A Response to “Is there Any Need to Resort to a § 101 Exception for Prior Art Ideas?” by Prof. Joshua Sarnoff

Guest post by Professor Joshua D. Sarnoff of DePaul College of Law.  Below, he responds to Jeremy C. Doerre, Is There Any Need to Resort to a § 101 Exception for Prior Art Ideas?, 2019 PatentlyO L.J. 10. (2019.Doerre.AnyNeed)

In Is There Any Need to Resort to a § 101 Exception for Prior Art Ideas, Mr. Doerre states that “[n]otably, however, there is no similar need to resort to use of an implicit exception to prevent undue preemption of known prior art abstract ideas, as 35 U.S.C. § 102 and 35 U.S.C. § 103 already ensure that claims do not disproportionately ‘“t[ie] up the use of [] underlying” [prior art] ideas.’ This can be seen in that, under 35 U.S.C. § 103, a claim must be inventive over all known prior art ideas, and cannot simply be an obvious application of a prior art abstract idea, or an obvious combination of several prior art abstract ideas.”  Of course, since Section 103 often requires detailed factual evaluations not readily resolved early in litigation, the pressure to use Section 101 remains even for ineligible subject matter that is in fact prior art against the applicant.  And unlike for Section 103, the nature of the creative advance over that discovery may be readily apparent on the face of the patent’s disclosure (particularly where it lies in the discovery itself and thus there is no meaningful additional creativity to render the practical application non-obvious).  But courts are unlikely to grant motions to dismiss under Section 103, and for some bizarre reason we keep giving this ultimate question of law to juries.  Further, Section 103’s obviousness standard in fact is not much clearer than Section 101 standards.

But the important point is that Section 101 is needed for precisely the case Mr. Doerre avoids, when the ineligible discovery is not prior art against the applicant. Mr. Doerre would be absolutely correct that we do not need to use Section 101 if Section 103 could do the job (of excluding uncreative applications of ineligible discoveries in the three categories of excluded subject matter – which are judicial interpretations of the meaning of “invention or discovery” and are not “judicial exceptions” to Section 101 subject matter).  But Section 103 cannot do that job as current written, even though both provisions derived from the same statutory section under the pre-1952 Act.  And that is because such ineligible discoveries are not normally among the categories of Section 102 prior art as applied to an applicant who is also the discoverer of that ineligible subject matter.

As I have written before (see https://papers.ssrn.com/sol3/papers.cfm?abstract_id=1757272 and the briefs for amici law professors that I filed in Bilski, Mayo, and Myriad), the ineligible subject matter is often discovered by the applicant himself or herself, and thus does not qualify as Section 102 prior art for Section 103 obviousness analysis.  If it did, then 103 in fact would be able to do the job, although given the tremendous uncertainty over what qualifies as a non-obvious advance under Section 103 we would still have roughly the same amount of uncertainty in the law.  Further, no person who objects to using Section 101 to exclude categorically ineligible discoveries claimed as practical applications thereof would be the happier if we were to amend Section 102 to permit Section 103 to do the job now being performed (and only capable of being performed) by Section 101.  This is because then we would just use obviousness law to have to make the difficult decisions as to whether the claim as a whole represents a non-obvious advance over the ineligible discovery while treating the discovery as prior art against the applicant.  And as just noted, we don’t have a clear theory of how much creativity constitutes a non-obvious advance.  Although the amicus brief I filed for law and economics professors in KSR sought to have the Court explicitly adopt a time and money threshold of ordinary creativity so as to create that clear theory, predictably the Supreme Court declined the invitation to make the law clearer (while still correcting the errors of analysis of the Federal Circuit in assessing what constitutes an “obvious” advance over the prior art of record).

Further, as Professor Katherine Strandburg has persuasively explained (see https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2196844) and as the recent and less recent history clearly reflects, the current concern (since Benson) with preemption is not in fact either the source of the current eligibility doctrine nor the grounds for finding any practical applications to be ineligible.  As I explained in both the cited paper and briefs noted above, non-preemption is a consequence of having an inventive application of ineligible subject matter; lack of preemption says nothing about whether the application is in fact inventive in light of the discovery of such ineligible subject matter.  Consequently, were preemption of the entire set of applications of ineligible discoveries actually the concern driving application of the doctrine, none of the claims held invalid by the Supreme Court or the Federal Circuit should have been held invalid, as all those claimed specific applications did not preempt many other things that might have been claimed when employing the ineligible discoveries. (Of course, some of those held-to-be invalid claims may have covered all of the valuable, then-known applications.  But the Supreme Court had held in the Telephone Cases that claiming all valuable applications was perfectly fine, so long as the claims reflected the actual “invention” – meaning, at the time, a creative advance over ineligible subject matter).  Parker v. Flook’s terminology made this quite clear, requiring “some other inventive concept in its application” than mere (i.e., uncreative) application of the categorically ineligible discovery.  Flook’s language (and approach) was explicitly reaffirmed by Mayo’s recitation of a requirement for an “inventive concept” (notwithstanding the failure of the Supreme Court to explicitly acknowledged that Diamond v. Diehr had impliedly overruled Flook on this point, and that Mayo has now impliedly overruled Diehr on this point by reinstating Flook.  That Mayo also improvidently reiterated Benson’s preemption rationale without applying it in any way in the analysis is simply another example of uncareful opinions of the Supreme Court that engender further confusion rather than clarifying the law.  As Professor Strandburg has suggested, we would do well to simply ignore the “preemption” language and focus on the real question, which Professor Jeffrey Lefstin has correctly described (see https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2398696) of whether we want a standard of inventive application or only of practical application.  (Although I disagree with Professor Lefstin in regard to whether Funk Brothers was in fact the first instance of inventive application, we agree that the 1952 Act did not clearly overrule Funk Brothers.  This is important so that people will not continue to argue that Giles Rich was correct in his later revisionist history (see https://books.google.com/books/about/Laying_the_Ghost_of_the_invention_Requir.html?id=xH1etwAACAAJ) that  all questions of inventive creativity were placed in Section 103 by the 1952 Act, notwithstanding that P.J. Federico, who was the other principal co-author of the 1952 Act, argued the opposite – successfully – in the Application of Ducci case, 225 F.2d 683 (C.C.P.A. 1955) that Section 101’s “process” category (incorporating Section 100(b)’s definition of “process”) continued the “analogous use” test of inventive creativity requirement for claimed processes that the Supreme Court had articulated in Ansonia Brass & Copper Co. v. Electrical Supply Co., 144 U.S. 11 (1892)).

