Iancu Proposes Overcoming 101 ‘Morass’ by Strictly Following Supreme Court Precedent

By Gene Quinn
November 29, 2018

“I think that we can overcome the current Section 101 morass if we carefully follow Supreme Court precedent, if we don’t allow the judicial exceptions to swallow the entire statute,” Director Iancu explained.

Iancu: Overcome 101 'Morass' by Strictly Following SCOTUS Precedent

USPTO Director Andrei Iancu at the AIPLA annual meeting, October 15, 2018.

Earlier this week, on Monday, November 26, 2018, Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, delivered remarks to the 10th Annual Patent law & Policy Conference at Georgetown University law School. In his remarks Director Iancu again said what he has been saying for some time — the USPTO is working on fresh guidance relating to patent eligibility for computer implemented innovations (i.e., software related inventions). Director Iancu’s remarks gave a first look at what his reforms will look like, and by all indications these changes will be extremely innovator friendly.

To date the United States Supreme Court has decided four patent eligibility cases in the latest, or modern round, of decisions shaping this area of the law. To pull no punches, everyone in the industry who is being at all objective knows that the quartet of cases — Bilski, Mayo, Myriad and Alice — have created chaos. Whether one likes the fact that less is patent eligible in America, or that it is now easy to win at the motion to dismiss stage in a patent infringement law suit in Federal District Court, the undeniable reality is the test that has evolved, the so-called Alice/Mayo framework is unworkable, untenable and illogical. It allows the decision maker to reach whatever preconceived notion the decision maker already had about the subject prior to coming to the unique facts and circumstances of the case. There is no predictability; uncertainty reigns supreme.

For reasons that remain unclear and difficult to explain, the United States Court of Appeals of the Federal Circuit has collectively abdicated its single responsibility — to bring certainty, stability and predictability to patent law. In fact, the Federal Circuit has been chiefly responsible for the extraordinary unpredictability of the Alice/Mayo framework. Indeed, the outcome of cases is entirely dependent upon the three-judge panel drawn by the patent owner, which speaks to a Court that is hopelessly fractured and incapable of delivering on its sole objective.

In decades past, the Federal Circuit would read Supreme Court decisions and recognize that the statements made by the Supreme Court were made in context. For example, no one in the industry has ever defended the patentability of the claims at issue in Mayo, but rather the question was whether it was appropriate to say that those claims should have been invalidated as being patent ineligible. That means those claims were poorly written (i.e., bad claims) that rather clearly overlapped with the prior art. Mayo was an exception, not a rule that should have swallowed the entire medical diagnostics industry in America. Similarly, Bilski related to a mental method, nothing more. Alice related to balance sheets, which the Supreme Court likened to a checkbook register. Simple inventions in context, statements made in context. Not statements that should have been interpreted by any rational person to swallow entire industries whole.

Thankfully, Director Iancu understands that what the Supreme Court has actually said is quite limited. What has made the quartet of patent eligibility cases so devastating is how they have been stretched and pulled, twisted and manipulated to invalidate (and prevent) patent claims on innovations of entirely different magnitudes than those contemplated by the Supreme Court.

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Director Iancu proposes that the USPTO strictly follow the Supreme Court, and nothing more. He explained in his remarks:

But what exactly are these prohibited “abstract ideas”?

After detailed studies of all relevant cases, and based on our extensive experience at the USPTO, it appears to us that “abstract ideas” can be synthesized to fall into the following three categories:

  1. Mathematical concepts like mathematical relationships, formulas, and calculations.
  2. Certain methods of organizing human interactions, such as fundamental economic practices; commercial and legal interactions; managing relationships or interactions between people; and advertising, marketing, and sales activities.
  3. Mental processes, which are concepts performed in the human mind, such as forming an observation, evaluation, judgment, or opinion.

Specifying the prohibited categories is important at least for the sake of predictability, so that the public can invent, invest, and transact business with increased confidence.

Then he would go on to say:

In short, I think that we can overcome the current Section 101 morass if we carefully follow Supreme Court precedent, if we don’t allow the judicial exceptions to swallow the entire statute, and if we allow the rest of the statutes (102, 103, 112) to do the work they were meant to do.

So we at the USPTO are preparing revised guidance along these lines. In particular, our guidance will categorize the judicial exceptions, and clearly instruct examiners on how to apply them.

