Naked Emperors: A Supreme Court Patent Tale

By Gene Quinn
May 31, 2015

naked-emperor-new-clothes-1The United States Supreme Court is the final arbiter on the meaning of laws in the United States. Unfortunately, the Supreme Court is also cloistered and insular. There are only Ivy League graduates on the Supreme Court, which guarantees very little diversity of thought. Sure, there is great divergence between the conservative Justices and the liberal Justices, but in terms of every day experiences they all went to the same places, they ate the same places, they drank the same drinks, were taught by the same people and now they lived the same lives for the vast majority of their professional careers.

Tucked far away from reality the Supreme Court acts as if they know everything about everything, which is just ridiculous. In a world becoming more complex and specialized by the day it is utter fantasy to believe that a homogenous group of senior citizens from Ivy League schools who have no scientific training possesses the breadth and depth of knowledge to wisely pontificate on any and every subject, particularly those relating to cutting edge technology.

The idea that the Supreme Court is at all capable of understanding — let alone deciding — issues of a technical nature is ridiculous. Yet their individual and collective lack of knowledge hasn’t prevented them from reaching misguided decisions in a variety of cases. Like an Emperor without any clothes the Supreme Court seems blissfully ignorant of their own ignorance. Indeed, you would have to go out of your way to find nine less qualified people to decide issues of a technological nature.

Supreme Court misunderstandings of science and technology are legendary, but the one that pretty much captures the fullest extent of their collective lack of understanding is when all nine Justices agreed in AMP V. Myriad that the patent claims at issue defined a man-made isolated gene, but still somehow were able to conclude that the claims were patent ineligible because despite being made by man a patent on the claims would have violated the law of nature doctrine. So at the same time the claims cover a man made molecule not found in nature the entire Supreme Court simultaneously ruled that the claims were to something that is naturally occurring.

Justice Thomas wrote: “we hold that a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated.” Apparently not realizing the logical incongruity Thomas would later explain that Myriads claims could not be saved “by the fact that isolating DNA from the human genome severs chemical bonds and thereby creates a nonnaturally occurring molecule.” Thus, the isolated DNA claims somehow simultaneously cover naturally occurring DNA even though isolating DNA “creates a nonnaturally occurring molecule.”

The critical question left unanswered by the Supreme Court was how something could simultaneously be man-made and naturally occurring at the same time. In fairness, how could such an absurd statement be explained?

Indeed, the Supreme Court’s decision in Myriad is the legal equivalent of Schrödinger’s cat, which is a thought experiment devised by Austrian physicist Erwin Schrödinger to explain a problem with the Copenhagen interpretation of quantum mechanics. Schrödinger posits that if you put a cat in a box there is no way to know whether the cat is alive or dead without observing the cat, which seems obvious enough. Schrödinger then takes a leap, saying that since you cannot know whether the cat is alive or dead without observing the animal, the cat can be simultaneously thought of as both alive and dead. Schrödinger’s cat was conceived to draw attention to the incongruous nature of the Copenhagen interpretation of quantum mechanics since a cat obviously cannot both be simultaneously dead and alive. If Schrödinger were alive today perhaps his thought experiment would have been conceived in response to the Supreme Court’s decision in Myriad given the logical and scientific impossibility that something is simultaneously both nonnaturally occurring and naturally occurring.

I wonder if the Supreme Court is even familiar with Schrödinger? I wonder if they would understand how their Myriad decision could be likened to the Copenhagen interpretation of quantum mechanics? I wonder if they even care?

I have also long wondered about the propriety of refusing to define obscenity. Justice Potter Stewart famously refused to define obscenity explaining: “I shall not today attempt further to define the kinds of material I understand to be embraced within that shorthand description… But I know it when I see it.” See Jacobellis v. Ohio (Stewart concurring opinion). This “I know it when I see it” standard has been a part of Supreme Court lore ever since it was uttered in 1964. It has also been the best working definition of obscenity. Ultimately, what is obscene is in the eye of the beholder, as evidenced by the fact that obscenity laws vary greatly from State to State. But possession of obscene material is a crime. It is troubling that there could be so many subjective definitions of obscenity and one widely cited, yet vague definition that at best provides an indefinite and ambiguous understanding. We laugh about the carelessness displayed by the Supreme Court when it comes to defining obscenity, but those who make, possess, sell or import obscene materials are not the most sympathetic of crowds. The lack of a sympathetic character means we tolerate what should be a constitutionally infirm generalized concept that could lead to the deprivation of liberty.

What does obscenity have to do with patents? A lot. There are some who believe that the “I know it when I see it” standard is really the subjective test for obviousness. More recently, however, the “I know it when we see it” approach has been expanded to patent eligibility.

The Supreme Court continually expands judicially created exceptions to patentability under the guise of the abstract idea doctrine. Let’s leave for today the fact that the statute the Supreme Court is interpreting, 35 U.S.C. 101, does not provide any authority for the creation of a class of judicially created exceptions to patent eligibility. That should matter, but it seems the Supreme Court’s thirst for power, authority and relevance is not tethered to any particular statutory language.

The very justification for the patent system is the dissemination of information so society benefits and future innovators can stand on the shoulders of those who have come before. Ironically, software enables this fundamental benefit of any patent system by facilitating the widespread, immediate dissemination of information, yet in the mind of many Jurists software itself is not patent eligible. Still, software is an enormous part of the American economic engine and at the foundation of American competitiveness. Google, IBM, Microsoft, Apple, Qualcomm and so many other giant U.S. corporations are leading the software economy, yet the Supreme Court seems perfectly comfortable with throwing the very foundation of the industry into turmoil. The inability to own the rights to software innovations will mean that the research, development and investment of these and other companies are worth less, if not worthless.

Given that we live in an age of software innovation, where 50% or more of all innovation is in one way, shape or form related to software, why are many Article III and Administrative Judges declaring that software is not patent eligible? Perhaps a more important question is why is Congress letting these Judges get away with what they are doing? There is no legislative support for the existence of any so-called judicial exceptions to patent eligibility, yet Article III and Administrative Judges are striking down patent after patent in this economically vital area.

The biggest piece of the problem in the ongoing debate about the patent eligibility of software is the Supreme Court has never defined the term “abstract idea.” Nevertheless, despite a failure to define this critical term, the Court has found that certain patent claims violate the undefined “abstract idea doctrine.” How there can be a doctrine without a definition is particularly curious. The term “doctrine” is defined as ” (1) a particular principle, position, or policy taught or advocated… (2) something that is taught; teachings collectively… (3) a body or system of teachings relating to a particular subject…” Call me crazy, but it seems impossible from a definitional standpoint to have a doctrine without a definition.

It defies logic to hold people accountable based on a standard that even those who judge cannot, or will not, define. Unfortunately, it seems that a lack of logic is no impediment to achieving a myopic decision. The Supreme Court won’t tell you why something is patent ineligible in a way that would stand up to even modest logical scrutiny, but they sure seem to know it when they see it.

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 79 Comments comments.

  1. Pro Se May 31, 2015 11:28 am

    My patent position and value has been affected as much as the next patentee, but my thought about this article is this:

    Most law based legal person with a technical patent qualification also most likely have an agenda; an ideal by which opinions are made when it comes to patent issues.

    So you have “pro” patent and “anti” patent people at heart.

    The Supreme Justices, through their detachment from being technically invested in patent cases, can provide rulings based on a strict perspective of their interpretation of the law.

    Their ignorance to technology is where the law needs them to be, for both sides (pro and anti patent) to get a best possible neutral judgement.

