Is it Hyperbole if it Accurately Describes an Absurd Reality

Wow, lots of new amicus in the patent eligibility case of American Axle v. Neapco, including a joint filing from Sen. Thom Tillis, Hon. Paul Michel, and Hon. David Kappos. The trio argue that the current state of patent eligibility doctrine is “an unintelligible hash” causing significant systemic problems. [Tillis Brief]  Kappos addition to the brief is symbolically important. His name is memorialized in Bilski v. Kappos, the case that seemingly re-started us down this pathway.  The brief offers an interesting approach — it is filled with quotes from policymakers about the problems created by the shift in patent eligibility laws.  Many of the quotes appear hyperbolic, but it is hard to tell in this situation whether they are simply reflecting reality.

Professors Lefstin (Hastings) and Menell (Berkeley) add their own hyperbole noting that in this case, the Federal Circuit has stretched “Section 101 to absurd lengths.”  A common law professor trope is to talk through the absurdity that ensues when a given rule is taken to an extreme.  Here, the professors are noting instead that absurdity has arrived. [Lefstin Mennell Brief]

American Axle filed its petition for writ of ceritorari back in December 2020.  Neapco initially waived its right to respond. However, the Supreme Court requested a response that is now due March 31, 2021.  Meanwhile, ten friend-of-the-court briefs have been filed supporting certiorari:

If the court has interest in the case, I would expect a call for the views of the Solicitor General (CVSG) sometime in April. Of course, a prior SG already provided views in a recent patent eligibility case: “The Court’s recent Section 101 decisions have fostered substantial uncertainty.” – U.S. Solicitor General, Noel J. Francisco (2019).

108 thoughts on “Is it Hyperbole if it Accurately Describes an Absurd Reality

  1. 5

    OT, but the 112(f) issues are getting just as bad the 101 issues.

    This is the core issue:

    A claimed function conveys structure when a POSITA knows how to build a machine to perform the function but it doesn’t convey structure when a POSITA doesn’t know how to build a machine to perform the function?

    J. Moore admitted that there was code available on the internet at the time of the filing of the patent application that performed the claimed function. J. Moore’s opinion is a travesty of justice. The CAFC is using 112(f) as a means to invalidate claims that they feel are invalid under 103 but can’t put together a 103 argument. They are adding to their equity bag of tricks that already includes Alice.

    Claim scope is policed by the reverse doctrine of equivalence. Meaning if your functional claim is too broad then it is possible that a new invention may be within your claim scope and end up invalidating your claims. The CAFC is using 112(f) in Williamson and other cases like Alice as a way to invalidate claims they don’t like.

    This is another issue that is ripe for cert.

    1. 5.1

      And this goes with this topic because it is the CAFC using judicial activism to invalidate claims they don’t like. They are also just saying things that do not correspond to modern innovation practice as articulated in textbooks I have quoted from MIT. I know J. Moore went to MIT long ago. But J. Moore is now an activist judge that needs removal.

      1. 5.1.1

        I am guessing that you are talking about Rain Computing, Inc. v. Samsung Electronics Co., Ltd., no. 20-1646 (Fed. Cir. Mar. 2, 2021).

        I understand that you disagree with the result, but what part of the legal analysis do you disagree with?

        Judge Moore is a great judge, and probably one of the most patent friendly judges on the Fed. Cir. Moreover, she’s one of the most willing to consider any argument or position, even if it takes a good bit of effort to understand or it strays from her own personal perspective.

        The en banc Fed. Cir. in Williamson made clear that “§ 112, para. 6 will apply if … the claim term … recites ‘function without reciting sufficient structure for performing that function.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc section of opinion) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed.Cir.2000)).

        That is not a proposition that any individual panel can stray from. Judge Newman dissented from this position in Williamson, but she would still be bound to follow this proposition if she had written the opinion instead.

        As the opinion notes, “Rain fails to point to any claim language
        providing any structure for performing the claimed function of being configured to control access.” Rain, no. 20-1646, slip op. at 5. Thus, under Williamson, it seems clear that the claim must be construed under 35 USC 112, p. 6 / (f).

        If a claim is construed under 35 USC 112, p. 6 / (f), the plain language of the statute indicates that “such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

        The Fed. Cir. has held that “the court must determine what structure, if any, disclosed in the specification corresponds to the claimed function,” and that “[i]f the patentee fails to disclose adequate corresponding structure, the claim is indefinite.” Williamson, 792 F.3d at 135-1352. Although this was not from the en banc portion, it is still precedential and binding on future panels, and this is hardly a controversial holding and is echoed throughout Fed. Cir. precedent.

        There was no dispute in the case that “the function of [the] ‘user identification module’ is ‘to control access to one or more software application packages to which the user has a subscription,’ as determined by the district court.” Rain, no. 20-1646, slip op. at 8.

        Rain indicated that “the module would … be configured to … respond to requests for information (using common software algorithms),” Appellant’s Resp. & Reply Br. at 22, but “[w]hen asked at oral argument to identify an algorithm in the written description, Rain could not do so.” Rain, no. 20-1646, slip op. at 9. The Court accordingly held that “Without an algorithm to achieve the ‘control access’ function, we hold the term ‘user identification module’ lacks sufficient structure and renders the claims indefinite’.” Id.