In summary, Mr. Doerre is simply wrong that Section 103 can do the job as currently written.  But if it could, he would be no happier with the state of the law, so long as inventive application remained the law for what constitutes an eligible (or a patentable) “invention,” and all without regard to “preemption.”  Should legislation move forward to eliminate the requirement for inventive application, we will have to learn if it in fact is a requirement of constitutional stature in granting authority to “inventors for their discoveries” (or is simply like the dicta in Graham v. John Deere, 386 U.S. 1, 6 (1966), that Congress may not remove inventions that have entered the public domain by granting patents on them – which the Supreme Court subsequently rejected in the copyright context as a constitutional limitation on legislative power in Golan v. Holder, 565 U.S. 302, 323-24 (2012) (quoting Eldred v. Ashcroft, 537 U.S. 186, 202 n.7 (2003)).  But first, Congress would have to enact such legislation, and there are good reasons not to eliminate the inventive application requirement wholly without regard to the politics of which industries’ oxen will be gored thereby.  And let’s hope that if Congress does go there, that Congress is careful not to thereby permit aesthetic creativity to provide the “practical application” that thereby authorizes the grant of a utility patent as novel and nonobvious subject matter (whenever the aesthetic contribution to the claimed invention functionally interacts with the substrate that forms the remainder of the “claim as a whole,” so that the printed matter doctrine will not apply and thus the aesthetic creativity will thereby prevent a finding of non-obviousness, so we will end up with a design patent on steroids issued as a utility patent).

Disclosure statement: I have no current financial interest in the issues addressed.

52 thoughts on “A Response to “Is there Any Need to Resort to a § 101 Exception for Prior Art Ideas?” by Prof. Joshua Sarnoff

  1. 13

    Should legislation move forward to eliminate the requirement for inventive application, we will have to learn if it in fact is a requirement of constitutional stature in granting authority to “inventors for their discoveries” (or is simply like the dicta in Graham v. John Deere, 386 U.S. 1, 6 (1966), that Congress may not remove inventions that have entered the public domain by granting patents on them – which the Supreme Court subsequently rejected in the copyright context as a constitutional limitation on legislative power in Golan v. Holder, 565 U.S. 302, 323-24 (2012) (quoting Eldred v. Ashcroft, 537 U.S. 186, 202 n.7 (2003))

    ^ This guy gets it.

    One need only consider the difference between ordering the public to stop trafficking in a creative work versus ordering the public to stop using machinery that was granted to them. The latter is incredibly disruptive to business, is a taking, and extends the commerce clause power to all activity.

    Imagine if tomorrow Congress decided to issue a patent on the processor to Google. That would have the effect of invalidating the inventories of (probably at this point) most businesses in the US.

    Imagine if Congress wanted to regulate gun possession near schools. While they can’t constitutionally do so themselves, according to some they could simply invite gun control groups to apply for patents, or to simply revive long dead patents, and assign them to groups that would enforce infringement actions in a manner they wished. Who needs federalism.

    Congress doesn’t like how the executive is prosecuting marijuana cases? No problem, conjure a claim directed to marijuana consumption and assign it to the tobacco industry. Who needs separation of powers.

    The whole function of patents is to improve every possible aspect of life. The ability to revive them and apply them at will would turn congress from one branch of a limited government into the chief regulatory and enforcement agency for all states, just so long as the enforcement is done by a third party.

    1. 13.1

      My, that is sooo inte11ectually honest…

      (I don’t have a big enough “S” sign to hold up)

    2. 13.2

      Imagine if Congress wanted to regulate gun possession near schools. While they can’t constitutionally do so themselves, according to some they could simply invite gun control groups to apply for patents, or to simply revive long dead patents, and assign them to groups that would enforce infringement actions in a manner they wished. Who needs federalism.

      Huh? Who are these “some” who make this argument? Certainly not I. I was arguing that the Congress can do—under the commerce clause—many things that it cannot do under the IP clause. I have never argued that Congress can do—under the IP clause—many things that it cannot do under the commerce clause. The Supreme Court has already held that Congress may no regulate gun possession near schools under the commerce clause. I cannot imagine any sane person trying to argue that Congress can achieve ends in favor of gun control by asserting its IP clause powers.

      Now the tax power…

      1. 13.2.1

        I actually don’t know where “according to some” came from. I think I started a thought and didn’t finish erasing it.

        The general thrust of the post is that patents clearly touch every facet of life, and the suggestion that Congress could willy nilly revive them would be tantamount to giving them vast regulatory control. I was not intending to refer to you at all.