  2. Anon May 31, 2015 11:52 am

    With all due respect Pro Se, glorifying ignorance and holding it out as a virtue is the epitome of ignorance and is to be steadfastly avoided.

    To think that being knowledgeable leads inextricably to being “pro-patent biased” quite misses the value that knowledge brings and in fact seeks to place the label of “bias” on what is otherwise called “wisdom.”

    I thus reject your view in its entirety.

  3. step back May 31, 2015 1:10 pm

    Gene: Spot on post. What’s that term for people who are so incompetent they don’t even comprehend how incompetent they are?

    Anon: There is a growing majority of people in this country of ours who take pride in being ignorant. Have you seen that movie, Idiocracy? We’re there.

  4. Gene Quinn May 31, 2015 1:12 pm

    Pro Se-

    You are 100% thoroughly wrong. A Supreme Court that thinks a second year college engineering student can code up a complex piece of software (which is what Justice Kennedy actually said) has no place in deciding any issues relating to technology. The fact that they can say that something is both nonnaturally occurring and simultaneously naturally occurring is all the proof anyone could need. Similarly, the Supreme Court has declared magnesium the equivalent of manganese, which is scientifically wrong. On a more patent centric side they have ruled that in order to be entitled to make a claim under the doctrine of equivalents you must provably not have been in possession of the equivalent at the time you filed your patent application. These and so many other truly ignorant rulings demonstrate that ignorance of technology and ignorance of patent law is not helpful.

    That you think ignorance is the answer is comical.

    -Gene

  5. ReformSCOTUS May 31, 2015 1:17 pm

    What do other common law countries do?

    The UK Supreme Court is bound by parliamentary sovereignty, and can’t overturn primary legislation. The justice retirement age is 70.

    The Canadian Supreme Court’s decisions can be overridden by Parliament for renewable 5 year periods. The justice retirement age is 75.

    The Australian Supreme Court’s jurisdiction in constitutional matters can be removed by parliament. The justice retirement age is 70.

    The upper age limits are sensible. The lack of limits on Supreme Court review in our (the US) constitution is almost certainly a drafting oversight. Thomas Jefferson realized this early on:

    “To consider the judges as the ultimate arbiters of all constitutional questions [is] a very dangerous doctrine indeed, and one which would place us under the despotism of an oligarchy. Our judges are as honest as other men and not more so. They have with others the same passions for party, for power, and the privilege of their corps. Their maxim is boni judicis est ampliare jurisdictionem [good justice is broad jurisdiction], and their power the more dangerous as they are in office for life and not responsible, as the other functionaries are, to the elective control. The Constitution has erected no such single tribunal, knowing that to whatever hands confided, with the corruptions of time and party, its members would become despots. It has more wisely made all the departments co-equal and co-sovereign within themselves.” Thomas Jefferson to William C. Jarvis, 1820. ME 15:277

    A lot of major problems in US history (e.g. the Dred Scott decision which may have contributed to the Civil War, the Slaughterhouse cases which undid many of the Civil War reforms, the Roosevelt Supreme Court battles, which may have prolonged the great depression) were greatly aggravated by poor Supreme Court decisions. The present court seems determined to set a new record here.

    When the Supreme Court uses judicial restraint, the drafting problems in the constitution are less apparent, but when the court does not exercise judicial restraint (as is the case now), the need for constitutional reform becomes clear.

  6. Daedelus May 31, 2015 1:31 pm

    There is a fundamental difference between making something and both making and designing it. If I copy something that you first designed, is it an “I-made” thing or a “you-made” thing? Am I the inventor? If you think that my reproduction of something you designed makes you just a copier, then apply the same reasoning to man-made reproductions of nature-designed things and ask yourself: does copying nature’s design make you an inventor? If so, then I’m the inventor or whatever you designed once I make one.

  7. Anon May 31, 2015 1:49 pm

    Daedelus,

    Oh what is in a name (and how you would have been protected had patent law existed in your time)…

    http://www.mythweb.com/encyc/entries/daedalus.html

  8. Daedelus May 31, 2015 2:07 pm

    …But irrelevant distractions aside, do you agree that if I make something you designed that doesn’t turn me into the inventor? Because “man-made,” things that nature “designed” are, arguably, products not of man but of nature. That seems to be the operative and quite reasonable distinction at work in Myriad.

  9. Gene Quinn May 31, 2015 3:23 pm

    Daedelus-

    So much wrong with what you wrote.

    First, when man creates a nonnaturally occurring molecule man is NOT copying nature. That should really be self evident, although you seem to completely miss that point or you choose to ignore it because it doesn’t fit into your syllogism.

    Second, building is not a required step to be an inventor. So if someone designs (using your word) something that is useful, new and non-obvious they are an inventor. If they obtain a patent they are now a patent owner. If you make something that literally infringes on a valid patent claim you are an infringer (also known as a tortfeasor). There is no great mystery as you seem to suggest. The law is astonishingly clear, although you seem to wish it to be something different. Even the Supreme Court hasn’t conflated patent law issues as you have.

    -Gene

  10. Daedelus May 31, 2015 5:03 pm

    Besides simply asserting that duplicating something that man didn’t design but that is natural is “not copying” nature, can you offer an argument? If I copy your design and implement it, how does that differ? Is my duplication not copying you?

  11. Gene Quinn May 31, 2015 5:27 pm

    Daedelus-

    I’m not going to tolerate asinine nonsense that gets in the way of a meaningful discussion of the issues. There are plenty of places on the Internet for you to go and pretend that “man didn’t design” something that is man made and nonnaturally occurring. IPWatchdog is not one of those places. To comment here you must remain intellectually honest.

    So yes, I can rebut your argument. You are trying to build an argument on a factual lie. That makes your position wrong. Man has not duplicated something that is natural. Even the Supreme Court, as intellectually dishonest and unknowledgeable as they are, understood that the claimed molecule was nonnaturally occurring. That by definition means it is not natural.

    -Gene

  12. Daedelus May 31, 2015 5:29 pm

    You would agree that copying a molecule found in nature (let’s say, adrenaline) would not deserve calling me its inventor. Critical for you above seems to be that the molecule not somehow be found in nature. In the Myriad case, it seemed important that the string of nucleotides was not created by man but merely identified in nature and copied from it. Just like if I find the plans for something you designed and built one I wouldn’t suddenly be its inventor.

  13. step back May 31, 2015 8:10 pm

    Gene,
    I suspect you will run into them who are scientifically ignorant and proud as punch about it both on Main Street and in the hallowed halls of the upper judiciary.

    Just as there is a great divide between the haves and the have nots when it comes to financial well doing, there is a grand schism between those who understand science and those who don’t.

    The first place to point one’s fickle finger of blame towards are the journalists for doing such urinally impoverished job of educating the public about matters scientific. Then there are the schools who try to make it a matter of scoring high on rote learning exams instead of focusing on subject matter comprehension and the art of critical thinking. We have been dreading the consequences of our mindless bureaucracy driving this train down the wrong track. Now we’re there. At the over the cliff station.

    SCOTUS has gone over the cliff.
    Daedelus is there waiting to joyfully greet them.

    p.s. Daedeus, the BRAC1 and BRAC2 molecules were not found in nature. You are highly misinformed. Maybe there is hope for you if only you remain slightly open minded, SCOTUS of course, is beyond help because you can’t tell them who consider themselves “supreme” that perhaps there are subject areas in which they not quite that but rather the opposite.

