Eligibility Train Wreck Continues its Skid: Skidmore Deference for the PTO on Eligibility

by Dennis Crouch

A key point of argument and policy over the past decades has been the level of authority given to the USPTO as the government’s expert patent law agency.  When the USPTO makes a decision — is that decision respected by other tribunals?  At times the agency is given substantial deference (factual conclusions made by the PTAB), but other agency decisions are also regularly reviewed de novo without deference.  With regard to interpretation of substantive patent law, PTO determinations are often simply ignored.

Cleveland Clinic Found. v. True Health Diagnostics LLC (Fed. Cir 2019) (nonprecedential) offers a case-in-point with the following key statement from the Federal Circuit:

While we greatly respect the PTO’s expertise on all matters relating to patentability, including patent eligibility, we are not bound by its guidance. And, especially regarding the issue of patent eligibility and the efforts of the courts to determine the distinction between claims directed to natural laws and those directed to patent-eligible applications of those laws, we are mindful of the need for consistent application of our case law.

In the case at hand, the Federal Circuit refused to follow or give any deference to PTO guidelines and instead affirmed a lower court determination that the claims at issue were ineligible as effectively claiming a law of nature.

Over the years, the PTO has shifted policy.  In the old eligibility cases like Diehr and Chakrabarty, the agency was refusing to issue patents that it saw as crossing-the-eligibility-line.  However, the new statements by Dir. Iancu go the other-way, with the USPTO creating a policy of issuing patents that the courts would find invalid (if given the opportunity).

The statement from the court here is important although buried in a non-precedential opinion.  One reason for its importance is its clear tension with the Federal Circuit’s recent decision in Natural Alternatives that called for Skidmore deference to be given to the PTO statement on eligibility.

The U.S. Patent and Trademark Office has adopted guidance on how examiners [and the agency as a whole] should determine whether a claim is eligible under § 101 and provided examples of eligible and ineligible claims. Under these guidelines, a claim to a practical application of a natural product to treat a particular disease is patent eligible. The parties dispute the persuasiveness of this document and the weight we should afford it under Skidmore v. Swift & Co., 323 U.S. 134, 65 S.Ct. 161, 89 L.Ed. 124 (1944).

Nat. Alternatives Intl., Inc. v. Creative Compounds, LLC, 2018-1295, 2019 WL 1216226, at *5 n.2 (Fed. Cir. Mar. 15, 2019).  Although Natural Alternatives was precedential, its statement regarding Skidmore deference was admittedly dicta by Judge Moore.  Judge Moore was also on the Cleveland Clinic panel, and I suspect that she would not have signed the opinion if it had been issued as precedential. Of course, that begs the question of why sign it as a non-precedential opinion?

 

101 thoughts on “Eligibility Train Wreck Continues its Skid: Skidmore Deference for the PTO on Eligibility

  1. 16

    Everything that can be invented — or should be — has been invented.

    — SCOTUS

    1. 16.1

      You have miscredited the quote – that goes to Charles Duell.

      1. 16.1.1

        Hazzah anon my friend!

        Yes. Yes. Duell gets credit for the “everything” part … while SCOTUS gets credit for “or should be” … and for embracing Duell!

      2. 16.1.2

        Charles Duell never said this amd you’re a l y in g little s c u m b@ gs for continuing to peddle the mythology (but we knew that already).

        1. 16.1.2.1

          Item with historical links caught in filter (multiple links ‘tripped’).

          It is LESS important any type of apocryphal nature of the quote and MORE important the view that some DO hold that breathes ‘life’ into the quote.

          Case in point: YOUR own positions give credence at the same time that you get all emo about the quote being offered.

          This may be too nuanced for you to grasp, but the fact that you reacted soooo strongly in the first place actually validates the usage of the quote.

  2. 15

    Let’s try again:

    Is the Office attempt to align 101 with “practical application” indeed “worthless?” Why?

    Is there a reason why alignment with the (original) low hurdles of Congress-written 101 a “bad” thing? Why?

    1. 15.1

      Without a meaningful definition of the term “practical” in the context of patent law, there’s no point in having this discussion.

      You should know this already, Mr. “Vague for Voidness”. A “practicality” loophole for subject matter eligibility is even s t o o p i t er than a “functionally related” loophole.

      I’m looking forward to your clear definition with examples illustrating the logic of the test at the margins. Apply it to Prometheus claims and show us how it works, Bildo.

      In other words, grow up and state something coherent for a change.

      1. 15.1.1

        Malcolm,

        You keep on whining about “without” and “loophole” and “worthless” without actually establishing WHY this is such a concern.

        Although I do see you attempt (to your own detriment) to bring into the conversation the topic of “functionally related” — which is an item about which YOU have made admissions against your interests in past attempts to actually engage on the merits (I still recall you stepping deep into the Doo Doo in a conversation with David Stein as to the controlling law vis a vis “functionally related” as well as your perpetual “runaway” from the direct and plain English explications of my Simple Set Theory in regards to the exceptions to the judicial doctrine of printed matter.

        I’m looking forward to YOUR first step towards inte11ectual honesty with you engaging on these points long provided. These direct points apply everywhere — at the margins and otherwise.

        In other words, grow up and state something coherent for a change.” — your Accuse Others meme in force, as clearly I (and others) have already provided you with very coherent and cogent legal points.