Under the first step of the proposed guidance, examiners would first look to see if the claims fall within the four statutory categories: process, machine, manufacture, or composition of matter. (This is not new—we always do this.)

If so, examiners then determine if the claims recite subject matter within one of the judicial exceptions, categorized as I just described. (This is the new approach.) If the claims at issue do not recite subject matter falling into one of these categories, then the 101 analysis is essentially concluded and the claim is deemed patent eligible. If an examiner does not find subject matter within the disallowed categories, then he or she can move on to considering the other conditions for patentability.

However, if the claims do recite subject matter in one of the excluded categories, the Supreme Court demands more analysis. Specifically, the Court instructed us that in such cases we need to decide whether the claims are “directed to” the excluded categories. To that end, examiners would assess whether the claims integrate the exception into a practical application of the otherwise excluded material. If so, the claim passes the 101 test and the eligibility analysis is concluded.

This is a sensible approach that is long overdue.

 

Image Source: Gene Quinn. 

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 44 Comments comments. Join the discussion.

  1. David Stein November 29, 2018 12:29 pm

    It’s a refreshing observation. Whether or not the examining corps chooses to follow it is a separate issue.

    Consider all of this existing authority:

    * DDR Holdings: Software is not per-se patent-ineligible

    * McRO: The inclusion of a mathematical model is not, per se, fatal under § 101

    * Visual Memory: Improvements to the performance of a device are patent-eligible

    * Enfish (and 2015 Bahr memorandum): Improvements that add functionality to a device are patent-eligible

    * Core Wireless Licensing; Apple va. Ameranth: User interfaces that provide a significant technical advantage are patent-eligible

    * Aatrix: Systems consisting solely of software elements and data structures can be patent-eligible

    * Berkheimer (and 2017 Bahr memorandum): Characterization of claim elements as “conventional” cannot be strictly conclusory and boilerplate; must be based on evidence

    All of this precedent should be binding on the USPTO. And yet, I still receive rejections of software-based inventions that crash right through all of it as if it didn’t exist or didn’t apply.

    The bottom line is that examiners will continue to ignore precedent until there is some disincentive to issuing unsustainable § 101 rejections. I hope that Director Iancu has some tricks up his sleeve not only for articulating his perspective, but coercing the examining corps to abide by it.

  2. Anon November 29, 2018 12:48 pm

    A quick note (and apologies for lacking a link to the prior supplied comments), but here what we have is a problem — as identified by the CAFC itself — of any new application of the Supreme Court’s “Alice/Mayo” two-step BEING an application of common law development.

    Problems enough when the judicial branch engages in the use of Common Law law development on what is objectively set out (by the Constitution) as statutory law allowed to be written by only one particular branch of the government, but e x t e n d that Common Law law writing to the executive branch in their attempt to determine (and apply the scrivining of the Supreme Court) in the first instance to NEW applications, and you have a recipe for disaster of truly Constitutional-Crisis dimensions.

    As I had previously pointed out (maybe “B” can help, as I seem to remember the post being in a “dream” after one of his posts), I would love to wake up and here that Iancu was STRICTLY applying the Supreme Court precedent — and by strictly, I mean ONLY to exactingly the same fact patterns, and NOT engaging in any Common Law law development by exceeding those exactingly same fact patterns.

  3. Anon November 29, 2018 12:50 pm

    One quick add:

    and if we allow the rest of the statutes (102, 103, 112) to do the work they were meant to do.

    sadly, THIS has been rejected by the Supreme Court in its addiction to writing patent law vis a vis patent eligibility.

  4. Curious November 29, 2018 1:20 pm

    Wow … I want to see those guidelines (as I have a desk full of office actions littered with 101 rejections).

  5. Ternary November 29, 2018 2:25 pm

    It still sticks us with the crazy “directed to.” Almost everything is directed to “a method of organizing human activity” as recited in the Alice decision.

    The Alice decision does not speak about “Certain methods of organizing human interactions.” I understand a human interaction to be an interaction between humans. But who knows, perhaps it means any interaction of a human with the physical world.

    The most promising part in Director Iancu’s proposal is “whether the claims integrate the exception into a practical application of the otherwise excluded material.” Because almost all 101 rejected inventions do so. The question then remains if “the practical application” amounts to “significantly more than a patent upon the ineligible concept itself.” It is a decision that the Courts have to make. I am not holding my breath on that.

