Supreme Court Refuses to Reconsider its Patent Eligibility Doctrine

by Dennis Crouch

As its final act for the 2021-2022 term, the US Supreme Court has denied certiorari in the pending patent eligibility cases of American Axle v. Neapco and Spireon v. Procon.

The Patent Act expressly lists four categories of patentable inventions: “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.”  35 U.S.C. 101. This language is almost identical to the list created for the Patent Act of 1790.  The Supreme Court added further atextual caveats — no abstract ideas; laws of nature; or natural phenomenon.

142 thoughts on “Supreme Court Refuses to Reconsider its Patent Eligibility Doctrine

  1. 15

    Here is a report from a couple years ago that shows every district court decision on Alice motions. The number of decisions on 101 pales in comparison to the tens of thousands of patent cases where the issue wasn’t even raised.

    link to gibsondunn.com

    MIC DROP x2

    1. 15.1

      tens of thousands of patent cases….

      How many patent cases do you think there are each year? (and how many of those are merely artificially inflated counts due to the AIA?)

  2. 14

    “It’s Time to Give Up on the Charade of U.S. Patent Protection: Most Patents are Now Officially Invalid under American Axle”
    By Gene Quinn on Jul 06, 2022.”
    Typical hyperbolic over-reaction for those, including writers for the Solicitors brief, ignoring the clear responsive party brief’s explanation as to why American Axle was not even an appropriate case vehicle for attacking Alice-type claim unpatentability because that was not the basis of the decision below.
    P.S. I’m still waiting for someone to publish actual statistics on what percentage of patents sued on are actually finally invalidated by either the Alice-type or [the distinctly different] Mayo-type. The former may be significant, but no way “Most.”

    1. 14.1

      I’m still waiting for someone to publish actual statistics on what percentage of patents sued on are actually finally invalidated by either the Alice-type or [the distinctly different] Mayo-type.

      I am also still waiting for such statistics. Precisely because we are waiting for such statistics, however, is it not premature to assert that “[t]he gigantic majority of claims are not even challenged under Section 101 in litigation.”

      1. 14.1.1

        Here’s an article from 2020. link to akingump.com

        It shows that in 2019 there were 99 motions to dismiss based on Alice. 38 were granted. That means that there were many thousands of patent cases where an Alice motion wasn’t even attempted.

        MIC DROP

        1. 14.1.1.1

          Here is a report from a couple years ago that shows every district court decision on Alice motions. The number of decisions on 101 pales in comparison to the tens of thousands of patent cases where the issue wasn’t even raised.

          link to gibsondunn.com

          MIC DROP x2

          1. 14.1.1.1.1

            PEOPLE USE SOME COMMON SENSE. If the majority of litigated patents were invalidated under Section 101, there would be 30,000 opinions invalidating claims on that basis. Instead there’s maybe a few hundred.

            1. 14.1.1.1.1.1

              Based common sense haver.

        2. 14.1.1.2

          Thanks. That speaks to the point. I am obliged for your follow-up.

    2. 14.2

      I think gene Quinn’s just trying to sell newspapers, as they used to say.

  3. 13

    Fresh from my successful prediction of no cert. in America Axle, I have another prediction to make. I predict that the Court took cert. in Moore v. Harper so that they can drive a stake through the heart of the “independent state legislature” theory now, well before the 2024 election.

    I expect that the Chief Justice does not want three months of court challenges winding their way up to his bench in 2025 before the 2024 results can be certified. He wants to get this out of the way now, before it can be weaponized in a fraught circumstance.

    1. 13.1

      The Supreme Court took cert in Moore v. Harper on a different subject – who gets to decide congressional redistricting, state legislatures or their state courts based on state constitutions? It is not about state legislators overruling votes, albeit the conservative justices “independent state legislature” theory may apply to both. Specifically, the North Carolina Supreme Court’s Feb. 4 order and Feb. 14 opinion invalidating the North Carolina General Assembly’s original congressional redistricting map, and the state trial court’s order mandating use of their judicially created map in the upcoming midterm election.

      1. 13.1.1

        Which has better odds:

        a) the Supreme Court avoids a Constitutional question (seeing as the Constitution provides the power to State legislatures and NOT State courts); or

        b) Paul avoids any substantive discussion on Constitutional law matters

        1. 13.1.1.1

          Anon, feel free to add to your [and a few others] well-documented perfect record of dozens of predictions over the years that the Sup. Ct. would strike down IPRs and the entire APA, by now venturing even further afield into election law. I simply provided basic facts of Moore v. Harper, which is vastly more useful than any personal predictions.

          1. 13.1.1.1.1

            Vastly more useful?

            Stop patting yourself on the back long enough to realize that mere facts are available for anybody to reach.

            You really add nothing to a conversation of either how the court will rule or (perhaps more importantly) how the court should rule.

            But you be you and stick to that (mindless) cheerleading role.

      2. 13.1.2

        The Supreme Court took cert in Moore v. Harper on a different subject…

        Sure, but if they rule for the appellee on the grounds that state legislatures are subject to their respective state constitutions, that still sends the message to poll works and state governments that it is not necessary to wait on the ultimate vindication of every wild-hare election challenge predicated on a kooky interpretation of Art. I, §4 and Art. II, §1.

        1. 13.1.2.1

          “state legislatures are subject to their respective state constitutions”

          Cold comfort when we know there are states controlled by fascist pigs who want to take society back to the early 19th century (at least).

          1. 13.1.2.1.1

            Translation: “How dare the people vote for themselves. Don’t they know the Far Left knows what’s better for everyone?”

            Might be pertinent to quote Jane Fonda at this point. you remember that quote, eh Malcolm?

            1. 13.1.2.1.1.1

              Of course bro, you wouldn’t want people to be allowed to vote or anything like that. Not that voting has much to do with policy determination in the country anyway.