        As to you banal “Apply it to Prometheus claims…” – this is nothing more than your trite and tired attempts to parse claims, not taking them as a whole and trying to apply eligibility SOLELY at a piece part level (or as you have done in the past, attempt to move goalposts and make up claims that occur TOTALLY in the mind).

        Your Br’er Rabbit trick is once more (politely) declined.

        1. 15.1.1.1

          … and try to put your “reply” in context of what Congress actually wrote — and intended — for 101:

          A purposefully LOW bar that has but two conditions:
          1) that the innovation be written in a claim form in at least one of the statutory categories, and
          2) that the innovation provide utility within the Useful Arts.

          Why would it bother you that the law as actually written by easily met?

          Stop evading this point.

        2. 15.1.1.2

          Still waiting for the answer, Bildo, to a very obvious and direct question to you based on your own statement.

          Dennis will be along to wipe your crack later on today. In the meantime, pull the pacifier out of your mouth and see if you can type a few direct sentences in response to my question.

          Thanks.

          1. 15.1.1.2.1

            You are the one evading – and applying your number one meme of Accuse Others.

            Stultifying

  3. 14

    Quote from the decision: “we are mindful of the need for consistent application of our case law”.

    Who knew the CAFC had such a rich sense of humor. If they’re mindful of the need, what is taking them so long to fix it??? Any court that has to make this kind of statement should think carefully about why they feel a need to say it. Some law is inherently incapable of consistent application. They are not doing their jobs.

  4. 13

    . . . just one more case among the large majority of all cases that makes clear that the best way forward for the protection of valuable American innovation is the abolishment of 101.

    1. 13.1

      As a patent prosecutor, I cringe at the idea out of instinct. However, given that most of this 101 mess is due almost entirely to conflation of 101 with 102, 103, and 112, I’m less and less bothered by the idea.

  5. 12

    Modified from below, in order to pursue the apparent objection to viewing 35 USC 101 as being controlled by some type of “practical application” (as opposed to what, I am not certain):

    Malcolm: “… replace it with a worthless “practicality” test

    Why does that potential “interpretation” worry you so?

    [why would such a view worry anyone? – what is “worthless” about requiring a practical application? Does this mean that Malcolm thinks that the EP setup is equally “worthless?”]

    A “practicality” test (and I only have to guess at this point what you mean by that) would actually hew much closer to the words of Congress without the legislating from the bench that includes policy considerations from a branch not authorized to make law in regards to their own policy desires.

    A “practicality” test would align with what the actual words of Congress in 101 entail:

    A purposefully LOW bar that has but two conditions:
    1) that the innovation be written in a claim form in at least one of the statutory categories, and
    2) that the innovation provide utility within the Useful Arts.

    Why would it bother you that the law as actually written by easily met?

    I go on (below) with pointing out that Malcolm’s penchant against “easily met” also happens to contradict his expressed views on “ultra-wealthy” in that the number one form of innovation that is MOST accessible by the non-wealthy is the very form of innovation that he is most upset about.

    But a few questions for the larger audience:

    Is the Office attempt to align 101 with “practical application” indeed “worthless?” Why?

    Is there a reason why alignment with the (original) low hurdles of Congress-written 101 a “bad” thing? Why?

    Is it legally “wrong” for the Executive branch to look at the confusion and contradictions evident in the Gordian Knot of Common Law law writing and chuck it all, and attempt to return to the unfettered and direct words of Congress?

    Hey, I was the very first to point out the weakness in the current protocol in its attempt to incorporate all of the items that it itself states are contradictory, and I was the very first to note that it attempts to do so with “off-ramps” to avoid BOTH the contradictions as well as to spare its examiners from actually having to comply with the heightened APA evidentiary requirements for ANY use of “conventional” especially if applicants reject an attempt by an examiner to glide by the “ordered combination claim as a whole” evidentiary showing. Take a closer look at that Berkheimer Memorandum.

    Reminder: the evidence required to show conventional means evidence of widespread adoption, which goes well beyond the typical examiner capability of using prior art either for anticipation or obviousness, AND the Office use of “Official Notice” is NOT available for this showing.

    1. 12.1

      Since you mention the EPO “setup” on eligibility, I suppose I ought to respond.

      The EPO way of handling eligibility is to enquire whether the claimed subject matter enjoys “technical character”. An abstract idea does not. A pure business method does not. But a claim such as “A digital computer.” does.

      For the courts in England, the EPO “setup” is “intellectually dishonest”. MM thinks so too. So (I wager) do all the patents judges in the USA.

      The EPO “setup” succeeds at the EPO only because of the established EPO jurisprudence on obviousness. The EPO approach to obviousness is unique to the EPO. Only if the USA also adopts the EPO approach to obviousness is the way clear, to adopt the EPO “setup” on eligibility.

      And that, I would think, is not yet on the horizon. Only a matter of time though, in my estimation.

      1. 12.1.1

        I have seen your “For the courts in England, the EPO “setup” is “intellectually dishonest”. ” before, but frankly, cannot recall the reasoning provided such that the Sovereignty in England may feel that way (while the rest of Europe apparently does not).

        Can you summarize that reasoning?

        1. 12.1.1.1

          Summarize? I gave as an example of a claim eligible at the EPO “A digital computer.”. That, because it has “technical character”.

          To postulate that such subject matter is “eligible” for protection by a (utility) patent for invention is, in the eyes of the judges in England, intellectually dishonest because, manifestly, as any thinking human being can immediately recognise, “A digital computer” is NOT an “invention”.

