Will the Supreme Court continue to be influenced by patent reform?

By Paul Morinville & Gene Quinn
January 2, 2018

InfluenceWe’ve analyzed all of the Supreme Court patent related decisions since 2005 comparing them to proposed patent related legislation pending at the time of the decision. Invariably, the Supreme Court takes a provision or two from pending legislation and makes it law, often word for word. To me it is unbelievable that the Supreme Court has taken on the role of legislature, but it is what it is. Who am I to question the authority of those wearing a black robe with life tenure.

Having seen nothing to change this recent history, we base our predictions for 2018 on the premise that the Supreme Court will continue in their role as the legislature.

There are currently two patent related bills in Congress, the STRONGER Patent Act and the US Inventor Act. A third bill is waiting in the wings. All three address the PTAB. Two eliminate it and one changes the constructs of PTAB rules to be more like a real court and consistent with the way disputes are handled in federal district court, which makes sense if you are going to keep the PTAB given it is supposed to be a federal court alternative.

If the Supreme Court stays true to form and incorporates the language of pending patent bills, the Supreme Court will invalidate the PTAB in Oil States, which is exactly what should happen. It is also in keeping with the Court’s trend of trying to stay out in front of legislation.

Another provision in all three bills is eliminating the abstract idea exception to subject matter eligibility. This abstract idea monster has swallowed all of patent law exactly as the Supreme Court predicted it would in the decision that created the monster. Recall, the Supreme Court warned about over zealous application because at the root of all invention is an idea that starts the process. That admonition has fallen on deaf ears. Since all three bills address Alice, if the Supreme Court stays true to form the Court will take a case to address it. I’m not sure if they will invalidate the concept completely or just adjust it, but it will be addressed somehow.

All three bills also restore injunctive relief. The Supreme Court passed eBay into law effectively eliminating injunctive relief based on language in pending legislation in the early 2000’s. But now pending legislation restores injunctive relief. I have no basis to say that the Supreme Court will correct un-enacted legislation that it previously turned into law no matter how wrongheaded the decision (and proposed legislation for that matter). While my predictive model suggests the Supreme Court judicially seeks to enact pending patent reform legislation beating Congress to the punch, it seems unlikely they will overrule themselves, which is something they seem to despise doing even when the issue a ruling completely inconsistent with a previous decision. Furthermore, the Supreme Court has not always legislated every provision in every pending bill. Thus, it seems likely that the Supreme Court will not address this issue of injunctive relief.

To get relief from the disaster that has been the eBay decision we will need to go old school and use the constitutional processes of passing legislation in the House and Senate and then attach a signature from the President to restore the patent system to its constitutional underpinnings. Then again, perhaps all we really need to do is underline, bold and italicize Article I, Section 8, Clause 8 of the U.S. Constitution where it defines a patent as nothing but an “exclusive Right” and remind the Supreme Court that the only time the word “Right” is used in the Constitution is with respect to intellectual property. Such an amendment would remind the Supreme Court of their primary role of defending that quaint document.

Of course, the Supreme Court doesn’t have much of a track record defending patent rights, which admittedly makes it somewhat difficult to predict the Supreme Court will find the PTAB unconstitutional, or that it will do anything productive to address (or even define) the abstract idea doctrine.

After so many years of staying out in front of patent reform legislation that has weakened the U.S. patent system, dropped early stage investment by 62% and brought us a 40 year low in startups thus sending venture capital, startups and complete swaths of new technologies to China, how odd it will be if the Supreme Court doesn’t do the same now that pro-patent reform is actually pending in Congress.

The Author

Paul Morinville

Paul Morinville is Managing Director of US Inventor, Inc., which is an inventor organization working in Washington DC and around the US to advocate for strong patent protection for inventors and startups. Paul has been walking the halls of Congress knocking on doors and sitting down with hundreds of offices to explain the damage suffered by inventors due to patent reforms. Paul is an independent inventor with dozens of patents and pending patent applications in enterprise software. He is also CEO of OrgStructure, LLC, an early stage enterprise middleware provider in Northwest Indiana.

Paul Morinville

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 31 Comments comments. Join the discussion.

  1. Joachim Martillo January 2, 2018 6:59 am

    A lot more needs to happen than mere elimination of the PTAB.

