SCOTUS: Public Enemy Number One for Patent Owners

By Gene Quinn
October 2, 2014

Editorial Note: This article is part 2 of a 2 part series adapted from a presentation I gave earlier this week at the annual meeting for the Association of Intellectual Property Firms (AIPF). To start reading from the beginning please see Dark Days Ahead: The Patent Pendulum.

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Justices of the United States Supreme Court. No friends to innovators who require strong patent rights.

As I was putting together the slides for this Powerpoint presentation I thought to myself, “how do I title this page.” I’ll tell you the thought that first jumped into my head, although I ruled it out: “Public Enemy Number One.” Or I suppose “Public Enemy Number One through Nine.” There is little doubt that the Justices of the Supreme Court are indeed public enemies, at least insofar as patent owners are concerned. Unless you are represented by Seth Waxman at the Supreme Court your patent claims are invalid! And even Seth doesn’t always win, although he sure wins a lot for Monsanto.

Let’s start our discussion of SCOTUS decisions with Mayo v. Prometheus. In Mayo the Supreme Court proudly proclaims that they’re not going to take the government’s invitation to apply 102, 103, and 112. Instead the Court decided to limit its handling of the issues to patent eligibility under 101. And as they go through their analysis they admit that the claim in question includes things that are not in nature, but yet they reach the conclusion that the claim is still a law of nature anyway because you’re just adding some extra stuff that already exists. It’s breathtaking. One, that’s not what the law is. Two, that’s not what the statute says. And three, every other Supreme Court throughout history specifically said never do that, and they did it anyway.

Then we get to AMP v. Myriad, which most people misunderstand. Most people think that it says that cDNA is patent eligible. What the Court said is that cDNA is patent eligible except insofar as the cDNA is identical to what occurs in nature. Now that might seem logical except that they admit that cDNA must be manmade, which is scientifically correct. cDNA cannot possibly exit in nature. So cDNA, something that is completely manmade, can be patented unless it’s identical to what occurs in nature. With artificial organs, correct me if I’m wrong, but isn’t the idea to make one that works exactly like the one that God gave you? If this gets applied much longer to its logical extreme we’re going to see personalized medicine come to a halt, unfortunately. And the Court admits here that the claim that they’re invalidating is not naturally occurring but they invalidate it because it’s a law of nature. If these Justices were being graded they’d get an F just on basic logic. They couldn’t pass the LSAT any more, or at least they couldn’t do the logic games section of the LSAT. Their decisions are completely illogical.

Then we have Alice v. CLS Bank. Now the interesting thing about CLS Bank is the Court used what they called the Mayo framework. That strikes me as terribly ironic given how horribly wrong they got Mayo in the first place.


Let me go back to Myriad for a minute. One of the other things I failed to mention was that Justice Thomas in a unanimous opinion said – and I’m paraphrasing – no matter how cool or interesting or unique a discovery is, discoveries are not patent eligible. But that’s just not true. If he had actually taken the time to read this statute he was supposed to be interpreting, which is 101, which is all of one sentence long, he would have noticed that discoveries are patent eligible. And those of you who do pharma work, if discoveries aren’t patent eligible, what are you guys going to be protecting? Nothing. Because the whole question with respect to obviousness is about understand how the lead compound originated. How did you derive the lead compound?   I want to know your story. And if you had a finite number of possibilities you started with, no patent for you. If you discovered which lead compound you needed to start with and then came up with something that was unique and useful, patent for you. So if discoveries are not patent eligible the pharma industry will soon be in for a world of hurt. When is pharma going to wake up? I think people may be starting to wake up.

Now I left Bilski v. Kappos for last, which is the first in this chronology. I left it for last because of the irony involved. How ironic is it that after these four cases the only thing we can say with absolute certainty is that business methods are patentable. [Laughter] Oh, my gosh, what happened? It’s like they tilted the world on its head. Perhaps it would make some sense to say business methods are not patent eligible but all the rest is. So the only bright line rule we have is the one that the people who were challenging these things in the first place wanted to go the other way. So we don’t know about software. It’s getting harder and harder to patent software though. We don’t know about medical diagnostics, which are critically important. Read the Medtronic brief in Bilski, which explains that if medical diagnostics cannot be patented we will wind up with fewer medical devices. And the connection is simple, we can’t treat what we don’t know exists. If we don’t know what’s affecting you and why we can’t develop the drugs of the machines to work for you. First we must to know what’s wrong with. So if we don’t have those increasingly better medical diagnostics we’re not going to get the better treatments. And that’s what we really want.