        I am guessing that you disagree with the approach to 35 USC 112, p. 6 / (f) articulated in Williamson, but it is hardly a new approach.

        The potentially weird result is that, to the extent that prior to enactment of 112, p. 3 (now 112, p. 6 / 112(f)) in response to the General Elec. / Halliburton line of cases, functional claim language not at the point of novelty was acceptable and could cover elements known to the ordinary artisan but not explicitly disclosed, the plain text of 112, p. 3 (now 112, p. 6 / 112(f)) would potentially seem to eliminate this ability. However, it seems unlikely that Congress intended this result, given that Congress was intending to expand the ability of patentees to use functional claim language.

        Is this weirdness enough to support an argument regarding when/how the saving exception should be triggered/applied? Maybe? Judge Newman’s dissent in Williamson perhaps provides a jumping off point, but it feels like an uphill battle, given that you would potentially be trying to argue against a textualist approach to interpretation of 35 USC 112, p. 6 / (f) before a S. Ct. that is seemingly increasingly leaning towards textualism.


          >>>The en banc Fed. Cir. in Williamson made clear that “§ 112, para. 6 will apply if … the claim term … recites ‘function without reciting sufficient structure for performing that function.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc section of opinion) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed.Cir.2000)).

          Except Moore, who is not a great judge and who is not patent friendly, acknowledges that providing the function that is claimed was available as shareware at the time of filing the application.

          And, Moore fails to not that whether it recites structure or not should be interpreted by one skilled in the art.


          Below is Williamson. And I don’t agree with your interpretation of Halliburton and how the new 112(f). The new 112(f) was supposed to reverse Halliburton so that functional claims could be used at “the point of novelty.”

          Note that Moore doesn’t ask the question whether one skilled in the art would see this as sufficient structure but dances around. And note that the “algorithm” requirement is something that is not a “requirement” and could easily be gotten around with different facts.

          >>In making the assessment of whether the limitation in question is a means-plus-function term subject to the strictures of § 112, para. 6, our cases have emphasized that the essential inquiry is not merely the presence or absence of the word “means” but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.


            And I bet if I dug into the appeal there would be an affidavit from an expert saying that the fact that there was shareware available that would provide the claims functions that it did connote structure to a person skilled in the art.

            As, of course, it did.


            There is a lot of confusion on Halliburton (pre-1952) being abrogated and supposedly a “required” use of 35 USC 112(f) for things that Halliburton (pre-1952) may have been attempted to be used for.

            This sounds in Random’s flawed following of the pre-1952 ‘problems.’

            The thing is that terms sounding in function are permissible outside of 35 USC 112(f).

            People want to treat 35 USC 112(f) as somehow being a requirement ANY TIME a claim term sounds in function.

            This is simply legal error and a lack of understanding of both patent law and the history of patent law.

            (this is also tied into the Prof. Crouch coined term of Vast Middle Ground, which does not CREATE a new legal concept, but merely reflects upon the existing legal concept)


              The Fed. Cir. has made clear that “[f]unctional language may [] be employed to limit the claims without using the means-plus-function format.” Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008).

              However, Williamson appears to make clear that “§ 112, para. 6 will apply if … the claim term … recites ‘function without reciting sufficient structure for performing that function.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc section of opinion) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed.Cir.2000)).


                J. Doerre,

                Are you saying that the ‘fence’ has been moved somewhere into the Vast Middle Ground?

                Where, exactly?

                I smell a(nother) Void for Vagueness situation (such ‘fence moving’ itself lacking sufficient structure for performing that function


                I dont think those two citations are in tension at all.

                If I define something structurally, I may further limit the claim scope using functional language. This is sometimes good practice, because it gets rid of some pesky “non-operable” embodiments from claim scope just to be safe.

                For example, if I claim “A table comprising a rectangular top and four cylindrical legs, each leg protruding from a respective corner of the top.” Very technically, you could say that claim scope includes a top weighing 100000 pounds and 4 legs made out of cardboard, which would be non-operable (and thus arguably non-enabled and/or non-useful). So I can fix that by adding “wherein each leg is configured to support the corner weight of the table top. The functional language further limits the claim to remove non-operable embodiments from the claim scope.

                1. From where I stand, outside the USA, that comment about use of functional language to exclude from the scope of a structural claim embodiments that are non-functional gets my enthusiastic support because it fits perfectly with all of the jurisprudence I have absorbed in my jurisdiction since I started my career in patents more than 40 years ago. Bravo ksksksks.

                  Of course, for one bent on disputing the validity of a claim that lacks such functional “belt and braces” language, it is always possible to conceive an embodiment that falls within the strict wording of the claim but nevertheless cannot perform.

                  So must we claim drafters always include functional belt and braces language? And, if not, when do we need it, to save the claim from being found invalid, and when is it over the top, otiose, superfluous and itself a threat to the breadth or even the validity of the claim?

                  Anybody here know? Me, I suspect the answer is that if the judge likes your invention, he or she will find the validity attacks unpersuasive whereas, if the claimed subject matter strikes the court as unworthy of a patent, any ground of invalidity that can be seen as plausible will get the nod. Is that how it is, in the real world?

                2. Completely agree.

                  The “however” was intended to signal that anyone who wants to take advantage of the fact that “[f]unctional language may [] be employed to limit the claims without using the means-plus-function format,” Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008), still needs to realize that under current Fed. Cir. precedent “§ 112, para. 6 will apply if … the claim term … recites ‘function without reciting sufficient structure for performing that function.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc section of opinion) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed.Cir.2000)).