        I have never argued that Congress can do—under the IP clause—many things that it cannot do under the commerce clause. The Supreme Court has already held that Congress may no regulate gun possession near schools under the commerce clause. I cannot imagine any sane person trying to argue that Congress can achieve ends in favor of gun control by asserting its IP clause powers.

        That was the point of making that argument. Of course the patent power allows for regulation of guns in locations. Is a gun patentable? Yes. Is a method of using a gun patentable? Yes. I assume such patents once existed. All Congress need do is revive them and third parties will regulate under their granted patent power rights what congress cannot do originally under their commerce power rights – they’ll just grant licenses for their method of using a gun in certain locations and not others. Violators will be sued, subject to injunction and then jail for noncompliance. The patent power does not require any nexus to commerce to function, unlike the commerce clause. I have no doubt in my mind I could find a claim to a method of toilet paper use that Congress could theoretically revive.

        1. 13.2.1.1

          Looks like you started into the Golan v Holder case and your strawmen have run amuck.

    3. 13.3

      Wow this is incredible….103 would does and should stop the government from issuing a patent on the processor to google. None of this ridiculous article gives any reason why the Judaical exceptions (and yes they are exceptions sure as exceptions they come constitutionally from the judiciaries interpretations of the constitution and law but that doesn’t make them not exceptions) should exist. An invention is an invention – regardless of the time and effort put into it.

      Wow this is so incredibly ridiculous and shows exactly how 101 is just a quick way for people to invalidate patents cheaply without having to go through actual litigation. If anything this makes the case even stronger that all those pushing the current 101 “agenda” are being intellectually dishonest and simply don’t like the idea of patents.

      I also love how some parts of Supreme Court decisions we should just ignore because the author doesn’t like them – and how others the Supreme Court is overruling itself evidently without knowing it and then evidently reinstates the original again without knowing it. Really? The author is that much more intelligent than the Supreme Court? Then there is the whole 103 is unclear – seriously? Compared to 101 103 is completely clear. Sure it is a legal standard based on facts and one that requires interpretation and argument – that is law. ALL standards require this. And yes we give this decision to Juries – this is a basic idea and standard of American Jurisprudence –

      But then as this article makes perfectly clear the Author doesn’t have much respect for American Jurisprudence.

  2. 12

    >>The second point, which dcl and MM both raised, is one that I tried to address in n. 40, suggesting that if an element or combination of elements that might otherwise qualify as an inventive concept is itself alleged to represent or be part of an ineligible abstract idea

    This is total trash. You are dissenting the claims. You are requiring a flash of genius type requirement. Etc. The Scotus has given us some of your trash, but you seem to be adding to it.

    Not patent law. Deal with the claims as a whole. Find prior art for each element and make arguments for combining. And use 112. That is all that is needed in patent law. All this other stuff is extraneous trash to invalidate claims when a judge feels like it.

    1. 12.1

      The Scotus has given us some of your trash… Not patent law.

      I chuckle at the guy who has no problem advancing a legal position of “Because the Court says so” and “That’s what the Court will do – I predicted it” and then turning around and saying that anything is or is not patent law.

      Who cares about Void for Vagueness?
      Who cares about “may” being a subjective, projective, “future” item that includes within its meaning “may not”?
      Who cares about the Article III judicial limitation of ACTUAL PRESENT case or controversy?
      Who cares about Separation of Powers?

      Who cares about legal ethics that places a duty on attorneys to view and protect the Constitution above ALL THREE branches of the government?

      Meh, the Supreme Court is “supreme,” and we have Nine Emperors who will do all of our legal thinking. Any actual cogent legal argument to the contrary should just be dismissed and ad hominem attacks made against such persons who would dare question authority.

      Damm, I need another one of those “S” signs….

      1. 12.1.1

        Anon, you just don’t get it.

        My discussion on Alice are not prescriptive, but descriptive.

        I have written many posts that say that Alice is total trash and that their reasoning that ties the exceptions to the Constitution is legislation. You go off on my posts where I am trying to predict what the Scotus will do in response to 101 legislation.

        1. 12.1.1.1

          Sorry Night Writer, but I am not the one that just doesn’t get it.

          That would be you (even as you attempt this new “rescue” of somehow combining a “descriptive” and “predictive” without being “prescriptive” WHILE missing the point already shared that “predicting” that the Supreme Court will be anti-patent is no big thing.

          You cannot even get out of your own way.

          1. 12.1.1.1.1

            anon, you do not comprehend what I’ve said and you continue to just go on and on. You seem to think you have won something or that you have something on me. It is just weird.

            1. 12.1.1.1.1.1

              I “have something on you” as long as you continue to try having an opinion without regard to the counterpoints presented to that opinion.

              There is nothing weird about this (other than YOU being obstinate and spending FAR more energy doing everything except discussing the matter on the merits – that is indeed weird).

  3. 11

    What claim needs 101 to invalidate it? Why isn’t 102/103/112 enough? Certainly, the real abstract exception (not the new imaginary one from the Scotus) is swallowed by 112.

    So tell me some claims that require the 101 exceptions or even the statute.

    1. 11.1

      This is akin to asking what would NOT be held out by the two low bars of 101 (let me know if you need a refresher on those) that are actually in the words of Congress that somehow ALSO do not meet the statutory requirements that the Constitution allocates authority to Congress to set.

      (note as well, Night Writer, that of all people, that Random is picking up on your “Constitutional-pinning” theme – Congrats on that abomination)

      1. 11.1.1

        anon, they are not my “Constitutional” arguments. They are what the Scotus said in Alice.

        Try to differentiate me talking about what I think the holding is in Alice vs. my critical analysis of Alice.