    It will fall upon the Examiners (and instructions to the Examiners) to explicitly determine that a claimed invention is a practical application of an ineligible concept. Examiner’s have that opportunity right now. I know of only one case wherein an Examiner asserted that concepts around cryptography were directed to an abstract idea, but that machine cryptography increased the security of electronic data exchange and thus was a patent eligible practical invention. I have to believe that a formal statement from an Examiner who says that an invention has a practical application and thus amounts to more than claiming the ineligible concept itself, has some weight in Courts as presumably coming from an expert in the art. (at least more of an expert than the Judges).

    Seeing is believing related to positive changes with regards to Alice rejections. Personally, I now see more Alice rejections and with crazier and sloppier arguments than before Director Iancu was appointed. Perhaps Director Iancu should speak also to his Examiners about his ideas and instructions. Right now, with the exception of Berkheimer, I still have no additional tools that help me to convince an Examiner to reverse a 101 rejection. It is still a difficult and expensive struggle.

  6. Jianqing Wu November 29, 2018 3:57 pm

    This article discusses only the legal aspect of the 101 morass. Those precedents and the massive number of 101 invalidation cases have changed the PTO examination culture. A large number of examiners have developed rejection habits like human body functions. The PTO has developed employment and promotional rewards for entering rejections. Many quality criteria are based upon not examination decision quality, but absurd, wrong, and meaningless statistical data. They could get more rewards for entering frivolous, arbitrary and absurd rejections (even if their rejections are found invalid).

    Director Iancu should reevaluate all patent quality policies and work credit awarding methods. He needs to get rid of most of flawed patent policies created before he took office. He needs to reevaluate those star performers in terms of how they damaging national technological future. Until this human problem is completely fixed, the U.S. will continue to rapidly lose its standing in the world in the technological space.

    Most law markers who have never walked into the corners of competing nations still think OR hope the U.S. is doing well in technologies development. In reality, the nation keeps using OLD things and OLD technologies that were once superior, but has failed to improve them for decades. The U.S. was built on obsolete technologies before the information age, but all completing nations are being built by taking advantages of all new digital technologies. That means that U.S. and all later-rising nations will use technological infrastructures that are completely different. Existing technologies always define a nation in its development stage, but new technologies cannot easily be used to reshape the nation due to people’s getting used to obsolete technologies and much higher costs for making changes.

    The PTO invention-hostile culture advanced by the Section 101 case law is just one more thing that prevents the nation from technological upgrading. So, anything can be unpatentable, so no one has inventive to initiate changes, and keep everything the old way….

  7. valuationguy November 29, 2018 4:18 pm

    Not sure that I agree that the reasons for the CAFC’s actions are unclear or hard to explain….for it seems pretty clear to me that the appointee’s political views against patents and patent damages was the primary reasons for the shift…

    Just look at the number of active CAFC judges whom Obama appointed. While Obama got fewer Judges appointed to the Regional Circuits than his predecessors….he appointed a majority (7 of 12) of the current active (non-senior status) CAFC justices and O’Malley (who was appointed ONLY after Dems cut a deal with Republicans to get 19 other judicial appointments approved) is the only one of the 7 which is not consistently interpreting laws to weaken the patent system and increase the difficulty of enforcing patents. Two other active anti-patent judges, Prost and Dyk, were Clinton appointees.

    Chief Justice Roberts on the SCOTUS may pay lip service to the fact that judges are non-partisan (and in some issues he would be correct)…but I certainly don’t see that as being the case when Senatorial courtesy (allowing the Senators in the affected area to have effective veto power over nominees) tended to pack certain Courts and Circuits with judges who display partisan behavior regularly (like the Ninth Circuit of Appeals and District Courts in CA and TX). My guess is that since the CAFC is a “specialized” court…the normal courtesy veto wasn’t available so Obama has a freer hand to appoint his (or Google’s) people than in other Circuits. (With many of the key Judiciary Committee Republicans being on the take from SV Tech as well….this made his job even easier.)

    (Sorry if this comes off as too political…but while many here may recognize the anti-patent skewed views of the CAFC majority currently….they don’t necessarily realize that it is almost solely due to the appointments by just ONE administration….which is in part why Trump has zero’d in on filling vacancies in various courts to cement his legacy.)