          1. 12.1.1.1.1

            Ok…. So the rest of the world (including EP) think that the reasoning of the judges in England is bogus, right?

            As the purveyor of all things EP, maybe you can add some reasoning here.

            1. 12.1.1.1.1.1

              Don’t understand your question. For me, both England and the EPO have merit.

              England: Only that which is an “invention” should be “eligible” and in this day and age “A digital computer” is indisputably NOT an “invention”. No doubt about it!

              EPO: Eligibility should not be dependent on the day to day expansion of the “state of the art” but should be something absolute, something like “technical character”, something that is independent of novelty. Filtering under 102 and 103 should follow 101, not be subsumed within 101.

              For me, the EPO stance is intellectually more satisfying, but reasonable minds differ. As I explained above, it is the special EPO approach to obviousness which enables the EPO approach to eligibility. England (and the USA) lacks that enabler.

              1. 12.1.1.1.1.1.1

                Asking you for the reasoning was an attempt to see if you would take a principled stand.

                I see that you are incapable of such.

                Since you see “benefits” in both, I would suppose that you see benefits no matter how the US Sovereign treats the subject, right? That you have no discernable stance on any which way the wind may blow?

                From our past discussions on the approach to obviousness, I would say that your attempted elevation of the EP view on that is highly disingenuous.

                I would also say that your waffling here (meh, both have merits) sounds in you simply not wanting to be adverse to Malcolm.

                1. To you — because you refuse to embrace the meanings within the terrain.

                  “Derp derp derp derp derp”.

                  What a magnificent pile of human waste.

                2. What is your point Malcolm?

                  That you can v0m1t forth a mindless and meaningless post? That is so very well known.

                  Maybe instead try to add something cogent and on point?

                3. try to add something cogent and on point

                  LOL

                  Says the guy who wrote this gibberish:

                  you refuse to embrace the meanings within the terrain

                  You’re hypocrisy is legendary, Bildo. Stop projecting and hustle back to Big Jeans sweat lodge. Your glibertarian bros are waiting there for you so you can all get frothy together. Smell the freedom! Your tr0lling here is a j 0 ke.

                4. You’re hypocrisy is legendary… Stop projecting…

                  ..says the guy whose number one meme is Accuse Others…

                  Stultifying.

                  hustle back to Big Jeans sweat lodge

                  Your 0bsess10n is showing again. You really should see someone about how much mental energy you devote to that (combination of) topic(s).

                  Instead of emptily accusing me of That Which Malcolm Does (tr011ing), why don’t you try (even if just a little) to engage on the merits? After the past fourteen or fifteen years of your doing otherwise, you might actually learn something.

              2. 12.1.1.1.1.1.2

                The very concept of “eligibility” is that of categorizing. Placing something in a category means that you can accept some value as intrinsic to the item without having to look closely at the item, because of its presence in the category.

                Obviousness/Anticipation and Complete Description are extrinsic factors.

                It makes some sense to bifurcate the inquiry, which may be why the the Patent Act was written the way it was.

                In exactly the same way, abstraction may be an intrinsic part of an invention or an extrinsic part. An abstract invention, to me, is different than abstract claims.

                1. To you — because you refuse to embrace the meanings within the terrain.

                  This is nothing new from you.

              3. 12.1.1.1.1.1.3

                Reply caught in the “count filter,” MaxDrei.

          2. 12.1.1.1.2

            manifestly, as any thinking human being can immediately recognise, “A digital computer” is NOT an “invention”.

            And yet, the EPO has zero problem doing exactly the opposite of that “manifestly, as any thinking human being can immediately recognise,”

            As to

            “A digital computer” May very well BE an “invention”.

            Not only that, OUR sovereign has this little part of 35 USC 101: “or any improvement thereof.”

            Now if YOU want to engage another patent doctrine called “inherency” and try the Grand Hall experiment, well, maybe then we can revisit your principles and “understanding.”

  6. 11

    The statement from the court here is important although buried in a non-precedential opinion. One reason for its importance is its clear tension with the Federal Circuit’s recent decision in Natural Alternatives that called for Skidmore deference to be given to the PTO statement on eligibility.

    I don’t think there’s any tension. The Skidmore case says this:

    We consider that the rulings, interpretations and opinions of the Administrator under this Act, while not controlling upon the courts by reason of their authority, do constitute a body of experience and informed judgment to which courts and litigants may properly resort for guidance. The weight of such a judgment in a particular case will depend upon the thoroughness evident in its consideration, the validity of its reasoning, its consistency with earlier and later pronouncements, and all those factors which give it power to persuade, if lacking power to control.

    This articulation is pretty close to what the CAFC says in Cleveland Clinic. The court gives respectful consideration to the government’s views, but those views are not controlling.

  7. 10

    I’m honestly not sure how anyone could consider the decisions in either the Fed. Cir. or SCOTUS on 101 consistent, or even reasonable. The unfortunate result of many of these decisions is a realization that we have a bunch of federal judges lacking a clear understanding of the technologies they’re making decisions on, let alone a good working understanding of patent law and innovation in general. Ignorance is not a good look on a federal judge. I mean, the distinction between cDNA and mRNA/DNA boggles the mind, and other decisions make them look like they need their children to make sure their computers are plugged in when they can’t get their interwebs to show up.