            … to your point of “point of novelty,” THIS has long been one of the preeminent sources of error – both for 112, as well as for 101.

            Anti-patentists want what is just not there in regards to “Point-of-Novelty.”


              Anon, very honestly, if I discover oil under the Hudson river (that nobody had any idea was there before), do you think:

              “I claim an oil rig located in the Hudson River” should be an eligible and valid claim under current statute? And if not, what do you think stops it? And how do you get there without doing point-of-novelty analysis?

              (You never give an answer to this very straightforward question, but I wish you would, because it lies at the heart of the Mayo decision).


                I have given answers to this fallacy of a question (and it is not a question – as you pretend – that is “very straightforward.”

                The use of “discover” is an entirely different can of worms.

                You are conflating different aspects of the 101 inquiry.

                1. So which statute makes that claim unpatentable?

                  (You are never going to answer, because the answer is “You do a point of novelty analysis to figure out I didnt actually invent an oil rig, and the only thing left is a natural phenomenon, which is not a statutory category.” But that would require you admitting point of novelty has a place in 101).

                2. So which….

                  You won’t answer…


                  I have answered and I have pointed out here that you have conflated the discussion with the inclusion of “discover.”

                3. Under what section of law are you ‘doing’ a “point of novelty” analysis, and what constitutes this “point” thing?

                  You won’t answer…..

                4. IF (and a big if at that), you want to take a step back and dis-conflate your question, and address “discovery” as its own animal, please let me know what you think of Sherry Knowles efforts in this regard.

                  For example, her views can be found at least at:
                  link to

                5. … the delicious irony of answering a (false) accusation of “you will never answer,” with pushback that is not answered….

                  This is so much better than sullenly deleting posts or shutting off comments.


            Literally this exact argument was made in Williamson. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015) (“Williamson also points to the declaration of Dr. Shukri Souri to show that one of ordinary skill in the art would understand the term ‘distributed learning control module’ to connote structure. … We have considered it but do not find it persuasive. Dr. Souri’s declaration, like the claim language and portions of the written description Williamson identifies, fails to describe how the distributed learning control module, by its interaction with the other components in the distributed learning control server, is understood as the name for structure. Dr. Souri also testified that, ‘as one of ordinary skill in the art, reading the specification, I would know exactly how to program’ a computer to perform the recited functions and further testified that structure ‘could be in software or it could be in hardware.’ … But the fact that one of skill in the art could program a computer to perform the recited functions cannot create structure where none otherwise is disclosed.” (citing Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1319 (Fed.Cir.2013)).

            Again, the panel could not depart from this precedent.

            Even in the very test you quote, the question is not whether an ordinary artisan would know how to create the structure, but “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”

            With respect to your comment that “[t]he new 112(f) was supposed to reverse Halliburton so that functional claims could be used at ‘the point of novelty’,” this seems correct, but it does not mean that you do not still have to recite structure in the specification.

            That is, it is still true that it is still true that “the patentee may not, by claiming a patent on the result or function of a machine, extend his patent to devices or mechanisms not described in the patent.” Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245, 257 (1928) (citing O’Reilly v. Morse, 56 U.S. 62, 112-113 (1853)).

            Lastly, sure, different facts might change the result!

            To be honest, I am mostly not even expressing any personal opinions on this topic, just noting what the Fed. Cir. precedent is. If you want to disagree with that precedent, that’s okay, and I’m always curious to hear where someone thinks a legal proposition goes astray or needs to be looked at.

            I think that considering whether a particular result “should” occur in an ideal world can be useful, but a lot of that comes down to a question for Congress, not the courts.


              Again, the panel could not depart from this precedent.

              How is that working out for the Gordian Knot of 101 cases…?


              That is, it is still true that it is still true that “the patentee may not, by claiming a patent on the result or function of a machine, extend his patent to devices or mechanisms not described in the patent.” Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245, 257 (1928)

              (emphasis added)

              To the extent that any leaning on Perkins Glue goes to the same point as the abrogated Haliburton case, that case too has been abrogated by Congress in the Act of 1952.

              Notable for our discussion (the other item emphasized), description of mechanism of a computing device with the mere notion of ‘configured to’ provides that item of “described” to garner that “function of the machine.”

              That is the wonder of the design choice of wares in the computing arts known as software. ANY attempt at reading the legal term of art of “function of the machine” must recognize the plain fact of what software is, and how very limited that legal phrase now is.

              Bottom line: no, your quote to Perkiins Glue (even if citing Morse) does NOT carry the day.


                …and I would add with emphasis that “function of a machine” was a very limited term of art, and cannot be read colloquially as one might tend to do in today’s decidedly improper handling of the terrain of patent law.

    2. 5.2

      Claim scope is policed by the reverse doctrine of equivalence. Meaning if your functional claim is too broad then it is possible that a new invention may be within your claim scope and end up invalidating your claims.

      Night Writer: So you think you can have a claim that is valid as of its filing date, but then becomes invalid because of something that happens 10 years after filing? . . . .

      1. 5.2.1

        … you do realize that such is mandatory for Random’s view on claim scope vis a vis improvement patents, eh?