    None of us should prosecute a client’s application in order for the issued patent to be invalidate in a “bait-and-switch” con scam like the one Tinnus experienced.

    How Do I Hate Post Grant Review? Let Me Count the Ways

    The USPTO is not supposed to be a three card Monte stand.

  2. Joachim Martillo January 2, 2018 7:10 am

    [Sorry I forgot the “/”.]

    I read the pathetic, shameful, ridiculous, and pitiful USPTO Director’s Intervenor Brief in the appeal from the Bunch-O-Balloon PGR, and I consider filing a brief of an amicus curiae on behalf of the English language — so putrescent is the crap that the USPTO is shoveling at us.

  3. Anon January 2, 2018 9:32 am

    The Court has its own agenda. That agenda is not “stay in front of the legislation (per se). When potential legislation aligned with the Court’s agenda, then (and only then) did the notion of “stay in front” apply.

  4. Paul Morinville January 2, 2018 1:08 pm

    Anon. If that is true, why do the Justices use the term “patent troll” in their hearings and in their rulings? Is that not following the politics?

    Like you, I believe they have their own agenda on many issues, but the issue of patent reform is complex and they follow the media and pending legislation.

  5. Anon January 2, 2018 1:27 pm

    Paul,

    The use of the term merely reflects an impression of “following.” Alignment is not the same as “following.”

    I think that the Court’s “gauge” on the situation is a bit shallower (even) than “following.” That said, I would agree with you that their agenda “finds some voice” in the words supplied to them from various Amici. But if one were to believe that they are merely following, then one would have had to believe that Alice itself would have been decided differently.

    As I noted previously (prior to the Alice decision coming out), that the historical circumstances were running parallel to the Diehr “adjusting” of Flook and Benson (following Bilski and Prometheus).

    That there has been alignment (see my earlier posts about the various “factions to blame”), is an observable fact. I just think it ‘too much’ to think that the Court will “follow” now merely because it is becoming ever more evident that innovation has been harmed.

    Further, there has been too much damage by the Court that cannot be undone by anything other than a major “mea culpa – we were wrong,” which I happen to believe is beyond the will of the Court. They really do think that they are “Supreme” and are above following Constitutional checks and balances that the other branches of the government must hew to.

    It certainly does not help when members of the patent bar support this notion of “Supreme” and “above the Constitution,” but as I have pointed out, most attorneys refuse to even engage when it comes to taking a serious look at what an attorney’s state oath actually says***.

    ***I have compared, for example, obtained state oaths for New York and the Commonwealth of Massachusetts. It is perhaps the exception that proves the rule that the Commonwealth of Massachusetts treats the duty to the Constitution (apparently) as subservient to treating the Court as if the Court were a client.

  6. Joachim Martillo January 3, 2018 8:19 am

    Defenders of the patent system need a catchy phrase that has more punch and that competes with “patent troll”. In the early 90s we used “patent ogre” to describe an incumbent firm that threatened infringement suits on the basis of uninfringed patents.

    “Patent ogre” does not really apply to wanna-be destroyers of the US patent system.

    “Efficient infringer” lacks punch.

    I have tried “patent claim jumper,” but it’s too old fashioned. Also, the mining claim jumper was likewise jumping a patent claim, but it was a patented mineral claim.

    I think “IP poacher” might be better, but “IP parasite” creates a higher level of disdain and applies to trash like Telebrands, for an IP parasite infests Intellectual Property and destroys the value of that property exactly as a disgusting nematode parasite infests farming proper and destroys the value of that property.

    When before the Court and the Court or the other party uses the phrase “patent troll”, a lawyer, who defends the US patent system and objects to this tendentious phrase should respond by attacking IP parasites and pointing out the harm these parasites do to the nation.

  7. Chris Gallagher January 3, 2018 11:19 am

    “Efficient infringement’s” time has come. Its business practice is the driver of the mega-tech’s version of patent reform. Used by both sides of the patent struggle, it accurately describes its actual practice. It is recognized and understood by patent policy watchers and the press. For lawyers and judges it echoes contract law’s “efficient breach” but cannot be similarly justified. As a bullying tactic it is believably consistent with other recent revelations of overbearing bad-actor conduct and is beginning to provoke judicial findings of willfulness. It is presently protected by patent uncertainty, PTAB, and elevated costs of enforcement and would have been congressionally blessed by the Innovation Act. It is now ready to replace “patent troll” as patents’ policy’s overriding concern.