    As for Congress…they’re “working on it.” But given their current anal-cranial inversion problems, I doubt they’ll get very far before a collusion squirrel ran up a tree and made them all slobber over themselves again. Dear God, can’t any of those people do the right thing for America? Or maybe their tactic is to devalue the place so much Russia doesn’t want it anymore.

    1. 10.1

      Well said. My single data point agrees. The basic question of eligibility: is this the kind of thing that Congress intended to be patented? It might be circular, but at least its the right circle to be in.

  8. 9

    “We are mindful of the need for consistent application of our case law.”

    You first, FedCir.

    1. 9.1

      The diamond irony-bullet of the day.

    2. 9.2

      “We are mindful of the need for consistent application of our case law.”

      They mean you and me, not themselves.

      1. 9.2.1

        …lesson from the Supreme Court: Do as I say, not as I do.

        (man, that firehose training really works on the simians)

  9. 8

    Failure to comply with Section 101 is not a defense to infringement. They should try applying Congressional deference.

    1. 8.1

      Failure to comply with Section 101 is not a defense to infringement

      Failure to comply with Section 101 prevents standing to sue for infringement, so no defense to infringement is needed, so what’s the point you are making?

      1. 8.1.1

        Your “prevent standing” runs smack into 35 USC 282(a).

        Again (and even Malcolm agrees with me – although he does not seem to quite grasp that), UNTIL actually adjudicated otherwise, the stick in the bundle of property rights (be that property a Public franchise property of a Private personal property) is the presence and degree of the presumption of validity.

        Your attempt then to turn this into a merry go round and “prevent standing” is thus defeated.

      2. 8.1.2

        The holder of a patent has standing.

        1. 8.1.2.1

          You two are a riot. Hundreds, soon to be thousands, of cases have been thrown out of court for failure to state a claim for which relief could be granted, and you squeak about not knowing the terrain and assumed validity as some kind of permanent immunity to challenge.

          Also, of course, Section 101 is found in Part II of the Title, per 35 USC 282(b)(2), which makes the whole assertion above meaningless, as of course proven by the actual world we live in.

          1. 8.1.2.1.1

            Do you think if I go to law school I could learn how to read statutes?


            §100. Definitions
            §101. Inventions patentable
            §102. CONDITIONS for patentability; novelty
            §103. CONDITIONS for patentability; non-obvious subject matter
            §105. Inventions in outer space

            §282
            (b)Defenses.—The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:
            (1) Noninfringement, absence of liability for infringement or unenforceability.
            (2) Invalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability.
            (3) Invalidity of the patent or any claim in suit for failure to comply with—
            (A) any requirement of section 112, except that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable; or
            (B) any requirement of section 251.
            (4) Any other fact or act made a defense by this title.

            Why did Congress list Section 112 as a defense? Because it is not a CONDITION for patentability. The CONDITIONS for patentability are called CONDITIONS for patentability. Section 102 and 103.

            1. 8.1.2.1.1.1

              282(b)(2) Invalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability.

              35 U.S. Code § 101 Located in Part II of the title, headed Inventions patentable

              Do you have a citation somewhere that construes “patentable” to not be a condition for patentability, or that it being a CONDITION is absolutely implicit since otherwise there is no invention that can have conditions?

              1. 8.1.2.1.1.1.1

                This has been hashed out in much more detail over on the Hricik side of the blog.

          2. 8.1.2.1.2

            First reply is caught in the “count filter,” but a second point is that you lump me in where I do not belong (vis a vis the permitted defenses position).

            You might check the archives on the Hricik side of the blog for my detailed analysis there.

  10. 7

    Dennis: Judge Moore was also on the Cleveland Clinic panel, and I suspect that she would not have signed the opinion if it had been issued as precedential.

    This is pretty speculative and I’m not sure it’s correct. I read her statement in Natural Alternatives as fairly agnostic about the application of Skidmore deference. I don’t think it “called for” anything. The next sentence of the footnote was “this is not a case in which Skidmore deference would affect the outcome.”

    And as anyone who attended the recent PTAB bar conference knows, Judge Moore was on a panel there and she was openly hostile to concept of the PTO trying to set policy for the courts through the subject matter eligibility guidance. So I can’t imagine that she disagreed with the Cleveland Clinic decision all that much.

    1. 7.2

      I agree that the quoted passage is agnostic about Skidmore deference. It’s a statement about the parties’ positions, not the court’s. If there is “tension” between these two cases, it’s not in these two passages.

  11. 6

    Correction necessary:

    that [a select groupings of members of] the courts would find invalid (if given the opportunity)“.

    Let’s not forget that a different select groupings of members of the courts would find the claims so passed not invalid (if given the opportunity).

    THIS IS CRITICAL to the underlying issue that the Common Law law writing of the courts (as prompted by none other than the Supreme Court) is Void for Vagueness and has thus resulted in a Gordian Knot.

    1. 6.1

      Except that we all know that there are reams and reams upon reams of claims out there that no court would ever find eligible. The patentee in this case has been up and down the ladder twice with their junk claims which recite nothing more than admittedly old technology for detecting a natural phenomenon.

      Here are some hypotheticals for you that encapsulate the issue in a nutshell. Kevin Noonan and his fellow patentoholic squawkers should probably take a moment to figure out a coherent response to this other than soiling themselves because we’ve been ahead of their game for about a decade now. Maybe time to learn something?