          2. 13.1.2.1.2

            “Cold comfort when we know there are states controlled by fascist pigs who want to take society back to the early 19th century (at least).”

            Holy based. Love it when leftists bust out “fascist” to mean the exact people that defeated fascism when it was an actual thing.

            1. 13.1.2.1.2.1

              Malcolm’s tendency of “one-bucketing” just does not work when one realizes the plain historical fact that — by far — the worst of authoritarianism over the last two hundred years has been LEFTIST authoritarianism.

              But why let facts get in the way of his rants? (he never has)

            2. 13.1.2.1.2.2

              Love it when leftists bust out “fascist” to mean the exact people that defeated fascism when it was an actual thing.

              It is estimated that—nationwide—there are only ~240,300 U.S. veterans of WWII still alive. They are all north of 80 years old (most north of 90). I am dubious that even a single one is serving in state government anywhere in this country, although I would naturally welcome correction if I am wrong about that. Which “exact people” have you in mind?

              1. 13.1.2.1.2.2.1

                “Which “exact people” have you in mind?”

                The exact people in america living in the societal construct in place in the 40’s derp derp. That is, the social construct of those people and their societal setup/rules. Aka abortion is banned in a whole lot of places if not all, and on down the line of issues that are leftist hotpoints which were switched around after 1960ish. Although yes, those that are still literal alive humans and who never reformed during the 60’s+ in terms of their beliefs count as well.

                1. “Ok, so not “the exact people.””

                  Um no, it actually is the exact “people” (though not the individuals making up that people who were alive at x date) in a societal manner of speaking. This is in a very literal sense, though not the literal sense that you are understanding it to mean. It’s using the term “people” to mean “a people” (a people which continue through the generations) not “a specific set of individuals alive at x date”. Although it’s often used to literally describe the actual individuals alive during the 30’s/40’s in the US as well in this context.

              2. 13.1.2.1.2.2.2

                Lets say you were 17 when you joined the infantry on 4/1/45, barely made it in. You’da been born around ’28, so they’re all in their 90’s !! Some lied to get in. didn’t Audie Murphy get in when he was 16 ?

                1. “Some lied to get in.”

                  Pretty sure my granddad lied to get in as well, but to this day I’m not sure why. Either that, or he hit right at the 17/18 cutoff line.

    2. 13.2

      I hope you are right. If not, then see Thom Hartmann article.

  4. 12

    From link to en.wikipedia.org

    ———-
    Joseph Story (September 18, 1779 – September 10, 1845) was an associate justice of the Supreme Court of the United States, serving from 1812 to 1845. He is most remembered for his opinions in Martin v. Hunter’s Lessee and United States v. The Amistad, and especially for his magisterial Commentaries on the Constitution of the United States, first published in 1833. Dominating the field in the 19th century, this work is a cornerstone of early American jurisprudence. It is the second comprehensive treatise on the provisions of the U.S. Constitution and remains a critical source of historical information about the forming of the American republic and the early struggles to define its law.
    ———

    and

    ——–
    Story’s opinion in Martin v. Hunter’s Lessee (1816) was profoundly significant before Story ever so much as addressed the issue explicitly. The manner in which Story framed the American republic is profoundly indicative of his philosophy.

    Story noted, “The Constitution of the United States was ordained and established not by the States in their sovereign capacities, but emphatically, as the preamble of the Constitution declares, by ‘the people of the United States.”
    ——-

    SCOTUS has become The Enemy of the People.

    1. 12.1

      Wikipedia, eek. I haven’t looked but wouldn’t be surprised if the wiki article doesn’t even mention Swift v. Tyson. My understanding is that one set the stage to ensure access to Art. III courts even in the absence of allodial money, and it stayed that way until Erie RR. v. Tompkins.

    2. 12.2

      Justice Story was one of the three greatest American patent law thinkers (alongside Judge Learned Hand and Judge Giles Rich). Probably his best patent opinion was Earle v. Sawyer, 8 F. Cas. 254, 256 (C.C.D. Mass. 1825), where he wrote that “the degree of positive utility is less important in the eye of the law, than some other things, though in regard to the inventor, as a measure of the value of the invention, it is of the highest importance.”

      1. 12.2.1

        iirc it was Pres. Madison who put Story on the bench, when the latter was in his early thirties, but only after a couple other candidates didn’t pan out for reasons I don’t think related to their suitablity, merely circumstance of the time. I think it was Madison who said something along the lines of “you have to interpret the Const. in context, otherwise you get a bstrdzidzed interpretation” quoted loosely. It is the same with that time in the nation’s early history when State judges thought little of the fed judiciary. Carving out just how much maritime law to permit onto land, under the authority of the (oh gawsh, what year) Judiciary Act, it was a huge question for many at the time. But…. the merchants of New England could not be ignored, and more protection for those interests was needed. A big balancing act. Swift vs. Erie RR is the hugest contrast and evidence of so much, changes, few I think in the mainstream have appreciated, until more recently. What a hot topic, when combined with 14th amendment, the slaughterhouse cases. Swift v. Tyson lasted 96 years, and the nation saw such growth in terms of the technology in the minds of the scientists and others. The 1928 Court upheld Swift but by the time 1938 came around, iirc 3 of the judges had been replaced and in one fell swooop, Swift was toast. When’s the last time you saw anybody cite anything from Am. Jur. in any proceeding ? appreciate your writings

        1. 12.2.1.1

          Another enjoyable one Chrissy – thanks.