  14. Rolf Claessen June 1, 2015 12:11 am

    Gene, I agree that the US Supreme Court sometimes has difficulty to grasp technical ideas. However, the Myriad case is pretty much in line with the notion around the rest of the world like the Boards of Appeal of the European Patent Office (with technical judges with degrees in chemistry).

  15. Paul Cole June 1, 2015 1:53 am

    If the offending opinions are studied in detail and proper briefs are produced as law students are expected to do as part of their degrees, then it becomes apparent that the Supreme Court opinions are more cautious, reasonable and narrow than a New York Times contributor with a degree in economics would at believe on first and relatively superficial reading. Failure to conduct such an analysis and to identify the true scope of the rules of law that can be derived from these opinions is regrettably widespread.

    For example, in Myriad, Justice Thomas famously said that a naturally occurring DNA segment is not patent-eligible merely because it has been isolated. It does not take a genius level of language interpretation to realise that this means “if the reason I have to consider is the only reason”. If there is an additional reason e.g. that the isolated segment has new and hitherto unrecognised utility then that factual situation does not fall within the rule of law in Myriad and has Hartranft-eligibility (if anyone does not know what that means, they should look it up). It is suggested that anyone who cannot figure out that “just one” does not cover two would be well advised to pursue a career other than patent law.

    Furthermore, as has been pointed out on a number of occasions, the BRCA 1 patent reports the sequence of the cDNA but not the full length sequence of the wild-type gene. Any reference to rupturing the chemical bonds and isolating the full length BRCA1 wild-type gene is nonsense because the patent does not report the purposive cleavage of any chemical bond with any specific restriction enzyme, merely the probing of DNA libraries and reconstruction of longer sequences from overlapping shorter sequences by computer analysis in silico, not in vitro as subsequently alleged in legal argument. Many senior people I have spoken to have expressed scepticism about this, but it is highly likely that the Justices or one of their law clerks will have had the mind-set of not taking things at face value but instead checking carefully and will have figured that out. If you look at Justice Thomas’ opinion carefully you will appreciate that he had a much better grasp of the legal and technical facts than he is often given credit for.

    One question that is often not considered in relation to these cases is whether they represent a norm or an extreme. Arguably Prometheus was an extreme because what was claimed was the result of research that the inventors had recommended should be done in an earlier published paper, and the allegedly novel feature was merely information without any defined involvement of the hand of man in the use of that information. Arguably the BRCA1 patent was an extreme because what was being claimed extended beyond the research that had actually been done and covered further research that had not been described. If what comes before the Court is a case which is in truth an outlier, then over-exuberant interpretation of the resulting opinion is not appropriate, and the profession and the USPTO should realise this.

  16. another anon June 1, 2015 6:54 am

    If I recall correctly, in a UK Supreme Court case involving biotech, the judges specifically requested to be instructed in the technological background by university lecturers, prior to hearing the case. Perhaps the US Court could usefully take a leaf out of that particular book.

  17. Benny June 1, 2015 7:05 am

    “the patent claims at issue defined a man-made isolated gene”

    Can you clarify this for me? Does the applicant claim to have invented a gene which is unlike any occurring in nature, (tantamonut, I suppose, to creating a new life-form), or do they claim a gene isolated from a naturally occuring form (in which case the method of isolation would be unique an innovative, but not the actual gene isolated)?

  18. Anon June 1, 2015 7:20 am

    Mr. Cole,

    Respectfully, your call for careful evaluation (as has been pointed out to you on several forums) has not been heeded by those who drive subsequent decisions: lower court judges and the executive branch federal agency (both the examining area and the Article I court area).

    To that end, your advice here is (and remains) misplaced.

    May I suggest that you reformulate your message?

  19. Edward Heller June 1, 2015 9:31 am

    Gene, regarding 103, it interjected subjectivity into the invention analysis as much as any Supreme Court opinion. Without a suggestion, motivation or teaching actually existing in the prior art, what is obvious to one of ordinary skill in the art is simply a seat-of-the-pants guess.

    What this test replaced was the test being developed under Hotchkiss v. Greenwood, which actually held that the claimed subject matter was the work of the ordinary mechanic because there is no functional improvement by substituting clay for wood in the door mechanism.

    What the Supreme Court was looking for was functional improvement. That is why the court held the claims in the A & P case to lack invention. Just the other day I reread Rich’s explanation of the origin of section 103 that is reprinted in a recent addition of the AIPLA quarterly Journal with a foreword by Judge Michel. Rich thought that he was replacing a seat-of-the-pants test with an objective test, but he never characterized the Supreme Court test properly. Either he did not understand what the Supreme Court was doing or he was intentionally misrepresenting what they were doing. Either way, Rich’s description of the Supreme Court jurisprudence on invention is and was completely wrong.

    So today we are stuck with a 103 which yields, in an average case, a somewhat arbitrary result because it is subjective. It is not objective as you suggest.

    This is what we get when we look at the Supreme Court opinions with a jaundiced eye. We get legislation from the patent bar that makes things worse. This for example, take a look at the jurisprudence that has developed around sections 271(a)-(b). By trying to codify the law of infringement we have thrown a monkey wrench into that law from which we may not recover.

  20. Curious June 1, 2015 9:56 am

    The first place to point one’s fickle finger of blame towards are the journalists for doing such urinally impoverished job of educating the public about matters scientific.
    Spot on there. 95% of the time I read an article in the mainstream media about patent law eligibility, the author makes (serious) misstatements about fundamental matters. As a society, we cannot have a serious debate about an issue when the underlying facts are being misrepresented (intentionally or not).

  21. Brad Salai June 1, 2015 10:49 am

    And it isn’t just the Supreme Court, talk with District Court judges, they believe, that they are equipped to determine the truth simply by listening to the advocates for both sides and “judging.” They reject, to a person, that there is ever an objective truth, or that any scientific training is needed to discern what it is. Arghhh.

  22. Gene Quinn June 1, 2015 11:03 am

    Daedelus-

    You say: “In the Myriad case, it seemed important that the string of nucleotides was not created by man but merely identified in nature and copied from it.”

    That is wrong. Please read the Supreme Court decision in Myriad. If you actually read the decision, or my quotation from the decision above, you will clearly see that even the Supreme Court acknowledged that isolated DNA is not something that naturally occurs. So man has not copied it from nature. You simply cannot copy from nature something that doesn’t exist in nature. Why it is so difficult for you to understand such an easy concept is perplexing.

    -Gene

  23. Gene Quinn June 1, 2015 11:07 am

    Rolf-

    Myriad may well be in line with the way that the rest of the world handles gene patents. But in the U.S. system it is Congress that makes these decisions, not the Supreme Court. The Supreme Court has no authority to create judicial exceptions to patent eligibility, although they do.

    Regardless of whether this is how the rest of the world treats genes it is still perfectly correct to observe the logical and scientific reality that something cannot be both naturally occurring and nonnaturally occurring at the same time. So even if we were to stipulate that the Supreme Court achieved the correct decision (which I dispute) the way they articulate decisions makes it clear that they know nothing about science, nothing about patent law and increasingly nothing about logic.

    To your point on the way the rest of the world handles genes… would you care to write an op-ed for publication that gives a European perspective?

    Cheers.

    -Gene

  24. Gene Quinn June 1, 2015 11:11 am

    Ed-

    I love your characterization: “what is obvious to one of ordinary skill in the art is simply a seat-of-the-pants guess.”

    When advising clients it is increasingly difficult to determine what is obvious, or at least to communicate it to them in any coherent way. I do a lot of software work, so when dealing with gadgets I also have to recalibrate myself. KSR seems to get applied only in lip service in some Art Units where in other Art Units it is virtually impossible to get anything issued no matter how revolutionary.

