Berkheimer: Coming Up this Fall

The Berkheimer case has been pending for a while.  Steven Berkheimer first filed his infringement lawsuit against HP back in 2012. (N.D. Ill.) In 2016, the district court dismissed the case on summary judgment — finding the claims ineligible. That decision included two key legal findings (1) eligibility is purely a question of law; and (2) the clear and convincing evidence standard does not apply to questions of eligibility.   The appeal then took two years and in 2018 the Federal Circuit vacated that holding — finding that underlying issues of fact may be relevant here to the question of patent eligibility. Judge Moore explained in her decision:

While patent eligibility is ultimately a question of law, the district court erred in concluding there are no underlying factual questions to the § 101 inquiry. Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.

Berkheimer (Fed. Cir. 2018).  Following the Federal Circuit’s decision, HP then petitioned for writ of certiorari and that petition is still pending.  In particular, briefing on the petition was completed in December 2018, but the Supreme Court then requested that the Solicitor General provide an amicus brief with the views of the U.S. Gov’t.  That CVSG request was sent out in January 2019 and the Solicitor General’s office has not yet responded.  I expect that at this point, a draft brief has been completed and there is now some debate between various elements of the administration.  I would have expected the brief to be filed by now (7 months later), but now expect it in by about October 10.

HP’s question presented in the case is as follows:

whether patent eligibility is a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of the art at the time of the patent.

As I mentioned previously, the petition creates a false dichotomy.  As we know from claim construction, not all questions-of-fact are given to a jury to decide.  And, the Federal Circuit did not hold that eligibility is “a question of fact for the jury.”  Despite the intentional misdirection by HP’s Counsel Mark Perry (Gibson Dunn) and David Salmons (Morgan Lewis), the case is interesting and important and I look for the court to take the case.

75 thoughts on “Berkheimer: Coming Up this Fall

  1. 8

    Down below at post 6.7, MaxDrei raises a few points with his comment of (abbreviated here, some questions remain below for MaxDrei’s replies):

    What matters is not the place of residence of the inventor but who owns the invention. A high proportion of those inventors resident outside the USA are working for US corporations, who naturally file first in the USA whenever they can.

    An additional factor is the importance of patent rights in the USA to corporations not of US nationalitiy…

    I agree with MaxDrei, but with some critical caveats.

    First, “ownership” per se is NOT the sine qua non of the discussion. Ownership of ANY alienable good — and especially the US Sovereign’s design choice of the system of ownership of the personal property that is a patent — is meant MORE for an AFTER innovation liquidity in commerce function. The US recognizes that goods (MOST ALL goods) serve society at large better when they may be freely and fully alienable.

    Thus, the ownership aspect is important for innovation, but merely as an adjunct to the larger mechanism of alienability.

    Second, and critical to the point being attempted to be made by Niht Writer, the phrasing of MaxDrei of “high proportion of those inventors resident outside the USA are working for US corporations” brings to bear a distinction (NOT currently being made) that absolutely needs to be made:

    Juristic persons should be analyzed more carefully as to the designation of their “nationality.”

    Juristic persons that in fact are MULTI-national simply have a far less disposition for aligning with the ultimately Sovereign-Centric nature of patent law.

    Juristic persons that in fact are MULTI-national simply GAME each different sovereign for its OWN benefit uncontrolled by ANY ONE Sovereign.

    Juristic persons that in fact are MULTI-national simply WILL pursue a Corporatocracy effect to the detriment of actually advancing innovation expressly BECAUSE being of a size that inures multi-nationalism aligns with Bottom-line driven actions that place profit above innovation. Sure, IF innovation helps, such may be ONE tool in the toolbox. But anyone who has seriously studied innovation can tell you, patent systems and the fostering of disruptive innovation is a THREAT to the multi-national juristic person.

    Be aware of — and beware of — such Corporatocracy.

    1. 8.1

      There is no doubt that there is a transition now where more and more applications are first filings from inventors that do not live in the USA and the inventions were not made in the USA.

      Lots of analysis can go into what this means, but the numbers need to be split out so we can see what is happening.

      What is clear from all this is that the AIA/Alice/Mayo have crippled our patent system. It is dying. And close to a tipping point where the number of applications filed is going to drop significantly in the next recession.

      1. 8.1.1

        I would make a subtle distinction between “cripple[ing] our patent system” and harming true US based innovators (those most capable of and most likely to challenge multinational Corporatocracies).

        The patent system IS being used at near record levels.

