President Obama should nominate Judge Raymond Chen to the Supreme Court

By Gene Quinn
February 18, 2016

Judge Raymond Chen of the United States Court of Appeals for the Federal Circuit, October 2015 at the AIPLA annual meeting.

Judge Raymond Chen of the United States Court of Appeals for the Federal Circuit, October 2015 at the AIPLA annual meeting.

With the unexpected passing of Justice Antonin Scalia, the United States Supreme Court now has only eight members. Before President Obama could even begin to discuss nominating a successor, and within only a few hours of the news of Justice Scalia’s passing, Senate Majority Leader Mitch McConnell (R-KY) declared that the Senate would not act on an Obama nomination to the Supreme Court. Senator Marco Rubio (R-FL) and Senator Ted Cruz (R-TX), both of who would have a vote on any Obama nominee, followed saying that the next President should be the one to appoint a successor to Justice Scalia.

Republican threats lead to Democrat Senators in disbelief— the kind of disingenuous and hypocritical disbelief that finds a special home in political circles in Washington, DC. Senator Chuck Schumer (D-NY) who in July 2007 said that the then Democrat controlled Senate should not confirm any nominees to the Supreme Court made during the final 18 months of President George W. Bush’s tenure suddenly found McConnell’s identical statement objectionable.

Sadly, you cannot make this up. The gamesmanship and hypocrisy evidenced on so many issues is breathtaking. The political reality associated with Justice Scalia’s sudden death is already too ugly and the President has yet to even announce a nominee.

If President Obama nominates someone with a liberal philosophy to replace the conservative Scalia the already ugly environment will become impossibly nasty and could do serious and irrevocable harm to the process and to the Court. A liberal nominee, if confirmed, could be expected to flip the Court 180 degrees, which is exactly why a liberal nominee has absolutely no chance to pass the Republican controlled Senate.

Talk is turning to the possibility that President Obama will seek a consensus candidate that would make it very difficult, if not impossible, for Republicans to stand in the way.

Many are hypothesizing that Judge Sri Srinivasan of the DC Court of Appeals could be that consensus nominee that would make life difficult for Republicans. Srinivasan was confirmed just several years ago by a vote of 97-0, and he clerked for retired Supreme Court Justice Sandra Day O’Connor (who was appointed by President Ronald Reagan). But Senator Cruz has already ruled out Srinivasan, and environmental activists are not thrilled with Srinivasan because he represented Exxon while he was in the private sector. So finding a consensus pick may be more difficult than some would like to admit.

If President Obama is really interested in having another appointment to the Supreme Court he will need to rise above the routine political parlor games. Presidencies are defined by moments that are thrust upon the executive, not created by the executive. In this moment President Obama has the opportunity to rise above the rancor and animus, to push past the distrust. He needs to find a nominee that is a highly qualified jurist who would be difficult, if not impossible, to fight against; a nominee that the people see as above the politics that so many have grown to distrust. That nominee could be Judge Raymond Chen of the United States Court of Appeals for the Federal Circuit.

Chen, an Obama appointee, was confirmed only several years ago by a vote of 97-0. Born in 1968 he is 47 years old, meaning he could easily serve on the Court throughout the next generation, in modern times an important consideration for a Presidential nomination to the High Court. Chen also comes from the Federal Circuit, which is anything but politically controversial, primarily responsible for handling patent appeals. Chen would also become the first Asian American to serve on the Supreme Court, another potentially important consideration for President Obama, who has shown throughout his term in Office that he likes breaking glass ceilings with appointments and nominations. Thus, Chen would have virtually all the same upside as would Srinavasan without any of the baggage that would make confirmation difficult, if not impossible.

On paper Chen is the perfect, non-controversial nominee. He has the virtue of having recently been vetted by the Obama Administration, and I’m certain he would be supported by industry. Given the jurisdiction of the Federal Circuit there would be no politically sensitive rulings that could cloud his nomination process. In fact, it is hard to imagine a sitting federal judge having a thinner dossier of decisions on potentially hot button issues than Judge Chen. Still, he has been on the Appellate Court for several years and he was Solicitor of the United States Patent and Trademark Office (USPTO) prior to his appointment, so he is intimately familiar with appellate practice and procedure. There will be no lurking judicial opinions or memos that in any way relate to religious freedom, the Second Amendment, the Environmental Protection Agency or any hot button issue that could derail a nomination.

Further making Chen the perfect choice is the odd reality that patents are not a political issue. Just look at the voting record on patent bills and you will see rather strange bedfellows who tend to agree on virtually nothing else. Indeed, the latest round of patent reform to pass, the America Invents Act (AIA), was supported by the Obama Administration, supported in the Senate by Senator Patrick Leahy (D-VT) and in the House of Representatives by Congressman Lamar Smith (R-TX). Current patent reform legislation pending is supported by Congressman Bob Goodlatte (R-VA) and Congressman Darrell Issa (R-CA), among others. In the Senate it is supported by Senator Chuck Grassley (R-IA) and Senator Chuck Schumer, while being opposed by Senator Dick Durbin (D-IL) and Senator Chris Coons (D-DE). Even Congressman Tom Massie (R-KY), a member of the House Freedom Caucus, has aligned with Senator Coons in opposition to patent reform. Where else do you see this kind of bi-partisan approach to an issue? Nowhere. Patents are a safe political issue where elected officials can and do reach across the aisle.