      2. 12.2.2

        “the degree of positive utility is less important in the eye of the law, than some other things”

        mmmm so all utility is not monolithic in degree or nature…..

        no sheeet Sherlock

  5. 11

    In addition to lack of detailed information sufficient to support the relevant claims under 35 USC 112, the claimed invention is of doubtful novelty/inventive step over DE-A-3632418 (BMW) which was not cited against American Axle either in the US or before the EPO but whose relevance is self-evident. We are perhaps fortunate that the Supreme Court did not grant certiorari in relation to such a weakly patentable invention.

    1. 11.1

      the claimed invention is of doubtful novelty/inventive step over DE-A-3632418 (BMW)
      Nothing personal, but I highly doubt you even understand the invention, the claims, or the prior art. If the art was that good, it would have been cited.

      We are perhaps fortunate that the Supreme Court did not grant certiorari in relation to such a weakly patentable invention.
      Perhaps you don’t understand how US law works. Whether the invention is ultimately deemed not-invalidated by prior art has nothing to do with the issue under 35 USC 101. The Supreme Court oftentimes isn’t the final say in the matter. Rather, they may say … “this is the law — now you lower courts apply it to the facts.”

  6. 10

    Frankly, I would have been a bit surprised if they took it on. I had hoped that they would, but this wasn’t a clean case — the invention wasn’t something that was easily understood.

    My guess is that the Federal Circuit will have to issue an en banc decision before SCOTUS gets back involved. Who knows where Cunningham and Stark really lie on the topic.

    I suspect next year at this time there will be another couple of cases waiting a cert decision that will get some people excited about, and they’ll probably eventually deny those as well.

    Another year of hopelessly-inconsistent law …

  7. 9

    This is McConnell’s fault! The swine was so gung-ho for overturning Roe that he couldn’t give 2 seconds to making sure the justices he rammed through gave a fig about Section 101. America’s inventors wish you to burn in Hell, McConnell!

    1. 9.1

      May want to switch to decaf…

    2. 9.2

      My report was stolen. The Deputy that gave me the report was removed. I have seen him at Dollar General in 2020. They are blackballing me. My 1/2 brother knows all about it. He sued his employer. Now I know the County is blackballing me because they are being blackmailed.
      6, showed a you tube skit big bulldog and a little bull dog. Now I even know exactly what and who the skit was about. Controlling me with a false and illegal POA will be the US ATTYS. JOB.
      The deputy will be questioned. Then Tanner, Then Ross. Even Schaeffer will be the man behind the curtain without any clothes. And he as Pomona ass froma 2010 case Chastain has covered up won’t be able to lie either.

        1. 9.2.1.1

          And you expect us to believe that you shot the sheriff but you didn’t shoot the deputy?

          1. 9.2.1.1.1

            No I didn’t shoot anyone, but, my 1/2 brother who sued the Co. He worked for,had a nickname given to him by his wife. Her not so pet name, the Ice-cream scooper.
            It’s going to be a not to good situation because I can measure these continuance by 3 or less years before the next one.

          2. 9.2.1.1.2

            You made me spit coffee on my monitor.

      1. 9.2.2

        sarah mcpherson = DABUS?

        Just something to throw out there.

        1. 9.2.2.1

          Lol – no, sarah precedes DABUS by a good decade or so.

          1. 9.2.2.1.1

            yeah sarah anticipates.

            1. 9.2.2.1.1.1

              not to disagree, but I would say “renders obvious” as opposed to “anticipates.”

              1. 9.2.2.1.1.1.1

                I find it a bit abstract.

            2. 9.2.2.1.1.3

              A couple in the filter…

              After further consideration, I must withdraw my assertion that DABUS would be found obvious in view of sarah.

              DABUS is clearly a vast improvement.

              1. 9.2.2.1.1.3.1

                I also have a report from 2015. A little tubby guy on a computer, got up and while I was speaking to the deputy he was making hand signals behind me. I turned and he stopped. I continued to speak about the SS Document with the other number at the bottom. Again the guy was mouthing and signaling to him as I spoke. I’m sure it was because of the earlier written report.
                So if you are looking for the report you put in the shoebox. It’s not there anymore.
                You know what they say in England when emptying the pot… Look out belou.

  8. 8

    American innovation has left the building.

  9. 7

    The gigantic majority of claims are not even challenged under Section 101 in litigation…

    True, but largely irrelevant. Only a tiny subset of claims are ever litigated, so it will necessarily be the case that the “gigantic majority” of claims will never be challenged under §101. The “gigantic majority” will never be challenged under any section of Title 35, for the simple reason that the “gigantic majority” will never be asserted.

    Among those that are asserted, however, it would be interesting to see statistics about what percentage are challenged on what bases (including what percentage are asserted but see no validity challenges at all). Have you seen a study presenting such statistics in a post-Alice world?

    1. 7.1

      Sorry, this was meant as a reply to 1.3.1 down below.

      1. 7.1.1

        I just provided you with proof that the gigantic majority of LITIGATED claims are not challenged under Section 101. The issue is blown way out of proportion, mostly by trolls and disgruntled prosecutors working for trolls. They actually thought that the Supreme Court would agree with their hyperbolic argument that the sky is falling. The sky is just fine. World is better when frivolous cases get the ax early on.

        1. 7.1.1.1

          LOL – you want to compare the amount of propaganda with the use of the word “Tr011?”

          That’s not something that you really want to do, given how much effort comes from the Efficient Infringers.

  10. 6

    Not a huge surprise. In any event, as I said in the other thread on this topic, there was no chance that the Court was going to “overrule” its own recent Section 101 decisions (Alice, Mayo). If people don’t like those decisions, the remedy is to amend the statute, but there is nothing wrong with the Court’s jurisprudence. That is why they didn’t take the case. If this case was the “best vehicle” for cert., it is time to give up on the fantasy land dream and the Court is going to overrule itself.

    1. 6.1

      The slimy toad chimes in.

    2. 6.2

      The Supreme Court just overruled 50 years of jurisprudence. Why would they not overrule Alice?