      Scientist discovers a rapidly reproducing diamond spotted frog in New York city and names it Frog X. Can the scientist claim, “A method, comprising holding a diamond-spotted frog and determining that said frog weighs between 2 and 5 ounces wherein said determination indicates a likelihood that said frog is Frog X.”

      Or how about a similar claim where the “determination” step is looking at the frog through a pair of contact lenses?

      Identifying the frog is incredibly useful because the frog is poisonous (and especially poisonous to the children of wealthy patent attorneys).

      And just to squelch the most predictably wrong non-answers: there is nothing obvious about the claim because there was nothing in the prior art about this frog. If you’re going to argue that the claim is obvious, you’re going to need to engage in the same reasoning which shallow-minded shills like Kevin Noonan find sooooooooo reprehensible. But go ahead and do it if it makes you feel good about yourself for some reason (you’re saving children! sure you are! and promoting progress! sure you are!).

      I assume the relationship between my hypothetical and claims to, e.g., “detecting [newly discovered protein] with an antibody against the protein” are transparent but I admit to overestimating the intelligence of commenters here before. So if you think there’s an important distinction to be made between the hypothetical and the claims asserted by the patentee here, be clear and specific about what that distinction is and why it is important. Good luck.

      1. 6.1.1

        Nice tangent – you want to try to respond to my actual point?

      2. 6.1.2

        “there is nothing obvious about the claim because there was nothing in the prior art about this frog”

        Nothing published, perhaps, but you said the scientist discovered a pre-existent frog, not created it. Sounds like the Examiner could rely on that admission of prior art.

        1. 6.1.2.1

          LOL

          Explain how that 103 argument works under the AIA. Unpublished discoveries that nobody is aware of except me is prior art against me?

      3. 6.1.3

        Actually yes there is something obvious about this – perhaps this is an extension of obviousness from the way some people like it but even if the frog was not in the prior art before weighing a frog is well known so weighing an unknown frog is obvious.

        For eligibility under current law yes the claim would be invalid – it shouldn’t be though to my mind. But then I don’t like the natural product bar.

        As for important differences between the two – and I do think there are some important differences you are missing. The antibody to an unknown protein is not known before hand and not easy to make. NOW if you want to argue that the process of making the antibody once the protein is known is obvious based on prior art – then that is an obviousness argument (one I might agree with) but it is NOT a 101 argument – or it at least shouldn’t be. I am aware the way the current law treats things it is.

  12. 5

    Dennis Crouch: the new statements by Dir. Iancu go the other-way, with the USPTO creating a policy of issuing patents that the courts would find invalid (if given the opportunity).

    And the truth leaks out.

    Fraud Iancu doesn’t care what the courts think. He was hired by Perznit Br@inworms to defraud the public and that’s what Fraud Iancu is going to do: illegally carve enormous loopholes in the law so that his favorite stakeholders can steal more from the public domain and (if all goes “according to plan”) force the public to pay rent to use what is stolen.

    The evidence for this lies in Fraud Iancu’s own public statements where he shows that he has zero understanding of subject matter eligibility. In its place is the bizarre and mindless worshipping of Judge Rich, one of the most short-sighted and clueless people in the history of the patent system. Except perhaps for Fraud Iancu himself, whose legacy is going to be “the guy who agreed to work for the worst president ever.” Heck, Kappos must be loving this because Iancu is going to actually make Dave “Design Patent” Kappos look reasonable by comparison.

    1. 5.1

      Your cognitive dissonance is noted.

      1. 5.1.1

        There is no “cognitive dissonance” here.

        My clients don’t want to be extorted at the point of some g@r bage patent written by some b0tt0m-feeder who sits in front of a computer figuring out his next patent grifting scheme, e.g., scanning publications regarding some molecule and then running to the PTO with claims about “detecting” it using this method or that method. Likewise, nobody benefits from l0wlifes who sit around looking for new detection methods and then run to the PTO with claims to methods of using these new “non-routine” detection methods to detect stuff.

        Literally the only people who support that kind of behavior are a tiny tiny handful of self-interested patent attorneys and chicken little shills (e.g., Kevin Noonan, Hans Sauer) for terrible companies who are so inept that they can’t be bothered to question the inane assumptions and born-yesterday utterances of their own shills.

        1. 5.1.1.1

          Your feelings are noted.

          Sadly, those feelings simply do not reflect an understanding of either patent law (as written by Congress) or of innovation.

        2. 5.1.1.2

          “My clients don’t want to be extorted at the point of some g@r bage”

          You don’t have clients.

          You’re not a patent attorney

          1. 5.1.1.2.1

            You’re not a patent attorney

            LOL

            It’s okay, Bud. The good news is that you already know why you are going to lose. You have lots of time to refund the money you wasted.

            Also, watch out or you will be disbarred in North Carolina.

            ROTFLMAO

        3. 5.1.1.3

          If it is a new detection method that is better, faster, or cheaper exactly how does no one benefit?

  13. 4

    Skidmore v. Swift & Co., 323 U.S. 134, 65 S.Ct. 161:
    “We consider that the rulings, interpretations and opinions of the Administrator under this Act, while not controlling upon the courts by reason of their authority, do constitute a body of experience and informed judgment to which courts and litigants may properly resort for guidance. The weight of such a judgment in a particular case will depend upon the thoroughness evident in its consideration, the validity of its reasoning, its consistency with earlier and later = pronouncements, and all those factors which give it power to persuade, if lacking power to control.”