The consequences of SCOTUS decisions are really severe. The U.S. is no longer a favorable jurisdiction for many biotech patents, medical devices and software. What that’s going to mean is companies are going to move. We’ve known this throughout history. Companies locate where the laws are the best for them. If you’re an innovator you’re going to go where the patent laws are the strongest. And that’s why the U.S. has dominated in these industries. We’re number one in biotech is because of Chakrabarty, which has basically been overruled. Prior to Myriad you would have said the ruling of Chakrabarty was this: if there’s human intervention it’s patent eligible, but now you can’t say that because there was human intervention in Myriad, which they acknowledged, and still the claims were patent ineligible.

We know companies will move to jurisdictions with more favorable laws. Proof of this comes to our headlines in the form of tax inversion. That’s the big catch word these days. So companies are already moving to different jurisdictions to avoid taxes. We know this stuff happens across the board. Expect fewer medical devices for the reasons we talked about. Portfolios are going to be substantially devalued. Marketing, licensing and acquisition of patents is drying up or you’re going to have to sell or license for a song, which is going to negatively affect shareholder value. Investors are going to be reluctant to invest in these things until we get some more certainty, which hurts startup companies and, by the way, those startup companies are the ones that create the most jobs. So SCOTUS involvement in the patent arena is not going to be good for job creation either.

Now let me talk for a moment about the Federal Circuit and obviousness, which is really the next battleground. I took this slide from an article I wrote last month. You can prominently see Judge Chen’s picture, it is not there to say he got it wrong, he’s the only one who got it right. The case was about the Vringo patents. They had been issued by the examiner. They had been taken back into reexamination, came out of reexamination not only with all the claims challenged intact, but more claims added. A lawsuit was filed. The judge let the case go to a jury. The jury found infringement and non-obviousness. On a JMOL the judge says that the jury’s right, that there was substantial evidence to support the jury’s conclusion. And then it goes up to the Federal Circuit. Every decision maker throughout the entire process has so far announced that these patents are nonobvious. And two out of the three on the panel conclude that nobody, no reasonable trier of fact could find these patent claims anything but obvious. Judge Chen was the only dissenting vote. That no reasonable person could find that these were obvious seems to be the only reasonable conclusion because only two people to come to a contrary decision were on the Federal Circuit. The patent examiners, the patent examiners reexamination unit, the board, the jury and the district court judge all found that they were nonobvious. And the same thing happened to Soverain Software in their case against Newegg, so this blatant disregard for all other decision makers is a trend at the Federal Circuit. So even if we deal with the 101 issue this 103 issue is going to become a growing concern I’m afraid. Gone are the days when Chief Judge Markey cautioned that proceedings in lower tribunals were not some sort of prelim, but were a real event. The only real event is at the Federal Circuit. That is the only venue that defendants need to win and they are at an alarming level.

One thing that I forgot to put in was a happy feel good slide. Maybe I didn’t forget to put that in because there’s unfortunately not a lot to feel happy and good about. Although I do think there are ways forward. I did receive some interesting news over the weekend. Someone wrote an article for me on IPWatchdog about the consequences for corporations in disclosing the fact that their patent portfolios are substantially devalued. The article was about ledger accounting and all this kind of stuff. The author has been contacted by Reuters and Bloomberg and others who are shocked because they thought Alice was only going to affect patent trolls. It’s news to them that Alice will have significant and possibly dramatic consequences for patent portfolios owned by elite, publicly traded Silicon Valley companies. So we may see some reporters chasing this issue and we may see some more stories coming out. Maybe the tide is going to start to turn.