    -Gene

  25. EG June 1, 2015 11:11 am

    “So today we are stuck with a 103 which yields, in an average case, a somewhat arbitrary result because it is subjective. It is not objective as you suggest.”

    Ned,

    Absolute malarkey. Current 35 USC 103 is far more objective than the utterly subjective “invention” test that Our Judicial Mount Olympus provided us with before 1952. And the TSM standard that the Federal Circuit articulated (and which the Royal Nine unfortunately rejected in KSR International for the absurd and subjective “common sense” test) made 35 USC 103 as objective a standard as it could be.

    “This is what we get when we look at the Supreme Court opinions with a jaundiced eye.

    Ned,

    More malarkey. We should look at the Supreme Court opinions with a very jaundiced eye. When the Royal Nine can’t even characterize the Federal Circuit majority holding correctly (as they embarrassingly did in Akamai), they frankly deserve no respect or credence by us in the patent bar. And your constant criticism of Judge Rich is out of line. He is one of the recognized architects of the 1952 statutes whether you like it or not.

  26. Gene Quinn June 1, 2015 11:19 am

    Curious-

    One question I receive with some frequency from journalists is whether a patent MUST issue if an invention is found to have patent eligible subject matter.

    I never want to get upset for a journalist asking that question. So many journalists don’t ask that or any other critically important question to inform themselves. So many just assume that if something is patent eligible that means a patent must issue. It is almost always shocking for a journalist to find out that patent eligibility is only the first of a five part test, with much more rigorous and appropriate inquiries ahead before any patent could issue.

    Cheers to those who take the time to ask the basic questions to get the reporting right. If only more took their craft as seriously things wouldn’t be like they are now.

    -Gene

  27. Benny June 1, 2015 11:22 am

    Gene @ 23
    “something cannot be both naturally occurring and nonnaturally occurring at the same time”.
    It occurs to me that some some elements do not exist naturally in their pure state – aluminium, for example, is only found in nature as an oxide. But purified aluminium would still be a natural substance, would it not?
    I am aware that the method of purification is patent eligible, and that the USPTO has in the past granted patents for elements (US3156523 and US3161462) – albiet not occuring in nature.

  28. Edward Heller June 1, 2015 11:48 am

    Gene, re: Myriad, you will agree, I think, that one cannot patent a naturally occurring gene. But to allow a claim to isolated genes where the isolation process is well know in substance patents the naturally occurring gene, the only novel structure in the claim. That is what we need to take from Myriad.

    To set up “man made” as the litmus test, then of course the Supreme Court got it wrong. However, the Supreme Court was looking to some difference in structure of the DNA sequence, in the novel structure being claimed.

    It is worthy to note that cDNA passed this test.

  29. Edward Heller June 1, 2015 11:50 am

    Gene, I agree with you that the Bilski/Alice test of abstract is vague and indefinite. We should also acknowledge that the source of this test was Chief Judge Rader of the Federal Circuit, not the Supreme Court.

  30. Edward Heller June 1, 2015 11:56 am

    EG, TSM is an objective test. What is obvious to some undefined, vague, indeterminate, subjective person of ordinary skill is not objective. It is as vague and as indefinite as one can be.

    Regarding what the Supreme Court was “doing’ prior to ’52, please tell us what that was, then tell us why that was not a good test.

    Now if you read Rich’s article, his main beef was with other circuits who, in his opinion, were making it up as they went because no test had been codified. But that is the way with disputes among circuits. They eventually get resolved at a higher level.

  31. Edward Heller June 1, 2015 12:01 pm

    Akamai? The source of the problem was Rader’s decision in BMC Resources. That decision was off the wall.

    Rich? Everything he touched in ’52 turned sour. 112(f). 103. 271(a)-(d). His consistent interpretation on the bench that prior included secret, non public information.

    You have got to be kidding. Rich caused more damage to the patent system than any single person in history.

  32. EG June 1, 2015 1:05 pm

    TSM is an objective test. What is obvious to some undefined, vague, indeterminate, subjective person of ordinary skill is not objective. It is as vague and as indefinite as one can be.”

    Only correct in say that “TSM is an objective test,” and was the one proposed by the Federal Circuit for making determinations under 35 USC 103 objective. Instead, the Royal Nine in KSR International essentially tossed TSM as the objective test for determining obviousness under 35 USC 103.

    “Regarding what the Supreme Court was “doing’ prior to ’52, please tell us what that was, then tell us why that was not a good test.”

    Ned,

    Very easy to tell you why: the Royal Nine simply made a “set of pants judgment” as Gene noted. Or worse, used mind-boggling axioms like the “improbability of finding patentability in a combination of old elements.” As former Chief Judge Markey astutely noted, ALL INVENTIONS ARE A COMBINATION OF OLD ELMENTS.

    You may no like Rich or his views, but I, like many others, realize that Rich had a significant impact on the 1952 statutes. The real problem, plain and simple, is Our Judicial Mount Olympus engaging in an unprincipled power grab from the Federal Circuit when it comes to patent law jurisprudence. The creation of the Federal Circuit in 1982 was no accident as even Congress recognized that Royal Nine were “out of control” when it comes to patent law jurisprudence, and especially following the explicit text of the patent statutes, including decisions like Andersons-Black Rock, Sakraida, Gottschalk v. Benson, and Parker v. Flook. When it comes to patent law jurisprudence, the Royal Nine pretty much make it up with regard to what the patent statutes explicitly say, and that goes for what happened before 1982 and what has happened after 2007.

  33. Edward Heller June 1, 2015 2:11 pm

    EG, the test was laid down in Hotchkiss — there has to be a functional improvement. Later, in cases like Eibel Process, it was further refined to require that the improvement be one of kind, not degree. Some new functionality not previously known.

    The test is very much like the current test of invention in the ROW.

    TSM is an objective test. We agree on that. But that is not what was enacted. 103 is rather vague and indefinite because there is no objective standard for determining or for how to determine what would be obvious to one of ordinary skill in the art. At least with functional improvement, one can show with real evidence that there is an improvement.

    Regarding combinations, they can be of entirely old elements. But not always. And, if there is an improvement in one, that element is not really old.

    The problem was at the time, in cases like Lincoln Engineering and Mercoid, companies were protecting the sale of staples using contributory infringement. Take Mercoid. The stoker switch was not really new. The invention was its location just above the heating chamber. That was the invention — the location of the switch, not the switch itself. Yet the patentee was obtaining royalties on the sales of stoker switches.

    In a sense, 271(c) codified Mercoid, rather than overturn it. 271(d) was the statute that was more directly on point to overturn it.

    That Rich was picked by Harry Ashton, then president of the APLA, to head up the coordinating committee to review and comment on Federico’s draft is well known. But that does not make everything he did or said right. Rich really did not understand the fundamentals very well. I can go over chapter and verse with you on this, topic by topic. Just for example, he really did not know what prior art was, or what 103 meant. Prior art was well understood at the time of the ’52 Act to mean what was codified in 102(a) — stuff that was publicly known and used. Yet, under Rich, the CCPA/Fed. Cir. extended prior art to include the whole of 102, whether secret or not. And, as you know, the fundamental criticism of 102/103 is that 103 was applied to secret “prior art.” This is inconsistent with the practice in the ROW, and it was a prime objective of Bob Armitage to fix in recrafting 102/103 in the AIA.

    What Rich was famous for was his insistence to tie every doctrine to a specific statute. No loose talk in cases. To that end, I will say that I agree with him. But, on the whole, Rich was a disaster to patent law.

