Does the Supreme Court even appreciate the patent eligibility chaos they created?

By Gene Quinn
November 12, 2018

At the beginning of this decade the United States Supreme Court embarked on a path that would ultimately result in a significant re-writing of the law of patent eligibility in America. While this Supreme Court first became intrigued with patent eligibility in Bilski v. Kappos in 2010, it wasn’t until Mayo v. Prometheus (2012), AMP v. Myriad (2013) and Alice v. CLS Bank (2014) that the law became a chaotic mess that no longer resembled the well-established view of patent eligibility that dates back to at least the 1952 Patent Act.

It is difficult to believe, but thanks to the Supreme Court the most exciting scientific discoveries, technological advances and innovations of the twenty-first century are no longer patent eligible in America. Things like personalized medicine, artificial organs, artificial intelligence, and medical diagnostics are not patent eligible. For a patent system that is supposed to foster innovation and progress, wholesale elimination of wide swaths innovative solutions to technological problems is extraordinarily shortsighted.

The legislative history of the 1952 Patent Act, which had been quoted repeatedly and relied upon repeatedly by the Supreme Court prior to 2012, clearly and unambiguously says that anything made by man is patent eligible. Without explicitly overruling any of their prior decisions that stand for that simple, clear, and correct proposition, the Supreme Court has fundamentally changed the law, acting as a Super Congress. Without any public hearings or testimony, the Supreme Court acting ultra vires as a Super Congress has rendered numerous innovations made by man no longer patent eligible in America, which is why America is losing the innovation battle for the future.

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And despite the Supreme Court having created an unintelligible, irreconcilable, and untenable test test (see here and here) the Court’s continues to refuse to take on patent eligibility appeals and to attempt to offer clarity to 35 U.S.C. §101. Indeed it is entirely predictable that the Supreme Court will refuse any and all petitions for writ of certiorari raising questions about the chaotic Alice/Mayo framework and its uneven and unpredictable application by different panels at the United States Court of Appeals for the Federal Circuit.

Is this Supreme Court really content with the subjective, extra-statutory test they have foisted upon the industry while changing the law? Does the Supreme Court even appreciate the chaos they have created?

The Supreme Court has stepped well beyond its Constitutional role with respect to its decisions on patent eligibility. The Court ignores the statute, applies its own extra-statutory test that weeds out innovations if they fall within judicial exceptions to the statute, and as it turns out the future of innovation relies on the fields of technology the Supreme Court sees as exceptions to patent eligibility. Of course, when laws of natureand abstract ideas are among the judicial exceptions problems were bound to happen.

On some level every innovation starts off with an idea, and medical advances and innovations, particularly in the realm of personalized medicine, medical diagnostics and artificial organs are fundamentally and foundationally built upon laws of nature. The entire idea is to create the perfect solution that the body will accept. But if you are ingenious enough to do that no patent for you in America. How utterly ridiculous is that? But that is where we are in America thanks to the United States Supreme Court.

It is clear with ever new case the Supreme Court refuses to accept that the Court will not take another patent eligibility appeal in the short term. Just recently the Court refused to take a case where the decision seems to be completely irreconcilable with the Federal Circuit’s Berkheimer and Aatrix decisions, which found that questions of fact underlie a patent eligibility determination at step two of the Alice/Mayo framework. So what does that mean? Do they think the case the contradicts Berkheimer and Aatrixis correct? Do they think Berkheimer and Aatrix is correct? Who knows, because they won’t tell us anything.

The Supreme Court has severely screwed up the law of patent eligibility – the one area of patent law that up until eight years ago was so settled it would be crazy talk to believe there could be any disagreement over what is patent eligible in America. Everything made by man was patent eligible in America. Not anymore.

It is time for two things to happen. First, the Federal Circuit needs to come to terms with the fact that the Supreme Court is not going to provide any more guidance, which means they actually have to fulfill their Constitutional duties and start to make sense of this mess with more en banc decisions that will then actually be followed by three-judge panels. Second, it is time for the industry to get behind either the AIPLA/IPO proposal or the ABA proposal and demand Congress fulfill its Constitutional duties and put an end to the Supreme Court legislating regarding what is and what is not patent eligibile in America.

 

Image Source: Deposit Photos.

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 58 Comments comments. Join the discussion.

  1. EG November 12, 2018 4:27 pm

    Hey Gene,

    Agree with both of your two conclusions, plus I’ve got a third and fourth: (3) strip SCOTUS of any appellate review of patent law matters; and (4) add more judges to the Federal Circuit who have the appropriate/science background and have “real” patent law/practice experience. The fourth is particularly relevant, given that two of the judges that have chemical backgrounds (Newman and Lourie) could take senior status right now.

  2. Bemused November 12, 2018 5:29 pm

    Gene, in response to your question, I believe the answer is a resounding “YES”! Because that is precisely what this anti-patent court had in mind all along. To sow uncertainty and predictability so that patents are ultimately rendered useless and worthless.

    For far too long we’ve implicitly or explicitly assumed that SCOTUS really didn’t “get it” vis-a-vis the big picture (i.e. the impact upon patents writ large and the innovation economy) in cases which did away with injunctive relief, patent eligibility, damages, the constitutionality of the AIA, etc, etc, etc.

    But its time to call it what it is: This is a rogue SCOTUS which has taken upon itself the role of judge, jury, and executioner of patents and the rights of inventors.

    It’s time to strip SCOTUS of appellate jurisdiction over patent appeals. These seven cretins (leaving out Justices Gorsuch and Kavanaugh) have lost the right to adjudicate over patent cases. Their concerted destruction of the greatest innovation engine in the history of the world demands no less.

  3. Anon November 12, 2018 6:17 pm

    Short answer:

    No.

  4. concerned November 12, 2018 7:25 pm

    My colleagues have congratulated me on my discovery while the patent examiner quotes court cases that have nothing to do with my field and concludes my process is routine, well understood and conventional. How is this situation even possible? How can facts and evidence not matter in a legal setting?

    SCOTUS has earned the right to be recused from patent cases, without question.