I think there are things you can do and there are things your clients can do. I always tell people that nobody wants to say write a letter, right? What good is writing a letter? I can tell you knowing what I know about the way D.C. works, writing a letter can really matter. Making phone calls to your Representative or Senators can really matter. If you have companies that can get meetings with Congressional staffers you should encourage them to explain the importance of patents for their businesses. That’s how the last round of patent reform died in the Senate, at least to some extent. There were two different groups of professional, startup level independent inventors tirelessly working the Senate. But if you won’t even make a call and/or write a letter we have no chance. So start there.


Then if you’re going to file patent applications on software you need to take a look at the algorithm cases, which are means plus function cases. You want to have means plus function claims in your applications. I know how crazy that sounds but it’s going to be better to get something than it is to get nothing. And if you’re trying to satisfy the algorithm cases in terms of disclosure to support means plus function claims then your discloser is going to be all the better. So don’t be afraid to put those big scary things into the spec that we all know we could write. We can go down to a level where we talk about gates and logic, you know, back from your computer architecture days. Dust off the computer architecture and logic texts from college. We need to go to that granular, hyper-technical level because if judges think they understand the invention it’s going to either be patent ineligible or obvious. So remember after KSR how the background section shrunk substantially because we didn’t want to say anything bad that could be used against us? Well now need to lose the aversion to say things that could be held against us and overwhelm with lot of technical information in the specification. The more scary and technical the better because otherwise we’re in for some dark days.

That’s really all I’ve got. I think we have a few minutes for questions? If there are any questions I’m happy to answer any questions— Jennifer?

JENNIFER: I have two. One we have preliminary guidelines and we were supposed to get final guidelines or another set by late August. I have heard the scuttlebutt is we’re not getting them yet because the patent bar is not commenting to the Patent Office. They don’t have enough commentary to actually produce those guidelines or they just don’t know what to do. One, I’d like to hear any points you have on that. And then the second, and you know I do a lot of IPR work and we’ve had a couple of situations where the PTAB is sua sponte taking up 101 issues that have never been briefed by either party. Now, I usually represent petitioners, so—

GENE: So you like that?

JENNIFER: But I feel like there’s a real deep process concern there where now all of sudden have this trier of fact that’s saying, oh, and you have a 101 problem and you never get to comment on that expect in your oral argument and you didn’t even know it was coming.

GENE: Well, due process is becoming a growing problem. Going back to the Soverain Software situation, that appeal went up to the Federal Circuit and Newegg was asking for the case to be remanded for a new trial. That was their ask. So Sovereign briefed that issue. Sua sponte the Federal Circuit declared all of Sovereign’s patent claims invalid because of obviousness never having had that addressed on appeal on any level. So we see a fundamental lack of due process even at the Federal Circuit. We see it happening with examiners too. The Patent Office comes out with Alice guidance that initially that says “nothing to see here, the framework has changed substantively but the substantive analysis remains the same.” That shocked me because I know what the Obama Administration wants to do with these patents – they don’t want software patents. They are listening to Google. They would rather have none of these things. So I was shocked that that was their initial interpretation. That was the career people got out in front of the politicians and thoughtfully addressing the issues in a responsible, adult manner. But something quickly shifted. You started seeing 101’s raised where 101 had never been raised by an examiner previously. You actually saw the Patent Office start to take back Notices of Allowance even after the issue fee had been paid, rejecting claims under Alice. So you see it from the PTAB, you see it from the examiners, you see it from the Federal Circuit. Lack of due process is a real issue. You’ve got to start making due process arguments when you’re going up to the Board and you’re going up to the Federal Circuit to preserve these things. Due process has always been a sexy issue for the Supreme Court. It also happens to be one of the things the Supreme Court can actually understand. So I think you may have a better opportunity to get some of those issues in front of Supreme Court than trying to make it a question about obviousness and asking them to overrule KSR. So make that argument.

There are also due process issues at the Patent Office in terms of unequal treatment. Surprise, surprise Bank of America, Wells Fargo, J.P. Morgan Chase are getting their software patents, none of them are being pulled back after Alice. But now the folks that are representing the startups or the independent inventors in the financial service area can’t get anything. There is a double standard like I’ve never seen before. And we all know that there’s always been a double standard, just getting different examiners or assigned into different Art Units leads to double standards or at least inconsistent decisions, right? But what we are now seeing is unequal treatment on steroids.