      But even if they don’t overrule Alice, at least (attempt to) provide clarity. The line between when there’s something that’s Abstract + provides something more and when it doesn’t moves with every case.

      I start out by reading the claims, often looking at the patent, then reading the opinion. I don’t think I’ve gotten a single one correct yet. When something that ostensibly claims a camera is “abstract”, there’s something wrong.

      1. 6.2.1

        “The Supreme Court just overruled 50 years of jurisprudence. Why would they not overrule Alice?”

        Bingo BobM.

      2. 6.2.2

        “The Supreme Court just overruled 50 years of jurisprudence. Why would they not overrule Alice?”

        Because despite appearances, Alice is the name of a bank, not a woman.

        1. 6.2.2.1

          Ha!

        2. 6.2.2.2

          +1

    3. 6.3

      > If people don’t like those decisions, the remedy is to amend the statute,

      What’s to stop SCOTUS from reimporting the “judicially created exceptions” into the new statute? Like what they did with the current 101 statute…

      >The Supreme Court added further atextual caveats — no abstract ideas; laws of nature; or natural phenomenon.

      In some cases, contrary to actual text, not merely atextual.

      1. 6.3.1

        Exactly. Look at Helsinn Healthcare v. Teva Pharmaceuticals, 139 S. Ct. 628 (2019) to see exactly how seriously the Court takes amendments to Title 35. They feel quite free to ignore plain language in the statutory text when necessary to reach a desired outcome.

        Part of any Congressional solution has to be to remove patent law from the SCOTUS’ jurisdiction.

      2. 6.3.2

        Too true. Look at Helsinn Healthcare v. Teva Pharma., 139 S. Ct. 628 (2019) to see exactly how seriously the Court takes amendments to Title 35. They feel quite free to ignore plain language in the statutory text when necessary to reach a desired outcome.

        Part of any Congressional solution has to be to remove patent law from the SCOTUS’ jurisdiction.

        1. 6.3.2.1

          I not only agree with Greg “dozens” DeLassus, I would dare say that he obtained his viewpoint from me from before the days that he started
          L
          Y
          I
          N
          G
          about reading my posts.

  11. 5

    Notice that down below that the best defense of Alice so far is that the claims are too broad. Not that they are not enabled. That is not an abstract idea.

    “an enabled abstract idea” is an oxymoron.

    1. 5.1

      LazardTech had an analysis that basically went like this:

      if your claims are broad and there are other inventions that are not obvious variants of yours and they read on your claims, then your claims are invalid.

      See how clever that is? You can claim as broadly as you dare. Scope of enablement with a policing of scope by invalidation if other non-obvious inventions read within your scope.

      1. 5.1.1

        It’s not clever. It just fits with normal sense of justice. People who haven’t been broken by the patent system don’t believe that a guy who invents an airplane should be able stop a guy who shortly thereafter invents a helicopter all because the airplane guy drafted his claim in a way to encompass things he never considered. You may believe otherwise, and you may even have reasons for why such a rule would benefit “the progress”. But that is not the standard sense of justice.

        1. 5.1.1.1

          Ben, do you enjoy mischaracterizing what I’ve said? You constantly just put up the anti-patent talking points.

          1. 5.1.1.1.1

            As I have noted, Night Writer, Ben is most likely the same Ben that ‘upvoted’ Malcolm on nearly every one of Malcolm’s post back in the DISQUS days.

          2. 5.1.1.1.2

            Honestly man, I’m confused.

            When you said:

            “if your claims are broad and there are other inventions that are not obvious variants of yours and they read on your claims, then your claims are invalid”

            were you agreeing with that? Because it sounded like you thought it was bad.

            If you think it’s good when people lose their patentss because they claimed so broadly that they encompassed non-obvious variants which other people actually invented; then I misunderstood you (sorry) and fully agree.

            1. 5.1.1.1.2.1

              Ben, I am advocating for policing claim scope using :“if your claims are broad and there are other inventions that are not obvious variants of yours and they read on your claims, then your claims are invalid”.

              This is a great way to enforce claim scope. Look, the current CAFC ignores the ladders of abstraction and what a person of ordinary skill knows.

              Scope of enablement. You should be able to claim that. Get it? Think about this for a while. If there aren’t any other ways to do something, then you should be able to claim the scope of enablement. But then if there are other non-obvious ways to do it, then you claim scope needs to be reduced.

              Anyway….

              1. 5.1.1.1.2.1.1

                My bad, man. “See how clever that is?” sounded like snark to me, and I really misunderstood you yo be maligning LizardTech.

                Thanks taking the time to clarify.

                1. Really think about this.

                  Think about the term “broad functional claiming.” What does that mean? There must be no prior art or the claims would be invalid under 102. The broader the claim the more of a chance of a 103.

                  So what exactly is wrong with a “broad functional claim”?

                  And LazardTech says make the claims as broad as you have enabled but if another invention reads on your claims and is novel and nonobvious then your claims are invalid.

                  Think about that. That actually captures what is going on with inventions.

      2. 5.1.2

        > if your claims are broad and there are other inventions that are not obvious variants of yours and they read on your claims, then your claims are invalid.

        Surely you’ve left something out of this test. Every patent claim has other (future) inventions that are not obvious variants but would infringe the claim. E.g., if the claim is “an electric car” (claimed very narrowly) and 10 years later (or 100 years later) someone invents an electric car with LED headlights, their car will infringe your claim even though it’s not an obvious variant of your claim. How on earth could anyone avoid this situation? And are you saying a claim would be valid when filed and later become invalid due to future inventions?

        Do you mean _past_ inventions? If any past invention reads on your claim, your claim is anticipated.

        What am I missing?