        1. 11.1.1.1

          Your holding versus your critical analysis….?

          Nice – now take what I have said in direct counter to whatever it is you want to call what I put that counter to.

          The ball remains in your court – no matter how much you pretend otherwise.

  4. 10

    Prof. Sarnoff, I am mostly tracking you. Can you give an example of a discovery of an “ineligible” process, machine, manufacture, or composition of matter along with an obvious application wherein it would be bad policy to grant the discoverer a period of exclusivity for their obvious application of the novel, non-obvious, ineligible discovery?

    1. 10.1

      Yeah, this was my initial reaction, too. Why must we debate every nuance of Jeremy’s argent’s for narrowly interpreting judicially created law, but simply assume there is a problem with the actual statute as written?

      1. 10.1.1

        I’m actually fine with debating every nuance of the argument, as I always welcome thoughts as to where one of my arguments goes astray, but I have noticed that some responses have unfortunately ascribed to me one or more positions that I am not actually taking.

        I blame myself for any confusion on the part of readers, so I think I probably should have spent more time stressing that the argument is only concerned with ideas that are in the prior art.

        There have definitely been some great points made about reasons why this approach of narrowly construing the implicit judicial exception to not apply for prior art ideas might have negative effects, but most of these largely seem to focus on problems with application of 103, or the convenience and economic efficiency of using 101, rather than on issues with the argument, which I take as a good thing.

        I’ve seen two great comments regarding potential weak points in the logical argument itself.

        First, dcl pointed out that the article seems to overread the Clark precedent regarding narrowly construing statutory exceptions, and I completely agree with him that I should have been more careful to convey the necessity for a cautious reading of this precedent. I think the argument can get a bit of support elsewhere, and can potentially stand even without this precedent, but it’s a great point, and I’m glad he raised it.

        The second point, which dcl and MM both raised, is one that I tried to address in n. 40, suggesting that if an element or combination of elements that might otherwise qualify as an inventive concept is itself alleged to represent or be part of an ineligible abstract idea, e.g. a new mathematical formula, then the claim could simply be alleged to be ineligible as directed to that abstract idea or to the combination of those ideas. I tried to suggest that identification and emphasis of this abstract idea at risk of being pre-empted, as contrasted with a blanket allegation of a claim as directed to a prior art idea coupled with dismissal of elements or a combination of elements as also abstract, has the advantage of requiring more explicit logical analysis, thus minimizing the likelihood of an error in application.

        However, I think that this is a legitimate issue, and from my perspective probably the biggest question mark in the logical chain. Ultimately, maybe this would end up being unworkable, but I’m not sure that it’s immediately clear that this is the case.

        There may have been other great comments on the argument which I have missed. I appreciate everyone who took the time to read the article, and especially everyone who offered some constructive criticism, and will continue reviewing comments and replying when I have time.

      2. 10.1.2

        Easwaran, you can focus on whatever you want but the idea that the “statute as written” has enormous problems is way more than an “assumption”.

        As written, the statute permits useful mental processes and useful books to be patented. The number of people who see “no problem” with that is minuscule and those people tend not to know what they are talking about.

        So, yes, there’s no point in discussing it. On the contrary, there’s great reasons not to discuss it anymore.

  5. 9

    Sarnoff: That Mayo also improvidently reiterated Benson’s preemption rationale without applying it in any way in the analysis is simply another example of uncareful opinions of the Supreme Court that engender further confusion rather than clarifying the law.

    I think it’s important to recognize that a lot of the “confusion” in this area arose not from the Supreme Court’s opinion in Mayo (which is actually quite crystal clear relative to, say, the Tam decision) but from very vigorous subsequent efforts by certain segments of the patent bar to create confusion in a willful effort to diminish the impact of the case. It doesn’t take a great deal of cynicism in 2019 to understand how opinions can be manipulated by the endless amplified repetition of talking points. As recently as two weeks ago we had commenters here insisting that Prometheus had claimed a new treatment step, echoing a mythology that was vociferously promulgated all throughout the proceedings and afterwords.

    Maybe the Supreme Court needs to be more aware of the world we live in now and exercise greater care. I would suggest, regardless, that we do a better job of recognizing and shaming the activities of those who peddle confusion and obfuscation for the sole purpose of creating controversy where none exists. Just as bad are those who literally say nothing at all except to insist that they are right and everyone else is wrong without any explanation other than appeals to authority or some imaginary “treatise” they posted somewhere once upon a time.

    1. 9.1

      Oh SO very Accuse Others meme of you, Malcolm in your “call to action against the very things that YOU are guilty of” in your first paragraph.

      And your thinly veiled “retorts” of the last paragraph are quite humorous, given as we BOTH know that my “pestering” of you is to a treatise anything but imaginary, given that you were part of that thread, that I provided countless hyperlinks to that thread, and that I have reposted that thread over here on this side of the blog from the Hricik side of the blog.

      You do not f001 anyone except for the unthinking (which apparently, includes yourself).

  6. 8

    Sarnoff: Disclosure statement: I have no current financial interest in the issues addressed.

    Assuming you live in the United States, you have the same financial interest in this issue that everyone else does, which is not insubstantial. Presumably what you meant to say is that you are not being paid to express this particular opinion, and you don’t own any patents or patent applications that would protect abstractions, nor do you rely on the procurement of patents for others to keep the roof on your second home over your head.