  5. BP November 12, 2018 7:50 pm

    Excellent as always, good recommendations. But we also have the antiquated patent office, anyone try uploading documents today (EFS or contingency)? The number of errors the system is throwing is ridiculous. Are we in v.2 of August 2018? The issues exist on multiple fronts, all pointing to devaluation/lack of appreciation of IP. USPTO should be able to keep all fees and have a world class agency with world class systems (that are paperless).

  6. B November 12, 2018 9:49 pm

    Is this a trick question? Just FYI, Judge Stoll’s opinion in Real Estate Alliance v. Move was published on February 1, 2018, which is EXACTLY one week before Berkheimer was published. Need I remind anyone that Judge Stoll was on the Berkheimer panel? Berkheimer holds evidence is necessary; Real Estate Alliance holds the opposite as does In re Villena — another product of Stoll’s lack of honesty..

    Anyway, the attorney for Real Estate Alliance characterized the fact versus pure law issue a “split” within the Federal Circuit. However, it is not a “split” given Judge Stoll was in on the Berkheimer panel and “split” infers different judges having different opinions.

    Given that Judge Stoll ruled in opposite ways on the same issue, the only appropriate term is “schizophrenia.”

  7. Benjamin King November 13, 2018 12:30 am

    A cynic can argue that the if the Federal Circuit were to “make sense of this mess”, then the Supreme Court would swiftly act to overrule the Federal Circuit and recreate the mess.

    The AIA was signed into law in 2011 and was soon followed by Mayo v. Prometheus (2012), AMP v. Myriad (2013) and Alice v. CLS Bank (2014) to form the Four Horsemen of the 101 apocalypse. It has been a concerted effort to ensure that no objective criteria can stop a ruling of ineligibility. Any judge at any time can strike down any patent with a straw man argument by separating the inventive concept from the structure implementing that concept, calling the inventive concept an ineligible abstract idea, and complaining that the structure without the inventive concept is “not enough”.

    From this perspective, the situation is not likely to be fixed without congressional action.

  8. PG November 13, 2018 5:19 am

    Couldn’t agree more.

    And I’m surprised Gene, that you have not mentioned explicitly the attitude toward Software-based innovations, as you do time and time again (at least on webinars). I think this is one of the weakest points in SC decisions

    I want to bring here a quote from Alice case Oral Arguments, by justice Kennedy : “Suppose I thought and, again, it’s just a thought because I don’t have the expertise, that any computer group of people sitting around a coffee shop in Silicon Valley could do this over a weekend. Suppose I thought that…But that’s just an idea, hey, let’s use a computer.”

    Since when the effort it takes to program an innovation is a factor on its patentability?

    Just a questions…

  9. Peter Kramer November 13, 2018 5:31 am

    When CJ Roberts assumed his position, shortly thereafter there were commentaries in newspapers such as the New York Times and Washington Post that described the “opaque” decisions and opinions of the Roberts’ court which read more like corporate committee reports. The Court lost its focus and decisions such as Alice, Mayo, and KSR are a natural consequence.

  10. Peter Kramer November 13, 2018 5:42 am

    Dear Concerned (concerned November 12, 2018 7:25 pm),

    I hope you have a good patent practitioner.

    BTW, This is not a pitch for your business. Nevertheless, inventor impressions of a rejection vs practitioner understanding of the rejection (and how to effectively amend/traverse) are two entirely different things.

  11. Concerned November 13, 2018 8:06 am

    Mr. Kramer:

    People (from this forum) have read my attorney’s arguments and stated they were well argued.

    Also the author who reached out to me for his upcoming book thought I got the shaft.

  12. CP in DC November 13, 2018 9:33 am

    I want more discussion about the solution. Unless you’ve been living under a rock, you know the problem. Waiting for the Supreme Court to fix it is wishful thinking. They don’t know how to fix it.

    Rewriting the statute to include exceptions of abstract ideas and/or products of nature is not the solution. The problem is with the implementation of the words. No one knows how to determine that something is abstract. The comments on this site constantly talk about examiners, PTAB judges, and article III judges getting it wrong on a regular basis. Judge Michel testified before Congress and told them so, and still nothing happens.

    I would opt to remove 101, open the door, and let examination settle the issues. However, for this to happen, examination has to improve a lot. Most 101 issues, can be addressed by 112, but examiners don’t know how to apply those rejections and the rejections take too much time. Mayo is a perfect example.

    I would opt to remove 101 because I don’t see a reasonable solution that can be implemented with ease (for examiners) and provides predictable outcomes. Take Sequenom, testing for sex and disease in a fetus, that did not claim the DNA, just a method of testing using it. No natural product there, but a natural phenomena was involved (the correlation between DNA and sex or disease). These eligibility rejections based on “correlations” are common in personalized medicine. How do you write that into or out of “natural product?”

    The 101 fiasco started with overclaiming. Let description and enablement rejections deal with overclaiming and 102 and 103 for the rest. I think that would solve the issue and provide predictable outcomes. The proposed 101 solutions will only increase the damage as they do not address implementation.

  13. Gene Quinn November 13, 2018 11:06 am

    PG-

    It probably is time for a rant about the lack of understanding the Supreme Court has on software, and how it is utterly ridiculous that this group of people — who according to Justice Kagan do not even use e-mail — have taken it upon themselves to act in a Super Legislative capacity to kill the software industry.

    Yes, Your Honor, IBM could have coded Watson over a weekend while sipping a mocha at a local Starbucks, sir!

    Ugh!

  14. B November 13, 2018 12:14 pm

    @CP in DC “Take Sequenom, testing for sex and disease in a fetus, that did not claim the DNA, just a method of testing using it. No natural product there, but a natural phenomena was involved (the correlation between DNA and sex or disease). These eligibility rejections based on ‘correlations’ are common in personalized medicine. How do you write that into or out of ‘natural product?'”

    This case is Judge Reyna’s most retarded baby as it decoupled preemption from Alice/Mayo. The patent holder correctly argued that there could not possibly be preemption and gave specific examples as to why. Rather than face reality, Judge Reyna declared that legal theory drove reality and that his legal theory, correct or not, made the issue moot.