    1. 4.1

      … which is perfectly consistent with

      While we greatly respect the PTO’s expertise on all matters relating to patentability, including patent eligibility, we are not bound by its guidance. And, especially regarding the issue of patent eligibility

      particularly when the “guidance” in question is a pile of worthless illegal cr @p.

      1. 4.1.1

        There is NOTHING “perfectly consistent” in any of this.

        Unless, you (once again) mean “perfectly consistent if the inconsistent items were expunged.”

        1. 4.1.1.1

          Sadly, since you are only insulting me without any support, the most appropriate response is for me to advise you to G F Y.

          The weight of such a judgment in a particular case will depend upon the thoroughness evident in its consideration</I

          The court directly addressed the guidance in question, which most of us understood was worthless in view of Sequenom and other court decisions directly addressing the ineligibility of claims directed to the use of old techniques for detecting "new" natural phenomenon and/or drawing an inference from such a detection.

          the validity of its reasoning

          The reasoning by the CAFC here is valid and sensible in view of precedent (and common sense). The PTO’s reasoning is not.

          its consistency with earlier and later = pronouncements

          See above.

          all those factors which give it power to persuade, if lacking power to control

          At present, the PTO deserves minimum deference because its director is a fraud appointed by an incompetent criminal. That’s especially true in view of the fraud’s public pronouncements regarding 101 and a set of guidelines which plainly flies in the face of controlling case law.

          And there you go, Bildo. The bottom line is that just because YOU and your miserable cohorts are unwilling to understand subject matter eligibility on any level, that doesn’t mean that the rest of us find it all so “confusing.” Yes, there are some CAFC cases that are terrible (McRo was probably the absolute worst but Enfish was a close second) but that doesn’t make the Supreme Court cases particularly confusing. It’s YOU who tries to make them confusing because the confusion suits your agenda. And we all know this to be true.

          [shrugs]

          1. 4.1.1.1.1

            Are you still doing that “there is no inconsistency if you ignore the inconsistent cases” thingie…?

            Or is that merely you projecting that onto Iancu when Iancu expressly notes that the Common Law law writing has worked itself into a Gordian Knot?

            Or are you still in denial of that fact?

          2. 4.1.1.1.2

            Without any support?

            Wow, that Accuse Others meme of yours is in overdrive.

            How much support do you need for an insult that is inherent in your own words?

  14. 3

    “However, the new statements by Dir. Iancu go the other-way, with the USPTO creating a policy of issuing patents that the courts would find invalid (if given the opportunity).”

    Um wow….that is a rather bold statement I think you should support more Dennis – may certainly be right but you are basically accusing him here of knowingly misinterpreting the law…as that would be a disbarment offense here in North Carolina – that, as they used to say, “is fighting words”

    1. 3.1

      Which court? The eligibility decisions of SCOTUS are far tamer than those created by the bumbling federal circuit in view of Alice and Mayo. The 2019 PEG is consistent with SCOTUS case law.

      1. 3.1.1

        I disagree – SCOTUS case law is not consistent with SCOTUS case law.

    2. 3.2

      Daniel Cole, making a f0 0l out of himself:

      may certainly be right but you are basically accusing him here of knowingly misinterpreting the law

      ROTFLMAO

      that would be a disbarment offense here in North Carolina

      Ooooh, so scary! For some reason, I suspect that Daniel Cole knows more than most people about disbarment offenses in North Carolina. But we’re getting off the subject. Daniel Cole has already been reduced to a pile of smoking rubble on these comment boards and, although we are impressed that he returned for more beatings, we have far bigger fish to fry.

      Let’s just say it would be infinitely fun for Fraud Iancu to bring the lawsuit. At the very least, it would force him to defend his public statements on 101 which evince a lack of understanding of the subject that is so complete that most reasonable people would conclude it was knowing and willful.

      1. 3.2.1

        Daniel Cole has already been reduced to a pile of smoking rubble on these comment boards

        That “legend in your own mind” thing again is showing (and it’s not pretty)

    3. 3.3

      Danny,

      That is LESS an indictment against Director Iancu and more an indictment against the courts – you have to remember that Director Iancu expressly noted that the courts have been inconsistent.

      1. 3.3.1

        Director Iancu expressly noted that the courts have been inconsistent.

        Serious question: since when has that not been true in the history of patent law? Is the existence of inconsistency an excuse to completely obliterate 101 and replace it with a worthless “practicality” test? Is “inconsistency” an excuse to cherry pick the “pro-eligibility” language from each case and completely ignore the fundamental principles underlying section 101 which nobody except for a tiny handful of greedy patent attorneys finds controversial?

        These guys are supposed to be “experts” on patent law. Why are they so “confused” when, in most cases, it’s easy to determine if a claim is ineligible or not? Why do they refuse to addressor discuss the most obvious and banal hypotheticals which directly confront what they perceive to be the most “confusing” aspects of the case law? These are rhetorical questions. Most of us know the answer: the PTO and at least a part of the CAFC feels obligated to protect “stakeholders”, even when all the evidence in front of them shows that the world’s “stakeholders” are doing very well indeed, as reflected by their wealth and as reflected by the number of patents being filed for. As to why they feel obligated, that’s a trickier question but it’s not unreasonable to assume that certain kinds of people tend to identify with each other and “circle the wagons” when their entitled status in society is questioned in any way. And then there are those people who just can’t stand to admit they were wrong, about anything, ever, no matter how obviously wrong they were.