  34. Paul F. Morgan June 1, 2015 2:48 pm

    With all due respect, what is the point of patent attorneys constantly spending time complaining about Sup. Ct. and Congressional decisions that were literally or nearly unanimous, and bi-partisan, and hence NOT going to be overruled no matter what anyone’s personal views are? I think it just confuses inventors and others who may think that some knights in armor are riding to their rescue, when then need to learn to understand and live with what the current law IS, warts and all.

  35. Alex June 1, 2015 3:58 pm

    Alice writes a book containing chapters 1,2,3. Bob isolates chapter 3, and publishes it. Bob “made” Chapter 3 because it had not been published in isolation before?

  36. DaveR June 1, 2015 4:30 pm

    Why should we expect the justices of the Sup Ct to be much different than our “learned” legislators who gave us a revised patent statute requiring a best mode description that is not required? Who allowed court decisions effectively removing the right to an injunction against an infringer? Who totally confused the value or need of potential defendant infringers to obtain competent legal opinions? Etc.

  37. Curious June 1, 2015 6:06 pm

    what is the point of patent attorneys constantly spending time complaining about Sup. Ct. and Congressional decisions that were literally or nearly unanimous, and bi-partisan, and hence NOT going to be overruled no matter what anyone’s personal views are
    Congressional decisions? I suggest you erase whatever bookmark you have for this web page, turn off your computer, throw said computer off a very high building, and vow never to discuss the law again. IMHO.

  38. Paul F. Morgan June 1, 2015 9:51 pm

    Neither dictionaries or law school professors writing about legislative decision-making [easily Googled] limit the use of the word “decision” to only judicial decisions, nor was anyone here actually confused. The vote for the AIA is a good example of such a strongly bi-partisan legislative decision.
    Do you think that non-substantive ad hominem attacks accomplish anything other than demonstrating the lack of any effective rebuttal?

  39. step back June 2, 2015 12:16 am

    Alex:
    Alice wrote a book that in hindsight contained chapters 1,2,3 … 10,000; except that the book had no spaces, capitalization, punctuations, chapter headings and the words were in unintelligible code. Bob isolates chapter 3, and publishes it. Yes, Bob “made” Chapter 3 because it had not been published in decoded isolation before.

  40. EG June 2, 2015 8:37 am

    Paul M.

    Sorry but I’m not drinking the “Kool-Aid.” Being critical of the Royal Nine is perfectly appropriate and absolutely necessary. The fact that you rely upon 9 technologically-ignorant Justices with obvious anti-patent basis reaching a unanimous result (and by the way, not in all patent cases) isn’t a persuasive argument. Instead, Our Judicial Mount Olympus has engaged in an unprincipled, and most importantly, unconstitutional “power grab” which usurps the Constitutional authority of Congress (not them) to determine what our patent policy should be as defined by those statutes enacted by Congress.

    I also heard that “deal with the new rules” stuff before when those miserable and nonsensical claim-continuation rules were proposed by the USPTO. Fortunately for us, Tafas and GSK felt otherwise and challenged them

    And what is more “confusing to inventors and others” than the Alice decision which provides an utterly broken test that fails to provide any meaningful definition of what is an “abstract idea”? Sorry, I’m not buying your argument in the least that we should blindly accept the nonsensical and unprincipled view of the Royal Nine; many others in the patent bar don’t buy it either, and rightly so.

  41. step back June 2, 2015 9:17 am

    EG:
    More briefly in the parlance of logical fallacies, “appeal to authority” is not a rational logical thought process.

    Just because someone is an authority figure (i.e., SCOTUS member, President, Senator, Congresscritter, Mayor of a backwoods town) does not mean they know what they are talking about when it comes to any one particular topic.

  42. Gene Quinn June 2, 2015 9:23 am

    Paul-

    You are entitled to your opinion no matter how incorrect or myopic.

    Simply accepting stupid decisions and pretending they are genius is idiotic. For attorneys representing clients it is likely also an ethical violation not to push back. Of course, if you want to tell your clients that all is lost and that there is nothing that they or anyone else will ever be able to do then go for it. You should, however, stop practicing and refer clients out to others.

    In closing allow me to point out that the Innovation Act was a forgone conclusion at the end of 2014 and early 2015. Due to tremendous pressure the bill may not even make it out of Committee. Markup after markup has been postponed. The Senate can’t seem to get anything done either. So it would seem that you are factually wrong to say that no one can do anything about this. Of course, those like you who choose to do nothing can’t accomplish anything. Those who care can.

    -Gene

  43. Gene Quinn June 2, 2015 9:29 am

    Edward-

    You say: “to allow a claim to isolated genes where the isolation process is well know…”

    That is not a 101 patent eligibility issue, but rather a 102 novelty or 103 obviousness issue. Further, you ask us to go along with you when you start from a factually incorrect premise. Myriad’s genes and methods were NOT well known when the invention was made. That things become well known after one invents and obtains a patent does not make something obvious. That an invention becomes ubiquitous does not make it obvious. Obviousness is a before inquiry, not an after inquiry based on hindsight.

    I’m not sure how you arrive at your take-away from Myriad given the case was not about 102/103.

    With respect to cDNA, you should re-read the decision. Not all cDNA is patent eligible despite what you have heard. Notice the word “except” when Thomas explains that cDNA is patent eligible. What he clearly and unambiguously says is that cDNA can only be man made, but that not all cDNA is patent eligible.

    -Gene

  44. Pro Se June 2, 2015 10:11 am

    In my experience, patent attorneys litigating technical patent issues are not engineering marvels (and I’ve dealt with the biggest and baddest companies in Silicon Valley). The same ignorance the Supreme Justices are accused of is the same ignorance every IP litigation lawyer I’ve witnessed has.. Name a top IP firm and they are all technically inept.. but they know the law.. they know how to use a claim term and debate and argue over trying to convince “laymen” thinkers to believe a theory… Not one IP defense lawyer working for a big tech company ever goes and discuss technical merit with the engineers actually building the accused infringing product.. why do IP lawyers go hire technical experts when their clients contain building engineers? Because its all a game.. a game based on how well one side can use the law to get over on the other side.. Show me an IP lawyer that ever actually built something technical, instead of gaining just enough technical acumen to support a legal argument…

    The best thing about the Supreme Justices when it comes to patent issues is they will always be smarter than a jury comprised of regular people that will likely make judgements based on their personal feeling about a defendant (or plaintiff).

    I am pro patent, unfortunately today, the patent business is pro “opinion”.

  45. Night Writer June 2, 2015 10:46 am

    Alice overrules are at least modified Graham. Not enough has been said about this. Consider a client comes with an invention. You find the closest prior art. If the invention is deemed non-obvious over the prior art, then the invention may survive Alice part 2, and proceed to a Graham analysis for 103.

    So, Graham has at least been modified by Alice as for some inventions an Alice part 2 test must be done first, and Alice part 2 is nothing like Graham. Alice part 2 is a judge deciding absent evidence whether the invention is “significantly more” in pretty much anyway the judges feels like assessing the invention.

    This is really the key to getting at Alice. The SCOTUS –the judicial activist that have no clue about technology—will have to resolve these two cases.