  15. Pro Say November 13, 2018 12:14 pm

    As I explained in a recent post (CP in DC is correct):

    Anything short of the abolishment of the unneeded s101 will still allow SCOTUS to find a way to slip their collective noses under the patent tent.

    A persistent bunch they be.

  16. B November 13, 2018 12:23 pm

    @ Concerned and Kramer

    “People (from this forum) have read my attorney’s arguments and stated they were well argued.”

    Concerned, your attorney did a great job. He touched on everything short of the 1952 Patent Act, which even the CAFC refuses to address or even mention even when openly (but respectfully) mocked – and I know this first-hand. Hell. when Judge Newman is affirming a 101 rejection because there is no “invention” or appropriate “transformation” of a composition of matter / manufacture, we’re in trouble.

    Unfortunately, Alice/Mayo isn’t about making decisions on the merits of a case. “Void for vagueness” is a term another commenter on this page uses, and he’s correct. The statutory language of s101 has been made moot by judicial fiat.

  17. B November 13, 2018 12:31 pm

    @ Benjamin King “The AIA was signed into law in 2011 and was soon followed by Mayo v. Prometheus (2012), AMP v. Myriad (2013) and Alice v. CLS Bank (2014) to form the Four Horsemen of the 101 apocalypse.”

    The AIA is a mixed bag at best, and a giveaway to large corporations, but s101 was not altered in the slightest by the AIA.

    Alice and Mayo were the product of Justices unable to read the statutory language of s101 or bother to understand the purpose of the 1952 Patent Act.

  18. Ternary November 13, 2018 12:35 pm

    They do. And there is more to come, I believe. There is a complete misunderstanding at SCOTUS what a computer is and the role of software in it. There is a belief that software is an expression (like a novel or a story) of an idea and is not on the same level as for instance a mechanical device. That is why mathematical expressions upset the SCOTUS so much. Math lives in the human mind, they believe and is and cannot be a patent eligible invention. It is a fundamental misunderstanding of aspects of “mathematical physics” that appears to imply that all “scientific truths” (as mathematical expressions) are encapsulated by what are called “laws of nature.”

    This is a methodological and ideological conviction from which Courts appear to be unable to move. Especially because they find support in prior decisions.

    Night Writer (I assume jokingly) maintains that SCOTUS believes that “the Sun revolves around the Earth.” But methodologically and ideologically that is where they are. Their feeling seems to be that the patent eligibility is going in the wrong direction and that “ideas” are being patented. This may not even be a malicious intent, it is just a misunderstanding of advanced technology.

    They are waiting, I believe, for a case that fits their belief system to put another if not final nail in what they think is the wrong direction of patent eligibility.

  19. George November 13, 2018 12:35 pm

    The real elephant in the room (or the biggest one) is that patent rights and especially ‘patent protection’ is now – effectively – only available to the 1%! This ISN’T what the Founders intended – obviously! They never said (or anticipated) that it could take a boatload of money to obtain either patent rights, or patent protection! They intended the concept of patent protection to be class and financial status blind! They never intended that patents should only be reserved for the rich or large corporations (since there weren’t any large corporations at the time). I believe this alone now renders our ‘oppressive’ and ‘unfairly burdensome’ patent laws, unconstitutional. Clearly they are NOT what the Founders intended. What they intended and expected Congress to flesh out, was an ‘egalitarian’ set of rules and laws that would be accessible to all! Certainly not what we have now! What we have now is an anathema to what the Founders intended! How is that not obvious to all (especially patent attorneys, members of Congress and the courts)? Article I, Section 8 is as clear as it is brief! The Founders never envisioned patents becoming complicated or highly contentious. They could never have imagined that it could take years to decide who invented what! The whole purpose of a ‘letters patent’, was to allow describing what was being claimed as new and significant ‘technology’ in purely technical terms, rather than having to describe these inventions in highly obtuse legal terms intended solely for the purpose of obfuscating what was actually being claimed as new and broadly applicable. The ‘patent’ was mostly supposed to be a concise and detailed technical document, not a ‘tortured’ and confusing legal document. It would become a legal document by reason of it being approved by the government as a form of time-limited property right (such as a mining right). It was simply a technical property claim, in the way that title to a surveyed piece of land was a legal property claim. It was the plainly described and easily understood borders of that property claim that mattered most, not the legalese that may have accompanied title to such property. Land disputes were always easy to resolve when their boundaries were not allowed to overlap. The USPTO no longer ensures that the boundaries of new inventions don’t overlap! They do a very poor job of this and that is what causes so many problems. Far fewer (good) patents should be allowed to issue. But, far too many bad patents are still being issued (including perpetual motion patents). That’s why we have the mess and endless and inconsistent arguments we have today! At most 50K patents should be granted in the U.S. each year and maybe even far fewer than that! Makes no sense and it is a waste of incredible amounts of money to issue patents that will only be deemed invalid later on! It is a waste of huge amounts of time and money that could be put to much better uses, including improving our way of life and even technical advancement. Fewer patents means much less confusion as to who invented what and when!

  20. George November 13, 2018 1:04 pm

    GQ –

    Except how do you adequately describe a 10 million line piece of software in which 80% may not be novel or non-obvious at all (but it would take years of research to prove)? Was much easier when code was only a few pages long. Also humans perform ‘AI’ all the time (especially when writing ‘boilerplate’)! So how can you claim as novel a process that humans may be doing naturally (and is therefore ‘naturally occurring’ everyday)? The irony, of course, being that the closer AI gets to duplicating human performance, it may be less and less patentable, as it would then become more of a scientific ‘discovery’, as opposed to patentable subject matter! Also, any process (not requiring new hardware) that is able to be performed by humans (especially just as efficiently) is not considered patentable subject matter, anyway! Programs are just a set of instructions to perform certain actions. If humans already operate with the same or similar internal instructions, then those instructions (i.e. code) is not likely to be patentable. Proving this to be the case, however, is another matter altogether and cannot even be done presently! I think it is actually the complexity of software today that makes issuing patents on it extremely difficult and controversial. What is the ‘abstract’ vs. non-abstract portion of software? If the software is intended to control a machine in ways that is not possible for a human to do (at least for very long), then those kinds of computer instructions probably are patentable subject matter. But that’s why the Europeans don’t even bother trying to deal with purely software centered patents and prefer such IP to be primarily protected by copyright and trade secret! It’s just gotten far to complex to sort out (particularly in the case of self-teaching machines). If you have a machine that learns on its own, who gets credit for what they learn and/or patent rights over it? And, if a machine ever does becomes conscious, could you patent and thereby ‘own’ such a machine? Yeah . . . try to answer that one in a technical or legal way!!!