        1. 5.1.2.1

          E.g., if the claim is “an electric car” (claimed very narrowly) and 10 years later (or 100 years later) someone invents an electric car with LED headlights, their car will infringe your claim even though it’s not an obvious variant of your claim.

          What am I missing?

          What you’re missing is that he means “reads on your claims” in the manner of “I intentionally described my invention using very broad functional terms, and someone else thought of achieving the same function in a totally different way.”

          The analogy is not a narrow electric car claim and someone else making an electric car with new headlights. The analogy is inventing the first electric engine, not claiming the structure of your engine but claiming a car that is driven by an electric engine, and then trying to assert that all other car electric engines are “your invention” because you invented the first car electric engine, regardless of how different the engines are from yours.

          It’s a common problem of people who want to define their invention by the *effect of its use* rather than *the structure of what it actually is.* Unsurprisingly, a whole lot of structures can result in a similar effect of use, especially when that effect is described very broadly. Both a bow and a gun “fire projectiles” but if you try and claim your bow as a machine that fires projectiles (rather than talking about the wood and string tension) you shouldn’t be surprised when an entirely different invention with an entirely different mechanism of use that achieves the same general result you claimed renders your claim invalid.

          1. 5.1.2.1.1

            yeah, one can’t claim a result. haha, I woke up to the thought of “jurisdiction in rem depends on physical control of the res by the sovereign” and figured, if a patent solicitor doesn’t describe “a thing” in a Spec., then there is no res. And any action taken by the holder of interest to a purported patent in due course , would be a frivolous action, since the res is non-extant !

            1. 5.1.2.1.1.1

              What is the “res” of a process patent?

              Hint: it is not any type of “hard goods” that results from the claimed process.

          2. 5.1.2.1.2

            Random, the reason what you are saying is nonsense is that people in the EE/CS and even mechanical arts describe their inventions in functional terms to capture all the ways that it can be accomplished.

            Ground yourself in reality.

            1. 5.1.2.1.2.1

              Random confused “functional” with “result.”

              They are not the same thing.

              Further, as Prof. Crouch once upon a time, coined a phrase: “Vast Middle Ground that Random refuses to account for (along with the realization that 112(f) is for PURE functional claiming).

              Does Random’s insistence on posting in a known false manner violate the “rules” of this blog — well, that’s an editorial decision [to ‘enforce’ rules with a certain slant], now isn’t it?

    2. 5.2

      What counts is claim scope enablement not “idea” scope enablement.

      1. 5.2.1

        [This is not any endorsement of that Fed. Cir. “LazardTech” decision.]

      2. 5.2.2

        What counts is claim scope enablement not “idea” scope enablement.

        Neither “claim” nor “idea” scope enablement can ever really be achieved when you’re talking about functional results in the real world. It’s virtually impossible to prove with inductive reasoning that your mechanism of achieving a result is the only mechanism of achieving a result.

  12. 4

    iDan: It’s not ‘abstract’ as in ‘intangible’, but ‘abstract’ as in ‘vague’

    So you belive that there are *at least* two forms of abstraction?

    In my view, if something about an invention itself makes it intrinsically abstract, it ought not to be eligible. If the claims purport to describe an invention that is not intrinsically abstract, but do so in a vague or incomplete manner such that PHOSITA is not taught the invention, you may have an eligible, but not patentable invention.

    What could possibly make an invention intrinsically and irredeemably abstract?

    Hmmmmmm

    1. 4.1

      “It’s not ‘abstract’ as in ‘intangible’, but ‘abstract’ as in ‘vague’”

      It’s nice that we are getting down to two reasonable definitions rather than pretending that it’s an impossible term to define.

      For the record, logic is an abstraction and logic isn’t rendered less abstract by writing it down in a language that has no objective, defined and fixed relationship to a physical embodiment.

      So if anyone is looking for an exception to this fundamental fact, the burden is on them to define with particularity what the terms of the exception are. Hint: “sufficient structure” sure the heck isn’t it when logic itself has no structure.

      1. 4.1.1

        Were “writing it down in a language that has no objective, defined and fixed relationship to a physical embodiment.” software would not work, and we would not even be having this conversation.

        As it is, software DOES work (and further is merely a patent equivalent to any of the other “wares” in the computing arts — as is known; even by you).

        You being inte11ectually honest enough to move off your squalid script is another matter.

    2. 4.2



      What could possibly make an invention intrinsically and irredeemably abstract?

      Whatever “this” is, does it survive the analogy to a traffic light?

    3. 4.3

      “So you belive that there are *at least* two forms of abstraction?”

      In that the word ‘abstract’ has multiple definitions? Yes. Don’t you?

      1. 4.3.1

        Sure the word “abstract” has multiple definitions. So does the word “robbery”. The material legal meaning of the word is what counts, and the USSC won’t say what it is. They declined to in Bilski when directly asked.

        To me, abstraction requires a human mind, and utility realized within a human mind should be beyond the reach of any property law.

        1. 4.3.1.1

          You do realize that utility is ONLY realized within a human mind, eh?

          Of course not – because you are too 0bsessed with the reflection of your own musings to bother with the terrain of patent law.

          In other words, it necessarily takes a human mind to evaluate and determine as to the presence of utility – as utility itself must meet a human-imposed condition.

          ALL inventions then are only determined to have utility due to the evaluation within a human mind.

          We’ve covered this before with you offering “sharp,” to which I replied that mere “sharpness” does NOT have utility in the patent sense, as context (something the mind evaluates with) must come into play – not all things with increased sharpness provide utility.

          Likewise, the notion of a traffic light has been repeatedly presented to you.

          A mechanism that merely provides blinking or changing colors may not in fact possess the patent sense of utility, and it is well understood that for traffic lights, the additional context being evaluated in the human mind is what brings to bear the legal sense – the patent sense – of utility.

