circuit was that the Supreme Court had ruled that patents were constitutionally protected property and therefore patent owners were guaranteed at least that level of due process required by the Constitution as opposed to the level of due process guaranteed by the Administrative Procedure Act which only protects against arbitrary and capricious actions by an agency.

          But the general rule developed not only here in United States, but literally everywhere else in the world, is that the servant is not the judge of his own authority. Likewise an agency. As stated by Crowell,

          “In relation to these basic facts, the question is not the ordinary one as to the propriety of provision for administrative determinations. Nor have we simply the question of due process in relation to notice and hearing. It is rather a question of the appropriate maintenance of the Federal judicial power in requiring the observance of constitutional restrictions. It is the question whether the Congress may substitute for constitutional courts, in which the judicial power of the United States is vested, an administrative agency — in this instance a single deputy commissioner[23] — for the final determination of the existence of the facts upon which the enforcement of the constitutional rights of the citizen depend. The recognition of 57*57 the utility and convenience of administrative agencies for the investigation and finding of facts within their proper province, and the support of their authorized action, does not require the conclusion that there is no limitation of their use, and that the Congress could completely oust the courts of all determinations of fact by vesting the authority to make them with finality in its own instrumentalities or in the Executive Department. That would be to sap the judicial power as it exists under the Federal Constitution, and to establish a government of a bureaucratic character alien to our system, wherever fundamental rights depend, as not infrequently they do depend, upon the facts, and finality as to facts becomes in effect finality in law.”

          Crowell v. Benson, 285 U.S. 22, 56-57 (1932).


          Also, I cannot help but return to the topic of the Magna Carta. The Magna Carta was about the rule of law – not even the King was above the law. Pursuant to the Magna Carta, particularly Article 63, a subject had a right to a trial by his peers or by a court of law before his life or liberty or property could be deprived. Today we know this is due process, but is also known in United States as a proper separation of powers between the government (executive/Congress) and the judiciary. The latter two are not the judge of their authority under the Constitution. It is the Supreme Court that decides that issue. Likewise, it is the courts that must decide the authority of the government to act when issues of life or liberty or property are at stake otherwise there is no guarantee of the rule of law. Thus the unauthorized action by an administrative tribunal is not only a violation of the separation of powers, it is a violation of due process and the very idea of the rule law guaranteed to us since the Magna Carta.

          On this topic, it is interesting to note that the Supreme Court in McCormick Harvesting ruled that the Ministry of cancellation by the PTO of a patent upon reexamination not only was a violation of the separation of powers, but it was a violation of the due process clause.


            Your view on separation of powers remains flawed as long as you do not apply that concept to ALL THREE branches of the government.

            While not necessary (perhaps), to your point here, it would be great to see you recognize that even the Court is not above the Constitution.


            And, as you mention McCormick Harvesting, the key quote. Lack of statutory authority, or violation of constitutional separation of powers? Surely not to be decided in a vacuum. I say statutory, you say separation of powers, you pays your money, and you takes your choice…

            No, surely not! If you are a lawyer or a judge, surely you must look to the authority cited. The first is United States v. Schurz 102 U.S. 378 (1880). Now that is an interesting case, concerning a land patent that was duly signed and sealed, but was then improperly retained and “cancelled”. The other authority cited is American Bell 128 U.S. 315 (1888).

            The latter case of course concerns a patent for an invention (the telephone). The authority relied upon in its disposition is United States v. Stone 2 Wall. 525, which also relates to a land patent. The key passage quoted from it in American Bell contains the following sentences:

            “But one officer of the Land Office is not competent to cancel or annul the act of his predecessor. That is a judicial act, and requires the judgment of a court.”

            And this quotation was said, in American Bell, to be “the first one in which the questions now before us were fully considered and clearly decided.” (my italics).

            Further on in American Bell, “It is insisted that these decisions have reference exclusively to patents for land, and that they are not applicable to patents for inventions and discoveries.” But this contention was refuted by the Court: “This, however, is repelled by the language just cited…”


            These authorities seem to me totally inconsistent with the proposition that what was lacking in McCormick Harvesting was statutory authority.


              Distant, a couple points: in American Bell, there was no attempt by the patent office to revoke a patent on its own authority therefore the discussion of whether Congress could authorize the patent office to independently from the courts revoke a patent was somewhat dicta. However, American Bell made it clear that the Supreme Court did not believe that Congress could so authorize the PTO.

              Second point: McCormick Harvesting was also based upon statutory construction. The due process part of the holding of the court pertained to the lack of statutory authority in my view.



            Interesting points re the Magna Carta and McCormick.

            It seems like there are various fundamentally different arguments that can be characterized as “due process” arguments.

            My understanding is that in Crowell, the Court was not persuaded by a traditional due process argument, and was not persuaded by a traditional article III argument, but found that the relevant statute should be interpreted in a manner to allow judicial review of whether the deputy commissioner “acted in a case to which the statute is inapplicable”. Crowell v. Benson, 285 U.S. 22, 63 (1932).