  21. step back November 13, 2018 1:39 pm

    Bottom line is that we don’t know what the SCOTeties “think” (and I use that latter quoted term with hesitation).

    We only know what they write and what they espouse at oral arguments.
    All of it is mythological nonsense with no basis in science and fact.

    Will they ever appreciate their incompetence in these matters? No.
    Will they ever admit their incompetence in these matters and apologize? Never.

  22. Top Cat November 13, 2018 5:21 pm

    In New Zealand we were very fortunate to have a patent attorney on our Supreme Court for a number of years who contributed to excellent jurisprudence for our country.

  23. Gene Quinn November 13, 2018 8:22 pm

    George-

    You say: “If humans already operate with the same or similar internal instructions, then those instructions (i.e. code) is not likely to be patentable.”

    That simply cannot be the law. It has never been the law at any time in the history of the world that something that could be done previously but now could be done faster, more efficiently, with less error, is not patentable. Of course improvements are patentable.

    For example, a human could perform with pencil and paper the mathematics required to intercept a ballistic missile. The human would require far more time than granted and the city the missile was aimed at would be destroyed. So if software could instruct a machine to intercept the missile in real time there are some that would say there is no innovation at all because the human over several lifetimes could have performed the relevant calculations. All the people who would be alive because of the interception being successful would easily understand there to be a meaningful invention.

  24. Night Writer November 14, 2018 8:12 am

    It would be interesting to see an article that compares how the Scotus has decimated other areas of law in a similar way as Alice. I think with anti-trust law what they did was create the “rule of reason”, which essentially made it possible for a judge to decide whatever they felt like. All they had to do was plug in some reasons why it made sense to only have two competitors in a market and there goes the Sherman Anti-Trust Act.

    I think the Scotus plays this game a lot. They know how to burn down any legislation and any law.

  25. Andy J November 14, 2018 10:02 am

    Ternary @18,

    I also believe they are not being malicious. However, I believe they would be receptive to hear a case which raises conflicting legal theories regarding the role of advanced technology in forensic science and protecting the inventions that are used to advance forensic science. They currently hold contrary to certain scientific truths and facts which, when followed logically, lead to the nullification of aspects of forensic science. The SCOTUS simply cannot allow areas of forensic science to be nullified, especially computer and biological scientific advances, that have advanced the use of forensic science in law.

    A case which highlights the relationship that intellectual property law has in supporting forensic science would inevitably reconcile the divert legal theories currently being applied in these areas. The law must follow established scientific principles. The SCOTUS has this responsibility, it only needs the opportunity.

  26. B November 14, 2018 10:18 am

    @ Andy “I also believe they are not being malicious. However, I believe they would be receptive to hear a case which raises conflicting legal theories regarding the role of advanced technology in forensic science . . . ”

    Gentlemen, you’re 100% wrong. They’re intentionally malicious.

    Why else would Judge Taranto deliberately lie about MCRO to reject Investpic. Why else would Judge Stoll lie about Berkheimer to reject Villena? How else can you explain why McRo was held valid but not Recognicorp. Also, explain why Judge Newman deliberately misrepresented 101 in Bhagat, which was rejected because a “product-by-process” claim didn’t have a “process.” (stupid isn’t it)? It’s as if Judge Newman or any of her lackluster clerks couldn’t be bothered to read Bilski.

    Does anyone here really believe that not a single Supreme Court justice never read Graham v. Deere (criticizing “invention”) or anything else about the 1952 Patent Act before they stuck the word “invention” into patent eligibility,

    I’m sorry, but like many other patent attorneys who have gone threw the shyte-mill of the courts, I no longer believe its about confusion. The courts are like children who’ve lit their 50th apartment building on fire and can’t give a rational reason.

  27. Night Writer November 14, 2018 10:23 am

    >>You say: “If humans already operate with the same or similar internal instructions, then those instructions (i.e. code) is not likely to be patentable.”

    This is anathema to the patent system, science, and technology. I know that Taranto pushes this point. But the basic principle of innovation is often involved in automating processes that human perform and seldom are they automated in the same way as the human. They are often improved or by necessity performed differently. In Deener, a method of processing grain was disclosed. Each of the steps and indeed the entire method could have been performed by a human, but the justices did not say it was unpatentable because it could be performed by a human body. Indeed, a shovel is similar to a hand, etc.

    The very essence of progress is often automating what we already know. The argument that if a person does it then it is unlikely to be patentable is a naked attempt at stripping patentability from a large subject area.

  28. B November 14, 2018 10:23 am

    @Gene “That simply cannot be the law. It has never been the law at any time in the history of the world that something that could be done previously but now could be done faster, more efficiently, with less error, is not patentable. Of course improvements are patentable.”

    Improvements are patentable?

    Not according to Electric Power Group, Investpic and Villena. In Electric Power Group, Taranto lied about there not being an improvement or new data source. In Villena, Stoll refused to address the indisputable advantages or the multiple violations of the APA. Investpic was an all out f.u. to improvement by Taranto.

  29. B November 14, 2018 10:34 am

    @Night Writer “They are often improved or by necessity performed differently. In Deener, a method of processing grain was disclosed. Each of the steps and indeed the entire method could have been performed by a human, but the justices did not say it was unpatentable because it could be performed by a human body. Indeed, a shovel is similar to a hand, etc.”

    Hey, go back to Eli Whitney’s cotton gin. Patentable? Was in the 1800s but not under Judge Taranto.

    https://www.history.com/topics/inventions/cotton-gin-and-eli-whitney

  30. Anon November 14, 2018 1:17 pm

    George appears to be operating under a mistaken appreciation of patent law (and what software IS, all in relation to patent law, in relation to the history of computing devices, and to the actual physics of a computing device).