Still further, the Supreme Court has become ever more interested in patent cases, and there is no sign that will change anytime soon. The Court has once again taken several very important patent cases this term (see here and here), continuing a trend that has lasted for much of the last decade. If the Supreme Court is going to be taking patent cases why not have at least someone with a patent pedigree? Further, more technology issues can be expected to reach the Supreme Court in the coming decades, privacy issues that deal with government surveillance to regulation of the Internet and everything in between. Our world is only becoming more technologically complex. Having an electrical engineer on the Supreme Court who is intimately familiar technological issues would make a lot of sense.

Nominating Judge Chen for the Supreme Court would save the country from acrimony and division, while still allowing President Obama to continue to diversify the Court. In addition to diversifying the Court and welcoming the first Asian American Justice, Chen would become the only member of the Court not from an Ivy League school. Chen received his J.D. from the New York University School of Law and his B.S. in Electrical Engineering from the University of California at Los Angeles. Thus, putting Chen on the Supreme Court would diversify the thought and experiences of the Justices, as well as providing additional ethnic diversity.

Of course, the icing on the cake is that Chen is also a first rate Judge and a top legal mind. With no obvious political ideology not only could he actually be confirmed, but he could be expected to call balls and strikes in a fair and objective way. It is hard to conceive of any serious objections to a Chen nomination.

With the nomination of Judge Chen to the Supreme Court President Obama will avoid the drama we normally see with judges coming out of other appellate courts, and make it very difficult for Republicans to refuse Chen a hearing or to ultimately vote no. In short, the nomination of Judge Chen makes perfect political sense for the President, and it would also be good for the country.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of 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 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 Read more.

Discuss this

There are currently 59 Comments comments.

  1. A Rational Person February 18, 2016 11:56 am

    My comments below regarding Judge Sri Srinivasan in response to your article on the effect of Justice Scalia’s death on patent cases, also apply to Judge Raymond Chen, and even more so given Judge Chen’s technical experience:

    “One intriguing possibility about Scalia’s replacement is that you might get justice who at least has a better grasp of computer technology than the current justices do. Patent law is one of the areas where there is not currently a liberal-conservative ideological split on the Supreme Court. This means that the recent bad patent decisions, with the notable exception of Kimbel v. Marvel, tend to have more to do with the justices’ technological ignorance and ignorance with respect to the details of patent law (see Scalia’s “gobbledygook” comment in KSR

    For example, if someone such as Sri Srinivasan, who has actually [been] involved in patent litigation regarding computer-related technology is appointed, could such a justice elevate the level of discourse at oral argument during patent cases and be the voice of reason in reaching decisions on patent law cases? Such a voice does not appear to exist among the current justices.”

  2. Yoobee February 18, 2016 8:06 pm

    “With no obvious political ideology not only could he actually be confirmed, but he could be expected to call balls and strikes in a fair and objective way. It is hard to conceive of any serious objections to a Chen nomination.”

    I can’t believe you just wrote these two sentences next to each other. Even if it is true that Chen has no obvious political ideology, then that is precisely why both sides would object to him. No one would want to make such a gamble on an unknow, especially one that could last for a long time.

    I think this is a case of familiarity bias–patent lawyers thinking that judges on the federal circuit are more important than they really are.

  3. Edward Heller February 19, 2016 5:23 am

    I think Chen turned it all around on 101. He was the PTO Solicitor that began the struggle against business method patents; and the effort was ultimately successful.

    In other words, I trust Chen.

    Good idea, Gene.

  4. Anon February 19, 2016 7:34 am

    Mr. Heller,

    Your comment smacks of the rather “unthinking” of “6-is-a-genius-because-he-agrees-with-me” that is your legacy from that other blog.

    No thanks.

  5. CB February 19, 2016 7:36 am

    If you want a judge from CAFC that will be confirmed by the Senate, the President should nominate Judge Kimberly Ann Moore to SCOTUS. As a nominee of President G.W. Bush, a MIT and Georgetown grad, and a woman, Judge Moore has the pedigree and credentials to be a shoe-in for SCOTUS. Judge Moore brings better technology credentials and is the same age as Judge Chen. Judge Moore also has a decade of experience on CAFC. Judge Moore would eliminate any confirmation fight in a Republican controlled Senate having already been confirmed by a vote of 92-0. President Obama should reach across the isle and nominate Judge Moore instead of Judge Chen if he wants to nominate a judge who can be confirmed quickly as a replacement for Justice Antonin Scalia.

  6. Kevin Rieffel February 19, 2016 9:04 am

    The biggest detriment to promoting Judge Chen would be losing him on the Fed. Circuit. If we’re worried about making bad patent law at the highest court level, the CAFC needs to step up and guide the law to a uniform rule (rather than merely correct errors like the other circuit courts). Like you say, he has been a bright spot since his appointment. So while I’d love to see him on the Supreme Court one day, I’d much prefer Judge Chen and his staff cranking out a few dozen opinions each year at his current post and taking away any incentive for SCOTUS to look at patent cases!