  46. Paul F. Morgan June 2, 2015 11:02 am

    Gene, re your comment that “simply accepting stupid decisions and pretending they are genius is idiotic. For attorneys representing clients it is likely also an ethical violation not to push back.” This confuses two entirely different questions. Of course one can complain about bad Sup. Ct. decisions [note to those falsely jumping to a conclusion that I was endorsing them] and complain about enacted laws, and lobby Congress to change the laws or not enact new ones, or strongly argue that one’s clients claims do not fall under the ambiguous scope of Alice or other Sup. Ct. decisions and try to get the Fed. Cir. to provide some appropriate limitations or guidance.
    But that is NOT the same as asking clients to spend their money directly attacking a recent Supreme Court decision or statute without clearly informing the client that their chances are somewhat less than a snowballs chance in h—, and is based on a personal view that they are all wrong. The latter IS a legal ethics issue.

  47. Edward Heller June 2, 2015 11:03 am

    Gene, on Myriad, let me correct a misimpression about something I said. I didn’t suggest that the “gene” was unknown. Actually I intended to say that the “gene” was the only thing new in a claim.

    Regarding focusing on a novel structure that is in nature where the claim includes structure that is not novel but man-made, strictly speaking this does appear to take the 101 analysis after 102 has been applied. But that is the manner of application when a claim includes both eligible and ineligible subject matter.

    It seems that the Supreme Court has not fully acknowledged that this is what they are doing given Diehr that said that 101 was to be considered 1st and that novelty had nothing to do with the analysis. But in point of fact, in hybrid claims, they have been doing this for some time without acknowledging that they are doing it.

  48. Martin Snyder June 2, 2015 11:14 am

    General Jack D. Ripper: Mandrake, do you recall what Clemenceau once said about patents?

    Group Capt. Lionel Mandrake: No, I don’t think I do, sir, no.

    General Jack D. Ripper: He said patents were too important to be left to the lawyers. When he said that, 50 years ago, he might have been right. But today, patents are too important to be left to the judges. They have neither the time, the training, nor the inclination for strategic thought. I can no longer sit back and allow Anti-patent infiltration, Anti-patent indoctrination, anti-patent subversion and the international anti-patent conspiracy to sap and impurify all of our precious bodily fluids.

  49. David Stein June 2, 2015 11:29 am

    Very well-stated, Gene.

    Three comments that further reflect the magnitude of this problem:

    It’s shocking that this Court has assumed the mantle of “protectors of the technology economy,” when the entire collection of justices has (1) neither academic credentials nor industry experience in any science or technology, and (2) neither academic credentials nor industry experience in running a business.

    The past three decades of 101 case law reflect an extreme failure of the judiciary. During the 90’s, the entire court system struggled with meaningless patent law terms like “post-solution activity” and “algorithm.” The 00’s similarly involved fruitless struggles over meaningless patent law terms like “useful,” “concrete,” and “tangible” – and the apparently opposite term: “abstract.” Yet, the Court’s solution to seven years of post-Bilski turmoil is… *even more smell tests?* “Fundamental economic practice” and “organizing human activity” and “longstanding commercial practice” and “significantly more” and “improvement in the functioning of the computer” and “improvement in another technical field”? Why is the Court incapable of learning from experience in this area?

    The tragedy is that the justices’ philosophical musings on technology are not mere daydreams: actual property rights are at stake. No other area of law is so riddled with subjectivity over valuable commercial assets.

    The Court’s unsuitability as a guide for the technology economy is clear and beyond denial. The time has come for Congress to take this toy away from it, for its own good as well as the safety of the neighborhood.

  50. Paul F. Morgan June 2, 2015 11:36 am

    Let me try to give you an example of what I mean re my last two sentences above. [I think this situation actually may lead to a large malpractice case one of these days.]
    A company is sued for patent infringement and goes to a patent litigation firm partner, pointing out prior art patents and publications it has noted. Because the litigation firm partner [not surprisingly] does not like or believe in AIA IPR’s he does not advise the client of the lower cost and greatly higher odds of success in an IPR, and proceeds to bill the client several million dollars for a jury trial and appeal defense which results in an adverse final judgment. When the same patent is asserted against another company on a similar product, that company promptly files an IPR with that same prior art and invalidates the infringed claims. I do not think it would be difficult to find an attorney to take this even on a contingent fee basis as a malpractice case?

  51. Edward Heller June 2, 2015 11:42 am

    David, in Judge Rich’s article recently published in the AIPLA Quarterly Journal, he makes a point that many times a decision has a lot of discussion that makes no sense because the author of the opinion doesn’t know what they are talking about. But is important to look at the decision itself and the results for guidance.

    Thus what I would agree with you that the Supreme Court discussion of patentable subject matter has been anything but clear, we can gather the following from the decisions themselves:

    1. Math is not eligible.
    2. Claiming math in combination with a generic computer is not eligible.
    3. Business methods are not eligible.
    4. Claiming business methods in combination with generic computers is not eligible.
    5. Adding a generic field of use to an otherwise ineligible claim does not save it.
    6. Adding old and conventional data-gathering steps to an otherwise ineligible claim does not save the claim.
    7. Math applied with a programmed computer in an otherwise conventional process that operates to improve that process is eligible.

    Beyond this, the Supreme Court has not gone in the area of software inventions.

    What we see is that if the programmed computer is applied in a larger machine or process to improve it, the Supreme Court has no objection. If however, the computer and computer hardware is simply generic and only being used to calculate, the claim remains ineligible.

  52. Gene Quinn June 2, 2015 11:45 am

    Paul-

    Any misimpression about what you said was created by you saying that it is a waste of time to complain about Supreme court decisions and Congressional actions given that nothing is going to be overruled or changed. I do not believe it is a waste of time at all. We are in this current situation because of an enormously well funded PR campaign by those who want to weaken or ultimately destroy the patent system. The media has bought into the “patents are bad” propaganda, and it has influenced Judges and Members of Congress. Many in the patent community who absolutely require patents to succeed have remained silent for far too long. It is this silence that has significantly contributed to the state of the industry. Continuing to remain silent will not be a winning strategy, although many patent attorneys and most clients want to fly under the radar. Flying under the radar is not a winning strategy unless the goal is to have no valid patents remaining.

    -Gene

  53. Edward Heller June 2, 2015 11:48 am

    Hey Paul, part of the problem with IPR litigators is that they are not licensed to practice before the patent office and therefore are ineligible to actually file an IPR. They can participate in an IPR only by leave of the PTAB.

    Another problem, in this is a big problem, is that the litigators are barred from participating IPRs because of protective orders. Thus litigators have no incentive to bring IPRs because that would essentially divest them of the case if the IPR is successful.

    I think we need to think about reform of protective orders such that litigators are allowed to participate in IPRs, and as a matter of right if they are representing a defendant in court.

  54. David Stein June 2, 2015 11:56 am

    @Edward – yes, I understand that this is how the Court is interpreting 101 (currently, that is; all bets are off as to what they will be saying in six months).

    My point, and Gene’s point, is that the Court is not equipped to make these decisions for a huge number of reasons: its lack of collective experience with technology; its lack of authority under separation of powers (the judiciary is not supposed to create economic policy!); and its inability to solve this problem over the span of decades – even though, as Judge Rader pointed out in Alice:

    “Twenty years of commotion with little agreement… even though the statute has not changed a syllable.”

  55. Night Writer June 2, 2015 12:57 pm

    Judge Rader pointed out in Alice:

    “Twenty years of commotion with little agreement… even though the statute has not changed a syllable.”

    I think it goes back to Benson. Benson is like a law school exam. Every possible argument for excluding information processing from eligibitlity is stuff in the opinion no matter the merit.

  56. Paul F. Morgan June 2, 2015 1:08 pm

    Ned, both of your excellent points above add two additional grounds for patent litigators getting in malpractice trouble for not properly counseling clients re IPRs.