        I “get” the message that you want to deliver, Night Writer, but I think that you are losing the audience because your statement appears to deny a factual matter. IF you take the subtlety that I suggest into consideration, and SLIGHTLY change your message, the imminent warnings of a system being bully-whipped by juristic persons that simply do not align with US Sovereign interests at heart would be much more compelling.

        As you might surmise, I do not disagree with the gist of your message. And as you can readily tell, the only ones that are coming forth to challenge you are the typical ones that are anti-patent (and by this I mean against a STRONG US innovation protection system – especially where it counts the most: the ability of upstarts to reset the established players on terms of innovation, rather than on other attributes that the established multinationals enjoy).

        1. 8.1.1.1

          I agree that the international corporations’ interests are not aligned with the USA’s interests.

          The numbers actually do support what I’ve said. The green line is actually striking in that rather than the number being 150K it is 100K and probably much less if only patent applications were counted where the invention was made in the USA.

          Max’s point of ownership is absurd as the corporations aren’t really US corporations but international corporations.

      2. 8.1.2

        Night with your talk of expiry of the patent system in the USA you are exaggerating. But to this extent I agree with you: given that CII (computer-implemented inventions; software inventions, if you like) are the future but also already present, everywhere you look (engineering, bio, pharma), so much so that all EPO Examiners are now being given specific training on how to handle CII, and given that industry abhors uncertainty, it is regrettable that there is currently so much uncertainty about patentability (in particular, patent-eligibility) of CII within the USA.

        The way I see it, it is not the AIA that is reducing the number of filings at the USPTO but, rather, 1. a world-wide correction of “creep” of filings for subject matter outside the “useful arts” space, 2. a world-wide crusade against granting patents on “trivial” subject matter and 3. widespread uncertainty whether the prospective rewards flowing from filing at the USPTO outweigh the expense.

        1. 8.1.2.1

          MaxDrei,

          I was following your post until your conclusions.

          1) How in the world do you reach a matter of “creep of subject matter?”

          2) Where do you get this notion about “Crusade” (against trivial subject matter)?

          3) Where (and how) does this notion of reward outweighing expense FIT into what Night Writer is postulating?

          For 1), I doubt that your sense of “creep” is at all accurate (and entirely in the WRONG direction.

          For 2), I see your elevation to status of “Crusade” as an elevation of your feelings above any actual views or even trends of views vis a vis obviousness (which is the measure against triviality).

          For 3), you MAY be aligning with Night Writer’s concerns, but it is entirely UNCLEAR that EITHER this is so, OR that you are doing so with an understanding of WHY this may be so.

          1. 8.1.2.1.1

            Often the way, isn’t it, with changes of climate. Reasonable people differ about whether it exists and, if so, what are its causes, whether it is good or bad and, if bad, what to do to slow it down.

            You have your view and I have mine. Mine is based on 40 years of monitoring climate change, world-wide, in the world of patent rights and the steady increase during all that time, of the pressure to patent everything that moves. Sooner or later, the rising line of filing numbers inevitably levels off. With climate change, you have to contemplate periods of more than five or ten years. I suspect that, if we differ, that is the reason.

            1. 8.1.2.1.1.1

              Your “40 years” has been previously noted as 40 trips around the same tiny block, with you wanting to see what you have always seen.

              I suspect that our differences are far more profound.

              And be that as it may, you STILL have not supplied any reasoning to the three points I provide. ALL that you have basically done is say “this is how I feel.” And THAT is rather underwhelming.

  2. 7

    The question at hand seems to me to be merely tangential to the issues addressed in the USPTO’s Berkheimer Memo. Can anyone here see a possible decision here that would require back peddling the Berkheimer Memo?

    1. 7.1

      Does the Berkheimer memo even matter much anymore? With the new guidance Prong 2 is the easiest step to “pass” at. And Berkheimer is irrelevant to Prong 2.

      (Obviously the Berkheimer decision still matters in the courts, since they aren’t required to follow the Iancu test.)

      1. 7.1.1

        Not sure I understand the thrust of your comment Ben.

        When you say “pass” and that Berkhemier is irrelevant to that passing, are you saying that Berkheimer is not applied at all anywhere?

        By the way, I am STILL correcting examiners on what it means to “pass” the Berkheimer memorandum – by that I mean that the Office to meet its burden must provide a proper evidentiary basis for not only claim elements, but the ordered combination of claim elements to a level BEYOND merely known (a 102 version) or even ‘combinable’ (a 103 version), and must show proper evidentiary support for both the elements and the particular ordered combination as having widespread adoption.

        Once this is understood by the examiner, they tend to simply drop the 101 rejection entirely.