  7. Tom Adams February 19, 2016 9:31 am

    “”New York University School of Law and The University of California at Los Angeles” True, not Ivy League schools, but not exactly non-liberal environments. I suspect the educational experience of Judge Chen will cause some hesitancy among those senators who are not fans of judicial candidates or appointees educated in a liberal context, no matter the discipline pursued in the universities.

  8. Gene Quinn February 19, 2016 10:52 am

    Edward Heller-

    Your understanding of Ray Chen Solicitor is predictably incorrect. He did not start the struggle against business method patents, not that I would expect you to understand the role of an advocate. Ray Chen Solicitor represented the USPTO. If there was a basis to argue that a Board decision was correct he defended the Board decision, or in other words represented his client. If there were no basis to argue that a Board decision were correct he notified the CAFC, which he occasionally did do because as a government attorney his client was not only the USPTO, but also the American people.

    You really should read my interview with Ray Chen when he was Solicitor. It would be hard for you to remain in the dark and hold these uninformed opinions.


  9. Gene Quinn February 19, 2016 11:06 am


    You chastise me for what you seem to believe is a naive statement about Chen being perfect and confirmable because he holds no obviously political views, calling what I wrote unbelievable. Truthfully, your comment is what is rather unbelievable.

    You say: “No one would want to make such a gamble on an unknow, especially one that could last for a long time.”

    That is historically incorrect. It is also politically inaccurate. For better or worse, the holy grail of a Supreme Court nominee is a qualified candidate who has absolutely no paper trail. When there is no paper trail there is nothing the opposing party or opposing activists can use to stop a nomination. Anyone at all familiar with the Supreme Court nomination process knows that to be perfectly true. I invite you to read up on the matter. Here are a few places you can start:

    Kagan had virtually no paper trail for Republicans to use

    Robert Bork had a long paper trail that was used to sink his nomination

    A Nominee with a short paper trail

    For this reason it is virtually guaranteed that President Obama will appoint someone relatively young (i.e., under 50), who was recently confirmed and who has not don much writing.

    As for your comment about patent law not being important, not sure I’m going to be able to help you with that level of ignorance in one response to a single comment. Clearly, the U.S. is an innovation economy and patents are the backbone of innovation, period. The economics of innovation and the history of innovation require a strong patent system. If you don’t understand that, or worse if you deny that truth, there really is no way to have a meaningful discussion with you.


  10. Edward Heller February 19, 2016 12:09 pm

    Gene, from Comiskey,

    “After oral argument, we requested supplemental briefing directed at the patentability of the subject matter of Comiskey’s application under 35 U.S.C. § 101. In the supplemental briefing, Comiskey argued for the first time that we lacked the power to consider a ground for rejection not relied on below. Alternatively, Comiskey argued that his application was patentable under § 101, and that the subject matter of his application did not fall within an exception to patentability, such as an abstract idea, natural phenomena, or law of nature.

    The PTO urged that this court could properly consider the § 101 issue. Indeed, the PTO urged that this court resolve the case on this ground to “give the Office needed guidance in this area.” PTO Supp. Br. 15. The PTO argued that Comiskey’s independent claims were directed at an unpatentable abstract idea…”

    In re Comiskey, 499 F. 3d 1365, 1371 – Court of Appeals, Federal Circuit 2007

  11. Don Cuillo February 19, 2016 12:17 pm

    Here’s a better idea genius: How about the worst president in American history not nominate anyone else, because the American People do not want him to.

  12. Gene Quinn February 19, 2016 12:44 pm


    I am hardly a fan of the President or most of his policies, but he was exactly right when he said that elections have consequences. It is truly unfortunate that millions of Republican voters decided to stay at home in 2012 rather than show up and vote for Governor Romney. Had even the same number of Republicans showed up for Romney as did for McCain this nomination would be made by President Romney. So frankly, if anyone is to blame it would be the Republicans who stayed home on election night, not President Obama who is Constitutionally obligated to nominate a successor.

    I say let the process run its course. If the President wants to replace Justice Scalia with a liberal the Senate will waste precious time with hearings and reviewing his/her record and ultimately vote no. That would leave not enough time remaining for a subsequent pick. But if President Obama is going to pick someone mainstream then let’s have a vote. The future of the Court will come down to who is elected in 2016 and 2020 with so many of the other Justices in their late 70s or 80s.

  13. Gene Quinn February 19, 2016 12:47 pm

    Edward Heller-

    Your last comment seems addressed to me by name, but is not responsive to what I wrote and rather curious really.

    Are you even an attorney? Do you have any idea about what it means to represent the views of a client? Do you think every attorney who represents a client agrees 100% with the client on all issues?

    Your understanding of the law seems extraordinarily limited.

  14. Anon February 19, 2016 1:50 pm

    Mr. Quinn,

    Mr. Heller is not only an attorney, he has an important case challenging some aspects of the AIA awaiting a potential cert for en banc (or direct to the Supreme Court, or both).

    However, his views on what “business methods” mean – and his ardent crusade against them – have long been on display on other patent blogs -and equally as long, have been riddled with logical and legal errors. For example, here he has presumed the one-to-one identity of “abstract” and “business method.”

    He truly seems blinded by his pursuit of a desired end game.