The last thing about the rules, what I’ll say is I don’t have much information about that. There’s real worry that the Myriad and Mayo guidelines are going to come out really bad. So I wouldn’t be surprised that attorneys didn’t take the time to comment because they were atrociously bad and in preliminary form and I don’t think a lot of us think any of our opinions are going to matter. The Patent Office also surprisingly extended the Mayo and Myriad comment period and they inserted an Alice question. I’ve never seen them do that before. So we’re going to get guidelines, I think, that deal with Mayo, Alice and Myriad all the same time. And I think we’re probably likely to see that by the end of the year and I don’t think it’s going to be very favorable for innovators and patent owners.

I can also wonder whether some of this is starting to be held up because some in Congress may be asking some questions. There was a hearing over the summer where Congress did start asking questions about why the Patent Office was withdrawing Notices of Allowance after the issue fee has been paid? I think people may be starting to clue in. So if you have a client that wants to take a position now is a good time. Write to Congress. Now they’re busy getting elected, but over the next six months will be a time when I think we’re going to see the Googles of the world come back for more patent reform. They always come back for more patent reform in a new Congress any more. We are in a state of perpetual patent reform. So this issue will be ripe again come February and March of 2015. So start thinking about whether you have clients that can write letters, clients that can get meetings, clients that can start getting involved.

And if you have clients that have a patent line item in their budget you all should start to talk to them about spending some of that money on amicus briefs. You probably saw the New York Times article about the Supreme Court and it’s something I’ve noticed for a long time. The Supreme Court relies on facts filed in amicus briefs that were never brought up at trial and never litigated. Amicus briefs are more important now at the Supreme Court and Federal Circuit than they’ve ever been. So maybe you have clients that you could combine together to put the amicus in, or maybe you could join an amicus that’s already being created. But we’ve got to get off the sidelines and try and do something.

I think that’s all the time we have. Thank you for having me. I’ll be happy to talk to any of you about any of these issues during any of the breaks for later today. [Clapping]

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 37 Comments comments.

  1. NWPA (Night Writer Patent Attorney) October 2, 2014 8:16 am

    I think this all goes to the SCOTUS being completely and totally ignorant regarding science, technology, and the real-world of innovation. Absolutely and completely ignorant. The SCOTUS has a long history (and all judges) of taking their perception of innovation from Disney type of movies where a sole person makes a huge leap through individual effort and a flash of genius. All their jurisprudence is based on this model of innovation.

    Additionally, they are completely and totally ignorant of modern cognitive science. Where do they “think” that their thinking takes place? From reading J. Stevens concurrence in Bilski, I would say that he believes that things like math and thinking do not have a physical basis. That his brain is not where his thinking takes place. J. Taranto (forgetting his name this morning) wrote merely implement mental processes on a computer is not patentable. What? Half of the Ph.D.’s in cognitive science are doing exactly that. In Europe scientist have protested projects to implement mental processes on computers because they say we are not good enough at it yet.

    I think too we must remember that Google does not want patents. Google bucks goes a long way in DC, and the SCOTUS has a long history of bowing to burning down laws that big corps don’t like.

  2. Joachim Martillo October 2, 2014 9:24 am

    “There are also due process issues at the Patent Office in terms of unequal treatment. Surprise, surprise Bank of America, Wells Fargo, J.P. Morgan Chase are getting their software patents, none of them are being pulled back after Alice.”

    What about Google’s Panda patent (US 8,682,892)? Isn’t it about as obvious an attempt to claim an abstract idea as one can find?

    BTW, it is hardly inherently unreasonable to reject patent claims of laws of nature, prior knowledge, or analytic knowledge (incorrectly called abstract ideas by the SC), but then patent examiners, many of whom barely comprehend English, would have to have a good understanding of epistemology.

    As far as I can tell, the USPTO today would not allow the Diehr patent (US 4344142) or similar patents despite the explicit reference to Diehr in the Alice decision.

  3. Simon Elliott October 2, 2014 11:11 am

    I think a more fundamental question is whether the SCOTUS should be upsetting long held jurisprudence and business expectations without compelling evidence of legislative failure.