    As an example (and related to a long ‘under the fold’ dialogue that had been attempted to had been maintained – see http://www.ipwatchdog.com/2018/09/13/hold-until-madness-stops/ ), software needs to be understood NOT as merely “math” or even as some mere collection of “math.”

    Three analogies:

    In Copyright (and operating under the same Constitutional clause), one may NOT obtain copyright on math. Period. Yet, it is under the understanding of “the configuration of” – (and to return to patent parlance) the “claim as a whole” – in which such items DO create something more – something to which an aspect of protection does become available.

    In an atomic view, 100% of merely three items make up every single “hard goods” item (in more than one statutory category) for every item in those categories that has ever been patented. Further, these three items are combined purely according to the Laws of Nature, and there has been NO CHANGE in how that combination is effected since the first few moments of the universe.

    To then posit “in which 80% may not be novel or non-obvious at all (but it would take years of research to prove)? Was much easier when code was only a few pages long” is to simply not grasp what it is that is protected by “software patents,” nor how novelty or non-obviousness is to be evaluated (or, for that matter, how patent eligibility is supposed to be evaluated, notwithstanding what nonsense the Supreme Court chooses to write).

    From an historical perspective, one also needs to remember that software is nothing more than an equivalent (and equivalent is not to be taken as “an equal,” as in, the two need not have an identical relationship) to other wares which an innovator concerned with computing devices may choose to avail for themselves. That is, when it comes to protecting innovation by way of patent, it matters not whether a computing device is a dedicated hardware device or a combination of hardware and additional software (or firmware). Those attempting to insert such a distinction are merely obfuscating. The analogy in this case is to take the thought experiment labeled “The Grand Hall” experiment, wherein two identical hardware computing devices (with each having absolutely NO software) are placed in a Grand Hall next to each other. One (and only one) of the two pure hardware machines is then changed by being configured with software. Then the two machines are compared as to actual (and immediate) capabilities (that is, capabilities without any further improvements to the computing devices).

  31. Night Writer November 14, 2018 1:59 pm

    @26 B Gentlemen, you’re 100% wrong. They’re intentionally malicious.
    Why else would Judge Taranto …

    I think this is exactly right. I predicted that Obama would appoint non-patent attorneys (in general he did), and other that are anti-patent. My guess is that Obama allowed Google to select the nominees and that there were conversations about agreeing to “get the patents under control.” But many of the people selected were already very anti-patent and judicial activists prior to appointment.

    If Trump wanted to really clean up patents, on the list of things to do would be to dissolve the CAFC and reform it with patent attorneys with at least 10 years experience and with people that have a history of integrity.

  32. step back November 14, 2018 2:03 pm

    B @26

    You’re analogy to children playing with matches is spot on.

    Yes the SCOTeties and Federallies (CAFC and Districts) are just like precocious children playing with matches, burning whole cities down and then proclaiming that they tread lightly lest their actions burn whole cities down.

    Are they malicious? Well, at minimum they have reckless and depraved disregard for the consequences of their irrational actions. Isn’t that bad enough?

  33. step back November 14, 2018 2:17 pm

    Night @24

    Good point about observing how SCOTUS has burned own other areas of law including anti-trust, corruption in politics (Citizens United), voting rights, labor law, etc.

    Patent law is a special case though. It alone is explicitly mentioned in the Constitution. Congress has the choice (per an enumerated empowerment clause, clause number 8) to “secure” for inventors the “exclusive” rights to their Discoveries. Congress has chosen to do so via Title 35. SCOTUS has nonetheless gone ahead and de-secured inventors, stripping them of right to injunctive relief, presumption of validity and statutorily permissive eligibility (“any” new and useful machine, process, etc.).

    SCOTUS has also interfered with a quid pro quo contract made between inventors and the US government (the USPTO). Suddenly (and ex post factually), subject matter that was deemed eligible at the time inventors paid their issue fee, their maintenance fees is no longer eligible at the moment the inventors try to enforce their exclusive rights. What kind of sanctity of the contract is that?

  34. B November 14, 2018 4:06 pm

    @ step back “Are they malicious? Well, at minimum they have reckless and depraved disregard for the consequences of their irrational actions. Isn’t that bad enough?”

    They’re deliberately malicious. When not just one but a series in CAFC judges openly lie, expressly and by omission, that’s malicious. I’ve seen it all first hand. They’ll never have credibility with me again, and it’s clear from the available record just how dishonest these judges are.

  35. Ternary November 14, 2018 4:23 pm

    Anon, of course you are right in your explanation. Unfortunately we are beyond scientific explanations being convincing.

  36. Night Writer November 15, 2018 6:06 am

    @34 B >>They’ll never have credibility with me again, and it’s clear from the available record just how dishonest these judges are.

    That is what I have been saying for many years now. I think that Obama allowed a corporation to select the judges. Obama appointed most of the judges O’Malley through Stoll. I think they all were talked to before the appointment and agreed to get patents under control.

    And what I’ve noticed is that some of the selections are of people that had a not very good reputation in terms of integrity prior to their appointment.

    The short of it is that Obama allowed a corporation to stack the CAFC with anti-patent people.

    I get the feeling too that people aren’t savvy enough to get a lot of the games these judges play.

  37. Anon November 15, 2018 9:32 am

    Ternary,

    Unfortunately we are beyond scientific explanations being convincing.

    I want to disagree – if only because the non-scientific approach can be combatted.

    Yes, using only scientific approach does not appear to be the winning strategy, and using a spectrum of approaches (including “appealing soundbytes” as well as fighting the “guerrilla war” of not ignoring the vapid propaganda) will be required. Note that some have criticized engaging the likes of “Malcolm Mooney” on that other blog, indicating that such merely “feeds the Tr011,” but without engaging and showing just how vapid the propaganda is, that propaganda will be picked up by those not engaging in critical thinking.

    Yes, fighting the propaganda is not easy in a day and age in which critical thinking is taught little and appreciated less. But the alternative is to simply not care and surrender to the chaos. I refuse to not care.

  38. B November 15, 2018 10:51 am

    @ Night Writer “I get the feeling too that people aren’t savvy enough to get a lot of the games these judges play.”