  15. Edward Heller February 19, 2016 2:14 pm

    Gene, do you have a link to your interview with Judge Chen? I will keep my mind open on Judge Chen’s thinking on 101 for the time being.

  16. Edward Heller February 19, 2016 2:18 pm

    @14, Anon, you also know that do not like Bilski because of “abstract.” I have always believed that a narrow opinion from the Supreme Court in that case, focused solely on business methods, would have been the right answer. Instead, we got the very broad and undefined principle called “abstract” that most of us do not understand because the Court is using that term in a way that is quite at odds with its origins in cases like Le Roy v. Tatham.

  17. Edward Heller February 19, 2016 3:26 pm

    OK, I have read the interview. Nothing other than generalities about representing the PTAB zealously.

    But that does not explain Comiskey. The “law” at that time was State Street Bank. Business methods were deemed statutory, not abstract. Yet Chen argued the claims in Bilski were abstract. That is not consistent with prevailing Federal Circuit law, but was an argument to overturn it, which the Federal Circuit eventually did.

  18. staff February 19, 2016 3:26 pm

    ‘President Obama should nominate Judge Raymond Chen to the Supreme Court’

    Inventors will agree that it is high time a jurist with a thorough grasp of patent law and science should be appointed to the high court. But we also need someone who has not fallen prey to the dissembling of large multinational invention thieves and their patent troll or patent reform spin. Where for example does he stand on the right of exclusive use -injunctions, patentability, etc? At first glance he would seem to be a good choice, but he must pass muster on these important questions. Others on the CAFC and SCOTUS appear as former chief judge Michel would say to ‘not know what they are doing’ when we look at their opinions. Inventors have nearly no confidence left in the courts, the PTO or government overall. That is why so many are now protecting their discoveries as trade secrets, or letting them wither in their notebooks. The government has all but killed the goose that lays the golden eggs. It may be too late to resurrect for a couple generations. America is becoming the old world our founders left where wealth and privilege trample property rights.

    For more information or to join our effort, please visit us at
    or, contact us at

  19. Edward Heller February 19, 2016 3:34 pm

    Ugh. I should have said that Chen argued the claims in Comiskey were abstract.

    I notice that Chen did not respond to your observation, Gene, about Bilski and Abstract — that the Supreme Court did not explain what that meant. He skipped right by that as if he himself had nothing to do with the problem.

  20. Gene Quinn February 19, 2016 3:51 pm

    Edward Heller-

    Nothing other than representing the PTO zealously. Interesting that is all you could get out of the conversation. I find it impossible to believe you are an attorney.

    If you truly an attorney it would be a fun exercise to go through everything you have ever written on behalf of a client and then pretend that you absolutely must hold those beliefs as your own. How utterly myopic and nonsensical.

    If you are really going to try and figure out what Judge Chen thinks about the issue why not actually talk about DDR? Reaching back to a case where it was his job to argue the PTO position and ignoring DDR seems rather juvenile.

  21. Edward Heller February 19, 2016 3:59 pm

    Gene, ?. But DDR had nothing to do with a business method. Its claims were directed to an improvement to a computer system.

    That is why “abstract” is so pernicious.

    Still, I will agree that Chen may not actually believe that Comiskey/In re Bilski or Kappos v. Bilski were properly decided. But are you going to personally vouce for this?

  22. Anon February 19, 2016 4:44 pm

    Mr. Heller @ 16,

    Your selective memory does you a disservice once again.

    You act as if the concepts (scores of different ways that the Courts ended up using terms interchangeably**) of the “abstract” in the pre-1952 case of LeRoy v Tathum are somehow not a part of the current Court efforts to fudge the lines of law of 101/102/103/112 and attempt to return back to a time when the Court had operated (under the granted authority from Congress) to use the tool of common law development to define “invention.”

    **and many other cases manipulated by the Court to find, or determine the “flavor of the day” of “invention,” “gist,” gist of the invention,” inventive concept,” “inventive idea,” etc.

    There is a very ready and simple reason why the Court has messed ALL of this up.

    They simply refuse to acknowledge the loss of power that occurred in 1952.

    What is so pernicious is NOT solely what they are doing with the (undefined and expressly left undefined) term of “abstract,” as much as it is the fact that people are refusing to recognize that the Court itself is acting ultra vires and trying to employ authority that it was deprived of in 1952.

    In the past you have targeted Judge Rich in a smear campaign, when what was really going on was that Judge Rich – knowing better than ANY other member of the judicial branch the intent of Congress in 1952 – simply knew they he could safely – and justifiably – ignore the errant dicta (and attempted “implicit” re-writing of the words of Congress) in the post 1952 Supreme Court cases.

    This is precisely why my litmus test is for a jurist to understand and respect the Rule of Law inherent in the separation of powers which places ALL branches of the government – including especially the judicial branch – UNDER the Constitution and not the Supreme Court ABOVE the Law.

    Such desire of absolute power corrupts absolutely. The Founding Fathers were quite explicit about the dangers of a judicial branch that was too powerful.

  23. Anon February 19, 2016 4:53 pm

    Another point Mr. Heller, one often provided, and ever ignored by you, is that for the Court in Bilski to rule as you would desire, the express words of Congress would have been violated.