    We should all consider what would happen, e.g., if private entities are given the bright green light to monopolize (for 20 years!) medical-related correlations, or observations of newly discovered scientific phenomenon, or databases comprising “non-obvious information”, or methods of applying computer logic in some “non-obvious” context (“bingo management!”). Does anyone think that sort of scheme is going to make it cheaper for the public to access and use that information and logic? If so, I’ve got a bridge to sell you. All that will happen is that the richest people will get even richer. If your game is to fix that problem using some other means, then by all means step up and say so. The evidence is pretty clear that people advocating most vocally for patent maximalism are not out there advocating for substantive tax reform or hard caps on the profits one can extract from the patent system. Happy to be proven wrong about that (LOL).

    1. 8.1

      in this issue that everyone else does

      Sounds in your faulty “standing” understanding…

      Your cognitive dissonance is noted.

      As to “will happen is that the richest people will get even richer” – funny how you attack the single MOST accessible form of innovation as some ploy of the richest getting richer….

      hard caps on the profits one can extract from the patent system

      Whew, that cognitive dissonance of yours is getting a workout. Tell me though, do you inform your (oh so many) clients of these beliefs of yours while you are engaged in obtaining for them the vehicle for their own ‘making money’…?

  7. 7

    Prof. Sarnoff,

    Thanks for taking the time to read the article and for the response.

    I suspect from reading your response that you may be ascribing to me a position that I am not actually taking.

    I completely agree with you that an “important point is that Section 101 is needed for precisely the case Mr. Doerre avoids, when the ineligible discovery is not prior art against the applicant.” This is why I specifically noted that “[c]onstruing the implicit exception to 35 U.S.C. § 101 narrowly to not apply for prior art ideas would not prevent application, as in Mayo, of this implicit exception for newly discovered natural laws,” natural phenomena, or abstract ideas. My apologies for any confusion if I did not emphasize this clearly enough.

    I think the position that you are ascribing to me, and that you seem to disagree with, is the position that was advanced by the United States in Mayo, where the government urged an exceedingly narrow construction of the implicit exception to 35 U.S.C. § 101 and argued that “other statutory provisions—those that insist that a claimed process be novel, 35 U.S.C. § 102, that it not be ‘obvious in light of prior art,’ § 103, and that it be ‘full[y], clear[ly], concise[ly], and exact[ly]’ described, § 112—can perform this screening function.” Mayo, 566 U.S. at 89.

    As I tried to note in the article, “unlike the approach proposed by the government in Mayo, narrowly construing the implicit judicial exception to not apply for prior art ideas would not render the exception a dead letter, as the exception would still operate to prevent claims from pre-empting newly discovered or novel ideas.”

    Your points that “courts are unlikely to grant motions to dismiss under Section 103” and that “Section 103’s obviousness standard in fact is not much clearer than Section 101 standards,” and your query as to why “we keep giving this ultimate question of law to juries” are all well taken legitimate points, and indeed offer potentially compelling reasons to preserve overlap between Section 101 and Section 103, and I suspect we share at least some similar viewpoints on the need for increased clarity on obviousness jurisprudence. For example, as I noted in the article, I think that 103 should be applied more frequently in accord with KSR to reject and invalidate obvious claims, e.g. claims which merely represent obvious computer implementations of prior art ideas using routine and conventional computer components and functionality. But I would favor trying to resolve these issues directly, rather than encouraging use of 101’s inventive concept inquiry as a proxy for an obviousness inquiry.

    Overall, though, I wanted to write to clarify that I certainly wasn’t alleging “that Section 103 can do the job as currently written” with respect to newly discovered laws of nature, natural phenomena, and abstract ideas – instead, I was merely suggesting that narrowly construing the implicit judicial exception to not apply for prior art ideas would shift the role of screening out prior art ideas back to the other statutory sections where Congress intended it to lie while still allowing the exception to operate to prevent claims from pre-empting newly discovered or novel laws of nature, natural phenomena, and abstract ideas.

    Thanks again for reading.

    1. 7.1

      Jeremy, to say that your writing style is opaque is to understate the problem. Here’s a few pieces of constructive criticism: (1) don’t refer to yourself in the third person (“the author”); (2) use exemplary claims to illustrate the points you are making; and (3) when practicing step (2), provide examples that demonstrate the sorts of claims that will be deemed eligible, ineligible, obvious and non-obvious under your proposed “framework”.

      This passage, it seems to me, gets to the heart of the issue, at least with regards to the flavor of ineligibility where the claim recites abstract subject matter (e.g., information content; assigning meanings to data, objects or events; or logic applied to data):

      I would favor trying to resolve these issues [i.e., whether recited elements “merely represent obvious computer implementations of prior art ideas using routine and conventional computer components and functionality directly”], rather than encouraging use of 101’s inventive concept inquiry as a proxy for an obviousness inquiry.

      Here’s the deal: the search for an “inventive concept” is most definitely already a search for non-obvious non-abstract subject matter within the claim. That’s the only sensible reading of Mayo. In other words, “inventive” subject matter is, by definition, “non-obvious subject matter”. But plainly applicants and patentees are not permitted to run around in a circle and rely on the abstract ineligible subject matter itself to satisfy the “inventive concept” prong.

      In the most typical circumstances where the issue arises, what is happening is not that there is some nebulous “proxy” for 103 being applied to the non-abstract subject matter recited in the claim (e.g., the subject matter consisting of, say, a data gathering step involving a transformation of matter, or the recitation of a programmable computer remotely connected to a server). What is happening instead is that the court is simply reaching the inevitable and nearly always admitted (explicitly or implicitly) conclusion that there is nothing new or inventive about that non-abstract subject matter. Once that determination is reached — e.g., once it’s established that programmable computers are old in the art, or that drawing blood and measuring the level of a particular metabolite is old in the art — then elementary logic leads inexorably to the conclusion: in that prior art context, the claim protects ineligible subject matter. Or, if you prefer, in that prior art context, the claim “pre-empts” a fundamental building block. As a result, the claim is ineligible. Goodbye claim.