    People want to believe judges are honest, and assume the CAFC is merely confused

  39. step back November 15, 2018 10:54 am

    Anon @37

    I wish I could be as hopeful as you seem to be about getting people to “think” critically and fighting the good fight against the tsunami of anti-inventor propaganda.

    The truth seems to be that our technologies have gotten more complex than what most people can cope with on a rational basis. They shift to mythical magical thinking:

    Yes Virginia and ex-Justice Kennedy, there really is a coffee shop in Silicon Valley where one easily finds a bunch of nerds sitting around sipping their mocha grande java eager to jump at the chance of coding up up over a weekend and on their home computers any implementation of any “abstract idea/concept” you might have. You want cloud based secure hedging? No problem. You want a bank escrow system? Heck even grandma and King Tut’s abacus man knew how to do that. You want DNA fragments plucked off the double helix like leaves off a tree? Guess what? We denizens of the caffeine dungeon can do that too. Yes as a side job. And over the weekend on our home DNA and me kits. Easy peasy.

    Call this nightmarish movie, Revenge of the Anti-nerds. While you’ve been sticking your face into the deep tech grindstone, some out there have been honing their skills in the dark arts of deceptive manipulation. They’ve gotten really good at it. Knowing how to stroke the egos of our Supreme Court Justices and lower court judges just right. Yes your honor, those inventor types aren’t smarter than you. It’s just that they have these scheming scriveners with their warlock draftsman’s spells to spin a pile of gobbledygook. But just like that emperor who before his parade could see the fine quality of his tailor’s toolings, you too can spot the abstract idea hidden among the conventional and routine other words found in all these obfuscating patent claims. Here is a simple magic potion to throw at them all and strike them down before they interfere with the working of our good enough economy.

  40. Anon November 15, 2018 12:12 pm

    step back,

    I will take you well-written reply to be the very type of “more than scientific approach” that I deem needed to combat the scourge of anti-patentists.

    Woe to us all if you decided to simply quit trying (and for all of your pesmissism towards my post, the evidence of you NOT quitting is found in your own writing!).

    Yes, there is very much a type of “glossing over” and well, that’s just magic…

    But to borrow from a Stan Lee related movie, Thor well informs us that “magic” is simply technology on a level not understood. We all still NEED to think critically, even but for “magic.”

  41. Ternary November 15, 2018 1:19 pm

    Anon, My response was caught in a “page was removed error.” Let me try again with my complete response.

    Explaining the principles of computers to people who do not want to be convinced does not help. There was no longer science involved in believing that the Sun revolves around the Earth after Galileo. It took the Catholic Church until 1822 before it let go of its medieval beliefs. In the mean time only a stubborn ideological conviction remained.

    Despite all of its actions regarding unexplained “abstract ideas”, “law of nature” and “natural phenomena” still some patents deemed to be undeserving slip through the net of SCOTUS decisions.

    This is why Alice, now includes “directed to an abstract idea” which is a new judicial exception. It means, as I understand it, but who knows, that an invention originates from an “abstract idea” but the conversion of the idea into a physical realization (such as a programmed computer) is for some metaphysical reason not sufficient to make it patent eligible. Despite the fact that measurements and observations can be made that prove that the device is a physically observable device, most likely in its performance different from other devices, SCOTUS maintains that too much of the “abstract idea” still resides in the device. This “abstract idea” is as metaphysical as the aether. You cannot see it, touch it, or measure it. But SCOTUS maintains it is there, right in the device.

    There is a growing and increasingly unbridgeable gap between what SCOTUS decides and the current state of science and technology. This has eroded both the quality of patents and the credibility of SCOTUS. The SCOTUS decisions in the field of computer technology stand out by their amateurish and naive scientific nature. They are an embarrassment to our stature as a country that developed computer science and technology and form an unneeded barrier to new business activity in this field.

    A higher authority must step in. And that higher authority is Congress.

  42. step back November 15, 2018 1:32 pm

    Ternary @41

    Unfortunately when SCOTUS goes low, Congress goes even lower.
    It will take another Pearl Harbor, another Sputnik moment before America wakes up. Who knows, perhaps we are in in a permanent opiod induced coma? All that is good news for our global competitors. You know, the ones who pay the anti-patent traitorous shills in our country to keep doing what they’re doing.

  43. George November 17, 2018 2:50 pm

    Enablement STILL a significant factor in PTAB decisions! Make sure your invention ‘really works’ – as claimed (i.e., don’t file Theranos-like applications)! Easiest way to invalid a patent is to prove ‘it doesn’t really work’ (like all perpetual motion machines).

    https://www.law360.com/lifesciences/articles/1102368/ptab-invalidates-antecip-s-bone-treatment-patent

  44. George November 18, 2018 4:20 pm

    Another recently rejected, algorithm-based, application, this time from Facebook (and nice to see they get rejections too)! Provides more clues as to what won’t be allowed after Alice. Seems that if an idea can be described (or executed) as just a set of mathematical, economic, or other abstract steps, even when using proprietary data input/output, then you probably won’t be able to patent it! The resulting actions (or output) of any such algorithm(s) would seem to have to actually DO or CREATE ‘something tangible’ that represents more than just a speed up, improvement in accuracy, or even productivity improvement, over that which could be done previously by a person of ordinary skill in the art (i.e., in this particular case, having to do with sales and marketing). Also implies that most business method patents will, likely, not survive closer scrutiny by the PTAB (or the courts), since they too will now have to result in the creation of something ‘tangible’ and probably something that didn’t exist before or wasn’t possible (or ‘almost’ impossible) to do at all, before (say something ‘very difficult’ or expensive to do before). Definitely looks like Ideas by themselves (even those using a computer) still won’t cut it, even if they might ‘require’ a computer for their execution, utility, or ‘full expression’ (such as a graphical representation). Seems we are back to the original interpretations of what is and is not patentable (which, despite seeming arbitrary to some, may be a good thing if only for ‘practical reasons’)! We (including big corporations) may have to just accept this new reality (at least for the time being) and adjust to it accordingly, or seek to change it by legislation (a long shot).

    https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017001718-10-22-2018-1

    https://patents.google.com/patent/US20140172541?oq=13%2f658%2c480

  45. Anon November 18, 2018 8:35 pm

    George,

    You are spouting Kool-Aid.