          1. 4.3.1.1.1

            You do realize that utility is ONLY realized within a human mind, eh?

            Uhh no. A hole in the ground that holds water is useful and exists regardless of what anyone thinks about it.

            The “terrain” of patent law is essentially a scholastic j oke of judges knowing it when they see it. It’s made of hot air.

            In any case, all utility is not equal. There is immediately useful and distantly useful and not useful at all. All human purposes to not arise and are not disposed of in the mind- but some are.

            A mechanism that merely provides blinking or changing colors may not in fact possess the patent sense of utility, and it is well understood that for traffic lights, the additional context being evaluated in the human mind is what brings to bear the legal sense – the patent sense – of utility

            Oh really? Arguendo, if it were non-obvious, would a method of stopping at a blue light be a patent-eligible process? I seriously doubt it. Signaling someone to stop cannot be an infringing act.

            A traffic light that used less energy? That is more wind resistant? Of course patent eligible.

            Nowhere in your precious law does it say that all utility is the same or that all utility is realized mentally. Only in your fever dreams.

  13. 3

    The Patent Act expressly lists four categories of patentable inventions:… process, machine, manufacture, or composition of matter… The Supreme Court added further atextual caveats — no abstract ideas; laws of nature; or natural phenomenon.

    I am not sure that it is really fair to say that the Court has “added” these “caveats,” or that they are especially “atextual.” Abstract ideas and laws of nature, as such, do not really fit into any of those four categories. Similarly, natural phenomena and laws of nature are not “new,” properly speaking. Nor are abstract ideas “useful,” properly speaking. All of the so-called “exceptions” are really just applications of the straightforward text, not “atextual caveats” that have been “added” to the text.

    1. 3.1

      Beyond that, the Supreme Court recognized that these exceptions had been in place forever and there was no indication that Congress was trying to eliminate them when they wrote the (incompetently written) statute.

      1. 3.1.1

        and there was no indication that Congress was trying to eliminate them

        That is plainly untrue (and merely self-serving drivel from a Supreme Court add 1cted with its fingers in the wax nose of patent law).

        The Act of 1952 was explicit in its dressing down of a Court that has become clearly anti-patent and “gist of the invention” (and its multitude of derivatives) had made a mess of patent law.

        These are historical facts. You may well have your own opinion of the facts, but you do not get to have your own version of the facts.

    2. 3.2

      “Abstract ideas and laws of nature, as such, do not really fit into any of those four categories.”

      Laws of nature, it’s more arguable, but a list of steps to be performed, as in any method claim, could be considered an abstract idea. Or rather, the abstract idea can be expressed as a method: “A method for time travel, comprising: traveling, by a person, through time.”

  14. 2

    Good. Not that the current eligibility jurisprudence makes any sense whatsoever, but this case was terrible. “Vibrations are a well-known problem in driveshafts, so I claim ‘a drive shaft with damped vibrations’.”
    Why not just go full Morse and say “I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being vibration reduction, however developed, being a new application of that power of which I claim to be the first inventor or discoverer.”

    1. 2.1

      Agreed. Much as I long for the Court to reconsider its earlier folly, this was not a good vehicle (pardon the pun) for that move. Cert. denial was the expected outcome here, and probably all for the best.

  15. 1

    Oh my….

    I say this as someone who has no idea what is patentable any more. Cameras? Not patentable. Video transcoding? Not patentable. Improvements in power generation? Not patentable. Yet other claims, with what look to be even more “abstract” ideas, are patentable. Makes no sense.

    The logic being used for these can be applied to anything with a processor/computing device: by definition, these are “abstract” at some level. And rarely do they improve the actual functioning of the machine. (Communications, security, privacy, etc., yes; the physical machine, no.)

    The vast majority of what I prosecute can be considered to be “abstract” at some level.

    And how do you explain what’s patentable to your foreign clients? What do they have to do to ensure their ideas are able to survive Alice? As of right now, I have no idea.

    1. 1.1

      “The logic being used for these can be applied to anything with a processor/computing device: by definition, these are “abstract” at some level.”

      Sure, everything is abstract at some level, but it depends whether the claim is directed to a specific implementation, or just the idea of a solution. From Bridge and Post v. Verizon:
      “The distinction between claims that recite functions or results (the “what it does” aspect of the invention) and those that recite concrete means for achieving particular functions or results (the “how it does it” aspect of the invention) is an important indicator of whether a claim is directed to an abstract idea.” (Bryson, dissenting in part)

      It’s not ‘abstract’ as in ‘intangible’, but ‘abstract’ as in ‘vague’. That’s why American Axle’s less-vibrationy axle, though tangible, is still abstract. There’s no specific implementation recited in the claims, just the result.

      1. 1.1.1

        Abstract iDan:

        No. American Axle was enabled. That is the issue. And Bryson’s statement is gibberish. The issue is whether or not the claims are enabled or not and whether they pass 112(a).

        You have just incorporated 112 into an abstraction test and foisted on us the “broad functional claiming” canard. The issue is enablement and scope of enablement.

        1. 1.1.1.1

          Morse’s telegraph was enabled too, at least in one embodiment. But his claim 8 claimed the full scope – including non-enabled versions. Similarly, AA’s claim claimed every possible method of vibration damping, whether described or not. You cannot simply claim a result and then say “I described one possible way, so give me everything.”

          1. 1.1.1.1.1

            Abstract iDan: >You cannot simply claim a result and then say “I described one possible way, so give me everything.”

            All patents do this to some degree. Claim 8’s problem was that it claimed the use of a power. Just try to think about scope of enablement.

            The problem that is typical of the CAFC jurisprudence is are negating what a person skilled in the art knows and negating the ladders of abstraction.