      2. 7.1.2

        Yes. In the eligibility analysis they need to show the additional elements are well understood, routine and conventional.

  3. 6

    link to bigpatentdata.com

    The nonsense that goes on here in this blog. Lemley is wrong that the weakening of the enforcement law does not affect filings of patent applications. It does and has.

    If you look at the second graph with the green line, which is the most telling, then it is clear that since the AIA patent application filings have dropped. These are applications that aren’t CON/DIVS and with no foreign priority.

    So they were nearing 120K and now are trending to 100K after 5 years. That is a big drop.

    And–again and again–the point that people want to skip over is that what is happening is that a huge number of patents are being filed that don’t have foreign priority and weren’t made in the USA. That is applications like the last two that I just filed where the inventors were from India, but the first filing is in the USA. No foreign priority and not made in the USA. China does this a lot too. My guess is that since 2013 that this now accounts for 10-30 percent of all filings.

    If that were taken into account, then I’d bet that patent application filings from inventions made in the USA would be down at least 30% since the AIA. Plus the economy is growing.

    (Prepare for the storm of nonsense.)

    The reality is that we are nearing a tipping point with US patents. In house counsel at large corporations are getting to the point of thinking of them as near junk and have greater reduced the priority to file patent applications.

    You can count on that number probably falling to 50K within 5 years if things continue or in the next recession.

    1. 6.1

      And please try to be intellectually honest in your responses.

      The numbers are very ugly and are going to get much worse.

    2. 6.2

      If you look at the green line in the second graph, then the affect of the AIA is probably rather than 150K+ application in 2020 we are going to have about 100K.

    3. 6.3

      Any statistician will tell you that the green line in the second graph is ominous particularly coupled with the fact that the economy is much larger than it was in 2014 and the fact that huge numbers of applications are now being filed in the US as first filings when the invention was made in a different country. This number is growing significantly.

      It is going to get very, very ugly. And statistically Lemley’s hypotheses that weakening the enforcement law of patents would not reduce the filings is wrong.

    4. 6.4

      The green line in the second graph is a subset of the gray line in the first graph. Other than being selected by you to support your point, why is the green line more “telling” than the grey line? Your statement that “These are applications that aren’t CON/DIVS and with no foreign priority” was incomplete in that you neglected to mention that those were only for the ones filed at an undiscounted rate. Is there some reason why the other applications should be completely ignored?

      Do you have non-anecdotal data to support the point that “people want to skip over”? Otherwise, it is more an issue of refusing to accept your “guess” rather than skipping over something?

      1. 6.4.1

        NS II,

        Seeing you (again) speak up when it appears that a pro-patent view is carrying the discussion, I do (again) winder about your biases (and if you are even aware of them).

        Case in point here, the numbers of the article themselves are TRA SH.

        That being said, there is a plainly evident attempted spin with those TRA SH numbers that does call forth NW’s viewpoint. So while NW may be arguing against bogus numbers — the article he provides IS to be disdained (the gist of his point DOES carry).

      2. 6.4.2

        NS II–that was not a substantive response.

    5. 6.5

      “You can count on that number probably falling to 50K within 5 years if things continue or in the next recession.”

      “You can count on (event) probably happening.” What does this mean? Would you like to make a Gentleman’s bet? “That number” being utility patent applications in the Patent Examination Research Dataset for the calendar years 2019-2024, with at least one inventor having US residence. “Things continue or in the next recession” meaning annual GDP growth less than 3%?

      1. 6.5.1

        I’d make a gentleman’s bet on this issue. We’d have to be careful to figure out what the bet is, though.

        One problem I have is that patent applications continue to be filed without foreign priority, but that were not made in the USA. I think if patent applications could be split out based on this, then it would be clear that applications for inventions made in the USA are way, way down.

        1. 6.5.1.1

          “We’d have to be careful to figure out what the bet is, though.”

          How did you miss where I suggested standards for “that number” and “things continue or in the next recession”?

    6. 6.6

      “DERP gotta turn up the spigots and spew out more DERP patents so the DERP patent attorneys can keep doing their super important DERP work DERP nothing else matter DERPITY DERP China taking over DERP Obama caused everything bad DERP”

      This Night Wiper tr0 ll has the IQ of a dog t-u-r-d.

    7. 6.7

      What matters is not the place of residence of the inventor but who owns the invention. A high proportion of those inventors resident outside the USA are working for US corporations, who naturally file first in the USA whenever they can.