    I am well aware that you “feel” that the limited defense related to business law means something other than what it plainly portends.

    The bottom line though on that legal point, is that NO defense would be required – at all – if your view of business methods were in fact the correct view.

    Congress simply did not agree with you.
    Congress simply has never agreed with your purported position.
    It is Congress (the legislative branch) – and Congress alone (not the Supreme Court and the judicial branch) that is authorized by the Constitution to write the statutory law that is patent law.

    Yes, our system does allow one branch to share authority with another branch – with careful and clear limitations (for example, the use of the principles of equity by the courts).

    35 USC 101 (and for that matter, 35 USC 100, 35 USC 102, 35 USC 103 and 35 USC 112) do not share that authority.

    Ask me what is “pernicious” when an attorney so informed of the law and its history refuses to accept such and maintains a crusade that does not – and cannot – take the proper measure of the law into account.

  24. Night Writer February 19, 2016 5:32 pm

    Nominate Rader. He’s free.

  25. Anon February 19, 2016 5:54 pm

    Night Writer @ 24,

    I bet he could get a good recommendation from Edward Reines.

  26. Night Writer February 21, 2016 12:13 pm

    Well, Gene, I remember listening to some oral arguments with Chen before he was appointed to the Fed. Cir. I have to say that he appeared to be very anti-patent. People can change their opinions, but frankly, if we are going to fix the patent system people like Chen are not the answer.

    We need real patent attorneys that have spent at least 10 years doing real patent work like writing patents, licenses, litigating, and working with companies. The problems the patent system had pre-AIA were not that severe. Tweaks would have fixed the system. Now, I have we are so far down the rabbit hole it is hard to imagine the system correcting itself.

  27. Lee Cheng February 21, 2016 2:32 pm

    Great idea, Gene! I don’t agree with you about much but you are definitely an out of the box thinker. Sometimes, that’s a good thing and sometimes you are amazingly right. ?

    Judge Chen would make a terrific justice and would represent a bold choice by a President who could really use this pick to send a message of compromise and healing as he finishes his Presidency–that Supreme Court justices should be selected based on the substance and diversity of expertise they can bring to the high Court. What a legacy that would be!

    Two other nominees along similar lines would be USPTO Director Michelle Lee and 3M General Counsel Ivan Fong. They don’t have Judge Chen’s two or so years of judicial service but they would bring a wealth of private sector experience and political assets in the form of support aand contributions from various key constituencies (women, Asian Americans, business and tech).

    I’d buy you a drink if any of the three were nominated.

  28. Gene Quinn February 21, 2016 2:45 pm

    Night Writer-

    You say: “I have to say that he appeared to be very anti-patent. People can change their opinions, but frankly, if we are going to fix the patent system people like Chen are not the answer.”

    I wonder how many substantive patent discussions you’ve had with Chen while he was with the USPTO? Would you care to inform us?

    I wonder also if you are of the belief that a lawyer representing a client must in all instances be conclusively presumed to personally agree with all arguments made on behalf of the client? Clearly that is not what the canons of ethics require, and it seems a rather ridiculous standard to hold any attorney to since our jobs are to represent the interests of clients.

    I also wonder exactly what you would consider anti-patent about DDR Holdings? To date that remains the only case where the Federal Circuit has found software patent claims to be patent eligible post-Alice. The decision was authored by Judge Chen. Everyone who dislikes Judge Chen and wants to pretend he is anti-patent somehow seems to just ignore that critically important data point. Pointing to arguments he made when he was employed to defend the USPTO position and ignoring his decision when he decided a case for himself is curious at best.

    All I can say is this: you are entitled to your opinion. But from what I can tell you is that your opinion is based facts that are clearly erroneous. It is simply false to say that Chen is anti-patent. I don’t know how else to say it.


  29. Night Writer February 21, 2016 8:00 pm

    Gene, I never had any substantive discussions with Chen. Pretty sure just one very brief chat. I am very aware of how the solicitor’s office works at the PTO. Long ago I interviewed there and I am pretty sure I was offered a job too.

    I agree that DDR Holdings is great for patents. And I agree that the Fed. Cir. Chen appears to be a very different Chen. I understand your arguments about representing the client. And, I will tell you that I did not like Chen going back about five years because I thought he was anti-patent based on oral arguments he made before the Fed. Cir. So, my opinion of Chen was formed way before he became a Fed. Cir. judge. I would have to pull out the recordings and go over them to point out why as I remember it there was reason to think Chen went above and beyond the call of duty with his anti-patent arguments. My opinion of Chen were based on how he presented the arguments and the extent to which he made arguments.

    The fact is that I predicted on patentlyo that Chen might not turn out to be the judge that Google wanted because Chen had a real science background and had actually done real prosecution of patent applications. I was very pleased to read DDR Holdings.

    Again, I understood at the time of the oral arguments the role of the Solicitor’s office and Chen’s role, and still I thought he was very anti-patent.

  30. Eric Berend February 22, 2016 9:15 am

    Would it be too far-fetched to suggest Judge Pauline Newman of the CAFC? Reading her decisions and dicta in the Court, she is often the only jurist with respect for the actual Constitutional purposes of the U.S. Patent laws.