  8. Richard January 3, 2018 11:19 am

    “Defenders of the patent system need a catchy phrase that has more punch and that competes with “patent troll”.”

    How about “Patent Owner”?

  9. Richard January 3, 2018 11:25 am

    It is clear that if you “support” “strong patent rights”, you must accept that some will engage in what is colloquially referred to as “patent trolling”.

    The real question is, why is patent trolling bad?

    The truth is, a patent is entitled to a presumption of validity. If your product (whether your a start up working out of a college dorm with no capital or GE) reasonably could read on the patent, you should be paying a license. If you’re unwilling to pay the license, do something else or be prepared for trial.

    If that is unacceptable, then you are not “for” “strong patent rights.”

    If the cost of a strong patent system is that the “Silicon Valley” cannot simply bulldoze over the patent laws as they do every other law and more in society, then is it worth it?

    Some say yes, and some say no.

  10. Anon January 3, 2018 11:53 am

    Chris,

    While I agree with you, I sadly also agree with Joachim’s observation of ““Efficient infringer” lacks punch.

    My view is that the word “efficient” in and of itself has a positive connotation, so even coupled with the word “infringe*,” there is a lack of strong negative visceral reaction – such as found in the word “Tr011.”

    “Efficient Infringement” certainly is an easy concept (and should continue to be used as tool in putting forth an easy to understand message) – but in a battle for public perception, sound bytes matter.

    In the real world, propaganda (and its more mild form of advertising) WORKS.

    There does need to be a concerted battle against the propaganda of the anti-patentists.

    There does need to be an “advertising” focus on a word or phrase that draws a visceral negative image (while being accurate).

    I like Joachim’s “IP parasite,” but would opt for the more direct corollary (to patent Tr011) of “patent parasite.”

  11. Joachim Martillo January 3, 2018 12:22 pm

    Anon hits the nail on the head. Using “efficient” in combination with “infringer” is truly problematic for a number of reasons. Yes, it can be easier to steal a lot of money than to make a lot, but we normally don’t call theft efficient.

    Economic analysis of the situation is deficient unless the problem is viewed consistently from a game theoretic standpoint. For people that don’t understand game theory, I can explain simply.

    I’m a fairly good chess player, but the most efficient way for me to win against Morphy, who has an explosive temper, would be to cheat. Unfortunately, if he caught me, he was likely to knock over the board and then physically attack me. After punching me out, he would probably piss on me.

    In an alternate approach, I hire Morphy to tutor me in chess, and in a few years, I may be able to defeat him honestly. We might even shake hands and go to dinner together.

    There is nothing efficient about infringement, and all the reasons for the patent system are inconsequential in comparison with value of the frequent gentle resets that the US patent system provides to the wealth concentration that is inherent in a capitalist economic system.

    The US needs a strong patent system because the US patent system stabilizes the inherently unstable political economic structures associated with capitalism.

    Because the US patent system provides far more than economic stabilization, infringement simply cannot be considered efficient in the big picture.

  12. Invention Rights January 3, 2018 12:46 pm

    It is simply “infringers” vs. “inventors”.

    From time to time frivolous litigants appear on one side or the other.

  13. Anon January 3, 2018 1:21 pm

    Invention Rights,

    Your point is subtle, but important.

    On another thread, the term “patent Tr011” is actually defended as an item to be used (by the known sympathizer, Paul Morgan). Your point here is that litigation misconduct should be separated from – and not obfuscated into – a definitional term. It is through the obfuscation that a separate legal situation is parlayed into “reasons” why the patent system is both (and first) denigrated) and (then) weakened.

    Calls for separate corrective actions for litigation misconduct can – and should – be made.

    Such is NOT a valid> reason to use the “Tr011” meme.