            The test is (or should be) ask yourself would a person skilled in the art understand the claims and the scope of the claims? Are the claims enabled? The problem with the CAFC jurisprudence is that often the answer to both those question is yes but they invalidate the claims using Alice.

            So think about that. A claim that passes 112, 102, and 103. But the CAFC uses Alice to invalidate the claim. There is no sense to that.

            Plus I would point out that an “enabled abstraction” is an oxymoron and yet that is what every Alice case holds. That a claim that is enabled and passes 112 is an abstraction none-the-less.

            “Eighth. I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor or discoverer.”

            1. 1.1.1.1.1.1

              All patents do this to some degree.

              Definitely not true. It is surely true that some patents do this, but that is just as much as to say that some patents are unenforceable for invalidity.

              It is distressing how many professionals think that they are legitimately entitled to claim more than the inventor has disclosed. That misbegotten sense of entitlement, however, does not oblige the courts to indulge this delusion among our profession.

            2. 1.1.1.1.1.2

              “Claim 8’s problem was that it claimed the use of a power. Just try to think about scope of enablement.”
              But it was enabled.

              I think your comparison to enablement is close, but not quite right. Specifically, enablement considers the specification. If I described an improved mousetrap in my spec, and had a claim reciting a base, a hyperextended spring connected to the base, an optical sensor connected to a solenoid connected to the spring, etc., etc., and described those features, the claim would be enabled, right? And if I had another claim that just said “An improved mousetrap,” that would also be enabled, right? Because the spec describes an implementation of that. But the claim isn’t limited what’s described in the spec, and doesn’t recite any implementation details.

              Or, on the software side, you could have a spec that literally includes the entire Java code for some app, and a claim that just says “1. A program,” and it would certainly be enabled… but it would also be ineligible.

              1. 1.1.1.1.1.2.1

                An abstract idea is something like this:

                Build the machine with fewer parts but that operates the same otherwise.

                That is an abstract idea that would fail 112 and should not be eligible for patentability.

                A claim where one skilled in the art can build at least one version of the claim is not abstract.

                Actually, there is a way to handle “too broad claims” but that is not an abstract idea. What can be done with “too broad claims” is say if there are other inventions that read within the scope of your claims, then it can be evaluated whether to invalidate your claims.

                Otherwise what is the point?

            3. 1.1.1.1.1.3

              [T]hink about that. A claim that passes 112, 102, and 103. But the CAFC uses Alice to invalidate the claim. There is no sense to that.

              Agreed. It is a shame and a confusion that Alice is doing most of this work. Most of these Alice-failing claims really should be failing under a proper application of §103 or §112(a), but §101 really should not come into it for most of these.

              1. 1.1.1.1.1.3.1

                >60 years pass with patent attorneys enjoying an easy 112 1st standard

                >Mayo/Alice enters the room

                >Patent attorneys proclaim “These cases should be handled under 112 1st!”

                The position of “first fix 101, and then we’ll take care of these cases under 112(a)” has zero credibility.

                1. The position of “first fix 101, and then we’ll take care of these cases under 112(a)” has zero credibility.

                  Right. That is why Tillis-Coons linked §101-reform and §112-reform together. Perhaps not surprisingly, there were a lot of interested parties (especially a lot of patent professionals) who were not willing to accept a §101-fix if it also came with a §112-reform. More’s the pity.

                2. If you happen to recall, what was their proposal to reform 112 about, and what was their proposal to the best of your recollection?

                3. What Greg neglects to mention is that THIS 112 connection was immediately recognized as a p01s0n pill/trojan horse that would have been FAR WORSE than even the current mess of 101 – and ‘advanced’ by the very same certain stakeholders that do not want true 101 reform.

                  In other words, Greg is engaging in MISinformation.

                4. Thanks greg. Not sure how that manages to solve anything. If they just fail to recite the structure etc. in the spec it seems to leave us in the same position we are in now except without 101 acting as a barrier. Also I doubt that the supremes will let them just abrogate them on this one. Gl trying tho.

                5. If they just fail to recite the structure etc. in the spec it seems to leave us in the same position we are in now except without 101 acting as a barrier.

                  The proposed reform—in effect—would have made all functional recitations into 112(f) recitations. There is already a mechanism to deal with 112(f) claims where there is no corresponding structure—viz., the claim fails as indefinite. In other words, many of the problem claims presently being sorted under 101 would instead be sorted under 112, which is exactly how the statutory language intends to work, but for the lunacy of Alice.

                6. I figured that might have been what they had in mind, but if that’s really what they intend, then they should write it into the law instead of relying on the caselaw/fed circ. to do it for them. Just bad drafting imo. But thx.

                7. [T]hey should write it into the law instead of relying on the caselaw/fed circ. to do it for them.

                  Fair point

            4. 1.1.1.1.1.4

              “ A claim that passes 112, 102, and 103. But the CAFC uses Alice to invalidate the claim. There is no sense to that.”

              There is a LOT of sense to that in most circumstances and this has been explained to you in the most basic terms for many years.

              Everyone else here except for one or two other fossilized brains can envision in two seconds a claim that is plainly ineligible but also enabled and plainly not obvious. You “somehow” can’t do it. It’s a real mystery as to what your problem is.

            5. 1.1.1.1.1.5

              “All patents do this to some degree. Claim 8’s problem was that it claimed the use of a power. Just try to think about scope of enablement.”

              How would you define the difference between an acceptable degree of “this” and an unacceptable degree?

        2. 1.1.1.2

          For an effective American Axle enablement argument, just specifically point out where in the claims there is any indication of where, and what, to stuff into the hollow shaft [different from prior art shaft liners] that will eliminate both vibrations. Just saying “tune it” does not do that! And, where in the spec is the support for such needed and missing invention-defining?
          [This is NOT an endorsement of the very different way the Fed. Cir. decided this case.]