      As I’ve pointed out before, there’s nothing radical or controversial about this kind of analysis. Analytically it’s on the same level as the application of the so-called printed matter doctrine: identify the ineligible subject matter and then look to see whether the claim can stand without it.

      What makes certain people uncomfortable is that the rigorous application of this reasoning to “logic on a computer” claims will destroy those claims. Of course, as many of us here recognize, the rigorous application of 103 and 112 to “logic on a computer” claims would also destroy those claims. And guess what? Once those other sections are rigorously applied to those claims, we’ll here the same howling from the same set of people that this is all so unfair and someone needs to step in and fix it.

      Here’s a thought: if you dearly want to protect logic on a computer claims, try to come up with a thoughtful, specific framework for categorizing the types of prior art logic that exist, and demand that claim drafters in that art use a discrete set of objectively meaningful terms to describe that logic, just as chemists and biochemists have done for ages. That’s just for starters. After you do that, then come up with a paradigm for determining what kind of “advances” in “logic” are “non-obvious”. And then circle back and explain why those super important “advances” in “logic” are eligible for patenting only if written in a computer-readable language on certain types of media.

      1. 7.1.1

        demand that claim drafters in that art use a discrete set of objectively meaningful terms to describe that logic, just as chemists and biochemists have done for ages in their descriptions of the structures and components of new compositions.

        Edited to make it clear that I was making an analogy here.

      2. 7.1.2

        MM,

        Your point that “the search for an ‘inventive concept’ is most definitely already a search for non-obvious non-abstract subject matter within the claim,” is well taken, but given that any inventive “concept” is by definition capable of being characterized as an abstract idea, and that “[i]n every case the idea conceived is the invention,” Gill v. United States, 160 U.S. 426, 434 (1896), how do you distinguish between an ineligible abstract idea and an inventive concept sufficient to convey eligibility?

        The Supreme Court has declined to “labor to delimit the precise contours of the ‘abstract ideas’ category,” Alice, 134 S.Ct. at 2357, and a Fed. Cir. judge has suggested that the phrase “abstract ideas” is a definitional morass,” and that “[t]he problem with trying to define ‘abstract ideas,’ and why no court has succeeded in defining it, is that, as applied to as-yet-unknown cases with as-yet unknown inventions, it cannot be done except through the use of equally abstract terms.” Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1350 (Fed. Cir. 2018) (Plager, J., concurring-in-part and dissenting-in-part).

        My point is largely just that if the inventive concept inquiry is the same as the obviousness inquiry, then for claims that only involve prior art abstract ideas, why not just address them with the obviousness inquiry with no need to figure out whether an idea falls within the uncertain “abstract ideas” category, and with no need to resort to an implicit judicial exception.

        If “rigorous application of 103 and 112 … destroy[s] [] claims,” so be it, but I would suggest that using 101 as a stand in or proxy for this inquiry makes it harder to develop the necessary rigorous analysis under either standard.

        1. 7.1.2.1

          JCD – please see the Void for Vagueness doctrine.

          The Court in their own mode of scrivining have scrivined a Gordian Knot that has MANY Constitutional infirmities.

    2. 7.2

      Most welcome. As my parenthetical noted, however, the idea that these exclusions from eligible subject matter are “judicial exceptions” is just plain wrong. The statute defines inventions. Judges interpret the limits of the statutory language. That the judges determine that the statutory term “inventions” (or “process” per Flook) does not apply as broadly as a dictionary definition (or commonly understood definition) might suggest is not creating a judicial exception to a statutory provision, but rather is specifying the limits of meaning fo the statutory provision in the first instance. Thus, there is no need to resort to the doctrine of construing exceptions narrowly. This point is repeatedly missed. The same point applies to the so-called “experimental use exception” which Justice Story described as simply not constituting infringing conduct in the first instance. Thus, even with regard to prior art, there is no reason to read the so-called “judicial exceptions” narrowly, and even then the focus of your article on “preemption” is, in my opinion, simply misguided (for the reasons stated). That said, I wholly agree with you that 103 can do much of the job in regard to claims that practically apply categorically ineligibile subject matter (as recited by the Supreme Court in the recent cases). As my first paragraph noted, where it is clear that there is no inventive concept beyond merely applying that ineligible subject matter in a particular (but practical) context, lawyers should seek motions to dismiss under Section 103, and judges should grant them. All without regard to any secondary consideration evidence that might be sought to be introduced to avoid early dimissal and to raise a triable issue of fact regarding the obviousness of what should facially be recognized as lacking any inventive concept beyond the practical application of such a prior art ineligible discovery. So I applaud you repeating the point, but urge you to make your conclusion clearer that Section 103 should eliminate such patents without the need for summary judgment, trial, and most of all any consideration by a jury…. Best, Josh

      1. 7.2.1

        [T]he idea that these exclusions from eligible subject matter are “judicial exceptions” is just plain wrong.

        I agree with this. I think that the better way to understand the “exceptions” is that they are the result of a careful reading of the statute. Regrettably, that is not how the Court thinks of them (“This Court’s precedents provide three specific exceptions to § 101’s broad principles: laws of nature, physical phenomena, and abstract ideas. While not required by the statutory text, these exceptions are consistent with the notion that a patentable process must be new and useful,” Bilski v. Kappos 561 U.S. 593 (2010), internal quotations and citations omitted).