  8. Curious November 29, 2018 4:33 pm

    All of this precedent should be binding on the USPTO. And yet, I still receive rejections of software-based inventions that crash right through all of it as if it didn’t exist or didn’t apply.
    However, this is doubly, triply (probably much more) amount of precedent that takes software-related inventions and abstracts them away to mere abstract ideas. There is enough case law out there that an Examiner can receive any decision he or she is inclined to reach. <– this is an indictment of the Federal Circuit and the lousy case law that they have created. This is also what happens when Federal judges decide to inject themselves into policy matters (i.e., what subject matter should or should not be patent eligible).

    The whole "abstract idea" inquiry is a ruse for judges to find ways of killing patents on technology (or entire technologies) they don't like. There are certain judges (Dyk and Moore to name a couple) who probably wouldn't mind seeing nearly all inventions quashed. Hence, when they are on a panel, we are far more likely to see hardcore computer-implemented inventions (i.e., not the squishy business method stuff that this case law was supposed to address) get flushed down the toilet, and we have the clean up the messes they created by trying to address seemingly irreconcilable decisions.

    What we have are a bunch of ideologically-driven judges trying to put their stamp on what should (or should not) be patent eligible based upon their own pre-conceived notions while claiming that all they are doing is trying to interpret the law. It is utter BS and the fractured state of the law is based upon their meddling in an issue that constitutionally rests with Congress — not the Courts.

  9. Anon November 29, 2018 8:50 pm

    Re: CAFC

    which speaks to a Court that is hopelessly fractured and incapable of delivering on its sole objective.

    I recall then Chief Judge Rader’s lamenting in the highly fractured en banc Alice case — and it has simply become worse since then.

    The current chief judge should be canned for that reason alone.

    As it is — and adjunct to my calls for Congress to exercise its Constitutional power of jurisdiction stripping of the Supreme Court from the non-original jurisdiction of patent appeals, I would ask Congress to abolish the CAFC and reset a new Article III Court (one that has not been brow beaten by the Supreme Court).

  10. Night Writer November 30, 2018 1:19 am

    The problem is that there is a faction within the CAFC that are trying to make 101 like the technical requirement of the EPO.

  11. Paul Cole November 30, 2018 6:34 am

    Many thanks for publishing this article.

    May I express my wholehearted agreement with almost every word that Director Iancu said in his Remarks and my sincere thanks to him for making them.

    Those who have read my postings and comments over the past 5 years will have noted my MANY references to the NARROW and SPECIFIC holdings of recent Supreme Court opinions and the need to interpret them correctly. Also the need to take into account limiting statements appearing in the face of these opinions.

    By and large, these propositions have fallen on stony ground, and have had little influence either directly or at lectures and seminars to my US colleagues. Reference to the CIPA and EPI briefs to the Supreme Court in Ariosa,http://www.scotusblog.com/wp-content/uploads/2016/04/15-1182.amicus.final_.pdf and http://www.scotusblog.com/wp-content/uploads/2016/04/15-1182-ac-Institute-of-Professional-Representatives-Before-the-Europe….pdf, both of which I was lead author will appreciate the point. It is apt to quote from what I wrote in the EPI brief:

    The panel majority in this case purported to apply a framework derived from decisions of this Court in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012), Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013) and Alice Corp. v. CLS Bank
    Int’l, 134 S. Ct. 2347 (2014). The rule of law derived by appropriate interpretation of those decisions raises no issues of international harmonization. In contrast, the framework repeatedly applied with extended scope by the Federal Circuit raises issues of compliance with the Art. 27 of the Agreement on
    Trade-Related Aspects of Intellectual Property Rights (TRIPS) administered by the World Trade Organization (WTO), the consequential Directive 98/44/EC of the European Parliament, and consistency with pertinent decisions of courts in
    Europe and of the Appeal Boards of the EPO.

    I have also repeatedly argued that it is essential to check positive statutory compliance before applying judicial exceptions, since if the compliance check is carried out as a matter of substance rather than mere outward presentation there can be no overlap.

    It is beyond belief encouraging that these thoughts have been echoed so positively from such an influential source.

    And I do not believe that Judge Reyna is inherently anti-patent, merely untrained in technology and patent law, as he explained at a meeting of AIPLA in Washington last year.