  14. Paul Morinville January 3, 2018 1:22 pm

    Patent parasite is accurate. But the louse is much bigger than the dog. However I like the belittling image that relegates a huge multinational thief like google into the tiny parasitic blood sucker that they are

  15. Chris Gallagher January 3, 2018 1:56 pm

    All good ideas, but remember we are talking about an economic term not seen by its adopters as pejorative SCOTUS, an academic law-focused tribunal is more apt to be influenced by law school memories of the controversy around “efficient breach of contract” than by patent sound patent policy. Note how the Google definition precisely describes the infringer business model and explains why they themselves named the tactic,”efficient infringement” They deem it to be a sound economic practice, not as the oxymoronic term it surely is.
    “efficient
    adjective
    (especially of a system or machine) achieving maximum productivity with minimum wasted effort or expense.”

  16. Richard January 3, 2018 2:20 pm

    Regarding “efficient infringer”, it was first proposed in the discussion above as an alternative to “patent troll”. But isn’t the “efficient infringer” the alleged infringer targeted by the patent owner (i.e targeted by the “patent troll” for which we are looking for a more punchy name) – i.e. the one who determines its more efficient to simply pay the license fee than to defend oneself by claiming non-infringement?

    So we have two terms now that serve the interests of the infringer:

    “patent troll” to denigrate the patent owner

    and

    “efficient infringer” to make the infringer’s infringement appear innocuous and the infringer appear to be the victim.

  17. Anon January 3, 2018 5:28 pm

    CHris,

    Your comment of “ SCOTUS, an academic law-focused tribunal is more apt to be influenced by law school memories of the controversy around “efficient breach of contract” than by patent sound patent policy. carries weight, but please note that the battle of the sound byte is NOT (necessarily) a SCOTUS thing.

    That is why I mentioned that the effort to showcase the actual negative effects of “Efficient Infringement” should still be made – but that a counter derogatory term (MEANT to be a pejorative) is still very much needed.

    The pro versus anti patent battle is fought on many fronts.

  18. Curious January 3, 2018 10:19 pm

    I’m warming up to the phrase “patent parasite.” However, I don’t think we should abandon “efficient infringer” either. I think both terms used in conjunction give an accurate representation of the circumstances.

    All that aside … I do believe words (and labels) matter.

  19. Joachim Martillo January 4, 2018 5:50 am

    Chris Gallagher@8 & @16 Why direct attention to “efficient breach of contract?” Isn’t patent poaching more like “unjust enrichment” of the parasite? (BTW, Telebrands, which the USPTO is supporting in the Intervenor Brief link I mention in @3 and describe in the link @1, can only be described as a parasite.)

    Richard@9, United Patent et. al. is trying to delegitimize a class of patent owner (as Michelle Lee did when she was USPTO director — good riddance. She was a zero at MIT, and she is less than zero now.) If an inventor cannot sell to a certain class, his market is smaller, and the value of the patent is less. Patent ogres like Google or Facebook try to acquire all IP or to neutralize patent rights they don’t own.

    Anon@11 I think lettres patentes when I write patent. Justice Gorsuch actually says letters patent in Court. To me patent parasite and IP parasite are both effective, but in US Law patents apply to real estate property (e.g., town site patent), mining property (e.g., mineral patent), or knowledge property (i.e., common usage patent). One describes a parasite to infest farming property, and a parasite like Telebrands infests intellectual property.

    Invention Rights@13. “Infringers” v “Inventors” is true, but the bad guys are attacking inventors via a flanking attack to anathematize a class of assignees. A patent is either property that one can sell like property, or it’s not. Google only wants inventors to be able to sell to Google at fire-sale prices. If one owns property, one should be able to take legal action against someone that tramples that property even if one is an assignee and not the original owner-inventor.

    Richard@17. While it may dilute the message, I use “efficient infringer,” “patent claim jumper,” “IP poacher,” “IP parasite,” and (now) “patent parasite” as appropriate.

    Because an attack on the US patent system is an attack on the US, I use epithets like “anti-American,” “un-American,” an “unpatriotic” for the anti-patent mob. (“Mafia” might be a better term than “mob.”)

  20. Night Writer January 4, 2018 8:39 am

    It isn’t really complicated. This is just like the anti-trust laws evaporating and the labor laws being weakened. The big corporations just lobby year after year and slowly get what they want.