        So long as the Court will insist on treating the exclusions as “exceptions” to the statutory text—rather than as positive commandments of the text—Mr. Doerre’s basic point still holds. Exceptions are supposed to be construed narrowly.

        1. 7.2.1.1

          Attempting the “revisionist history” here and re-purposing what the Court has done is an exemplary case of “two wrongs do NOT make a right.”

          Sarnoff is more than “just plain wrong.”

      2. 7.2.2

        My apologies both for the delayed response and because I definitely failed to fully appreciate and consider your point that the exclusion of natural laws, natural phenomena, and abstract ideas from patent eligibility may be based on interpretation, e.g. statutory interpretation of “invent” or “process,” rather than on an implicit exception rationale.

        I admit that I largely just started from the understanding that it is an implicit judicial exception based on the Court’s indication that “We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014).

        I further admit that this is something that I have not spent a lot of time considering, so my apologies for the elementary nature of my thoughts.
        I suspect that the concurring justices in Bilski v. Kappos, 561 U.S. 593 (2010) may well agree with this approach, although as Greg noted below, the opinion of the Court suggested that “these exceptions are not required by the statutory text.” Bilski, 561 U.S. at 601-602. I suspect this issue is potentially also further complicated by the differing opinions of various justices on statutory interpretation. A preference for textualism could potentially require that these be exceptions, while other approaches may find these permissible interpretations. Unfortunately, I have not spent nearly enough time thinking about any of these issues to have anything remotely intelligent to say on them.

        One thing that does occur to me is that if the ineligibility of natural laws, natural phenomena, and abstract ideas is based on interpretation of “invents or discovers,” then it would potentially be even more important to figure out what is meant by “discovers.” If the word is interpreted to take a meaning similar to what it has today, then it may become tougher to reconcile a requirement for inventive application for applications of newly discovered natural laws. On the other hand, the word may well be interpreted to take a form that would not pose this problem. See, e.g., O’Connor, Sean M., University of Chicago Law Review, Vol. 82, No. 2, pp. 733-830 (2015).

        With respect to inventive application, one issue that I have been curious about for a while is whether a requirement for an inventive application of a newly discovered property of a drug (presumably representing an ineligible natural law) is at least slightly in tension with the Supreme Court’s suggestion in Mayo that “a new way of using an existing drug… [would] confine [its] reach to particular application[] of [a natural] law[].” Mayo, 566 U.S. at 87.

        You suggest that “where it is clear that there is no inventive concept beyond merely applying that ineligible subject matter in a particular (but practical) context, lawyers should seek motions to dismiss.” Would you apply this apply to a new use of a known drug?

        Ultimately, the Supreme Court has definitely suggested an inventive application requirement, but this has always struck me as at least slightly dissonant, although I may just be missing something obvious.

        With respect to the emphasis on pre-emption, I have not given this sufficient thought, but upon first impression if the ineligibility of of natural laws, natural phenomena, and abstract ideas is based on interpretation, rather than implicit exceptions, then it makes sense that there would be no need for a justification. However, if the ineligibility is based on an implicit judicial exception, then it does seem like a justification for this exception would be needed, and I think the Court has made clear that it is pre-emption. Incidentally, I am not sure that the fact that the Court seems to want to make clear that it has a justification for the exception for natural laws, natural phenomena, and abstract ideas does not lend at least some credence to the argument that it is an exception, and not simply interpretative.

        Lastly, I definitely appreciate the point that Section 103 should eliminate such patents without the need for summary judgment, trial, and most of all any consideration by a jury, and I find much to recommend this approach, but I have unfortunately not spent enough time considering the issue to have a definitive opinion.

        Overall, many thanks for the interesting discussion, and my apologies to the extent that I have misconstrued anything or failed to appreciate something.

        Best,

        Jeremy

        1. 7.2.2.1

          The attempt to place this outside of “exception to 101” runs smack into the Act of 1952.

          This academic though has himself a revisionist view not in accord with accepted views vis a vis what the Act of 1952 brought about. See post 2 below.

        2. 7.2.2.2

          I’m delighted by the unusually serious, substantively supported and polite academic discussions this blog has engendered.

          As to the debate on “what is meant by “discovers” [in old Colonial era English?]” [and] “If the word is interpreted to take a meaning similar to what it has today, then it may become tougher to reconcile a requirement for inventive application for applications of newly discovered natural laws.”
          I wonder if that reconciliation can be made by the word “new” in the same 101 provision? But that would end if “new” is removed from 101 as in the subject proposed amendment of 101.

          1. 7.2.2.2.1

            Paul,

            Would not that “what it means today” actually be what Congress meant by it in 35 USC 100(a) in the Act of 1952?

  8. 6

    Two brief points:

    1) I am very gratified to see the conflict disclosure statement at the end of this essay. This is the right way to run an intellectually honest forum. Hopefully this is the new normal for Patently-O.

    2) I agree with Prof S entirely that “Diamond v. Diehr had impliedly overruled Flook on this point, and that Mayo has now impliedly overruled Diehr on this point by reinstating Flook.” It is surprising, however, how controversial is this assertion.

    1. 6.1

      I wish it were not so (Diehr had the better rule than Flook, both as a matter of public policy and of statutory construction), but Mayo did unto Diehr as Diehr had done unto Flook.

      1. 6.1.1

        Diehr had the better rule than Flook, both as a matter of public policy and of statutory construction

        The alleged “rule” in Diehr is some extremely poorly written dicta which suggests that you can’t consider the relationship of a claim to the prior art when determining the claim’s eligibility.

