Google v. Oracle and the Mixed Question of Law and Fact

by Dennis Crouch

In Google LLC v. Oracle Am., Inc., 593 U. S. ____  (2021), the Supreme Court spends a few pages walking through procedural aspects of the fair use defense.

Like many patent law doctrines, fair use is a mixed question of law and fact. The defendant’s use of the asserted copyrighted work and its impact on the plaintiff are typically factual issues that must be proven by evidence as weighed by the factfinder (often a jury). These are questions such as “how much of the copyrighted work was copied” and “whether there was harm to the actual or potential markets for the copyrighted work.” Google at 19.  However, the questions of law emerge when we are categorizing the importance of the factual findings as well as asking the ultimate question of whether the use was a fair use.

The fact-law divide comes up in various ways: Is there a Constitutional right to a jury trial on the issue; lacking that may a jury still decide the issue; does proof require evidence (as defined by the Federal Rules of Evidence) proven to a particular standard; or instead do we simply look for the ‘right’ answer; on appeal, what is the standard of review — deference or not?  Fact/Law also comes up in patent prosecution, but examiners are not charged with making the distinction and the rules of evidence don’t apply.

At the trial court this leads to the very practical question of how easily a judge can dispose of the issue pre-trial.  Questions of law are often easy to determine pre-trial; some mixed questions are also relatively easy to determine pre-trial if there is no right to a jury determination; mixed questions involving substantial factual disputes and a right to a jury trial are hard.  In patent cases, courts are regularly making pre-trial determinations on claim construction and eligibility, both of which are ultimately questions of law but that can involve underlying factual determinations.  Obviousness is another mixed question.  Although  the ultimate determination of obviousness is a question of law, it is treated differently from claim construction and eligibility.  Rather than being decided by a judge, obviousness is typically decided by a jury as fact-finder.  The difference is that obviousness typically requires detailed factual determinations that are hard to separate from the ultimate conclusion of obviousness and that are subject to a Constitutional right to a jury trial.

In deciding an issue, a district court will typically separate its analysis between findings-of-fact and conclusions-of-law. This separation is expressly required in FRCP 52(a)(1) when a judge determines the facts without a jury.  District courts also decide other substantive questions pre- and post-trial.  However, those determinations are typically purely questions-of-law.  (Failure to state a claim; Summary Judgment; Judgment as a Matter of Law).

Back to Google: Oracle sued Google for copyright infringement, and Google raised a defense of Fair Use.  The district court gave the question of fair use to the jury who sided with Google.  On appeal, though the Federal Circuit reversed and found no fair use.  Although the jury had decided the issue, the Federal Circuit gave no deference to the jury’s legal conclusions.  In its subsequent analysis, the Supreme Court agreed with the Federal Circuit’s  procedural approach of de novo review of the legal conclusions but ultimately disagreed on the substance. Rather, the Supreme Court concluded that Google’s use was a fair use as a matter of law.

One typical difficulty in the law-fact divide is that the questions are often not easily separable. In Markman, the Supreme Court called claim construction a “mongrel practice” because it is a mixed question that is hard to separate-out.  Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).   In Google, the court determined that the big questions of fair use should be treated as questions-of-law because they “primarily involves legal work.”

The Google court went on to cite Markman in concluding that there is no 7th Amendment Right to a Jury Trial on the doctrine of fair use. “As far as contemporary fair use is concerned, we have described the doctrine as an ‘equitable,’ not a ‘legal,’ doctrine.” Google at 20.  See U.S. Const. 7th Amd. (“In Suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved.”).

The Court’s general approach to mixed questions of law is explained in some detail within its 2018 bankruptcy decision of U. S. Bank N. A. v. Village at Lakeridge, LLC, 583 U. S. ___, 138 S. Ct. 960 (2018). In that case, the mixed-question was whether a creditor qualified as a “non-statutory insider.”  In U.S. Bank, the court explained that “mixed questions are not all alike.”  Some mixed questions are more like questions of law requiring an “amplifying or elaborating on a broad legal standard.”  Those should be treated as questions of law.  Other mixed questions require analysis of narrow facts “that utterly resist generalization.”  Those should be treated as questions of fact.  “In short, the standard of review for a mixed question all depends—on whether answering it entails primarily legal or factual work.”