          I have no clue what you are talking about, or what Random’s view on claim scope vis a vis improvement patents is.


          … you do realize that such is mandatory for Random’s view on claim scope vis a vis improvement patents, eh?

          Hardly. It certainly becomes easier to prove that the original scope was overbroad once you have an example of it sitting right in the defendant’s chair, but the thing that made it overbroad was the inability of the patentee to foreclose the existence of it.

          It’s Morse v. O’Reilly. The court didn’t wait around for someone to improve upon Morse’s telegraph – they reasoned that Morse hadn’t foreclosed all the possible applications of his teaching and that his claims were overbroad without needing, e.g., a fax machine sitting in front of them. Sometimes the CAFC is not as bright, and needs the fax machine before they get the right answer on overbreadth.


            BS, Random.

            It is your “reasoning” in all of your examples that shows that you do not understand ladders of abstraction and necessarily leads to the reduction ad absurdum that you don’t want to own.

            This (again) comes from your ardent desire to focus on “problem” to the exclusion of all else. You employ a sieve of selective acceptance that contorts your understanding.

    3. 5.3


      When you’re claiming a functional limitation (e.g., “a user identification module configured to control access of said one or more software application packages”), and the examiner takes official notice that it’s known in the art, do you traverse?

      1. 5.3.1


        Do you ever just ask straight questions without conflating issues and including several implications of wrong doing?


          I think my question was reasonably straight.

          Based on your response, I think it’s fair to conclude that you would traverse that situation.

          I don’t think that’s inherently untenable. There is some plausible logic to “the PHOSITA would immediately know the structure of this new result I described”, but I would agree that the argument doesn’t look good to people who don’t make their living from patents.


            Please don’t assume my responses.

            Fine, Ben, since you have gone wild again.

            I would probably traverse it but only because taking official notice is simply bad practice. It is much better to have the disclosure in front of you so it is less abstract and references can be made to the disclosure and one can understand exactly what is being claimed by the examiner as known.

            So traversing, for me, is merely a practical step to further prosecution. I as a matter of principle traverse every official notice.


              Ok, listen. I sincerely appreciate you taking the time to respond honestly. Please do not take the following as some planned “gotcha”; I truly didn’t anticipate your comment.

              “It is much better to have the disclosure in front of you so it is less abstract and references can be made to the disclosure and one can understand exactly what is being claimed

              Do you really see no tension between the PHOSITA recognizing structure from the claim limitation alone, and wanting a reference to fully understand the claim?

              For what it’s worth, I agree taking Official Notice is bad practice and avoid it as a rule. However, I wonder if that’s not frequently detrimental to examination. I can’t tell you how many time I’ve used an inferior reference because it expressly covers an extraneous limitation that we’d all agree is routine if we’re were sitting at a bar rather than around a table at the PTO.


                I get your point Ben and it is not a got you.

                Remember I work in the real world of innovation where people invent new products and I wrote patent applications to them.

                I said that the specification in this case was not good. But you know what I have to do sometimes? I have to sit there and go through all the different ways a function could be done by a person skilled in the art to stop design arounds. I typically stop at writing functional language in the specification to the different types of solutions that might be used. But I can tell you that the number of possible ways of solving known problems (specified as a function) are enormous in many different areas including biotech, mechanical, electrical, and software.

                The specification writer simply has to be able to rely on what is known as part of the specification.

                Plus if you read Williamson carefully you will see the game they played of quoting the expert saying that a person of ordinary skill could sit down and write a program to perform the function.

                But–that is very different than what is said in this case of that the there are programs out there already that perform the function and papers that discuss known solutions.

                You see the game the CAFC is playing? It doesn’t get past anyone that works in real innovation.


              Not traversing Official Notice is the same as providing Admitted Prior Art.

              Even if the facts of the matter turn out differently, an applicant is bound by the ‘admission’ (or lack of traversal).


                Didn’t the MPEP drop the statement that failure to refute the taking of official notice is an admission that can’t be challenged later? Was it the Sun Studs case that had been relied on in the past for that? Hat off to the administration that took that out of the MPEP.

                1. Well, let’s try one more time….

                  another filter hit… (pardon the vertical word):


                  See MPEP 2144.03(C) (emphasis added):

                  If applicant does not traverse the examiner’s assertion of official notice or applicant’s traverse is not adequate, the examiner should clearly indicate in the next Office action that the common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either
                  to traverse the examiner’s assertion of official notice or that the traverse was inadequate. If the traverse was inadequate, the examiner should include an explanation as to why it was inadequate.

                2. There is no requirement anywhere in the law that applicant explain or provide any reasons why some feature of a claim isnt “well known” or “common knowledge.” To the extent that an examiner insists on an “explanation” or “reason” then it had already been provided. By the examiner. If the examiner conducted the search required by the MPEP, if the feature was “well known” or “common knowledge” than the search would have produced evidence of it. As the examiner’s search did not produce such evidence, then the feature cannot be “well known” or “common knowledge.”

                3. AAA JJ,

                  It’s not a matter that alone an applicant ‘must do’ as you indicate.

                  It is a matter that the examiner has asserted a statement of Official Notice.

                  If one does not contest that assertion, it IS effectively and admission on the record.