  21. Joachim Martillo January 4, 2018 9:28 am

    Night Writer@21. The situation is a little different today because the core product of Google and Facebook is easily duplicated by a competitor that has sufficient resources. Thus these two firms must make sure they have access to any technology potential that competitors might create. Such access means destroying the US patent system.

  22. Night Writer January 5, 2018 8:02 am

    @22 Joachim. I agree. And, the two founders of Google said this in a 2012 documentary about them. They said their biggest fear is a start-up that figures out how to perform searches better.

    Google is definitely front and center on burning down the patent system.

    But, you know, if you think about it you will realize that other companies had similar problems and that is why they burned down anti-trust and labor laws. Like GM did not want the anti-trust laws or the labor laws.

    I think this is tragic and leading to several giant corporations taking over most of the money of tech.

    I mean it is a joke that Google says to Congress that they can handle the innovation. That corporate funding to innovation will be just fine. We know from history that is not true.

  23. Night Writer January 5, 2018 8:04 am

    What we are seeing now is the attempt to resurrect Benson which could only happen with science illiterate judges at the CAFC.

  24. Joachim Martillo January 5, 2018 8:23 am

    If one peruses recently issued Google patents, most if not all are hardly patent-eligible by current SCOTUS eligibility standards.

    I must hypothesize a concerted effort by a group of big shots to drive down patent prices (we see such conspiracy all the time in finance), acquire as many patents as possible, and then drive up the value of the patents by lobbying Congress for change in 35 USC 101.

    For this reason, I recommend carefully reading USPTO’s New Motto: “You Innovate – We Expropriate!” to understand the current level of corruption at the USPTO. I have clear and convincing evidence of criminality. Some is probably beyond a shadow of doubt.

    In dealing with the anti-patent Mafia, the general politeness of patent lawyers is a handicap. Supporters of the US patent system must get used to a “take no prisoners” approach.

    After APJs are arrested, I have no doubt these crooks and clowns will squeal like stuck pigs.

  25. Joachim Martillo January 5, 2018 8:53 am

    BTW, if you read tempus mutatur et nos mutamur in illis, you will find that I grew up in the environment. I no longer live there, but I have some expertise in identifying thugs and con artists.

    Anyone that grows up in certain areas of New York City and of Newark now or back then does.

    When I entered Harvard as a freshman, my father told me (in a Brooklyn accent of course).

    In the first lecture you’ll worry you aren’t a Harvard type of guy.

    In next week’s lecture you’ll wonder who the guy sitting next to you paid off to get in.

    In the lecture the week after that you’ll wonder what sort of arrangement got the guy lecturing a Harvard job.

    My father also believed that the higher an academic degree a guy had, the easier he was to con.

    Like Charlie Partanna in Prizzi’s Family, my father believed in self-improvement. Hence I attended one of the nation’s top prep schools and can write in Latin.

    Dad also liked to point out that criminality does not decrease at higher socio-economic levels. It goes up because the crooks can get away with more because they can hire better lawyers. Prizzi’s Glory addresses this point as Charlie Partanna transforms into Charles Barton. (BTW, some of my relatives run hedge funds nowadays. Others are major political donors.)

    We should keep in mind how far Madoff got and for how long he got away with his con scam.

  26. Pro se January 5, 2018 5:47 pm

    As an inventor, seeing a name is needed, a name for them shall be given:

    IP Rapist.

  27. Anon January 5, 2018 8:53 pm

    Sorry Pro se, I won’t go for that (having a friend who was the victim of an actual rape, that term won’t fly for me).

  28. Night Writer January 6, 2018 10:49 am

    @25, 26 Joachim

    I don’t think it is really so complicated. Google is just building a castle to protect themselves and don’t care what it does to the rest of the country.

  29. Pro Se January 6, 2018 1:03 pm

    @28 – there is more than 1 definition for that word, as to the climate of today’s IP theft, the other definition fit.

    “Patent Troll” is a brash label to put on to real inventors as they do… so gut hurt to gut hurt, that phrase bestowed on everyone in the culture of IP thief, is designed to be even more painful of an epithet.

  30. Joachim Martillo January 6, 2018 1:13 pm

    I read that Samuel Morse favored “patent pirate” for the willful infringer.

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