            In reaching its decision, the Court characterized the question of whether the deputy commissioner “acted in a case to which the statute is inapplicable” as a question of “the constitutional authority of the deputy commissioner as an administrative agency,” because if he acted in a case in which the statute was inapplicable, then he acted outside of any authority granted by Congress. Crowell v. Benson, 285 U.S. 22, 63-64 (1932).

            Do you think that Crowell stands for the proposition that a question as to whether an executive branch agent acts outside of his statutory authority, where it is a question of the constitutional authority of the executive branch agent, is by virtue of that fact a constitutional question that requires article III review be available? Or do you think that that some further constitutional right must be involved?


              JCD, an agency cannot decide the scope of its authority. But, where private rights are involved, Crowell requires de novo review of jurisdictional facts as constitutionally protected rights are at stake.

              Thus, since 315(b) goes to the authority of the PTO to act at all, Crowell would require not only review, but the ability of a court to conduct de novo review of the facts – basically give the PTO no deference at all. I suppose this implies an inherent right to challenge the PTO on 315(b) in a district court using de novo review.

              The Federal Circuit sought to bypass all of this by calling patent rights, public rights, where Congress could make the findings of the PTO binding on the courts.


                I am more than sure that it was NOT the Federal Circuit that started the move to call patents “public rights.”


                Ned, thanks for the answers, and don’t feel obligated to continue to respond to my random musings.

                The question that continues to interest me is whether, even assuming arguendo that only public rights are involved, a judicial challenge must still be available for the question of whether an executive officer has acted outside the scope of statutorily granted authority (e.g., whether the fact that the executive officer would be acting without constitutional authority if acting outside the scope of statutorily granted authority means that judicial review should be available).

                It strikes me that even in Murray’s Lessee, in acknowledging that “it has been repeatedly decided in this class of cases that, upon their trial, the acts of executive officers, done under the authority of Congress, were conclusive either upon particular facts involved in the inquiry or upon the whole title”, the Court took care to note that it was referring only to “the acts of executive officers” that were “done under the authority of Congress”. Murray’s Lessee v. Hoboken Land & Improvement Co., 59 U.S. 272, 284 (1856).

                1. JCD, you make an excellent point here. Regardless of the public rights/private rights issue, any action by the executive without legal authority either from the Constitution or for Congress is unconstitutional. Therefore, I believe one can always challenge the action of the executive that is illegal.

                  We actually might find a lot of authority on this topic by reviewing the cases involving Pres. Trump and the immigration bans.

                2. even assuming arguendo that only public rights are involved,

                  That’s a difficult assumption to make, as that fundamentally alters the entire patent system.

                  But I do get your thrust: it is not the authorized acts that you see as being challenge-able, but acts that fall outside of the provided authority that you would see as necessarily being challenge-able.

  6. 3

    I too pick up on the notion of “best practice”.

    I wonder, might that include drafting your patent applications in such a way as to maximise prospects for getting claims of useful scope (program, Beauregard, carrier, signal etc) through to issue outside the USA? After all, it is the EPC that sets the benchmark these days, not only for Europe but also for most of the rest of the world.

    You know, the handy notion that the invention for which protection is sought is recognisable, already from the application as filed, as “a combination of technical features that solves a technical problem”.

    1. 3.1

      “Best practices” in these areas usually involves figuring out which art unit has the most forgiving/compliant Examiners and then making every effort possible to scriven ones way into that art unit.

      Your “prestigious law firm” will regularly include talks promoting this strategy. Very serious stuff.

      Because nobody cares about the validity/eligibility of the patent. The “tech” in 99.99% of the cases is going to be obsolete in two years (note the quotes — cuz it’s not really “tech” in the first place, just logic in a pre-existing tech context that is usually as old as the kid drafting the claims).

    2. 3.2

      Max, there is no doubt that getting an application ready for the EPO is part of best practices. I write applications every month that are filed around the world and get claims allowed around the world.

      Every application does include a portions that makes the case for the claims being a technical solution to a technical problem.

      1. 3.2.1

        Basically, if you write an application that can be allowed in CN, EP, and US, you are good to go in every major country.

  7. 2

    101 is very easy to understand. Just look at structure.

    All the anti arguments amount to some characterization of structure that contributes to the functions of a machine as not being eligible ’cause it is part of some category in the human brain.

    And, a new math formula is bad? So, that is like saying well they said there was only a new gear structure or only a new molecule.

    All your games are the same. You take a structure of a machine and say it is not patent eligible because it is a witch (or whatever category you assign it to).

    I hope your seminar starts off with the analysis above. It is actually fairly easy to understand the cases with the proper framework.


          I might normally agree with you, PB, but far too many simply eat up that glop.

          As is known in the propaganda world, repeat a L 1 E often enough, and it garners the appearance of the truth.

          To ignore the fact that THAT is an active and very real problem when it comes to patent jurisprudence is very much part of the problem today with patent jurisprudence.

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