      An additional factor is the importance of patent rights in the USA to corporations not of US nationalitiy. So important that they need to rely on their priority date in the USA, especially under FItF AIA. Accordingly, wherever in the world they make their inventions, they will file on them first in the USA, because a filing date at the USPTO is more potent than a filing date anywhere else. China notes with interest the US approach to the Paris Convention principle of equal treatment, namely, to ignore it.

      1. 6.7.1

        Max, what matters for the numbers is where the inventors live and where the invention was made to make fair comparison about that green line. The green line has changed from trending up like 8K new application a year to down 8K patents a year and that does not take into consider the masking from inventions going outside the USA.

        If we honestly evaluate the data, then it is clear that that AIA has had a profound affect on the patent system.

        Actually, I work with people all over the world all the time. I’ve filed patent application is pretty much every country you can imagine. (Yes I talk to people in the UK. I actually love the people in the UK and the people in Germany. The Koreans are great to deal with as are the Japanese. Gee, isn’t that funny that the countries that are innovative and doing well are also the same ones with educated principled people running their patent system.)

        For a brief time, I was actually a graduate student in the UK.

        Max >>>”because a filing date at the USPTO is more potent than a filing date anywhere else.”

        Funny, I was just working with someone from a third-world country and he said, “as bad as it is in the USA right now, you can be sure that we have it 100 times worse.” He went on to explain how corrupt the patent system was in his country and that the judges were all on someone’s payroll.

        1. 6.7.1.1

          Be all that as it may, Night, my reference to “potent” was nothing to do with corruption. I was only pointing out that a filing date at the USPTO, contrary to the letter, spirit and sense of the Paris Convention, delivers more potency under domestic US law than a filing at any other Patent Office in the world does, under domestic US law, and that is why non-US corporations choose to make their earliest-dated patent applications at the USPTO, regardless where in the world they are resident or where their employee inventor is resident.

          Of course I agree, there are other countries in the world, where or not 3rd world, where the patent court judges decide cases in accordance with what the Party decrees.

          As to the green line, perhaps you should compare it with stats for other jurisdictions, like the EPO. Here, one hears talk and sees references to a fall-off of drafting activity, independent of any AIA or Alice effect. These days, in the area of decisions of corporations how many business method and software patent applications to draft, it’s a very small world.

          I am mystified by your expressions of love for “the people” of Germany and the UK. I know not what you mean by “the people”. You begin to sound like the deeply unappetizing right of centre fraction of the population in the former DDR, east of the River Elbe, that rejoices in banging on that “Wir sind das Folk” (we are “the people”) . Or the folk in England who are thrilled by the behaviour of Nigel Farage.

          1. 6.7.1.1.1

            So saying I love the people of the UK, Germany, Japan, and Korea is now somehow shades of fascist? Geez. OK. I hate everyone. Wait that makes me one too, I think. Wait. I am confused.

            You don’t have to translate German for me. I used to live in Germany.

            The corporations around the world may all be reacting to the AIA. The green lines around the world are in decline to all our detriment.

            1. 6.7.1.1.1.1

              I too found his “you begin to sound like” comment rather untethered…

              1. 6.7.1.1.1.1.1

                Perhaps it is living in Germany that makes me sensitive to it, but when it comes to talking about any given “people”, I think it advisable to refrain from expressions of love, let alone hate. Do you disagree?

                As to the phrase in German, and my translation into English, I was operating on the assumption that not everybody who reads these columns is fluent in that language. Is my assumption wrong?

                1. I think it advisable to refrain from expressions of love, let alone hate. Do you disagree?

                  Absolutely not.

                  And to be clear, expressing love for any one group just is not the same as expressing enmity for any other group.

                  As to the German phrase and translation, meh, I don’t care as my focus is on more substantive matters, and in this day and age of Google translate, it just does not matter much (unless you are expressly explaining an idiom). I take it though that here YOU (MaxDrei) are STILL being overly sensitive, as NW’s comment was of a tone of “you do not have to do that” as opposed to “DON’T DO THAT.” So in essence, you have doubles down with first bringing up an untethered comment and then reacting emotionally to comments about your untethered comment. “makes me sensitive” is NOT an excuse for such. Check yourself, please.

                2. Max, come on. Actually, the use of “people”, which I think I will stop using, is an artifact of me being old. That was a common expression 50 years ago. It is unrelated to the German use of “folk.”

      2. 6.7.2

        China notes with interest the US approach to the Paris Convention principle of equal treatment, namely, to ignore it.

        Care to unwind this with a bit more detail?

  4. 5

    The clear and convincing evidence standard does apply to eligibility. But no district court even bothers to evaluate the language of 101 any longer. They jump right to judicial exceptions, hollowing all of patent law. Congress needs to fix this mess. Quickly.