For the fair use analysis in Google, the court followed the U.S. Bank standard and determined that the fair use questions at issue in the case were primarily legal and thus should be reviewed de novo on appeal.

Bringing all this back to patent law, I don’t see anything in this analysis to disturb our current approaches to obviousness, claim construction and eligibility.  But, both Google and U.S. Bank are clear that they are focusing on the particular issues in the case at hand.  It may well be that the mixed question analysis will come out differently on a different set of facts.

67 thoughts on “Google v. Oracle and the Mixed Question of Law and Fact

  1. 5

    Talk about legal gymnastics to let Google off the hook. How in the world is it “fair use” to copy someone else’s source code for your monetary gain? Under this opinion, it’s now “fair use” to copy source code so long as you transform its use to another application. I wonder how this crazy kangaroo court will rule when someone else copies Google code to make another software product. Will this case also work against Google by allowing programmers to now copy Google code for their own products?

    1. 5.1

      I wonder about the open source licenses based on this opinion.

      Maybe you can just copy open source code and incorporate it into your commercial product.

      1. 5.1.1

        I think open source code is no longer protected by this. At least you could copy the APIs and then maybe just fill in or rearrange the other code.

        Have to think about it but I think the open source license falls with this. Just delete the license and incorporate the code. At least you have a good argument that under Oracle that it is fair use to take all open source code and incorporate it into a commercial product with no notice.


          What would be the pushback? business tort?

          Let’s not forget the underlying fact pattern here is that Oracle and Google were in contract negotiations prior to the pullout by Google and the subsequent, “Screw you, we are just going to copy” stance.

          You may be onto something as to the veritable demise of open source. Would love to hear from the ardent open source folks (other than the predicable ‘the decision only applies to the facts of that case — as the reasoning certainly carries well beyond the particular facts).


            I think Dennis should think about asking someone who knows a lot about open source to discuss this.

            I’ve advised a few client about open source. Basically it is a pain for businesses as their software engineers use the open source but selling the software with open source incorporated into it is forbidden.

            But I think now maybe just delete the open source license. Just take the software and assume it is not copyrightable anymore. Probably too extreme a position but the advice would probably be to delete the license and take the APIs and have the software engineers re-write a bit of the code.

            But this is potentially huge.


              Hmm, I wonder if an action of changing (by deleting, say, deleting that very open source license restriction) would in and of itself be considered “transformative.”

              One can certainly say that ‘transforming” and now making bucks without restriction surely is “liberating,” eh?


              IIRC, the code that Google used was open sourced under the GNU /GPL. The purported violation was the existence of competition between Oracle and Google.

              Much of the litigation I am aware of involving open source are state court contractual matters.


                Much of the litigation I am aware of involving open source are state court contractual matters.

                That’s in the crosshairs now, isn’t it?

                As pointed out, this started out as an attempted contract negotiation, until Google simply said, “screw your, we are just going to take it.”

                The impetus to even approach “contract” has been kicked on the teeth.

                This may be the biggest addition to the court-induced “profanity” that copyright has even seen.

                (and I am not seeing a Sonny Bono Mouse Savings here)

  2. 4

    As a predicate, there are very few eligibility issues with machines, manufactures, or compositions of matter. The trouble is almost entirely located in processes (methods).

    Abstraction has not been legally defined- the current situation is that a such key word in judicial doctrine is surely unconstitutionally vague; almost a pure example of legal “knowing it when they see it”.

    The vernacular meaning of abstract is that of something intangible, but the Bilski court said that mere intangibility cannot preclude eligibility, and that makes sense. The Latin root of the word abstract is abstrere, which means “to draw away from”. To me, abstraction clearly reflects some relationship between information and human minds. No human mind, no abstraction.

    If inventions and claims are distinguishable, it stands to reason that inventions must not be abstractions. All claims are abstract, because they are made of words. Ironically, they must be perfected abstractions sufficient to instruct PHOSITA to make or use the invention.

    What is it that renders an invention abstract, and thus ineligible, or claims sufficiently non-abstract to function as legitimate descriptions of inventions?