    Nominated by Pres. Reagan. Extensive industry IP experience. Suits the ‘diversity’ trend. There seems to be little in the way of political exposure. Does this not also fit well with the above profile of a candidate more likely to gain Senate approval?

  31. Night Writer February 22, 2016 9:53 am

    Newman is old–very old. But, I love Newman.

  32. Edward Heller February 22, 2016 1:42 pm

    For most circuits, their members would presumably be qualified to be on the Supreme Court. But the Federal Circuit is another matter. It is primarily an administrative court. Because of this, Supreme Court in ex parte Bakelite held its predecessor, the C.C.P.A,, to be an Article I court. Even though Congress has declared the Federal Circuit to be an Article III, the court is still primarily an administrative court. It would be unlikely that anyone among those who make the decision would “presume” a Federal Circuit judge to be qualified for the Supreme Court. For example, the Supreme Court itself declared that the Federal Circuit did not seem to understand the law of infringement in a recent case. That is a damning indictment of the former administrative court handed the job of reviewing district court judgments in patent infringement cases.

    That being said, however, I think Judge Taranto may have the qualifications to be a Supreme Court justice. I believe he clerked on the Supreme Court for example. Has anybody else among the Federal Circuit clerked on the Supreme Court?

  33. Edward Heller February 22, 2016 2:09 pm

    To answer my own question:

    Mayer, Burger
    Dyk, Warren and Reed. Harvard Law
    Bryson Marshall
    Taranto, O’Connor (Bork) Yale

    Dyk is well qualified too. Just a bit too old. Ditto Mayer and Bryson.


  34. Anon February 22, 2016 2:31 pm

    I am more than sure that the citation to ex parte Bakelite to infer that the CAFC is an Article I court is NOT a proper statement of the nature of the court.

    I am puzzled that you would even attempt to introduce such an argument.

    Yes, the CAFC is of a limited nature (as are all courts, by the way), but that does not carry the limit that you seem to want to impose.

    Whether or not the Supreme Court is at odds with the CAFC is a different matter and can be traced to the long standing power struggle between the branches of the government. In a very real sense, as empowered by Congress to set clarity to patent law (clarity which carries with it the non-constitutional elements of final say on the statutory law that is patent law).

    This type of “finality” of course does not sit well with the Court that tends to (not always, but far too often does think that it itself is above the Constitution).

    Truth be told, Mr. Heller, your own predilections for placing the Court on a pedestal above the Constitution remove a great deal of persuasiveness from your views on the interaction of the two courts.

    As I have posited previously, I believe that the only long term avenue of avoiding the power-afflicted Supreme Court and any lower court wrangling is to employ jurisdiction stripping of patent appeals from the Supreme Court (not an item of original jurisdiction to the Supreme Court, so jurisdiction stripping can legitimately apply) and make sure that the jurisdiction remains in an Article III court (to satisfy Marbury which did not demand review by the Supremes, but merely review by an Article III court).

  35. Gene Quinn February 22, 2016 3:13 pm

    Edward Heller-

    Dyk and Mayer are extraordinarily anti-patent. Not surprising that you like them, despite how wrong they always seem to be on the issues. Mayer also has a penchant for citing himself in concurring opinions as if it holds some authority. Talk about intellectually dishonest.


  36. Edward Heller February 22, 2016 4:34 pm

    anon, as Article I courts are for cases in law and equity, I am not surprised by decision in Bakelite regarding the C.C.P.A. Still, even with inclusion of infringement cases, the court still is mainly an administrative law court.

  37. Edward Heller February 22, 2016 4:40 pm

    Gene, I am hardly anti-patent and hardly a fan of Dyk. As you know, I took MCM Portfolio LLC to the Federal Circuit on the constitutionality of IPRs. I am not just representing my client here. I really and truly believe that the patent system hangs in the balance because of IPRs. Our case, not the Cooper case, will go to the Supreme Court. You can bank on it.

    Now, I have said that I am anti-business method patent. That makes me pro-patent because, like IPRs, business methods were undermining the credibility of the patent system with the public who simply could not believe the patents that the PTO were issuing — somewhat like the patent medicine scandal of old where proof of effectiveness was not a requirement.

  38. Anon February 22, 2016 5:37 pm

    Mr Heller @ 36,

    Your rather loose characterization is simply not in accord with reality. I just do not understand what you intend to mean with this “mainly an administrative law court.”

    How this relates to anything of import, having to do with Article III versus an executive agency judicial function (what is more commonly referred to as administrative law court) is beyond me.

    Further, as to your admission of being anti-business method patent – this does not and cannot make you “pro-patent.” You may want to think so, and you may clothe your view in some (self-appointed) “public credibility” sheepskin, but such does not accord with the law as written by Congress.

    Further still, any type of “argument” that you raise against business method patents is based in anti-patent mentality.

    Your attempts to rewrite what has been written, to redefine “abstract” as synonymous with “business method” hold no credibility.

    You end up embracing the very worst of the Supreme Court violations of separation of powers as they have attempted to rewrite patent law according to their own values. You end up embracing the very worst fears of a “too powerful” judicial branch that our Founding Fathers expressed in their writings.

  39. Edward Heller February 22, 2016 6:07 pm

    anon, labeling someone as being pro-patent or anti-patent based on their position on business method patents is simply absurd.