    1. 5.1

      “Derp nothing is derp patentable anymore derp derp that’s what my script says derp it’s a big f-@-t lie but who derp cares derp time to ask the senate for some of that good old welfare for rich white attorneys DERP the best kind of welfare ever!”

      1. 5.1.1

        Your Derp Dance nothing reply is noted.

      2. 5.1.2

        MM bruh, did you hear the news? Blasey Ford’s lawlyer admitted that her client was politically motivated the whole time (despite their protestations the contrary during the whole fiasco, perhaps even under oath). Who’da thunk it bruh?

        link to news.yahoo.com

          1. 5.1.2.1.1

            It tends to do that when the economy is in good shape. Nothing much can even be done about it other than try to get china and others to play ball.

            1. 5.1.2.1.1.1

              So when he said stuff like “The trade deficit rose to a 7yr high thanks to horrible trade policies Clinton supports. I will fix it fast”, he was talking about tanking the economy? I guess that checks out.

  5. 4

    HP’s cert question is terrible and misleading.

    But the CAFC itself has moved on. There is no “non-conventionality” loophole that allows ineligible subject matter to be protected in a prior art context just because that prior art context isn’t “conventional” or “routine”. All that matters is whether the context is in the prior art. The CAFC’s loophole was illegal. And they know it.

    More importantly, the CAFC knows it’ll take the Supremes five seconds to cut through the CAFCs silly and unsupportable b.s.

    1. 4.1

      … talk about “DERP”….

      1. 4.1.1

        Care to put some money on it, Bildo?

        I mean, this isn’t even a difficult issue. The CAFC had to do a backflip to pull that loophole out of Mayo v. Prometheus.

        The dicta in the Prometheus was simply an observation about how ridiculous the facts were. Yes, the data gathering step was not only anticipated, it was routine. But the point was that the data gathering step was not inventive and the only step in the claim besides that non-inventive step was an ineligible abstraction, i.e., making a correlation based on the gathered data.

        You think the Supreme Court is going to disagree with anything that I just wrote? LOL How long has your head been sandwiched between Kevin Noonan’s flabby dissembling @ ss cheeks, inhaling the maximalist vapors? Seven years?

        1. 4.1.1.1

          Was the Arrhenius equation “inventive?”

        2. 4.1.1.2

          Are Protons, Neutrons, or Electrons inventive?

          How about configurations of these things?

  6. 3

    I don’t see why an eligibility analysis is not conducted under the precise auspices of Markman. All of the procedural aspects are essentially identical.

    1. 3.1

      The reason is that the point of Alice was to permit dist. ct. judges to dismiss on SJ.

      1. 3.1.1

        Exactly. I expect that the enthusiasm for Alice among its partisans would diminish considerably if the exact same legal standard were applied to the analysis after discovery rather than at the summary judgment stage.

        1. 3.1.1.1

          ” after discovery rather than at the summary judgment stage”

          Not sure what you mean, Greg. Other than rare situations, when is discovery not already concluded by the time of MSJ filing and argument?

          1. 3.1.1.1.1

            Sorry, you are of course correct. I meant 12(b)(6), not SJ.

            1. 3.1.1.1.1.1

              Thanks for clarifying, Greg. Still trying to figure out what NWPA meant…

              1. 3.1.1.1.1.1.1

                Martin was talking about a Markman hearing.

  7. 2

    I would not mind seeing sanctions against attorneys who bend cert questions so far beyond what the case at point actually is.

    In both directions.

  8. 1

    OT, but

    link to bigpatentdata.com

    This backs up what I’ve been saying. The number of patent applications is dropping for inventions made in the USA. (Plus, I believe the numbers are actually much worse as from my practice I see a lot of drafting where the inventions were not made in the US but the US is the first filing.) This is something I would guess is like 10%.

    1. 1.1

      This means that Lemley’s trashy numbers he has been flashing about the country were wrong and he did misrepresent the data. His hypothesis that weakening the enforcement of patents did not affect the number of filings is —WRONG.

      1. 1.1.1

        Actually, looking at those numbers indicates that Prof. Lemley is actually correct about this much.

        1. 1.1.1.1

          Greg, don’t start your nonsense.

          In the first figure the numbers rise going to 2008 and then drop because of the financial crisis. The number then start to rise again, and then drop when the AIA is passed in 2012 and then have dropped since the AIA is passed.

          Plus this is not taking into account the large number of application where the invention is not actually from the USA, but a first filing and the combination of inventors from outside the USA.