    How is that “an idea” can require a computer to execute?

    Computers are not people and cannot “execute ideas.”

  46. concerned November 19, 2018 1:23 am

    George @44:

    Also implies that most business method patents will, likely, not survive closer scrutiny by the PTAB (or the courts), since they too will now have to result in the creation of something ‘tangible’ and probably something that didn’t exist before or wasn’t possible (or ‘almost’ impossible) to do at all, before (say something ‘very difficult’ or expensive to do before).

    Or implies the examiner will reject, reject and reject and force the PTAB or courts to remand the approval of the application if you are lucky (95% affirmed rate of the examiner’s rejection at the PTAB in my art). My examiner only approved 2 applications out of 114 the last 12 months. I proved that my process was not achieved before by experts and professionals in the 62 years since the benefit program existed and proved it with overwhelming evidence.

    My level of evidence may have been unprecedented or close to it: 2 university studies from experts with 25 years and 35 years of experience, documents from every possible end user from all 50 states in our nation, handbooks and applications from the administering agency. Reject, reject reject. Examiner’s evidence: Nothing, did not even acknowledge the evidence.

    The new technology was rooted in computers as that is where the problem resides (think McRO). Reject, reject, reject even though McRO computerized a known process whereas my process produced a solution that was never known by experts and professionals before or after computers were invented.

    No pre-exemption: Process only kicks in when professions make unavoidable mistakes as the solution was unknown to them. Reject, reject, reject.

    George: Let’s call whats really happening. Even though the SCOTUS did not say anything with a computer is rejected regardless of what problem was solved, yes they did in the reality. Alice was the case SCOTUS was waiting for and they pounced on it with their “perfect” solution: Add words to the law and refuse to define said words. Make 112 patent attorneys look incompetent and approve 2 applications to somehow make the “perfect” solution look legitimate.

    Please do not give a free pass to a legal process where truth, facts or evidence is dismissed and not even acknowledged. SCOTUS will not even take a brief to affirmed whether truth, facts or evidence is a consideration (as it might reveal the real agenda- kill software patents). Walks and quacks like a duck, must be a duck.

  47. Anon November 19, 2018 7:59 am

    Something like this should never be accepted at face value:

    Seems we are back to the original interpretations of what is and is not patentable (which, despite seeming arbitrary to some, may be a good thing if only for ‘practical reasons’)!

    There is no proper “original” in the rewritings by the Supreme Court.

    The “good thing” to accept for “practical reasons” is the opposite of using critical reasoning.

  48. Ternary November 19, 2018 12:51 pm

    “… that represents more than just a speed up, improvement in accuracy, or even productivity improvement, over that which could be done previously by a person of ordinary skill in the art.” But that is exactly what almost all inventions do: from the cotton gin, to knitting machines to snow-throwers. It baffles the mind why computers are deemed to be so special in this context. Opposition to patent eligibility appears to have reached the same level of irrationality as for example opposition to evolution theory.

    “CREATE ‘something tangible’” Tangible in science and technology is something that is observable/measurable. Almost everything a programmed computer does is observable/measurable.

    It seems that the only reason why there is opposition to patent eligibility of computer implemented inventions is because opponents “do not like it.” That is all. So far all arguments against this type of inventions are based on metaphysical arguments, not on rational, or empirical arguments. Even SCOTUS has to invent its metaphysical “directed to an abstract idea” to defend its irrational decision in Alice.

  49. Anon November 19, 2018 9:03 pm

    Ternary,

    My turn to agree with you: your rationality and my critical thinking are two sides of the same coin — coin that is desparately needed to protect innovation in the current Kondratiev wave (see Schumpeter).

  50. George November 20, 2018 1:45 am

    @ Anon, Ternary, et al.,

    So, in your opinions, ANY ‘new’ piece of software that computes some new data, does it faster, more accurately, or maybe allows the software to also work on phones and not just computers, deserves to get patent protection, even if later it can be proven to do the same things as some other piece of software (or pseudo-code) out there, that may have just been overlooked? What if you just copied something out of a textbook,or based your code ‘roughly’ on what you found there? Still deserves a patent? What if you didn’t even know you did ‘accidentally’ did that? How about subroutines, or even just pseudo-code? Should that be patentable too?

    That would mean millions of ‘pieces’ of code could be patented and held hostage or ransomed for its use! REALLY? Who’s going to check all of those new applications against millions of prior art references? The inventor? The PTO? Examiners? How would that even be possible (even using computers) and how much would that cost? Do you ever ‘think’ before you comment on things? Do you ever think about HOW things which would make your life a lot easier and more to your liking, could be done? It’s not just about YOUR patent rights and what you think of your own invention (which I am sure cannot be overstated), it’s about what your patent rights would do to other innovators too (including university researchers). They don’t want to have to check millions of software patent applications before doing research! No one would want (or could) do that!

    Much, much easier, faster, and infinitely cheaper to use copyright law and trade secret law, to do all of the above! In the former case you just publish what your idea or code does, in a publication that will be available in perpetuity (i.e. not on a blog site) and in the later case you can just keep it all secret and then USE the results to ‘do something’ or offer ‘a service’. And, you can also release executable code which is very difficult to reverse-engineer if you don’t have any good clues as to how the program does what it does (which you don’t publish or give out to other than trusted parties). If executable code is copied (even a part of it), then that is de facto copyright infringement. If your idea is really original, revolutionary, or just unique, and then it is copied (even if not verbatim), without credit or citation, then that also constitutes ‘plagiarism’ (though most people and even many lawyers appear not to know that). While you can’t directly take legal action for plagiarism per se (since its not a legally prohibited offense – yet), if it also constitutes copyright infringement (i.e., literal copying), then you can take legal action. But, even if only plagiarism is what is being charged, you might be able to do something just as effective or even better than filing a lawsuit for patent infringement, by just shaming those who you can ‘clearly and irrefutably prove’ have done it. That’s pretty easy to do if your software description has been published or you have other (witnessed) and well written records. Incidentally (non-PTO) documentation of invention, is no longer helpful, post AIA (for more than a year before filing) in proving who was indeed the first to invent something, or who will be first to receive a patent on an invention and possibly obtain economic rewards therefrom, even if an invention may have been stolen as a result of difficult to prove ‘hacking’ This later problem should now be a MUCH bigger concern for small-time inventors, but ‘amazingly’ doesn’t seem to be a big problem for corporations who can much more easily reduce inventions to practice or even commercial introduction within a year or less and who can also easily afford to apply for patent and other IP protection(s), within that same narrow window of time (again, thanks to the AIA). Funny how that worked out, eh?!