                  And like admitted prior art (that may turn out in fact NOT to be as admitted), the ‘on the record’ aspect does mean that the veracity of the (alleged) item BEING either prior art or something that could be taken as Official Notice is no longer an item the applicant can challenge.

                  NPtC wanted to take a hat off – and not jut a hat, but a helmet remains firmly in place atop the noggin.

                4. I understand you need to “traverse” it. My point is the only “traverse” that is needed is to request the evidence. No more than that is needed for the “traversal” to be “suffiient.”

                5. Ah thanks AAA JJ – I had misunderstood your post.

                  To paraphrase then, One must traverse, but all that is required TO traverse (effectively), is to call out “B$.”

                  There is no additional duty or requirement.

                  Much like many other items that the Office engages in, then, eh?

                  If the Office is derelict in its presentation of a prima facie case (noting, for example, that there are different levels of work an examiner must provide to establish a prima facie case for the difference rejections of 101, 102/103 and 112), then ALL that is required for a sufficient response is that the applicant draw attention to the fact of the deficiency (and that is all — since lacking a prima facie case, there is no burden switch of any kind).

                  The ‘issue’ (and you kind of knew there would be one), is that the “he said – she said” game and what actually constitutes a prima facie case, and the EXPENSE and TIME involved when an examiner rests solely on an improper basis, insisting that their own conclusory statements are sufficient.

                  I have seen this ‘game’ play out so many times, and across all types of rejections, that I have lost count.

                  For prior art items, the ‘guidelines’ have been the Graham Factors, but how many Office Actions actually develop those?

                  For 112, the bar is a bit higher (and most examiners at least seem to recognize this and back off when challenged).

                  For 101, the situation is STILL ridiculous, and my own past comments in the blogosphere correctly noted the impact of Berkheimer prior to Director Iancu seeking to make things easier on the examiners by providing off-ramps. As noted above, examiners rarely do the prior art analysis actually sufficiently, and then one realizes that to establish not only individual claim elements, but the particular claim elements as an ordered combination in order to establish CONVENTIONALITY (which is widespread use, and not merely the level that would indicate either anticipation or even obviousness).

                  ALL of these things reflect that INITIAL prima facie hurdle.

                  And yet — in the real world — my clients DO have to spend a great deal of time and money even though no prima facie case has been established – often across multiple actions.

  2. 4

    The sad part of being an “unintelligible hash” is that Tillis had the power and position to try and come up with a significant fix to the problem. His search for a consensus of some sort was a dismal failure. There will never be a consensus as long as there is one set of eligibility rules that cover everything from pharma to computers to engineering. The inventors in those fields have very different needs and ideas, and their interests are often diametrically opposite. It is not job of the SCOTUS to fix the 101 mess; that belongs to the legislature. Their failure has allowed this mess to continue based on very different ideas of how to interpret Alice (and its progeny).

    1. 4.1

      There will never be a consensus as long as there is one set of eligibility rules that cover everything from pharma to computers to engineering

      Sorry Dvan, but that is a big miss.

      It is NOT the diversity of innovation that is even at point – it is the fallacy of even needing “consensus” in the first place, as this (badly) misses the point that there are those who simply do NOT want strong innovation protection (hint: the Efficient Infringer power is very real).

      That said, I DO agree that patent law is the domain of the Legislative Branch.

      But that also does not mean that the Supreme Court cannot do anything about the mess that THEY have made.

      Another hint: Kavanaugh Scissors.


          Justice Kavanaugh authored the Court’s opinion in Henry Schein, Inc. v. Archer and White Sales, Inc., 139 S. Ct. 524 (2019), indicating that, in at least some contexts, courts may not “may not engraft … exceptions onto the statutory text,” and “may not rewrite [a] statute
          simply to accommodate [a] policy concern.” Henry Schein, 139 S. Ct. at 530, 531.

          Justice Gorsuch expressed something similar in authoring the Court’s opinion in Bostock v. Clayton County, 140 S. Ct. 1731 (2020), indicating that “[w]hen the express terms of a statute give us one answer and extratextual considerations suggest another, it’s no contest[, as] [o]nly the written word is the law, and all persons are entitled to its benefit.” Bostock, 140 S. Ct. at 1737.

          That being said, there is an argument that the longstanding implicit judicial exception to 35 U.S.C. § 101 can be implied to be accepted or adopted by Congress, e.g. because “Congress is presumed to be aware of a[] … judicial interpretation of a statute and to adopt that interpretation when it reenacts a statute without change,” Lorillard v. Pons, 434 U.S. 575, 580 (1978).

          However, even if this is true, the current Mayo/Alice framework may not benefit from such a presumption, as the America Invents Act was signed into law on September 16, 2011, while the Court’s formulation of the current two-step eligibility framework occurred a year later.


            Schein was one of the two shears of the Kavanaugh Scissors.

            The other shear came from oral hearings on another case.

            I first provided the analogy over at IPWatchdog circa January 2018 (and possibly earlier).

            The two shears work together in that the one shear provides manifest situations in which it is shown that the Court’s own past forays have done more damage than good.

            Clearly, the amicus brief by high-ranking members and former members of each of the three branches of government provide abundant backing for this shear.

            The other shear pivots off of this finding and as, J. Doerre reflects, provides the LEGAL basis for taking the affirmative step of rescinding its own past dabblings (to be polite, to be more accurate, one would state their own REWRITING of statutory law).