      2. 1.1.2

        “it depends whether the claim is directed to a specific implementation, or just the idea of a solution”

        This should be the test, and i recognize that there are echos of this in the Alice test, but if this was the intent the court did a truly deadful job articulating it.

        1. 1.1.2.1

          This should be the test,… but if this was the intent the [Alice] court did a truly d[r]eadful job articulating it.

          Agree 100% on both points.

        2. 1.1.2.2

          The key phrase is not “specific” because that’s just a relative term that moves the goalpost.

          The key phrase is “concrete means,” i.e., a physical means described with particularity sufficient to distinguish the invention IN CONCRETE (PHYSICAL NON-ABSTRACT) TERMS from the prior art.

          1. 1.1.2.2.1

            >The key phrase is “concrete

            Then, do we agree that State Street Bank basically got Section 101 right?

            1. 1.1.2.2.1.1

              lol – I have also wr ecked Malcolm’s rather stale take – what is it about a decade ago now – with the ability to provide a very specific and painfully detailed PHYSICALLY claimed object of a computer disc inscribed with the physical demarcations that would meet his (most odd) option-made-requirement, and STILL yield that which causes him supreme angst.

            2. 1.1.2.2.1.2

              [D]o we agree that State Street Bank basically got Section 101 right?

              Two quick responses:

              (1) The best that any court, at any time has come to getting §101 right was In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc).

              (2) The SCOTUS appears to consider that State Street Bank—when properly understood—got it basically correct. “Judge Rich authored the State Street opinion that some have understood to make business methods patentable. But State Street… addressed only claims directed at machines, not processes. His opinion may therefore be better understood merely as holding that an otherwise patentable process is not unpatentable simply because it is directed toward the conduct of doing business… .” Bilski v. Kappos, 561 U.S. 593, 641 n.40 (2010) (Stevens, J. concurring)

              1. 1.1.2.2.1.2.1

                its been a painful watch , the past long long time, seeing issues easily and readily handleable by 102, 103, 112 , until some “jolt” to the system came, and tried twisting everybody’s minds over this 101 thing. A re-framing. A re-defining. Needless.
                The main issue at PTO for 2 decades, has been a “war on claim breadth” Show me a 101, that couldn’t have been handled with a 102 or 103……….. very few of these latest flotsam rigamorole somebody injected into everybodys minds.

            3. 1.1.2.2.1.3

              absolutely, State Street claimed a machine 🙂

              1. 1.1.2.2.1.3.1

                So did Alice.

      3. 1.1.3

        “ It’s not ‘abstract’ as in ‘intangible’, but ‘abstract’ as in ‘vague’.”

        It can certainly be both if we are talking about the use of a prior art logic processor to carry out a logic process that is described in terms of the result achieved.

        1. 1.1.3.1

          Remind yourself please of the actual legal requirements of the law as written by Congress.

    2. 1.2

      Since we cannot know why the Sup. Ct. refused cert in American Axle [like most other cert petitions] you cannot rely on cert refusals for any legal guidance. But the prior comments have clearly pointed out why this case was not even a proper case to to challenge Alice-type “abstraction” claim-unpatentability anyway, because that was not even the decided issue below. Plus, its attempt to claim any and all solutions to the known indicated problem.

      1. 1.2.1

        They should have granted, but political issues sap their energy. Neapco relying on Morse, weak. Morse was about the use of electricity for sending signals, too broad. The axle-stuffer case had merely a feature who’s behaviour and performance was “describable” using F=kX. Maybe the Court figured that the answer to the questions posed, have already been decided and wantoned not to uptake it. (I heard some of them had to evacuate their residences due to failures of the “animal control” dept.) What I’m left wondering is, each of their takes individually on the SG’s document…..

        1. 1.2.1.1

          “Morse was about the use of electricity for sending signals, too broad.”

          Do you have an articulatable standard for that conclusion?

          1. 1.2.1.1.1

            I don’t claim to have anything articulable, and if I did and it was valuable, it wouldn’t be on the internet ! From that patent though, I observed the claim “the power of the current for marking or printing intelligible characters…” I interpret using “the power of the current” as substantially equivalent to “use of electricity” but that’s just my read.

            Would this Morse patent have been effective against Edison’s “electromotograph” invention ?

            haha, probably most forgot about the motograph.

          2. 1.2.1.1.2

            But notice the Cert request, really focused on 5 USC.

            All the talk we’ve seen about legibility in elligibility, only shows evidence that the “masses” including many patent professionals, are almost literally begging for more guidance. Are the ones begging for more guidance truly in need, or just oblivious ? harsh question, not sure why I wrote that.

            So the case was about 5 USC, and tons of folk came out weighing heavily on elligibility questions.

            Send a query to the Director of the USPTO, and ask wht their opinion is, about the many ppl, learned Lawyers many, who see the “101” issues over what the case was about. ? Just thinking out loud….

    3. 1.3

      “ The logic being used for these can be applied to anything with a processor/computing device: by definition, these are “abstract” at some level.”

      It is absolutely true that taking and old device and adding a logic processor where the logic processor is described in functional terms is a recipe for ineligibility.

      And that’s a good thing for the patent system. There is literally ZERO innovation that will be prevented by enforcing this reasonable rule and everyone knows it. They just won’t admit it.

      Some lawyers, of course, will need to find new jobs. Boo hoo hoo.

      1. 1.3.1

        I agree with the Prophet’s post here 100%. Well said. All of the hyperbole about “protecting innovation” and the “economy” based on crap patents like that is so dumb. The gigantic majority of claims are not even challenged under Section 101 in litigation, and of those that are challenged, not all of them are invalidated.

      2. 1.3.2

        Some commenters, of course, will need to find real jobs. Boo hoo hoo.

        There. Fixed.

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