  51. George November 20, 2018 2:02 am

    @ Anon

    Put some real money behind those predictions! Then people might take you more seriously and there would be a ‘tangible’ way for us to keep score! How about $10K to charity if your economic predictions don’t hold? Just more nonsense and economic pseudo-science to confuse people even more.

    https://www.goldrepublic.com/news/Kondratiev-Waves
    https://moneyweek.com/19417/kondratieff-wave-theory-is-it-any-use/

  52. Anon November 20, 2018 9:30 am

    George,

    Put the Kool-Aid down.

    You are so off base with your mix of strawman, lack of legal knowledge and mantra of Efficient Infringers that I am embarrassed for you.

  53. step back November 20, 2018 9:44 am

    George @50

    You “deserve” to learn a lot more about patent law, patent practice and the history of patents before posing your seemingly brilliant arguments.

    Part of the evil done by them who don’t and never did like American inventors much is to change the language. The term “eligibility” was contrived by these haters and swallowed hook plus sinker by the legal “scholars” on the Supreme bench.

    It used to be referred to as the question of “patentable subject matter”. It was a highly filtered and legally refined issue. The term “eligibility” was conjured up to confuse people like you (and the Supreme bench warmers) who don’t know what they are talking about. The haters thank you for biting on their bait and misunderstanding the whole question, what is “patentable subject matter” and what is not? The answer is printed in clear language in 35 USC 101: ANY new and useful process, machine, manufacture, composition of matter or improvement thereof.

  54. George November 20, 2018 11:42 am

    @Anon

    Except that I get ‘good’ patents issued – eventually! Some take up to 8-9 years, but I get broad ones in the end (because I don’t accept narrow ones). I make whatever changes are needed to get broad patent protection or (now) to pass muster under ‘Alice’. Not really that hard, but a lot more time consuming and expensive and multiple CIP’s may need to be pursued in order to be successful. People who expect to get a good patent on the first go around, or in 2-3 years, are setting themselves up for big disappointment. Want a good patent? Prepare for a long (potentially very long), grueling and bloody battle. But, again, that’s not even the worst problem with our patent laws. It’s the inequity baked into them that’s a much bigger problem! A bad patent, even if it might ‘superficially’ look the same as a good one, is absolutely worthless! Inventors have to always fight for good patents, otherwise it’s just a lost cause and complete waste of time and money! I have yet NOT to get patent allowance in the end, and it’s usually broader that when it started out! I don’t like to lose!

  55. George November 20, 2018 12:10 pm

    @ step back

    “ANY new and useful process, machine, manufacture, composition of matter or improvement thereof.” . . . (notice, that seems to imply only ‘tangible’ things or processes that produce tangible things).

    You seem to think that ANY new ‘process’ or idea should be patentable – including any new food recipe, or an ordered list of actions. If you really take that ‘literally’ (rather than as general guidance) then you are ‘literally’ talking about the issuance of BILLIONS of patents! Want billions of patents that you would then, also, have to worry about? I sure don’t want to have to search millions or billions of prior art patents (much less, academic papers)? Who does? I want FAR FEWER patents to be issued but also much ‘broader’ ones (like in the good old days)! I want ‘universal patents’ that are enforceable anywhere in the world and don’t require separate applications. I also want technical and historical experts involved in helping to resolve patent eligibility and validity disputes or appeals. Only experts in a field can determine what is truly new and significant, and what is not. If you don’t have something ‘really new’ it’s probably commercially (and historically) worthless! Want more worthless patents being issued? I don’t! That only devalues ALL inventions and patents!

  56. Ternary November 20, 2018 2:12 pm

    George: The issue of this post is “patent eligibility”, not “patentability”. It is unclear to what “technical and historical experts” can do “in helping to resolve patent eligibility.” Patent eligibility is an ideological/economic issue, not a scientific/technological one. You show your preference/ideology in “I want FAR FEWER patents to be issued.” An invention can be “patent eligible” without being “patentable.”

    A programmed machine is a technological device, not an abstract idea. I thought it funny that you doubt the patent eligibility of subroutines and pseudo-code. You really don’t seem to have a clue about what you are talking about in relation to inventions and patents.

    You insult us: “Do you ever ‘think’ before you comment on things?” Absolutely, we do. Responses by Anon and Step show a knowledge of the patent and legal system and a reasoned assessment of its current status. Reading your responses I doubt your basic knowledge about the system and I wonder: “Do you ever verify your thoughts on patents against known facts?” You may start the process by reading MPEP Chapter 2100.

  57. Anon November 20, 2018 3:18 pm

    George,

    Pardon my skepticism, but based on the number of fallacies in your post at 50, ranging from your creating strawmen to attack, to your lack of realization that claims are NOT code, to your “it would be easier” view, to your “copyright is good enough” conflation as to what different aspects the different forms of IP protection provide, to your off-base “accusation” of “do you even think,” I simply do not believe that you obtain ANY “good patents” of anything except perhaps some exceedingly narrow picture claim patents.

    Your reply to step back (Billions of patents) — really? only confirms to me that you are nothing but a poser. You make grand pronouncements that defy credibility and seem to think that your sheer force of ego suffices.

    I am just not buying anything that you are selling.

  58. step back November 20, 2018 4:26 pm

    Tenary @56

    People like George (if only he were a Lakoff) is precisely the reason why the Efficient Infringers changed the framing in the language from “patentable subject matter” to “eligibility”.

    He and the Supreme bench warmers are easily fooled by the changed framing. Mission accomplished.

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