            A point to remind J. Doerre, is that the AIA was NOT aimed at eligibility, so its passage does not interfere with the longer running SERIES of cases that the Court has used to rewrite statutory law.

            The Lorillard case is only a presumption – not an iron clad rule.

            Further, what Congress has done or has not done is not impacted by the Court choosing to use the Kavanuagh Scissors of their own accord.

            I am NOT saying that the Court will find the gumption (and the humility) to recognize its own bad actions, and to self-impose a correction on those bad actions.


              Is the “Kavanaugh scissors” idea that (1) the Supreme Court should start reading 35 USC 101 literally and discard the exceptions as atextual and thus illegitimate, and (2) the face-saving excuse for doing this in 2021 is that decades of atextual precedents have made subject-matter eligibility incoherent in a way that requires some type of reset (or in anon’s parlance, a gordian knot that can’t be untied so it must be cut)?


                The Kavanaugh Scissors is not a “should start” per se, and more of an admission that past actions were improper (those actions creating the Gordian Knot), and employs a mechanism to rescind the mess, and thus cut through that Gordian Knot.

                The view of “should start” implies that the mess of the Gordian Knot is not being (fully) acknowledged.

                It is not enough for the Court to say “Moving forward, we will…”

                The use of the Scissors requires the Court to admit to having pushed their fingers into the nose of wax of patent eligibility law.

                But it IS a way for the Court to take care of the mess that IT created.

                It is not the only way.

                A more brutal way would be to break the fingers of the Court by pu nc hing the Court in its Nose of Wax (much more like what happened in 1952), but this time, having Congress couple any resetting with Congress employing its Constitutional power of jurisdiction stri pp ing (as hearing patent appeals is NOT a matter of original jurisdiction of the Supreme Court, Congress CAN bar the SC from patent cases, as long as Marbury is maintained with the presence of AN Article III court in the loop).

                1. It makes perfect sense if you understand the general topic.

                  Perhaps the ‘not making sense’ is your own internal lack of appreciation of how the various branches of our government were constructed (noting that OUR system was intended — across the board — to be a government of limited powers).


                The S.G.’s brief in Vanda offers a more realistic approach to ditching the exceptions. My recollection is that the government wants (wanted?) to abandon the characterization as implicit exceptions and return to interpretations of what qualifies within each of the statutory categories (e.g., business methods may not qualify as a process).

                Personally, I think the government does a great job of highlighting issues with the current approach, and narrower interpretation of the statutory categories may make sense in some instances (hi business methods), but I am not sure that this approach would completely address the concerns addressed by the implicit exception.

                The impossible question seems to be: if you discover a new ineligible concept, can you patent a non-inventive, practical application of that newly discovered ineligible concept? Many understandably and reasonably want the answer to be yes for methods of treatment with a drug applying a newly discovered natural law, but no for methods in electronics or computing applying a newly formulated mathematical formula as in Flook. I’m not sure that anyone is wrong to want those results, but it’s tough for the current two step framework to provide for that distinction. Right now, step one is being leveraged by the Fed. Cir. to reach this result, but it is not clear this was intended by the S. Ct.

                1. Torturing the plain words of 101 in order to “constrain” business methods as falling outside of “process” (or method) is a direct affront to what Congress did in 1952 vis a vis 35 USC100(b).

                  Here, J. Doerre, you appear to be trying too hard to reach a desired Ends.

                  Further (as I have OFTEN chided Paul Cole), the language of the Court does NOT lend itself to what you are attempting to do here.

                  It is the Court that has used the characterization of “exception,” and that necessarily carries its implications (much more than any merely ‘implicit’ ones).

                  Briefs – by ANY interested party – simply do not have the authority to change that which the Court has provided.

                  The basics of what innovation is – in and of itself – simply are not constrained as those WANTING desired Ends can achieve.

                  This is precisely why what the Supreme Court did (and NOT an item that lays at the feet of the CAFC) cannot be contained to ‘business methods’ or ‘computing arts.’

                2. another try due to active filters….

                  I would also point out that the path you appear to be on IS the path that Justice Stevens ATTEMPTED to pull off in his swan song.


                  in no small part, because the majority of the Court recognized that the Court would have had to ACTUALLY REWRITE direct words of Congress vis a vis the limited ability TO challenge business methods already in the statutory words of Congress.

                  IF – as you seem want to do – business methods simply did not fall within Methods, THEN the full weight and section of selected opportunities to challenge business methods would have been surplusage, in v10 lat10n of statutory construction.

                  This is why Stevens L0ST his majority writing position (which was initially provided so that he could have his ‘bookend’), and ended up with an concurring opinion that READS as a dissent.

                  (plus, I actually confirmed this with a personal tie to the inner workings of the Court at that time)



                So who exactly ever gave that impression?

                By the way, the post is the second response to post (which is my post). Unless you flubbed your reply — always a possibility — then YOU are posting here TO me.


                …and this restores your different thread count of game playing back up to 14.

                Fourteen separate active threads that you are cyber-stalking me on.