  4. step back October 2, 2014 11:48 am

    Not only enemies of inventors.

    Enemies of the US Constitution, which is supposed to be the supreme law of the land (SCOTUS thinks they are the supreme law)

    The US Constitution says that the legislative powers shall be vested “exclusively” with the Congress

    The US Constitution says that one of the enumerated legislative powers is to “promote” the progress of science and the useful arts by “securing” to inventors the exclusive rights in “their” discoveries.

    In accordance with the US Constitution, Congress passed 35 USC 101 which says ANY new and useful machine, ANY new and useful process, etc.

    There is nothing inside of 35 USC 101 about determining the direction that a claim is pointed towards and deciding arbitrarily and capriciously that something “significantly more” is required. There is no such requirement in the laws passed by Congress.

    Public enemy? Yes

    … of the US Constitution … of the laws passed by Congress … of due process of law … of science and logic … of reality based thinking (fictional corporations are not people)

  5. patent leather October 2, 2014 12:09 pm

    Public enemy #1 right now is the USPTO. Alice is ambiguous as to how far it goes, I don’t care what anyone says. The USPTO is taking it to the extreme, even in non-business art units that have been around for decades. Suddenly it’s all not statutory? The USPTO seems to be taking the tact that everything old + non-physical is non-statutory.This is NOT what Alice says. This must be some type of violation of the APA.

  6. Fish Sticks October 2, 2014 1:42 pm

    “So don’t be afraid to put those big scary things into the spec that we all know we could write.” Gene, please provide us with examples (numbers of published and issued patent applications). Thanks

  7. Anon October 2, 2014 4:08 pm

    Joachim at 2 above – With tongue in cheek, when did Congress meet after Diehr and change the law?

  8. Barry Leff October 3, 2014 9:42 am

    We saw the issue more or less the same way. In the struggle between the Federal Circuit and Supreme Court, we have more confidence in the Supreme Court.
    http://www.ipnav.com/blog/supreme-court-v-federal-circuit-whos-right/

  9. Anon October 3, 2014 11:46 am

    Barry,

    Do you have a typo? Did you mean to say “we have less confidence in the Supreme Court.

  10. Dale B. Halling October 3, 2014 1:17 pm

    First of all Gene THANKS for having the courage to say this publicly. We all know that not one of the Supremes is legally or factually qualified to be a patent attorney, not one of them would last one day as a first year patent associate. It is time to quit the pretense that the Sup. Ct. says anything rational about patents and call them the frauds they are.

    We all know that due process issues are not just happening in patents (NSA, TSA, Patriot Act, EPA, etc), but in all areas of law and this is not a left/right republican/democrat issue, this is a government vs. the people issue.

    We have to win this argument across multiple fronts, not just in political realm. For instance, we have to win in the press. The press today treats all inventors as holdup artists and that makes patent attorneys the equivalent of mob lawyers. Hollywood treats inventors as idiots who work on impractical inventions. We have to win the war of popular ideas that is why my wife and I wrote a novel Pendulum of Justice which illustrates that inventors are competent, that they are heroes and our laws are not protecting them. We can’t all work on every area, so we have to pick those areas we are most effective at and enjoy the most. For instance, my political involvement will be small, because I find it so distasteful.

    Thanks again.

  11. Joachim Martillo October 3, 2014 3:27 pm

    In re anon #7.

    Do you object to the SC decision in Diamond vs Diehr?

  12. Dale B. Halling October 3, 2014 5:33 pm

    I think Diamond vs. Diehr is poorly reasoned. But I object to the Sup. Ct. going back the Hotchkiss v. Greenwood.

    We need to start with an objective definition of a what an invention is and the Sup Ct and CAFC has completely failed. An invention is an human creation that has an objective, repeatable result (inherently this includes useful). Such as the incandescent light bulb. If you apply electricity of the right voltage and current it always gives off light. An inventor is the first person to create an invention. All inventions are a combination of known (existing) elements, its called conservation of matter and energy. All invention utilize natural laws, we are not working with black magic. And software enable inventions are not math and they are not abstract (another word the Supremes refuse to define) they are a way of wiring an electronic circuit.