          All of what I wrote above agrees well with me and my practice which is with large corporations and start-ups.

          1. 1.1.1.1.1

            In the first figure the numbers rise going to 2008 and then drop because of the financial crisis.

            The gray line is the only one that counts for purposes of the argument that you are advancing here. Everyone here can look at the gray line for themselves and see whether they think that it moves appreciably over time. They can see for themselves that it starts out a hair below the 150K mark in 2002, rises to a hair above the 150K mark by 2007, falls back to a hair below in 2009, and finishes a hair above in 2017 (the last year on that fig. 1 chart). I doubt that if the proper error bars were added to each data point, that the line would ever move outside of the range of error from the 2002 or 2008 measurements.

            Indeed, Gilles says immediately below fig. 1 that “[i]n fact, the gray line is basically flat since 2002!”, which is exactly my point. You can call this “nonsense” if you like, but I do not whom you think to fool. We can all see the chart with our own eyes. None of the uniquely U.S. focused patent law events over the last two decades have had any discernible effect on the total number of U.S.-originating patent filings (gray line) in that linked post. If Prof. Lemley’s contention is that U.S. patent filings are not much affected by developments in U.S. patent law, then he is demonstrably right about that much.

            1. 1.1.1.1.1.1

              One of the reasons I’m such a fan of FiveThirtyEight is that they do such a great job of making fun of people who take data that means either nothing or points in one direction and then argue that the data points in the other direction.

              Obviously, you’re correct Greg, but I’d like to add:

              If Prof. Lemley’s contention is that U.S. patent filings are not much affected by developments in U.S. patent law, then he is demonstrably right about that much.

              Not only is he correct about *filings* not being much affected by developments in US Patent Law, looking at the number of issuances will show that even *grants* are not much affected by developments in patent law.

              If you have a 70% chance that you will receive a patent for filing an application, you’re not disinclined to file a patent application.

              1. 1.1.1.1.1.1.1

                You do remember what DID affect grants though, eh Random?

                That infamous Dudas “Reject Reject Reject” era.

                Also, as Greg has apparently ONLY looked at the numbers and conveniently disregarded the footnote indicating a rather sizable discrepancy between those “flat” number and the actual numbers in reality, one SHOULD then also take all of Greg’s other comments with a grain of salt.

                1. Like NW, you prove your opponents’ point.

                  Also, as Greg has apparently ONLY looked at the numbers and conveniently disregarded the footnote indicating a rather sizable discrepancy between those “flat” number and the actual numbers in reality, one SHOULD then also take all of Greg’s other comments with a grain of salt.

                  I agree that the work is bad, but the fact that bad work supports Greg’s hypothetical isn’t evidence that the counter-hypothetical is true. NW has, at best, zero evidence in his favor, and at worst, evidence showing him to be wrong.

                  The grey graph is flat. The fact that some domestic applications are filed non-pub only increases the conclusion that alice did not affect patent *applications* filed, which again has very little to say about actual patent *grants*, which is itself a bad measure of true innovation or even of R&D expenditure. Anyone can write a document and file it. The “analysis” does not even purport to measure actual innovation, but rather the demand for patent drafting services, which doesn’t mean anything to anybody except the lawyers doing that kind of work.

                  That infamous Dudas “Reject Reject Reject” era.

                  A time during which actual applications filed increased and during which the grey line (which again is based on faulty logic) is flat.

                  In short – the work is bad, but to the extent that it proves anything, it proves that neither the specter of “unfair” rejections (if that is how you want to describe the dudas era) nor a sea change in obviousness law (ksr) nor a change in eligibility (mayo or alice) makes any kind of dent on patent application filage – US Companies file (according to this guy) ~150k new applications a year, regardless of the perceived likelihood of receiving a patent.

                  You do remember what DID affect grants though, eh Random? That infamous Dudas “Reject Reject Reject” era.

                  I am in agreement with your implied statement that “whether the office grants a patent” is largely untethered from “whether the law says a patent should be granted.” I am also in agreement (with the extent that you apply this to the Dudas era) that the discrepancy can be due to a concerted effort by the office rather than sheer inability to quality control (i.e. The outcome may be intentional).

                  I suspect the only place where we disagree – and I may be wrong about this as I don’t know your opinion directly on issue – is whether or not it is still going on, and in which direction (pro or anti allowance) the bias currently resides.

                2. Like NW, you prove your opponents’ point.

                  Utter nonsense – let’s start our dialogue with removing that bit of error.

                  You make that statement in passing, but then show no such proving of ANYONE ELSE’s points.