      1. 4.1.2


        You missed my point (not the other way around) and are very incorrectly interpreting what I said. I never said there should be a consensus on 101 or that one would be a good or necessary thing or that there needed to be one. I just said that these particular group would never come to one. That is spot on correct. Your comments after that about whether so-called “Efficient Infringers” want changes in the law illustrates my point. Pharma companies want very strong laws while many in Big Tech don’t. The question as to whether or not the fix should be done by the SCOTUS or the Legislature is different. I have little faith in judges with no technical training (that’s most of the Fed Cir and all the SCOTUS) as to their ability to resolve this kind of issue. At least with the Legislature, they get input from people who actually understand and deal with different technologies. That doesn’t mean they would come up with a good answer; it just means they will at least have a better chance of coming up with one.



          So you are saying that there is more that we agree upon than disagree.

          That being said, perhaps you are missing my counter point in that patent law is NOT designed to be selective between different art areas.

          Playing the “divide and conquer” game is something that is NOT to be tolerated.

          This comes from a larger understanding of just what innovation is of itself (as opposed to ‘innovation within ANY specific art unit’).

          When you assert that Big Tech does not want strong patents you ERR in thinking that the MONIED (established) interests in Big Tech may rightfully dictate innovation protection policy in that art area.

          That’s a huge mistake – very much akin to handing the chicken coop over to the foxes to maintain.

          Innovation – in and of itself – dictates very different reasoning than you seem to be adhering to. There is NO bartering or “consensus” that SHOULD be being aimed at (with the types of people being portrayed as necessary players to any such consensus).

          This is why I provided the notion of a Trojan Horse in the p01s0n pill aspects that made their way into the efforts led by Tillis – and why Congress as a body has NOT been able to be effective – there is simply TOO MUCH capture of Congress by the Voice$ of juristic persons.

          And this is why your last sentence, while true in theory, has NOT delivered.

  3. 3

    I don’t think this is a good case for 101 because I think the claims are invalid under 103 by the reasoning used at the EPO.

    1. 3.1

      that or 112 (though that might be what makes it exactly a good case for 101). you do have to feel bad for american axle here, because there is a good chance they will argue it up to scotus, get it remanded, and it will just fail on 112 and/or 103 instead. half the amici (and moore’s dissent) seem to hint “this should be invalidated under 112, not 101.” have to wonder why american axle is spending this money (if they are the ones spending it at this point)

      1. 3.1.1

        Yeah. I kind of vacillate on whether it is a good or bad case based on the claims being invalid for other reasons than 101.

        The CAFC definitely just pulled 101 out of their pocket to invalidate the claims and they did it because the EPO rejected the claims with new art.

        I don’t think the claims are invalid under 112. I do think there is a strong 103 argument that is presented at the EPO as to why the claims are invalid.


          It might be a good case for that reason. If you read the file wrapper at the EPO it becomes crystal clear that the CAFC adopted the reasoning of the EPO and fitted it into a 101 argument to invalidate the claims.

          They used the exact same argument as the EPO and if memory serves me they also pulled a new reference out of their a$$ that was not in any paper submitted to the CAFC.

          So maybe, anon, you are right. Maybe it is a good way to catch them cheating using 101 to invalidate a claim for, I guess, equity sake.


            Night, whether the patent goes down for insufficiency, or the claim is adjudged obvious, might depend on how the patent owner chooses to play the defence of the patent. If it asserts that the skilled person would know how to tune the shaft, then the claim is obvious. But what if it adduces evidence that the skilled person would not have come to the idea how to “tune” the shaft, well then the patent specification is insufficient. That’s a sort of “squeeze argument” isn’t it?

            The prosecution at the EPO advances slowly. Here a Link. Applicant has just paid for another year of pendency.

            link to


              Neither of which MaxDrei belongs under 101.

              You “politely” missed the major point here.

    2. 3.2

      Do you have a date for the relevant entry? I looked the case up on Global Dossier, but there was a LOT to trawl through.

    3. 3.3

      Night, can you expand on that point. Why should failure under 103 disqualify Axle as a good vehicle for the court to ride, on its mission to clarify the 101 jurisprudence?

      I mean, isn’t it routine practice, these days, to use 101 quickly to put out of its misery a claim that the court “doesn’t like”? I take it that what lies behind dislike of a claim is a perception that the claim signally fails to convince, as a non-obvious step forward in the direction of technical progress.

      And in that case, what better vehicle is there, to flush out the mischief, of using 101 as a short cut, than the Axle case?

  4. 2

    Have these amicus briefs in American Axle v. Neapco, besides strongly complaining, provided a tactful, rational, attractive, and mutually agreed path for the Sup. Ct. to be able to clarify or distinguish all of (or at least Alice) of its prior 101 decisions? I.e., the Court is NOT just going to hold “we were wrong about everything and we reverse ourselves on everything about 101,” as much as many would like that.

    1. 2.1

      It is a Gordian Knot Paul.

      I have provided a pair of shears (The Kavanaugh Scissors) that the Supreme Court could use.

      Further, I find your willingness to question problematic given your own reluctance to actually engage in any meaningful way on discussions that include Constitutional questions.

      All we get from you is whining and snide shots from the sidelines.

      Do you think that your own “additions” reach that level of ‘helpful’ suggestions that you demand?

    2. 2.2

      Paul: I think those arguments will be presented if the Court decides to grant cert. Here the emphasis is on convincing a Court that has denied cert in the Sec 101 issue about 50 times that they need to hear the case. Although I shudder to think what they will do if they get back into this sandbox

      1. 2.2.1

        Dr. Noonan,

        The ‘hope’ here is that when prominent members and former members of each of the three branches of government write as friends to the Supreme Court, that the Court itself in its past writings (rewritings) of the statutory law of eligibility, that the Court might stop its ‘hands-off’ tactics, and cut through the Gordian Knot that its writings have created.