    Note under this formulation, art is an human creations with a subjective result and they are the province of copyright. All human creations are either art or an invention – this excludes random combinations, because they are not creations.

  13. step back October 4, 2014 5:01 am

    Dale,

    I respectfully recommend that you stay clear of declaring yourself the exclusive dictionary for what “invention” is is and what “art” is.

    We human beings make a lot of noises.
    Often we have no clear idea as to how those noises are interpreted by their recipients.

    “Invention” is one of those vague and unclear noises.

    As for “art”, if I cover a canvas with a uniform shade of red paint, my objective and subjective intents are to cover the canvas with the uniform shade of red paint (maybe) 😉

  14. Dale B. Halling October 4, 2014 10:35 am

    Stepback – what?. The first step in clear thinking is to define things. Charlatans, like the supremes on patents, love not defining terms, because then they can be made to suit their purpose.

    STEPBACK I SUGGEST YOU START DEFINING TERMS.

  15. saul October 4, 2014 9:31 pm

    Dale B. Halling @12 —
    “An invention is an human creation that has an objective, repeatable result…”

    A musical score meets your definition for “invention”. Should one infer that you feel musical scores are deserving of patent protection?

  16. Dale B. Halling October 4, 2014 11:03 pm

    No it does not. If I play the musical it is totally different than if someone else plays. More importantly, it just sits there unless a person interacts with it. Someone who cannot read music sees it as meaningless scribbles. Try again Saul and use the definition.

  17. step back October 5, 2014 7:44 am

    Dale @14:

    Fair enough.
    But suspect I that like not you will my definition.

    To invent is to come up with something on your own without direct aid of a blueprint or recipe.
    What you conjure up or “invent” (or uncover, dis-cover) does not have to be truthful, real, new to others or useful.
    You could for example “invent” a sentence composed of a new order of words just as I did in the “But suspect I” sentence above.

    We often say that another has “invented” a false story. Example: He invented an explanation for why his homework was not turned in on time. According to his highly imaginative story, he fell into a time warp hole that pushed him into the future before he a chance to do his home work.

    The above explains why the US patent law (101) add qualifiers to the definition of which “inventors” may file a patent application. The invention has to be both “new” and “useful” with respective to the general populace and its welfare. That is one reason why the school boy’s “invented” story about his home work does not get him past the 101 threshold.

    Additionally, and as most of us know (one exception being SCOTUS), to be patent eligible the invented subject matter must be a new and useful machine, a new and useful process, a new and useful manufacture, a new and useful composition of matter or a a new and useful improvement thereof.

    Of course, SCOTUS is free to “invent” their own patent laws and their own combinations and permutations of nonsensical verbiage, which is exactly what they did. Hoo yay for them.

    Take for example the word, “computer”. That word alone is generic for the concept of a computing machine or person. If one says, an ‘electronic computer’ that narrows the generic concept of computer down to a smaller subset. If one says, an ‘electronic digital computer’ that narrows the generic concept even further.

    As to WTF “generic computer” means (in the Go Ask Alice case), you’ll have to ask the true inventors of that nonsense phrase directly. I have not much of an effing idea of what runs and oozes through their heads when they use that phrase.

    So there you go.
    You asked for my definition of invention and I invented one for you. 😉

  18. saul October 5, 2014 8:12 am

    Dale B. Halling,

    “The next song I’m going to play goes something like this… actually it goes exactly like this, otherwise it’d be a different song.” — Pete Barbutti, composer, musician, and comedian

    I would not agree that the result of two different people playing from the same score would be “totally different”. It would be the same notes, for the same durations, with the same emphases, even on the same instruments. Certainly the different players might have their own additions and tonalities but to the extent the score reflects the composer’s creation and the players follow what is in the score, they will be performing a “human creation that has an objective, repeatable result”.

    As to your second point of the score not doing anything unless it is performed, I should think that only distinguishes that the score can not be patented as a “machine”, but it should still qualify under your definition as an “invention” (and should still qualify as a “process” patent).