    I took Chen as being anti-business method patent based on his briefs in Comiskey. I accuse him of inventing the term “abstract” to describe them. While I agree with Chen on business method patents, I disagree with him that calling them “abstract” is why they are ineligible.

    That said, I have not seen enough of Chen’s work to detect any biases in favor of patents or against them. A bias against patents would be shown by consistently ruling for the infringer.

  40. Gene Quinn February 22, 2016 6:25 pm

    Edward Heller-

    The major problem with what you say about business method patents is simple. There is no workable definition of a business method patent. On some level every method could be characterized as a business method when the method is used to further business objectives. That captures an awful lot of methods, including real world, tangible methods that have been patented since the 1790s. So saying you are against business method patents sounds good until you actually get beyond the rhetoric. We already have enough undefined concepts and doctrines (i.e., abstract idea), we don’t need any more.

    Furthermore, the PTAB institutes CBM review on patents that are clearly not business methods and which clearly do have a technical aspect, in direct contravention of the statute. Stay tuned for that article on Tuesday!


  41. Edward Heller February 22, 2016 6:48 pm

    Gene, I agree with your point at 40. The problem is with trying to define an exclusion rather than defining what a patentable process IS.

    Excluding business methods and excluding the abstract suffer from the same deficiency — no good definition. We need either to have a clear rule or at least know know why such things as balancing risk are excluded. The courts seem to be operating with some unstated definition of when a process in statutory, and finding anything not like that non statutory and calling it abstract. It would be nice if they would let us know what that unstated definition is.

    As I have said before: law should be a clearly stated rule, especially if legal right are involved. But the Supreme Court seems to like fuzziness, a totality of circumstances type approach, which is nothing more than equity that balances factors in seeking justice. Justice Scalia called the court on this many times when he pointed out that what the Supreme Court needed to do is to provide clear rules when setting forth the law. Instead we have in the Supreme Court’s 101 jurisprudence, vagueness and uncertainty. That is a problem.

  42. Night Writer February 22, 2016 7:48 pm

    Edward, you are the one that said that software is patentable if it is just in a ROM. Please. Your opinions are very similar to Stern’s and to the Benson opinion.

    Business methods are not only impossible to define, but anyone that understands technology knows that information processing changes business methods from what they were 100 years ago. Business methods are about the intersection of technology and business.

    The games you play Edward go much further than these. You are very anti-patent despite your nonsense.

  43. Anon February 22, 2016 8:13 pm

    The lack of a workable definition is tied directly to the form of innovation most prevalent today.

    It is as if the innovation wave is desired to be “dialed back” to items such as the K1 through K3 Kondratieff waves of the 1800’s and 1900’s.

    It is indeed one of the more bizarre views of any attorney involved with innovation and patents to want to so constrain what innovation and patents cover.

  44. Night Writer February 22, 2016 8:51 pm

    It is bizarre. Like Edward’s position that there should not be functional claiming at the point of novelty. The list is very long of Edward’s strange anti-patent positions. His opinions do match up well with Stern who wrote a paper that only technologies that could be analogized to technologies at the time of the Constitution should be patent eligible. Difficult to even comprehend how this could promote innovation of new technologies.

  45. Night Writer February 23, 2016 7:13 am

    Actually, I could make a list of your anti-patent positions Edward. What is so bizarre about you is that when confronted with your anti-patent positions you throw up the most lame arguments and then claim that people don’t understand you. And then you have paid bloggers throw up smoke.

    Believe me–I’ve spent many hours arguing with Stern. I understand you loud and clear—you are as anti-patent as Lemley. You are like the conservative that claims they are a conservationist because they are willing to not cut down the last 100 acres of forest of a 100,000 acre national park.

    You want a real debate about your anti-patent positions where you don’t hide behind a paid blogger, then bring it on.

  46. Edward Heller February 23, 2016 1:57 pm

    Night, let us be clear, if programming becomes part of the machine, by definition it is not software. The point of software is that it is loaded and executed by a general purpose digital computer. But if it becomes part of the machine, as in microcode, then we are talking about an improved computer.

    Clearly a method should be patentable regardless of reciting a computer for its implementation. Alice only confirmed this.

    So, what makes a process patentable subject matter? What?

  47. Anon February 23, 2016 2:25 pm

    Mr. Heller,

    Your definition of software is not in accord with the term of art.

    Software does not cease being software when it is loaded onto a machine and that machine is changed and configured to run the software.

    You are attempting to create an artificial distinction that is both meaningless in itself and serves only to cloud your philosophical views against the manufacture that is software.

    This is exactly the type of position that is deeply offensive and lacks intellectual honesty.

  48. Night Writer February 23, 2016 5:00 pm

    >>This is exactly the type of position that is deeply offensive and lacks intellectual honesty.

    I agree. It is not in accordance with the equivalence of software and hardware as science tells us. It is the type of game that the anti-patent people play and pretend they are pro-patent.

    Edward: to your question regarding methods: 101 answers that question. The fact is that the “exceptions” under Alice are unconstitutional and based on a finding of fact that “abstract” claims as defined by the SCOTUS do not promote innovation. It is shame beyond belief that the SCOTUS would expect us to buy into their nonsense.