    In my view, it’s ultimately the nature of the novelty and utility in the invention, which turns on the consumer of information if the useful result of the invention is nothing but information. In the claims, its the sufficiency of the words and the identity of the PHOSITA. They are two different inquiries but they follow the similar paths to resolution.

    1. An abstract invention can contain non-abstract (and abstract?) claims?

    Yes and no. Abstract inventive subject matter cannot be a patent eligible invention. It can be new, fully described, and useful, but still ineligible. The claims may be entirely sufficient to describe it, which means they are not abstract claims. Abstract inventions are intrinsically abstract because their utility arises within a human mind.

    2. A non-abstract invention can have have abstract (and non-abstract?) claims?

    Yes and no. Eligible inventive subject matter can be insufficiently described, and therefore can not be an invention, but some of the claims may be sufficiently described to be non-abstract. Sufficiency of description turns on extrinsic factors: the identity of PHOSITA and the state of the art involved.

    The construction of the invention, just like the construction of the claims, is a vital step to determine the appropriate PHOSITA and the location of the novelty and utility of the purported invention. This is explicit in “do it on a computer” claims, where the art may turn on computers, or upon the art being digitized, or both.

    But its always a two-step process because intrinsic abstraction in inventions and extrinsic abstraction in claims are two different inquiries, but the relations of fact and law are identical. There should be no legal difference between a Markman procedure and an eligibility determination. Limiting 101 inquiries to 12(b)6 motions is handy, but absurd and unjust to both patentees and accused infringers.

    1. 4.2

      As a predicate, your ARTIFICAL distinction between methods and other statutory categories continues to [not succeed]** for the application of the legal term of art known as utility.

      if the useful result of the invention is nothing but information.

      Traffic lights.

      The physical nature of the item as being a manufacture still rests entirely on its utility arising from the fact of “nothing but information.”

      Innovation can and does OFTEN be expressed across more than one of the statutory categories. You are unmoored to the terrain of patent law in your Quixotic quest.

      **[you can thank the George Carlin filter for blocking a plain meaning use of better words]

      1. 4.2.1

        A new and improved traffic light gains utility by displaying a red light better, or cheaper, or whatever. It’s not infringed when a person stops at a red light. A method claim for a person stopping when they see a red light may be new, useful and fully described but should not be eligible.

        You are confusing the vehicle of a symbol (the physical traffic light) with the interpretation of the symbol (stopping when you see the light) and the reference of the symbol (everyone knowing that you stop at a red light).

        Vehicles should always be eligible- they are never abstract. Machines may consume interpretents and referents, and that should be an eligible process. Human consumption of symbols should not be an infringing act.


          I am not the one confused here over the terrain of the legal term of utility.

          That would be you.

          Hint: I used your own words of “useful result of

          You choose to continue to ignore what the impact of the patent meaning of utility entails.

          You do need to learn to get out of your own way.


            You are like a radio with no knobs. How about citing something for once tending to show your point? A case? Some dicta? Something?

            Please, let’s see some authority on the meaning of “useful” in Section 101.

            PS, a sharper knife is more useful, without reference to what it may cut.

  3. 3

    Actually, fair use (as simply non-infringing conduct and an interpretation of the limit of what Section 106 prohibits) should not be a mixed question of law and fact. Rather, it is a question of law, with subsidiary factual inquiries to avoid making an advisory opinion. The mixed question is whether (once the statute’s limits have been interpreted) the facts fall within that scope of prohibited conduct. If fair use (actually the section 106 meaning of “copy” etc.) had necessary and sufficient conditions of meaning, then the mixed question would be a matter purely of logical deduction from that meaning to the facts. That would neither be a question of law nor a question of fact, but a “tertium quid.” Since fair use does not have a meaning that can be determined by necessary and sufficient conditions, it is met by analogical reasoning. In that case, the application to the facts (the third thing of analogical reasoning) simultaneously determines the legal meaning (the question of law of what kind of conduct the statute prohibits). So the Court got it wrong, but mostly got it right. What it got wrong was suggesting that there is any role for the jury in such cases. Rather, it should be treated like inequitable conduct (and not because fair use is an equitable doctrine, and it is also not an “affirmative defense, but because the legal question must be asked in regard to particular facts) where the judge decides both the facts and the legal meaning and then does the application. So treating this as a mixed question has the judge decide only teh legal meaning and application but not the facts, which is – as they say – “just plain wrong.”