      2. 2.2.2

        Although I shudder to think what they will do if they get back into this sandbox. LOL, I too. The new 3 part test (because legal ‘tests’ have three parts right?) – adding the new ‘and extra more’ third leg. Or some other such nonsense. The true fact-o-the-matter is Alice revived the old 2nd circuit “gist or heart of the invention”, “flash of insight”, “point of novelty” or other such ‘101’ tests that was specifically overturned with the codification of the ’52 Act. IMHO this is all on Breyer. It takes a big person to admit they were wrong (not going to happen) – but maybe Barrett will be the vote Gorsuch needs to put the ’52 Act back on the books – as written.


          Nabbed by the count filter, but most definitely worth the possible repeat:

          + 1


    3. 2.3

      Paul’s whiny and snide shot from the sidelines is noted — as is my post above this morning that provides a second “ tactful, rational, attractive, and mutually agreed path

      Well, at least “ tactful, rational, and attractive path” — it is exceedingly unclear what Paul “wants” with a notion of “mutually agreed,” as that term appears to want to appease Efficient Infringers who have NO stake in actually fixing the mess of 101 (and reminds me of the only-too-willingness of wheeling a large wooden horse within the city gates approach of coupling any fix of 101 with traps to somehow appease and reach a FALSE sense of “mutually agreed.”)

      Paul likes to declare by fiat that these shared ideas are somehow ludicrous, while never actually engaging on the merits, or getting into the trenches himself.

      He is worse than a bloody coward.


            Can they bleach the blinds while they are at it ?

            You still missed one, Hall Monitor.


              Here (again) the connotation of your response is simply odd.

              Not sure what you mean to intend with “bleach the blinds,” as this seems a p00r reach at word play at threads being scrubbed.

              Are you not aware of what “threads being scrubbed” means in the direct context of your game playing?

              To that end, your assertion (with ad hominem attempted insult) , simply misses.

              Did you even try to understand what the message was of the Professor erases the contents of YOUR games across multiple threads was?

              Do you simply not care about anything except what YOU want to say?

                1. Not at all.

                  As I have often told you, I enjoy commenting on the blogs and do so to quite a few number of people, and on topic across many different aspects of patent law.

                  How is your rate of engaging other people on patent law matters (in comparison to any loneliness that you yourself may be experiencing as shown in your dedication to or about me)?

                2. Not at all.

                  Quite in fact, the “loneliness” jibe (along with the “bitter” jibe already addressed today), reflect YOUR meme of projection.

                  Do you not have anyone visiting you at the retirement home?

                3. You are the exposing something alright — just not what you think it to be.

                  How many children have you grabbed of late in that field of Rye that you have anointed yourself to watch over?

                4. As long as it make sense to you, Snowflake.

                  This is not meant to be mean. If you took it that way, we are deeply contrite.

                  Smelling salts?

                5. Odd reply from you, steeped in false presumptions.

                  Still not tired of the game playing – nor have you learned a lesson from the editor’s response to your game-playing.

                  Those that do not learn from history…

                6. This anon of course will not defend his or the other anons attempted lay re-definition of “cyberstalking” because of course he has no response.

                  This anon will squeal that uncomfortable questions are “game playing” or will attempt to divert with yet more made-up stuff.

                  This anon will wahh wahh wahh to management because those mean people are saying mean things about me again!

                7. What exactly do you think is necessary for this “defense” that you seem to want to assert as somehow being needed?

                  Are you going to ‘defend’ your p0 rn convictions?

                  Is that the type of false presumption game that you want to continue?

                8. Day 2 of the automated scripted “response” of “false presumption.”

                  And then thuds anon will wahh wahh wahh to management because those mean people are saying mean things about me again!

                9. As you copy the same dreary game from thread to thread, you choose here to assert “automated?” This one? This one with:

                  What exactly do you think is necessary for this “defense” that you seem to want to assert as somehow being needed?

                  You really don’t get how this works do you? You are not supposed to be trying to make yourself look bad – but there you go.

                10. Cyberstalking, Snowflake. You used another legal term you have no idea what it means.

                  Now this anon will apply the US law to the facts and show “cyberstalking.”

                  Of course, this anon will not because he cannot. Nor can any of the anons with their automated script responses. After being called out multiple times.

                  This anon thinks some of the people are fooled some of the time and thinks that’s good enough.

                  [what a maroon]

                11. As you copy the same dreary game from thread to thread…


                  Now here with your mindless game on what I have provided in view of cyberstalking?

                  (and by doing so – actually proving AGAIN my point)

                  Soooo train-wrecky

                12. Look at you go, Snowflake! Still think you can fool some of the people some of the time!

                  [what a maroon]

                13. There is nothing “apparent” that comes anywhere close to supporting the false presumption game that you are playing.

                  Are you still feeling guilty about the seven plus hours a day fixation that you have with kiddie clown p0 rn?

  5. 1

    The trio argue that the current state of patent eligibility doctrine is “an unintelligible hash” causing significant systemic problems.
    I’ve got nothing to add to that characterization.

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