        Please explain to everyone why “public policy” favors a rule that permits a ten year old to scriven around the subject matter eligibility requirement for a utility patent and claim, e.g., “A method of drinking milk while thinking about [insert non-obvious useful fact].”

        I’m genuinely curious about this, given that I’m a member of the public and I think the “rule” you are referring to is b@tshirt insane and I’ve yet to meet ANYONE outside of the online patent bar who supports this “rule” (at least once they’ve had the implications explained to them).

        Go ahead, Greg. You’re a very serious person.

      2. 6.1.2

        MM and Greg (and Prof. Sarnoff),

        I am also curious as to your thoughts on implications of an inventive application requirement on new uses for a known drug. Would it not be possible to simply allege that such a claim is directed to the newly discovered natural law that the drug has x effect?

        Despite this, the Court suggested in Mayo that a claim to “a new way of using an existing drug… [would] confine [its] reach to particular application[] of [a natural] law[].” Mayo, 566 U.S. at 87.

        1. 6.1.2.1

          Would it not be possible to simply allege that such a claim is directed to the newly discovered natural law that the drug has x effect?

          It’s “possible to simple allege” anything you want. A desperate attorney can make all sorts of ridiculous sanctionable arguments. It happens all the time, particularly in the “do it on a computer” arts.

          Despite this, the Court suggested in Mayo

          No, not “despite this.” What the Court did in Mayo is expressly warn against making the type of argument that you then turned around and made! The Court is telling you and me and everyone else that they are most definitely not suggesting that every claim which implicates a “natural phenomenon” is ineligible. On the contrary, they are telling us that claims which recite eligible subject matter that is itself inventive (i.e., non-obvious) are generally going to be eligible. And they give us an example of a class of claims which would likely meet that criteria: a claim that recites the administration of a prior art composition to a subject where the result (alleviation of symptoms) of that combination of elements (the drug plus the patient) is unexpected.

          This isn’t complicated. If you are making it complicated, you are doing it wrong. If you insist on making it complicated, you are worse than wrong.

          Mayo v. Prometheus was a very simple case and it’s never going to be overturned because the holding is fundamental to any s@ne working patnet system.

          1. 6.1.2.1.1

            Whoa there! The result of administering an existing drug is unexpected because the natural law is newly discovered. But, if the inquiry requires an inventive application that is inventive (e.g. nonobvious) over the newly discovered natural law, then I don’t see how that isn’t an issue.

            You seem to want to say that for a new use of a known drug based on a newly discovered natural law, the application only has to be inventive over the prior art and does not have to be inventive over the newly discovered natural law, but for a new use of a known diagnostic method, the application has to be inventive over the newly discovered natural law.

    2. 6.2

      It is controversial – in no small account – in that Mayo professed to expressly be NOT overruling the earlier SC case, even lauding it to be “most on point,” even as it then tied itself into a conflicting Gordian Knot.

      1. 6.2.1

        Mayo professed to expressly be NOT overruling the earlier SC case, even lauding it to be “most on point,”

        Right, that’s because the Court in Mayo understood Diehr to stand only for the proposition that you can’t identify ineligible subject matter floating somewhere in a claim and conclude immediately that the claim is ineligible. That was the only issue in Diehr that was necessary for the Supremes to address in order to resolve the case.

        1. 6.2.1.1

          Tell me again about your “End of the Diehr-bots” predictions that fabulously failed because the Court did NOT decide how you wanted it to….

          And that’s on top of of the fact that scoreboard is broken!

  9. 5

    Simple, amend 102 so that laws of nature, naturally occurring phenomenon, and mathematical relationships are prior art because they existed prior to the invention (through we may have not realized they existed yet).

    1. 5.1

      Distinguish:

      math
      applied math (i.e., engineering); and
      MathS (philosophy of math)

  10. 4

    Yes, “Section 103 cannot do that job” of the Sup. Ct. 101 exception cases. But “ineligible discoveries .. not among the categories of Section 102 prior art as applied to an applicant who is also the discoverer” are only a reason for that in the very small [but widely publicized] number of such cases involving medical diagnostics. NOT in the vast majority of so-called 101 rejections for “abstract” claims using [but not claiming] software. The reason “103 cannot do that job” efficiently or economically] is that 103 prior art can only be presented quickly, effectively, and for less that millions of dollars, is in an IPR, and an IPR is limited to only prior patents or applications. 103 prior art is almost impossible to sustain in a summary judgment in patent litigation. It thus requires a full trial, on all other possible issues, and usually a Fed. Cir. appeal and decision.

    1. 4.1

      P.S. I appreciate that this is related to something of a minor obsession in some patent academic circles over the AIA elimination of 102(f) notwithstanding its extremely rare combination with 103, and the AIA retention of invention oaths by inventors and continued patent invalidations for uncorrected invalid inventorship designations on U.S. patents.

  11. 3

    and yet more patent heresy:

    so long as inventive application remained the law for what constitutes an eligible (or a patentable) “invention,” and all without regard to “preemption.”

    This does nothing but seek to confuse and conflate eligibility and patentability (while attempting to eliminate even the notion or pre-emption).

    Nonstarters.

    I am not sure what you think that you are commenting upon – but it is not patent law.

  12. 2

    Ah, I see the spin: “This is important so that people will not continue to argue that Giles Rich was correct in his later revisionist history

    Thank you.

    Your admission is noted.

  13. 1

    Sorry, but this stumbles right of the gate with the statement of “which are judicial interpretations of the meaning of “invention or discovery” and are not “judicial exceptions” to Section 101 subject matter” as some type of Truism.

    IF you want that as your premise, you are going to have to show that you deserve that premise.

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