    1. 3.1

      That’s a super deep dive into the posture of the case.

      I would be interested in an equally deep dive into the Court’s reasoning on the various factors.

      At first blush, that ‘reasoning’ runs roughshod over the individual factors, and rather than applying the actual factors for their individual points, the writing appears merely to set up each factor as to be nothing but a springboard for the importation of this (nonsense) of “transformative” to merely arrive at a Desired Ends.

      1. 3.1.1

        Your point on “transformative” is profound.

        It is the type of inconsistency that arises when judges are playing the means justifies the ends game. They just make up the meaning of words for a particular opinion.


          The below is from a recent PTAB decision affirming a 101 rejection. Anyone that supports this type of gibberish is either brain dead or disingenuous. This is Lemley/Chien speak.

          >As our reviewing court held in a similar context, “communicating
          requests to a remote server and receiving communications from that server, i.e., communication over a network,” is an abstract idea. ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 767 (Fed. Cir. 2019). “‘[I]ntercepting’ traffic is itself an abstract idea.” Bridge & Post, Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 892 (Fed. Cir. 2019).


            Thanks for highlighting this decision (Ex parte Jones, no. 2020-006597 (PTAB Apr. 5, 2021). My initial inclination is that, owing to the nature of the claims, it would be an uphill battle to use this case as a vehicle to seek clarity in eligibility law, but troubling statements in a decision are always a great jumping off point to try to highlight a need for review.

      2. 3.1.2

        Actually, the Court was much more focused on each of the factors than most lower courts have been, which treat “transformativeness” as a mantra that determines fair use – or lack of transformativeness as lack of fair use. That you may not like the way the court treats those factors only goes to show again that the Court is engaged in interpretation of the statutory factors and what they mean when deciding fair use. And that is quite different from “reasonableness” or “reasonable person” judgments in common law…


          Thanks – the “not liking” has less to do with any “engaging in interpretation,” and — as I noted — the staging of individual Factors less for what those Factors ARE and more (and merely) as points to which to IMPORT the notion of “transformative” as if that single notion obliterates the Factors themselves.

          Especially since any notion of exactly what “transformative” means seems to be entirely absent. and THIS is why I invite the same level of intense scrutiny that you so nicely applied to the posture of the case.

          It is not my ‘hobby horse” of the common law “reasonable person” that is at point (that would be ksksksks’s thrust).

    2. 3.3

      How is this different than any common law principle (which fair use is) that involves a “reasonable person” or prudent person? Seems like in any “reasonable person” case, there is no list of neccessary and sufficient conditions, and “the application to the facts also simultaneously determines the legal meaning (the question of law of what kind of conduct the law prohibits),” yet these are very often considered jury questions.

      1. 3.3.1

        Because this is a question of statutory interpretation of the scope of the copyright, not a question of common law adjudication of natural law rights. And how this thread, like so many others on Patently-O, immediately gets highjacked to discussing patentable subject matter remains a mystery….


          [H]ow this thread, like so many others on Patently-O, immediately gets highjacked to discussing patentable subject matter remains a mystery….

          Ha! You are not wrong.

          Ira Glass opened an episode of This American Life decades ago by observing “I was talking to a first grader about libraries, and I suddenly found myself talking about bullies… [T]he idea of bullies… is so powerful that it can derail any conversation, and pull it towards its own orbit.” For better or worse, around these parts one can say the same thing about §101 jurisdprudence (which, come to think of it, might be fairly described as a species of bullying).


            And how this thread, like so many others on Patently-O, immediately gets highjacked to discussing patentable subject matter remains a mystery….

            No mystery: the point of the post was the nature mixed questions of fact & law, and the most salient, everyday current & difficult example is eligibility.


          Well, I will admit to BOTH being a part of that diversion, as well as meeting your point with a call to move from the detail that you provided on posture to the more meaty aspect of the content of the analysis of the Factors themselves.


          But fair use arises out of the common law, and pre-existed statute. It’s existence was recognized in statute, but its limits were not codified but intentionally left to common law.