    Grammatically I agree with your definition of “invention”, but if it is adopted then the conclusion to be drawn would be that not all inventions should be deserving of patent protection. You’ve only shifted the question from being “what is an invention?” to “what is a patentable invention?” — which indeed may be a good approach to discussing the issue. I certainly agree that nailing down precise definitions of terminology is important to a discussion.

  19. Dale B. Halling October 5, 2014 9:58 am

    Stepback @15 You are playing the same games as many examiners do today. Words have context.. It is not clever to ignore the context of a word, it is fundamentally dishonest. All words have to be interpreted in context.

    101 is not well thought out. The new part is about who is the inventor, not what is an invention. This is one of the confusions caused by the poor drafting of this statute which starts with a poor definition of what an invention is.

    The incandescent light bulb is an invention, but it is no longer new. Under 101 does that mean it is not an invention? If you quit playing games you will see that my definition provides a clear definition of what an invention is separate from who is the inventor. This is exactly the sort of clear thinking we need in patent law today. What we don’t need is clever gamesmanship of ignoring the context of words.

  20. Dale B. Halling October 5, 2014 10:21 am

    Saul, a specific musical score does not have an objective result, it does not do something that is repeatable. I think an analogy might help. A movie, say Casa Blanca, is a human creation with a subjective result. But the creation of motion pictures is an invention or really numerous inventions. Movies have an objective result of playing pictures in a synchronized sequential manner that results in the impression of motion. Casa Blanca does not have an objective result, it is not the goal of Casa Blanca to have an objective result. The goal of Casa Blanca is the subjective result of the audience. The system of writing down musical scores is an invention. It is an objective process by which any musical score can be written. But a particular musical score such as that for America the Beautiful is a work of art.

    Really this is something we have to do all the time as IP attorneys – differentiate between the artistic elements and the objective or inventive elements of human creations.

  21. step back October 5, 2014 3:40 pm

    Dale @19

    No hard feelings.
    Just one of our many debates in areas where we don’t exactly see eye to eye.

    You are an “objectivist”. I get that.
    I am a “subjectivist”.

    By that I mean that the semantic essence of a word generated by a speaker (/writer) is subjective as to him/her and when that same word is received by a listener (/reader) the semantic essence that the listener (/reader) conjures up in his/her head is subjective as him/her.

    So if I utter the word “computer” to one of the SCOTUS Nine, I will probably have in my head (subjectively) an image of a sequential state machine made of real transistors and whose states are determined by real electrons transferred to or through the gates, sources and drains of those transistors, where some of those electrons are generated in direct response to physical “software” codings.

    When the uttered word “computer” reaches the ears of the SCOTUS person, I have no idea what happens next. I can only suspect from reading their writings that they see images of metal boxes with non-physical “magic” filling the internals. They imagine coffee shops filled with geek wizards who control the “magic” inside the computer boxes by means of incantation of non-physical “magic words”. They refer to those non-physical magic words as “software”.

    They imagine that anyone can visit one of those coffee shops on a Friday afternoon and importune of the geek wizards to “make it so” over weekend’s course of incantations casting. When Monday morning comes there is new (but not patent eligible) “magic” glowing from the inside of the computer box. The make-it-so command has been fulfilled by non-patent eligible magic casting 😉

  22. Dale B. Halling October 5, 2014 5:26 pm

    Stepback,

    Sorry about that I woke up cranky.

    Your story may be true, but if we live in Alice and Wonderland then there is no point to practicing law or even writing these sentences.

  23. step back October 5, 2014 9:30 pm

    Dale no need to apologize to me.
    It used to be a free country where one could speak one’s mind.

    Now we have become a frightened country, a home of the scared and a land of the indentured debt slaves. (No longer home of the brave and land of the free.)

    A scared and frightened soul buckles under to the insanity passed down by the magical-think Supremes.
    What few rebels remain, say, no! We won’t swallow that horse piling.

    Which side are you on?

  24. Dale B. Halling October 5, 2014 10:26 pm

    Stepback, you really wanted to be poet and good one you would make. But HEAR HEAR

  25. step back October 6, 2014 1:19 am

    Hale to the Chief 🙂

  26. American Cowboy October 6, 2014 9:46 am

    Step and Dale, I think the exercise of drafting a definition of invention, and a definition of inventor may be quite useful. it needs to be a collaborative effort, though, if we want a consensus buy-in. Sniping at each other is not consensus building (just ask Harry Reid).