        1. 3.3.1.1

          Your Accuse Others is noted.

        2. 3.3.1.2

          Repeat Post (possible count filter effect):

          replace it with a worthless “practicality” test

          Why does that potential “interpretation” worry you so?

          A “practicality” test (and I only have to guess at this point what you mean by that) would actually hew much closer to the words of Congress without the legislating from the bench that includes policy considerations from a branch not authorized to make law in regards to their own policy desires.

          A “practicality” test would align with what the actual words of Congress in 101 entail:

          A purposefully LOW bar that has but two conditions:
          1) that the innovation be written in a claim form in at least one of the statutory categories, and
          2) that the innovation provide utility within the Useful Arts.

          Why would it bother you that the law as actually written by easily met?

          Maybe you want a different law than the one that Congress wrote. Maybe you want to not allow protection of innovation of the type that is present in the Kondratiev Fifth Wave.
          Maybe.

          Maybe you should realize that what you want is just not in accord with the words of Congress, nor is it aligned with any inte11ectaully honest understanding of innovation.

          I “get” your feelings as you have expressed them in not wanting any type of “gr1fting” “Tr011” ext0rt10n, but those feelings are but a thin veneer for the Efficient Infringers wanting a free ride on innovation that belongs to someone else. (If your clients were actually already doing what the ‘offending’ patents claim, then you have 102 or possibly 103 basis of support for your clients – if on the other hand, they just want to take what someone else has already made public by way of patents, then that’s quite a different story).

          I “get” that you disdain that type of innovation because you may feel that it is just “too easy” to do.

          I “get” that this dichotomy of “too easy” does not fit your disdain for patents as a property mechanism for making money (and that you have never explained that dichotomy in your ‘urgency’ against protecting a form of innovation MOST accessible by the non-wealthy).

          The odd thing though is that your threadbare, tired, and trite rhetoric about some “entitled” class and especially the invective against patent attorneys just does not match the reality of the situation, and that you persevere in the propaganda that is so evidently nothing but propaganda. Night Writer has noted his view that you must be paid to so engage the rhetoric that you engage so deeply. I think not, as the blatant FA1LURE of your efforts would have long ago made those that would pay you to stop paying you. You’ve become more than just a tired joke with your stale Accuse Others Of That Which Malcolm Does/Is meme. As I have noted, your rhetoric is cheered on by a few easily identified groups of people. None of those groups show any actual understanding of innovation, and all of those groups glom onto any type of confirmation bias, and do so with hardly any at all signs of being able to apply critical thinking.

        3. 3.3.1.3

          How well various people are doing is largely irrelevant unless you are trying to use patent law to take care of “inequalities” “inherent” in the system. I would say this is an improper use of patent law. Patent law is about encouraging innovation.

          Also I know a good bit about disbarment offenses in North Carolina yes – but only because I care about legal ethics and so does UNC where I graduated from. My bar record is completely clean and your attempt to imply I am somehow an unethical attorney only shows the weakness of your own arguments.

          1. 3.3.1.3.1

            Danny,

            That’s just Malcolm being Malcolm.

            It’s been his modus operandi for the last 14 or 15 years here.

    4. 3.4

      I don’t personally see the suggestion of knowing misinterpretation.

      1. 3.4.1

        Thats because there wasn’t any such suggestion by Dennis. What was missing – in Daniel Cole’s paranoid reactionary mind – was sufficient genuflecting before The Great Savior Iancu.

        1. 3.4.1.1

          The quote and tone of the article certainly implied to me he thinks Icanu is making guidance he knows doesn’t apply the law correctly. You certainly seem to agree that he is – *shrug*. You can certainly interpret the blog comments otherwise.

          I have been reading these blogs for several years now so can pick up on writing style – and the authors are of course lawyers which means they are experts at hiding what they want to say – so looking deeper for the truth is usually required.

    5. 3.5

      If true, that would not necessarily be knowingly misinterpreting the law. Would it be practical and reasonable for the Director say: “We are not going to examine aggressively on this issue because the law is unsettled and too difficult to apply. As always, applicants should be aware of the law and seek claims accordingly.”

      1. 3.5.1

        See 35 U.S.C. 131 Examination of application. (emphasis added)

        The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.

    6. 3.6

      Have you actually read the federal registry notice containing the Iancu’s 101 guidance? It basically states that the case law is too complex for examiners to apply, so the office is going to ignore the case law and instead use Iancu’s “bucket” test that is frankly inconsistent with the case law.

      1. 3.6.1

        Have you actually read — and understood the protocol?

        Chances are high that you have not, as your view smells of the stench of the Efficient InFringer Front.

      2. 3.6.2

        To wit; his attempt is not entirely consistent with the case law, his approach attempts too much and inherits the contradictions of the case law BY its being too consistent.

        The underlying problem is the case law itself — and your lost not only FA1LS to grasp that, you appear to think that the case law ONLY supports an “anti-patent” viewpoint (and it is YOU that is being inconsistent by effectively not wanting to see the inconsistency by expunging the cases that ARE inconsistent).

        In other words, it is simple legal error on your part to state: “office is going to ignore the case law and instead use Iancu’s “bucket” test that is frankly inconsistent with the case law.

        The worse error — of course — is to pretend that no contradictions are present.