    P.S. As to taking on direct extremely long-shot judicial challenges of statutes or unanimous Sup. Ct. decisions which the attorney strongly disagrees with, if the attorney wants to do that pro bono out of his or her own pocket, fine, but even that needs a few qualifications: Not if that puts the client at risk for sanctions, and not if what the client wants is a quick settlement resolution of the infringement threat hanging over its product line, and not if the client is miss-advised as to the low odds of success.

  57. David Stein June 2, 2015 3:52 pm

    @Edward:

    > Hey Paul, part of the problem with IPR litigators is that they are not licensed to practice before the patent office and therefore are ineligible to actually file an IPR. They can participate in an IPR only by leave of the PTAB.

    IPR is an extension of the USPTO’s examination process. Why should the USPTO grant a blanket carve-out for its own bar requirements for litigators who want to participate in IPR? If it’s a dispute over patent examination, shouldn’t the PTAB require them to meet the standard requirements of familiarity and proficiency with patent examination practice?

    One of the most severe problems with patent reform is that too many of its advocates are not familiar with the patent system – its history, its day-to-day practice, and even its role in the patent process. Important conversation about patent reform gets swamped and distracted with nonsensical suggestions like “the USPTO should impose a new requirement that software patent applicants to include full source code and a working prototype.” (That was the day the EFF lost all of my support.)

    The carve-out that you’re advocating would result in a ton of complaints filed with the PTAB about how this patent is “basically the concept of shooting photos in a studio” and that patent is “basically the concept of rounded rectangles,” etc. The ordinary PTAB appeal process is already running a five-year backlog – let’s please not extend it to a full decade.

  58. Edward Heller June 2, 2015 3:59 pm

    David, an IPR is validity litigation and the best people to litigate are the same trial lawyers who handle the infringement case.

    Within a short period of time, courts are going to allow litigators freedom to participate in IPRs, and the PTAB will allow litigators free admission pro haec vice as counsel.

    If neither do this voluntarily, the Federal Circuit will force it to happen.

  59. David Stein June 2, 2015 4:14 pm

    > David, an IPR is validity litigation and the best people to litigate are the same trial lawyers who handle the infringement case.

    Ned, I’m curious where you draw the line between examination and litigation. My criterion is: is the matter being heard by the USPTO as a review of examination – which is the thing being “reviewed,” after all.

    What’s your criterion? Is it simply: a third party has an interest?

  60. Edward Heller June 2, 2015 4:48 pm

    David, the government itself calls IPRs validity litigation moved from the courts to the PTO. They have nothing to do with examination. The PO has the burden of demonstrating patentability of new claims. No examiner looks at them. Very few have ever been authorized by the PTAB.

    IPRs have nothing at all to do with examination. They are what the government says they are, validity litigation moved from Article III courts to Article I courts.

  61. A Rational Person June 2, 2015 5:07 pm

    I am still amazed by the prescience exhibited by Justice Frankfurter in his concurring opinion in Funk Bros. Even before 35 USC 101 came into existence, Justice Frankfurter anticipated many of the problems that would be caused and have been caused by “natural law” or “law of nature” judicial exception to patent eligibility under 35 USC 101. I wish the current justices understood science and technology 1/10 as well as Frankfurter did.

    <>

  62. A Rational Person June 2, 2015 5:08 pm

    I am still amazed by the prescience exhibited by Justice Frankfurter in his concurring opinion in Funk Bros. Even before 35 USC 101 came into existence, Justice Frankfurter anticipated many of the problems that would be caused and have been caused by “natural law” or “law of nature” judicial exception to patent eligibility under 35 USC 101. I wish the current justices understood science and technology 1/10 as well as Frankfurter did:

    It only confuses the issue, however, to introduce such terms as ‘the work of nature’ and the ‘laws of nature.’ For these are vague and malleable terms infected with too much ambiguity and equivocation. Everything that happens may be deemed ‘the work of nature,’ and any patentable composite exemplifies in its properties ‘the laws of nature.’ Arguments drawn from such terms for ascertaining patentability could fairly be employed to challenge almost every patent. On the other hand, the suggestion that ‘if there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end’ may readily validate Bond’s claim. Nor can it be contended that there was no invention because the composite has no new properties other than its ingredients in isolation. Bond’s mixture does in fact have the new
    property of multi-service applicability. Multi-purpose tools, multivalent vaccines, vitamin complex composites, are examples of complexes whose sole new property is the conjunction of the properties of their components. Surely the Court does not mean unwittingly to pass on the patentability of such products by formulating criteria by which future issues of patentability may
    be prejudged. In finding Bond’s patent invalid I have tried to avoid a formulation which, while it would in fact justify bond’s patent, would lay the basis for denying patentability to a large area within existing patent legislation.>>

  63. David Stein June 2, 2015 5:36 pm

    > IPRs have nothing at all to do with examination. They are what the government says they are, validity litigation moved from Article III courts to Article I courts.

    Ned, the government doesn’t have the best track record viz-a-vis understanding the mechanics and practical ramifications of these administrative processes. (Exhibit A: Tafas v. Dudas. Exhibit B: The procedurally incorrect hiring of PTAB judges by an internal review process, rather than the constitutionally mandated appointment process.)

    There is a growing disconnect between practitioners and non-practitioners about patent law – most directly evidenced by the deepening split between the Federal Circuit (where judges are technologists with experience as practitioners) and the Supreme Court (where justices are academics with B.A. degrees and experience as law clerks). The resulting chaos – including the unmooring of 101 law (and, soon, 112 law) from the actual text of the statutes – are plain and evident. Along these same lines, the clumsy migration of the PTAB from its intended function – an appeal board – to a cheaper version of the federal courts will create further damage.

  64. Edward Heller June 2, 2015 5:53 pm

    David, cheaper for whom? Three APJ’s have to cost the government more than one district court judge.

    I think the idea was that we needed a dedicated trial court with a judge(s) experienced in patent law and technology to make the call on patentability.

    The problem is that the rules do not require the PTAB judges have any skill at all in the technology of the IPR, so they have to rely the on expert testimony just as do district courts. The thing is that the district courts have elaborate procedures for educating them on the technology and the issues that have no corresponding’s procedures in the patent office. For example, prior to any claim construction, the courts routinely asked for technology seminar by both parties to explain to them the basic technical issues underlying the patent. As well, claim construction issues are extensively briefed and argued with demonstratives in a separate proceeding that has no correspondence in the patent office. Furthermore, courts rely on their own technical experts to advise them. As a result, by the time the courts are required to make a call on any patent issue involved in the case they are fully up to speed on the technology involves and the technical issues dividing the parties. They are far better educated than the PTAB could ever be and will never be on what it really is important in the case and why.

    By comparison to what goes on in the District Court, the PTAB is a assemblage of opinionated patent attorneys who react to political pressure on the patent office. But the idea that they are better adapted to decide a case technically is completely false.

  65. David Stein June 2, 2015 6:04 pm

    > David, cheaper for whom? Three APJ’s have to cost the government more than one district court judge.

    I meant the applicant, of course. The ~$15,000 filing fee for IPR / CBM / etc. is massively offset by the streamlined processes (and hence legal fees) of the PTAB, as compared with full-blown federal trials that come with multi-million-dollar price tags. (Source: http://dlj.law.duke.edu/2014/04/what-patent-attorney-fee-awards-really-look-like/ )

    I share many of your concerns about the suitability of the PTAB for these processes. And I am not confident that they are just “growing pains”: I think that the differences reveal deep, fundamental flaws of process over-simplification that will be difficult to patch.