          So if a statute says: “This statute is not intended to modify rights provided by common law” (like if a statute addressing medical procedures says: “This statute is not intended to displace negligence claims for medical malpractice”), that the statute therefore changes a jury question into one of statutory interpretation / question of law?


            Actually, fair use comes out of fair abridgement, which was always an interpretation of the scope of the statutory copyright. But the idea that it is of common law origin, or that it is a defense, is a common mistake. Same with experimental use. Both were created by Justice Story as simply determining that the statute did not prohibit the kind of conduct at issue. But people view that as a defense because “copying” or “making/using” still occurs, even if it was not the “kind” of copying or making/using that was prohibited by statute. Go read Folsom v. Marsh and Whittemore v. Cutter if you think otherwise.


              Thanks professor. guessing i fell into the “common mistake” of thinking fair law arose out of common la ( which appears to be so common that it is verbatim repeated in various circuit court opinions).


                Courts and commentators get this stuff wrong all the time, and mischaracterize precedent all-too-frequently. Fair use became a “defense” based on its characterization as such in Nimmer’s treatise, which courts then cited and it became the law in practice. Which is why mistakes like this need to be perpetually called out as mistakes.

                1. … in alignment with another comment on another thread in which the direct words of a case distinguish over the cited treatment in Nimmer, as suggested by ksksksks.

                2. anon, to be clear, its not just nimmer. a lot of respected commentators treat fair use as natural law doctrine. Here is L Ray Patterson who, at leats back in my law school days, was the constitutional scholar on fair use.

                  “It is clear, however, that the positive law theory of copyright created the conditions that led to the development of the doctrine of fair use, a natural
                  law doctrine”.

                  “The fair use doctrine was (and
                  remained) a natural law doctrine attached to copyright, which was (and remained) a positive law concept”

                  link to

                  I trust this might not be right, but its not (just) Nimmer that pushed it

                3. Fair use did not become a defense simply because of Nimmer’s treatise. The highly-influential House Report (94-1476) and Senate Report (94-473) to the 1976 Copyright Act both expressly refer to fair use as a “defense” in their commentary about Section 107. You’ll find many federal cases well before the 1976 Copyright Act referring to fair use as a defense.

                4. Thanks both ksksksks and LR.

                  The jstor article only provide a page 1 preview, so I really cannot speak to what it may have overall been sharing.

                  The fact of the matter though is that the patent clause (which controls both patents and copyrights) is explicit in the legal foundation of these intellectual property protection mechanisms.

                  For example, there is no doubt that patents have a sense of personal property that CAN be traced to the sense that the author indicates as “plenary” or “common-law” like. That changes nothing though about the drivers of ACTUAL property of patents and such.

                  A way of looking at this is recognizing the Lockean nature, recognizing the initiation of the (later) full legal property right as being an inchoate right of the inventor (for patents). The Constitution explicitly dictates which branch of the government controls (and has sole authority – unless explicitly shared, as known for other explicitly demarcated powers) the law.

                  Views that Common Law grants ‘authority’ to another branch (and especially in an unbridled manner) is a direct affront to the Separation of Powers doctrine.

                  This is NOT to say that all matters that had split origins are treated the same – a clear example would be trademarks.

                5. Lode Runner – you are correct that there are references to fair use being a defense before Nimmer, including in the legislative history of the 1976 Act. But that courts and legislative history have misunderstood Folsom and what it held does not make their dicta “precedent” or “law.” Again, read the posted language from Folsom and ask how the holding was creating a “defense” rather than just defining what conduct the Act (at the time, and not as common law) prohibited?

      2. 3.3.2

        How is this different than any common law principle (which fair use is)

        The Court explicitly treats this differently ksksksks – it is they that tethers this directly to the statutory framework.

        And to answer your question as to how is this different, the Constitution itself allocates sole authority (that is, Common law law writing that is more than mere ‘interpretation’ – when such is needed) to a single branch of the government – and that branch is not the Judicial Branch.

        For matters of law then that deal with Article 1 Section 9 Clause 8, any such ‘principles’ are necessarily constrained by the Statute – as written by Congress.