    And, gain, let’s see some claims that need these exceptions? We all know that Alice is merely a way for the SCOTUS to give judges a way to dispense with claims and a case at SJ.

  49. Night Writer February 23, 2016 5:01 pm

    So, in other words, Edward, without your paid blogger(s) you will simply not stand up for your positions.

  50. Edward Heller February 23, 2016 6:10 pm

    Night, do you have a definition of which processes are statutory? Do you agree that the meaning of that term in 101 is the meaning of Art or process as developed by the courts since 1790 when Art was first introduced into the statutes?

  51. Edward Heller February 23, 2016 6:15 pm

    Night, arguments about whether programming creates a new machine is now an historical question since Alice. We don’t need to continue arguing issues that have been decided.

    Of course, you can argue for Congress to pass a new statute replacing 101 with something better, such as, anything at all is patentable, so long as it is new. In fact, one might patent plots for movies so that authors will become infringers if they violate your patented plot.

    Obviously, I don’t think you would go that far. But if there are limits, what are they?

  52. Anon February 23, 2016 6:49 pm

    It is beyond sad to see that Mr. Heller does not restrain himself and at post 51 offers up “plots for movies” as some type of legal commentary.

    Useful Arts, Mr. Heller – let’s see you stick with comments within the known parameters if you are going to ask about limits.

    Please leave out examples of things “not even wrong” and that cannot even be applied to patent law.

    Movie plots are clearly in the realm of the Fine Arts, and the fact that this post even needs to be made to remind you of this (as I am fully aware that you have been so appraised numerous times) is beyond sad and borders – once again – on the intellectually dishonest.

    I tell you directly – if you tried this in my court, you would be sanctioned.

  53. Night Writer February 24, 2016 6:42 am

    >>Night, arguments about whether programming creates a new machine is now an historical question since Alice. We don’t need to continue arguing issues that have been decided.

    This Alappat has certainly not be overturned. This is an example of your anti-patent views when you take expansive anti-patent interpretations of SCOTUS cases.

    Also, your little game of 101 is not fooling anyone. The issue is not for me to define what is eligible but for you to defend Alice that said it was unconstitutional to grant patents for a vast swath of areas. Your anti-patent views fool no one. You remind me of traitor that comes to the other camp and tries to convince them they are on your side. In all the important areas (other than IPR which you are making money from), you are strongly anti-patent. E.g., 101, functional claiming, etc.

    And, whether or not the 1952 Act incorporates federal common law or not is another anti-patent position. The 1952 Act was meant not to incorporate all the previously law and at a minimum was meant to overturn some recent bad SCOTUS cases. The anti-patent movement fueled by Google has attempted to try and bring more bad old case law that wasn’t expressly overturned and the arrogance of the SCOTUS has stated that they believe all the old federal common law that wasn’t expressly overturned is still good.

    But over and over again, you take the anti-patent position and pretend you don’t and try to start generating smoke.

  54. Night Writer February 24, 2016 6:44 am

    You know Edward you don’t fool any real patent attorney. And you seriously don’t think that playing little games that we all learned in law school actually works do you?

  55. Night Writer February 24, 2016 9:11 am

    And, let’s try to understand your position on software. OK as long as part of a ROM. What a bold judicial activist stance you take. Counter to science and reality. Counter to what those skilled in the art would say. But, great for destroying the patent system. Yes, Edward, you are as anti-patent as Lemley and Richard Stern. And, to my mind, every bit as much as a weasel as they are. Unwilling to stand up for your views. You merely dance about when confronted head on. Cowards. Intellectually dishonest. Destructive. Undermining of legal system. Etc.

  56. Edward Heller February 24, 2016 11:21 am

    Night, from your posts, “anti-patent” is equivalent to not being on board with patenting anything.

  57. Anon February 24, 2016 11:37 am

    Mr. Heller,

    Your “logic” and treatment of the law is what is at issue. What can be eligible for patenting is meant to be a wide open front gate in 101. Utility (of the Useful Arts variety) and can be fit into one of the statutory classes is ALL that 101 – as written by Congress – is meant to cover.

    At its core, your views are anti-patent. You employ a philosophical aim against certain items that have no basis in patent law, and you twist and obscure points of law in attempts to force fit your views as if those views were the law. You seek to elevate the Supreme Court to re-write the law in the image that you desire, while not paying attention to your own offered references (the link that you provided on that other website to Judge O’Malley’s missive against amici trying to have the judicial branch do things belonging to other branches comes to mind).

  58. Richard Peterson March 8, 2016 6:51 pm

    Getting back to the political, the Republicans are betting on the election. If Clinton is elected with a vacant seat, what’s to prevent her from appointing Barack Obama? As in settlements, better to go with a deal you know than risking all at trial. Raymond Chen is a judge both sides could live with.

  59. Edward Heller March 8, 2016 8:18 pm

    Richard, despite Gene’s assurances, I am not sure about Chen’s attitude. He came up with “abstract” as the reason why some claims fail 101. Now Gene says the did this to best represent the PTO. But really now! Also, the PTO is hardly on board with patent owner rights. I care a lot about this issue. His being a former PTO solicitor is a major, major negative for me. I have not seen him break from an PTO position since he has been on the Federal Circuit.