  15. 2

    Gordian Knot

    (let us all be inte11ectually honest and accept the fact that the Common Law law writing on 101 has been beset by massive contradictions)

  16. 1

    Iancu is playing this well. He created the 2019 PEG knowing it would create this kind of tension. Federal Circuit essentially ignores the guidance and some subordinate courts even going so far as to begin to bring into question the right of the USPTO to make determinations under 101. Iancu has created an irresistible trap and it’s setting up a conflict that calls for legislation.

    1. 1.1

      Federal Circuit essentially ignores the guidance and some subordinate courts even going so far as to begin to bring into question the right of the USPTO to make determinations under 101.

      I haven’t seen the remotest suggestion by the CAFC anywhere that the PTO doesn’t have the right to make a 101 determination. Where on earth did you come up with that?

      Iancu has created an irresistible trap and it’s setting up a conflict that calls for legislation.

      And that legislation is going to make the patent maximalists happier or sadder than they are now? I think we all know the answer to that.

      Anybody who believes that the patent maximalists screeching about “rule of law” actually care about the “rule of law” must be higher than a kite on Bicycle Day.

      1. 1.1.1

        “I haven’t seen the remotest suggestion by the CAFC anywhere that the PTO doesn’t have the right to make a 101 determination. Where on earth did you come up with that?”

        I haven’t seen any either. You should slow down and read next time. I said nothing about CAFC making such statements.

        1. 1.1.1.1

          Please show everyone two examples of a “subordinate court” questioning the right of the PTO to “make determinations under 101.”

          I’m not suggesting there aren’t any such examples. I’m just not aware of any. But plainly you are aware of multiple instances. So let’s see what you’re talking about.

          You’re a very serious person, after all.

          1. 1.1.1.1.1

            Malcolm,

            You stressing the desire to have more than one example indicates that you are likely aware of the one recent example that directly supports what BB is saying, right?

            1. 1.1.1.1.1.1

              (District of Delaware, IIRC)

    2. 1.2

      “Iancu is playing this well. He created the 2019 PEG knowing it would create this kind of tension. Federal Circuit essentially ignores the guidance and some subordinate courts even going so far as to begin to bring into question the right of the USPTO to make determinations under 101. Iancu has created an irresistible trap and it’s setting up a conflict that calls for legislation.”

      The present congress is completely deaf.

      So how is it wise to press agency deference in the present SCOTUS environment?

      1. 1.2.1

        The present congress is completely deaf.

        You haven’t been paying attention.

        1. 1.2.1.1

          Would you make a gentleman’s bet, taking the position that the 116th congress will pass one or more laws addressing the eligibility issue?

          1. 1.2.1.1.1

            No one said anything about passing – your comment was not about passing, but instead was “completely deaf

            Completely

            The modicum to dispel “completely” is nowhere near “to pass.”

            1. 1.2.1.1.1.1

              Fair enough.

              Corrected post 1.2:

              The present congress is effectively deaf.

              So how is it wise to press agency deference in the present SCOTUS environment?

              1. 1.2.1.1.1.1.1

                The present congress is effectively du m b.
                The present congress is effectively blind.

                Plenty of blame to go around for all three branches of the government in the current circus.

                The present congress needs to wake the F up and reclaim its authority that has been usurped by the Supreme Court.

                Sadly, the present congress is too bi-partisan split, and MUCH too taken listening to the “voice$” of the juristic persons and the lobbying dollars that permeate and capture the present congress.

                So now that we have that understood, we can move on to your second point.

                Which is what, exactly?

                Agency deference only goes so far – see my very first posts on the new protocols vis a vis whether the Office has authority to set matters of substantive law (hint: they do not). But neither does the judicial branch in writing Common Law for a type of law that has been strictly allocated in our Constitution to the legislative branch.

                And make no mistake – as can be seen by the building of a Gordian Knot, this 101 muckery is NOT a matter of “interpretation,” but instead is a matter of Common Law law writing.

                Lastly, we can move on to the “present SCOTUS environment” – which is what exactly?

                Is it the same “environment” that gave us the ultra vires gift of the “Gist/Abstract” sword with plenty of undefined terms (and that provided a number of Constitutionally infirm points)?

                Or has the “environment” changed per the Schein case (a major pullback in the Court creating exceptions) coupled with the oral arguments in California Franchise Tax Board v Hyatt (showing a blueprint for the Court actually being accountable and reversing itself)?

                First order of business remains to recognize and acknowledge the Gordian Knot.

                Are you even there yet?

                Once you are there, then let’s talk about wisdom and the paths forward.

                1. I don’t think Iancu is “playing this well” as congress will not relieve the “tension” and the elements of SCOTUS who you’d hope to count on seem to be in a mood relatively hostile to agency deference.

                  You appear to be hoping that SCOTUS will take the next opportunity to chastise themselves for their errors and then correct the course of patent law. I already know that’s what you want, but it doesn’t address any likely reality and doesn’t make for good conversation.

                2. Ben,

                  the elements of SCOTUS who you’d hope to count on seem to be in a mood relatively hostile to agency deference.

                  That’s a good point.

                  However, the end game may not be “agency deference” as much as that may be the path to get the Court to use the Kavanaugh Scissors.

                  but it doesn’t address any likely reality and doesn’t make for good conversation

                  LOL – maybe for what YOU want, but the reality is that THAT does address a more and more likely reality because of the INCREASING dissatisfaction with the Gordian Knot, and as such eminently makes excellent conversation.

                  And yes, this conversation is directly related to my advocacy!

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