          Actually, it is the Court in Erie and not the Constitution itself that allocated sole authority to Congress to establish rather than interpret law. Under the 1842 case Swift v. Tyson, courts (in diversity jurisdiction) could fashion federal common law (and the constitution itself made such diversity jurisdiction the allocation of that lawmaking power to the Courts, although Congress had to create lower courts to effectuate the constitutional authorization to hear diversity cases, rather than have state courts decide those cases subject to Supreme Court appellate jurisdiction).


            Meh, we may have to agree to disagree on the foundational aspects of Separation of Powers (especially since in the present instance, the results either way are in alignment).

            Article I Clause 8 Section 8 is very real and very much demarcates authority as I have stated.

            And yes, there is a very real difference between Common Law law writing and Common law interpretation.


            City of NY v Chevron a few days ago had a pretty nice overview of federal common law.

            “But Erie was not a death knell to all federal common law. So what are these “few and restricted” issues that demand the existence of federal common law? Wheeldin, 373 U.S. at 651. They “fall into essentially two categories: those in which a federal rule of decision is necessary to protect uniquely federal interests, and those in which Congress has given the courts the power to develop substantive law…”

            link to

            Fair use certainly seems to fall into one of those two categories. I question treating fair use at statutory interpretation rather than common law…


              I’ll just quibble with your use of the term “certainly.” Again, read the cases that created fair use and ask whether the courts seemed to be exercising delegated legislative authority or only interpreting the meaning of the limits of the statutory prohibitions….

                1. PS – from Folsom v. Marsh:
                  “Thus, for example, no one can doubt that a reviewer may fairly cite largely from the original work, if his design be really and truly to use the passages for the purposes of fair and reasonable criticism. On the other hand, it is as clear, that if he thus cites the *345 most important parts of the work, with a view, not to criticise, but to supersede the use of the original work, and substitute the review for it, such a use will be deemed in law a piracy…. I hold, that the author has a property therein, and that the copyright thereof exclusively belongs to him…. It appears to me, that the copyright act of 1831, c. 16, ß 9, [4 Stat. 436], fully recognizes the doctrine for which I contend. It gives by implication to the author, or legal proprietor of any manuscript whatever, the sole right to print and publish the same, and expressly authorizes the courts of equity of the United States to grant injunctions to restrain the publication thereof, by any person or persons, without his consent.” And since there was no common-law copyright at the time, the right could only be a matter of statute as to what it prohibited. The later commentators (Ray Patterson’s generally fine analysis) notwithstanding.

  4. 2

    Fact/Law also comes up in patent prosecution, but examiners are not charged with making the distinction and the rules of evidence don’t apply.

    Ah, but treatment of facts (i.e., APA; Berkheimer; etc) DO impact examiners.

    1. 2.2

      With respect to any potential need for examiners to worry about the fact/law dichotomy, it is worth noting that the Board reviews both examiner factual findings and examiner legal conclusions de novo. See Ex parte Frye, appeal no. 2009-006013, slip op. at 10 (PTAB Feb. 26, 2010) (precedential) (“the Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue.”)

  5. 1

    I don’t see a principled distinction between eligibility and claim construction. In eligibility, the judge must construe the relation of novelty and utility of an invention to persons making or using the invention, in claim construction, the judge must construe the meanings of the words to persons making or using the invention. Very similar undertakings….

      1. 1.1.1

        The law says: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter”

        Grammatically, the “and” is non-ambiguous- the invention must include both, and new means something different than useful.

        It goes to this notion that inventions and claims are distinguishable. That’s why we have a problem with just one kind of abstraction. Abstract inventions are different than abstract claims- yet the judicial exception(s) do not currently reflect that reality.


          “Abstract inventions are different than abstract claims”

          Interesting Martin.

          So would you say:

          1. An abstract invention can contain non-abstract (and abstract?) claims?

          2. A non-abstract invention can have have abstract (and non-abstract?) claims?

          Is the name of the game . . . really the claim?


            I am wondering what Court-decreed definition of “abstract” it would be that Marty is using.

            Oh wait, the Court has not bothered giving one.

    1. 1.2

      Eligibility and claim construction: very similar undertakings, you suggest, Martin. But I’m wondering if there is an important law/fact distinction, nevertheless.