    I’m glad to see you two putting the sniping behind you.

  27. step back October 6, 2014 1:26 pm

    Cowboy,

    Don’t worry about it. Dale and I snipe at each other not only here but also at his web site (State of Innovation).
    We just have different points of view about a whole lot of things. We are however on the same page when it comes to the importance of America having a viable patent regime where inventors are, and know they are, protected.

    As for a definition of “invention”, even the framers of the 1952 Patent Act, smart and wise as they were about this area of law, understood that “invention” is one of those undefinable terms. If you look at 35 USC 100 it says invention means invention …. or discovery. (period)

  28. Dale B. Halling October 6, 2014 1:33 pm

    American Cowboy,

    Stepback’s reaction to the decay he sees in the world is to be a cynic and he knows that this drives me crazy. Stepback was purposely tweaking me.

    Patent attorneys on this site have argued that an invention is whatever congress says it is. This sort of thinking leads no where. Could you build a bridge or a computer or a spaceship with these sort of sloppy definitions? Its like once engineers become patent attorneys they check their brains at the door. The courts, congress, people and the press will never make good decisions about patent law until they have a good definition of what an invention is – GIGO. And we cannot expect that they will be the ones to provide that definition.

  29. Dale B. Halling October 6, 2014 1:53 pm

    Stepback, If the term is undefinable then we have no idea what we are talking about. It is nonsense to say it is undefinable. You may quibble with my definition, you may be able to improve on it, but it is a valid definition for an invention. It is also a classic definition, with a genus and differentiator. Inventions are in the class of human creations that is the genus, but not all human creations are inventions (Pendulum of Justice, my novel is not an invention) so the differentiator is that inventions have an objective result.

  30. Donald Grump October 6, 2014 2:56 pm

    I never saw “Casa Blanca” but I loved Casablanca

  31. step back October 6, 2014 3:34 pm

    Dale @29:

    I gave you MY definition of generic “invention” at comment 17 but, as I expected, you rejected it.
    When I said undefinable, I was talking about 35 USC 100 as drafted by the authors of the 1952 Patent Act.

    Perhaps we can better define what is NOT an invention as opposed to what is an invention.

    It is not invention to copy someone else.
    It is not invention to simply find something and claim that you created it (except that it is inventive to come up with such a lie).
    It is not invention to …. (you fill in some more examples). 😉

  32. Dale B. Halling October 6, 2014 4:03 pm

    Stepback,

    1) I disagree. The incandescent light bulb is an invention. If I copy it that does not make it not an invention. It just not my invention. You are confusing what is an invention with who is the inventor

    2) Can you give me an example?

  33. step back October 6, 2014 5:02 pm

    Dale,

    I respect your disagreement. However, under your definition everything made by man is an invention. The word invention swallows up all things under the sun made by man. (And of course you are goading me into declaring this profound thought. Eureka!)

    I am talking about the act of inventing.
    35USC 101 also is talking about the act of inventing. (Whosoever invents …)

    Didn’t someone here say something about staying within context? 🙂

  34. Dale B. Halling October 6, 2014 5:34 pm

    Stepback,

    That is not true. There are plenty of human creations with a subjective result. Hollywood, the publishing industry, furniture industry, food industry are mainly in the business of artistic or subjective human creations. Manufacturing is reproduction of inventions, not invention. Be specific. I still believe you are intertwining what is an invention with who is the inventor.

  35. step back October 6, 2014 6:04 pm

    I’ll let someone else pitch in here because I grow weary of the circular debate. 🙁

  36. Inside informant October 6, 2014 6:34 pm

    “I have heard the scuttlebutt is we’re not getting them yet because the patent bar is not commenting to the Patent Office.”

    That is very interesting to hear about the undue influence the fox has over the guarding of the chicken roost. When will the media pick up on that I wonder?

  37. American Cowboy October 7, 2014 2:10 pm

    Inside, are your referring to the rumor that Michelle Lee will get the top spot when you refer to the fox guarding the chicken roost?