                  Given that you DO recognize MY point of “Also, as Greg has apparently ONLY looked at the numbers and conveniently disregarded the footnote indicating a rather sizable discrepancy between those “flat” number and the actual numbers in reality, one SHOULD then also take all of Greg’s other comments with a grain of salt.” With your acknowledgment of “I agree that the work is bad,

                  But then you step into the SAME MISTAKE with your assertion of “ but the fact that bad work supports Greg’s hypothetical isn’t evidence that the counter-hypothetical is true.

                  You try to be too clever by half, and simply neglect to note that the actual historical numbers (those numbers that DO make the article’s numbers BE wrong) are known.

                  Thus, given that the actual numbers are known, your follow-on assertion of “NW has, at best, zero evidence in his favor, and at worst, evidence showing him to be wrong.” is false.

                  As to your reply of “… actual patent *grants*, which is itself a bad measure of true innovation or even of R&D expenditure.” – YOU are the one making assertions without evidence, and rather MISS the contrasting point (the reason) of why I mentioned the “Reject Reject Reject” era.

                  You seem to want to AGREE with me that the Office actions artificially suppressed legitimate patents. But you appear to want to take these items – not of themselves – but then assert them to a point that I did not assert (and to which, you have no basis for doing).

                  As to your comment of: “I suspect the only place where we disagree – and I may be wrong about this as I don’t know your opinion directly on issue – is whether or not it is still going on, and in which direction” – I would posit that some of that mindset is still very much present in the inner-workings of the Office (and is evident in your own postings). Further, the subtle notion in your phrasing is that a LACK of such anti-patent sentiment is equivalent to a PRO-Patent (and untoward) bias. Such is simply not so. The grant rate simply has returned to what may be considered an historical average, which does NOT mean that “too many patents are being granted.”

            2. 1.1.1.1.1.2

              It occurs to me, NW, that we might simply be talking past each other in an equivocation. Do you mean to say that U.S. originating filings per capita or per dollar of GDP are down? If so, you are almost certainly correct (the “almost” reflecting that I am not sure about the certainty of the linked numbers).

              The linked fig. 1 shows that total U.S.-originating filings are flat for almost two decades, but both the U.S. population and GDP have been growing over those decades. If you mean that U.S.-originating filings appear to have been shrinking compared to overall population or compared to the overall size of the U.S. economy, I certainly agree with that.

              Did Prof. Lemley ever assert the contrary? I am not aware of any such claim, but these linked numbers would certainly tell against such an assertion if ever it was advanced.

              1. 1.1.1.1.1.2.1

                The linked fig. 1 shows that total U.S.-originating filings are flat for almost two decades, but both the U.S. population and GDP have been growing over those decades. If you mean that U.S.-originating filings appear to have been shrinking compared to overall population or compared to the overall size of the U.S. economy, I certainly agree with that.

                There’s no reason to think it should vary with those things. Having more people doesn’t mean there should be more filings. The growth and accessibility of information has obviously exploded since 2002 (scarcely past the AOL days) and yet the data is flat compared to that variable as well.

                A large reason *filings* might be curtailed is because people who might otherwise believe themselves to be inventors are made aware of preexisting prior art and realize they are not. Conversely, one might argue that the easy spread of information makes it easier for innovators to innovate. The ease of spread of information, the change to AIA, the financial crisis, etc, all of these are plausible variables that (again assuming the graph is actually correct, which I doubt) would have far greater effect on innovation or even patent filings than “number of people in the country” or “per capita GDP dollar” as if a single mother of two has the same likelihood of investing in innovation as a corporation, or a small business during the financial crisis is the same thing as a large business during boom times.

                1. There’s no reason to think it should vary with those things.

                  The word “should” is a bit slippery in this context, so I do not necessarily want to agree or disagree with this assertion. In any event, if the rate of U.S.-originating filings per dollar of US-GDP is decreasing, that is an interesting fact to note, whether such a thing “should” happen or not. Such an observation has several possible implications, each of which is noteworthy if true (although more info would be needed to determine which—if any—of those implications are true):

                  1) That the U.S. is investing a smaller and smaller share of GDP in R&D each year.
                  2) That the share of GDP invested in R&D is not necessarily shrinking, but that these R&D dollars are paying ever shrinking returns.
                  3) That the share of GDP invested in R&D is not shrinking and neither are the returns on those dollars invested, but that companies are becoming—with each passing year since 2002—less willing to file on the results.

                  Each of those three would have public policy implications. It is kind of pointless to address those implications, however, unless we know which (if any) of 1–3 is accurate. I do not know the answer to that last point.