      My first question is whether it is ever possible for a court to rule on the eligibility question without first going through the exercise of construing the claim. If so, eligibility and claim construction are not inextricably linked and doomed always to be taken in sequence.

      I presume that in the USA claim construction involves an enquiry into what understanding of each claim element the notional addressee would ascribe to that element. That to me seems to be more a matter of fact than of law. Like in the obviousness determination, one is invoking the notion of a PHOSITA.

      But is there any corresponding role for the PHOSITA when the court addresses eligibility? Martin, you state that:

      “..the judge must construe the relation of novelty and utility of an invention to persons making or using the invention..”

      but the judge can do that, perhaps, without needing to interrogate the PHOSITA.

      And if so, well then perhaps eligibility could be seen as a matter only of law and not of fact, ie qualitatively different from the business of construing the claim.

      1. 1.2.1

        A quick point here:

        Eligibility is sometimes mired (through the legal term of art of “new and useful” to invoke in 35 USC 101 that which Congress purposefully broke apart and put into its own sections of 35 USC 102 and 35 USC 103.

        There are then but two substantive sections to 35 USC 101 — and both were always meant to be rather low bars. Those sections are:

        1) does the claimed innovation fit into at least one of the statutory categories; and

        2) is the utility of the innovation of the type that reflects the (purposefully wider US Sovereign choice of) Useful Arts.

        All else is muckery and chicanery.


          Wider, you say, anon. Of course I understand what you are alluding to but if with your comment you intend to spark a dialogue with others, why not set out for them what what you mean by “wider”.

          I guess what you want to declare is that “useful arts” covers more subject matter than does the GATT-TRIPS definition of what’s eligible, namely “all fields of technology?


          So when they left “new and useful” in the statute, they meant to do it so that some future Internet commenter could just waive it away. Of course.


          Interesting that you introduce the term ‘innovation”. Is the claimed “innovation” different from the claims, or from the claimed “invention”? How do I separate the innovation out from the rest of the claims/ invention? If, by, innovation, you mean the novelty that underlies the claim, then you have pretty much described current court practice.

          The hard part is identifying the innovation from the invention. “I claim an oil rig located in [non-obvious location where i just discovered oil].” Is the innovation a new oil rig (clearly passes your step 2) or is it discovery of oil (clearly doesnt pass your step 2). How do you determine the “innovation” if you dont examine what is conventional and routine? Then doesnt that bring you right back to where we are, which you hate?


            Not at all – we have already gone round the merry go round of your ‘example’ of finding oil which only muddies the water by introducing “discovery.”

            As I recall, the last time you wanted to go down that path, I provided a context under which ‘discovery’ could be explored without such ‘muddying,’ but you declined to venture further.


              Last I remember, I asked the straightforward question of whether you thought such claim should pass 101, and you wouldnt answer. Ill take al ink if you have one.

              But anyway, back to the thread at hand– why do you make reference to “innovation” and what do you mean by “innovation”? Is it just the invention, and if so why did you use another word?


                Your memory is off, as the inclusion of “discovery” is no small matter. I will have to see if I can find the link. I do keep certain links (for example, to deal with certain posters that like to shift among historical pseudonyms), but generally, have not had such issues with you. We may disagree, but I sense that your intentions are on the up and up.

                As to the us if the word innovation – that’s a bit of anti-patent profanity, and having just penned a few apps, the terminology is fresh on my mind.

                1. i think my other computer goes by vortex or something. the point of the example isnt to show distinction between discovery vs invention, but rather to show the distinction between invention (or discovery) and the claims…. somehow you have to extract the acutal invention/discovery from the claimed subject matter

                  (but re:discovery, you could characterize a lot of diagnostic processes, or math processes as in the latest stanford case, as “discoveries” rather than inventions.. but that doesnt really change the point here).

                2. Also, its interesting you think I “discovered” an oil rig. (unless you are looking beyond the words of the claim to the discovery that “underlies” the claim, but I know you wouldnt do that)

                3. The discovery portion is certainly not the claim element of the oil rig, but rather the claim portion of the location of the rig.

                  As I noted last time, your ‘hypo’ is marred because you are dragging in other complicating items.

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