  66. Edward Heller June 2, 2015 6:06 pm

    Speaking of APJ’s, the SC in Wellness v. Sharif last week spoke of the fact that bankruptcy judges were necessary to relieve the burden on the District Courts. In one recent year, just one, they reported litigants filed 964 thousand new bankruptcy cases in bankruptcy court to be handled by 534 full-time bankruptcy judges. Thus the Supreme Court seems to welcome the relief provided by these administrative patent Judges to the extent that what they do does not violate the Constitution.

    As a parenthetical, I saw a recent article about justice in Brazil, a land of many lawyers but very few judges. In one court there were 5 judges and 1,660,000 cases.

  67. Curious June 2, 2015 9:27 pm

    Do you think that non-substantive ad hominem attacks accomplish anything other than demonstrating the lack of any effective rebuttal.
    So … are you saying that “substantive ad hominem attacks” are fair game?

    BTW — when you have something substantive to add, I’ll address it.

  68. Curious June 2, 2015 9:32 pm

    When the same patent is asserted against another company on a similar product, that company promptly files an IPR with that same prior art and invalidates the infringed claims. I do not think it would be difficult to find an attorney to take this even on a contingent fee basis as a malpractice case.
    I don’t think you understand the standard to establish malpractice. Taking a patent infringement case to trial is not an error that no reasonable attorney would make.

    Let’s see what else I can find …

  69. Curious June 2, 2015 9:41 pm

    1. Math is not eligible.
    2. Claiming math in combination with a generic computer is not eligible.
    3. Business methods are not eligible.
    4. Claiming business methods in combination with generic computers is not eligible.
    5. Adding a generic field of use to an otherwise ineligible claim does not save it.
    6. Adding old and conventional data-gathering steps to an otherwise ineligible claim does not save the claim.
    7. Math applied with a programmed computer in an otherwise conventional process that operates to improve that process is eligible.

    1 –> Math per se is not eligible.
    2 –> Again, add the “per se” to your statement.
    3 –> Clearly wrong (the Bilski 4 is not 5 and is now just 3)
    4 –> Clearly wrong (the Bilski 4 is not 5 and is now just 3)
    5 –> I’ll give you that one
    6 –> I think that is fact specific. Almost all claims start with an abstract idea, and almost all inventions are combinations of old elements.
    7 –> Probably, but I would put it past a District Court judge to rule otherwise

  70. Curious June 2, 2015 9:55 pm

    The problem is that the rules do not require the PTAB judges have any skill at all in the technology of the IPR, so they have to rely the on expert testimony just as do district courts.
    Another problem is that many of the PTAB judges I have dealt with are legal lightweights. Granted, they (should) have a better understanding of the technology. However, in many instances, their understanding of the law is woeful.

    The real problem is that there isn’t enough qualified jurists who have a firm understanding of both the law and the technology. As such, we are left with some (e.g., District Court and Federal Circuit judges) that are (mostly) solid when it comes to the law but can be mislead when it comes to technology (and/or the science underlying the technology) and others (e.g., PTAB APJs) who have a better feel for the technology (considering they have to be “jacks of all trades – masters of none”) but don’t have the legal training to fully understand the law.

    Another problem with the PTAB is that they have a master to serve and do not have the same impartiality as a judge. One need only look at the SAWS program to know that the USPTO is not impartial.

  71. Edward Heller June 2, 2015 9:56 pm

    Curious, the premise of the observation is to consider not what they said, but what they did.

    To continue to believe that business methods or math is patentable subject matter after all this is almost silly.

  72. Edward Heller June 2, 2015 10:02 pm

    Curious, no doubt people can try to mislead a judge, but he or she is there to see live testimony and live cross.

    Not so PTAB ALJs. They may be technologically educated, but does not mean they know anything about the technology before them.

    The bottom line, IPRs are woeful on due process, and given the time restraints on the procedure, nothing is likely to ever change for the better.

  73. step back June 3, 2015 7:39 am

    Edward@72,
    Not only do people “try” to mislead judges, they succeed. More often than you might be willing to believe. Witness the so-called “friend” of the court briefs (amici curie) filed with SCOTUS and swallowed whole by the gullible nine of Mount Olympus.

  74. Paul F. Morgan June 3, 2015 10:33 am

    Ned, you keep comparing IPR APJs [all of whom are patent attorneys with some kind of university technical education PLUS extensive experience in reading and understanding claim language] to D.C. or other judges [few of whom have even that]. More importantly, this is further overlooking the fact that key D.C. trial issues are decided by lay jurors with none of those qualifications or experiences.
    Note that I am not responding to your charge of lack of IPR due process – you might have a point there but if you don’t spell out what it is, I won’t know?

  75. Edward Heller June 3, 2015 10:48 am

    Paul, I was primarily responding to the idea that DC judges may not understand the technical issues involved in a particular patent case. I suggest that that is nonsense, for the reasons stated. DC judges have far better briefing and procedures than the PTAB.

    Regarding experience, of course patent attorneys start way ahead of the average district court judge. But the average district court judge has far more skill in the law than average patent attorney, and in general is far brighter and better educated than the average patent attorney. Thus even though the judge may start from behind, he inevitably is becomes far better qualified than most patent attorneys to decide a particular case.

    And, one cannot discount that the PTAB is not an independent branch of the government, composed of judges who sit for life, who salaries cannot be lowered, and who are not subjected to political influence. No matter what you say to me or to most patent owners, you will never convince us that the PTAB can never other than a biased, anti-patent institution even though individual APJs may be unbiased.

    There is a reason why the founding fathers provided for a independent judiciary. Experience in bad government. The right to have a trial in a court of law where one’s life, liberty or property are at stake is a fundamental right they cannot be denied.

  76. Edward Heller June 3, 2015 10:59 am

    And, Paul, if IPRs are “fair,” why didn’t congress provide that a patent owner have the right to file his own IPR against an infringer who has filed a DJ action for invalidity? If lowering cost were the objective, the patent owners would be demanding lower the lower cost procedure themselves.

    But as we know, patent owners do not want any part of the patent office. Patent owners do not perceive IPRs as being fair at all. It is not simply a matter of cost is a matter of due process and bias. Lowering the standard of proof to “reasonable likelihood,” not preponderance because the same people who decide institute on the lower standard also make the final decision and of course they will defend their institution decision. Also broadest reasonable interpretation is designed to read on prior art, is inherently unfair and has no place in deciding the validity of a patent.

    IPRs are an abomination. They are disgrace. They will destroy the patent system unless we get rid of them.

  77. Night Writer June 3, 2015 11:30 am

    I agree Edward Heller that IPRs are inherently unfair. And not allowing claim amendments when BRI is used is the best indication of how unfair they are.

    I think that what we are seeing is the take over of the international corporations of our culture. We saw what the SCOTUS did to anti-trust law without any change in the statutes. Now we are seeing the dismantling of our patent system. Whatever emerges of it in 10 years you can be sure it will be nothing but what the international corporations want.

  78. Curious June 3, 2015 4:47 pm

    To continue to believe that business methods or math is patentable subject matter after all this is almost silly.
    Notwithstanding that “business methods” and “math” are, of present, poorly defined, do you have to be reminded again that the Bilski 4 is not 5 and became 3 in Alice?

  79. Curious June 3, 2015 4:48 pm

    Curious, no doubt people can try to mislead a judge, but he or she is there to see live testimony and live cross.
    That still doesn’t prevent a judge from being misled.

    They may be technologically educated, but does not mean they know anything about the technology before them.
    I agree