                2. 1) That the U.S. is investing a smaller and smaller share of GDP in R&D each year.
                  2) That the share of GDP invested in R&D is not necessarily shrinking, but that these R&D dollars are paying ever shrinking returns.
                  3) That the share of GDP invested in R&D is not shrinking and neither are the returns on those dollars invested, but that companies are becoming—with each passing year since 2002—less willing to file on the results.

                  None of these are in any way discernible from the data.

                  Let me give you an example – Applicants claim a messenger feature that tells you when the person you are having a conversation with is typing.

                  Now it’s great that someone (probably) got paid for writing code, and it’s great that someone got paid for drafting a spec, and it’s great that I’m getting paid to examine it – but a computer keyboard, which any lay person knows detects input, has been around for 70 years, and a display displaying that input is as commonplace as any word processor usage, and the ability to transmit data over a network connection is as old as arpanet in 1969. So the question of whether an application should be filed in the 2010s over the subject is less an indicator of whether someone learned in law advised an executive that plausibly thinks its inventive and more an indicator of someone has in-house counsel that need to justify their existence, or a CEO wants to impress their board with what they’re achieving. The notion that it “means” as much, from an analysis standpoint, as a 100 million dollar pharma drug is ridiculous, as is the notion that someone choosing to not file the application would mean something significant for american policy. Similarly – the fact that it is described in its own document, or as a divisional part of another document, or even described in a similar way in three separate documents apparently holds scientific water for the article writer, when it fact it is meaningless for the “R&D” performed to generate it, such as it were.

                  To suggest that that filing is any indicator whatsoever of (1) true R&D, or (2) returns on R&D or (3) willingness to file is simply folly. It’s a document, so I guess it gets counted in a non-scientific “study” by some guy on the internet, but that’s about all it does. The document could get filed or not filed, published or not published, granted or not granted and it would make exactly zero difference to pretty much everyone as a practical matter let alone as an indicator of R&D for the country such that it is evidence we should change some kind of policy.

                  There’s simply no point in attaching a qualitative label to a quantitative value when there’s no validity filter for the quantity, which is why counting *applications* as opposed to *patents* is irrelevant to everyone who does not get paid to draft applications. (In fact counting patents would be irrelevant too). If you were to poll the children in my building as to who the next president should be you would get an overwhelming response for Iron Man. It would be unfortunate if you started producing policy based on what future President Robert Downey Jr might do. The linked article has about as much valid scientific policy evidence going for it as the kid down the hall with the Hulk mask does.

                3. None of these are in any way discernible from the data.

                  Agreed. None of these hypotheses are inconsistent with the data, but neither does anything about the data actually support any of these hypotheses.

    2. 1.2

      Thanks for sharing that, NW. It is interesting to see numbers on that point. My only slight quibble in response to your characterization and Mr. Gilles’ characterization of those numbers is that both of you speak of U.S. originating applications being down. When I look at those graphs and charts, I would say that (within the margin of error, which Mr. Gilles does not bother to show us, but which must necessarily exist nevertheless) it would be more accurate to say that the numbers are flat.

      1. 1.2.1

        Yes, and the “flatness” is only notable when considered in view of the ridiculous explosion of junk that preceded it.

        Remember when some patent attorney tried to claim a “new paradigm”? Ah, the good old days when the tiger shrimp were huge and the coke was pure.

      2. 1.2.2

        Incidentally, the other thing to note is that those numbers have been almost relentlessly flat for over a decade (almost two decades) now. This flatness distantly precedes not only Alice but also KSR. It does not, in other words, appear to be a function of any actual trends in patent law. Rather, it would appear to have more to do with the economic phenomenon of “secular stagnation” about which the economist Tyler Cowen writes so much.

        1. 1.2.2.1

          those numbers have been almost relentlessly flat for over a decade (almost two decades) now.

          The number of utility applications filed per year doubled between 1998 and 2008, something that I’m quite sure had never happened before 1990. In what alternate universe can you describe that event as “relentlessly flat for almost two decades”?

          1. 1.2.2.1.1

            He is talking about the numbers that the linked article provides.

            (Maybe check things out before you comment)

    3. 1.3

      Footnote 1 is interesting — plus (at least for my practice) we have seen a massive jump in applications filed with a non-publication request.

      1. 1.3.1

        (at least for my practice) we have seen a massive jump in applications filed with a non-publication request.

        ROTFLMAO

        Which “practice” is that?

        1. 1.3.1.1

          Why, the practice of obtaining innovation protection for clients, of course.

          You know, the type of thing that causes you such massive cognitive dissonance.

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