  12. American Cowboy November 30, 2018 9:15 am

    I agree with Dir. Iancu’s concluding analysis of “To that end, examiners would assess whether the claims integrate the exception into a practical application of the otherwise excluded material. If so, the claim passes the 101 test and the eligibility analysis is concluded.”

    Unfortunately, some of the Scotus precedent does not agree with the Director and me. In particular consider the repeated holdings denying eligibility if the practical application is an application on a general purpose computer. This nonsense was born in Gottschalk v Benson and keeps rearing its ugly head.

  13. Anon November 30, 2018 9:44 am

    pardon the repeat…

    Anon October 25, 2018 11:21 am
    waking from a dream…

    Iancu: Upon consideration of the Constitutional authority, and more to the point of recognizing limitations on the Constitutional authority, as that authority relates to the Executive branch, I, as Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, hereby announce that we will act within the limits of authority and execute the law as written by Congress.

    This means that we are hereby recognizing a limitation of patent law that has recently been written by a branch of the government other than Congress.

    We state that the cases heard by the Supreme Court, and the meaning of law as has been deemed to flow from those cases, will be constrained to apply only when the same exact factual pattern presents itself.

    We state this, in no small part, after realizing that what the Court has done, either knowingly or unknowingly, is engage in more than interpretation of Patent Law and has impermissibly engaged in common law law writing.

    As leader of the Patent Office, I cannot engage in activity beyond my own authority. I may not use the “directions” from the Supreme Court as an excuse to allow examiners to further engage in common law law writing, which is what is happening with attempts to “just apply” the directions from our Highest Court.

    So today I announce that unless a fact pattern is strictly identical to a case that has been heard by the Supreme Court, we will apply only the actual words of Congress in regards to determinations of patent elibigility under 35 USC 101.

    I invite Congress, rather than the Courts, to change the written law of which we execute, if Congress, rather than the Courts, wants “something more.”

    … alas,

    but a dream…

  14. Anon November 30, 2018 10:59 am

    American Cowboy @ 12:

    I would put to you that the nonsense from Benson is from an over-reading of dicta that omits a particularly critical phrase from the Benson decision itself:

    It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.” Gottschalk v. Benson, 409 U.S. 63 at 71,(1972).

    And don’t get me started with how Diehr (whose “point of novelty” WAS software) cabined Benson.

  15. Paul Cole November 30, 2018 12:02 pm

    @14 Anon

    This kind of careful analysis is just what is needed.

  16. American Cowboy November 30, 2018 1:22 pm

    Anon, noted that scotus said “It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.”

    That can be true and still be consistent with Alice and dreck it is has midwifed. Focus on the word “any” in the quote.

    CAFC seems to think the statement reads something like “the decision precludes a patent for any program servicing a computer unless the program makes a material change in the workings of the computer itself,” as exemplified by decisions like Enfish and DDR.

  17. Anon November 30, 2018 1:45 pm

    American Cowboy,

    I beg to differ as to “consistency,” as the Benson statement (even with emphasis on “any”) is not the same as being read in a more narrow manner as only those software changes that affect a “material change in the workings of a computer” itself.

    Please note that ALL software “affects a material change” – as that is how functionality of the software is obtained. Otherwise, software would not be needed to be configured into the machine (you seem to be falling into the old Ned Heller trap of “just using” without first changing the machine by incorporating the software into the machine as a machine component).

  18. George November 30, 2018 6:27 pm

    What happened to my comment of 11/29 (below)?

    Doesn’t really help much and he doesn’t have power to overrule Congress and the courts. Allowing more patents to ‘make it’ to the PTAB or the courts, doesn’t really solve any problems. The issue of eligibility and patentability will continue to be an effort to nail down ‘jello’. Until we get to criteria and definitions that a computer can evaluate and decide, we will never have a credible, effective, or efficient, patent system. Nothing innovation related should take more than 6 months to decide. That’s how the best companies decide, anyway!

    What’s really needed is a ‘universally accepted’ way of determining ‘significant innovation’, because why would we want to have millions more inventions that don’t even work, or have no real value or any practical use? We have ‘art’ that serves that purpose. Encouraging and protecting the ‘creative arts’, should not be the goal of patent law. We should not be encouraging the patenting of ‘crap’ (and ‘experts’ know it when they see it), much less incentivising it! We already have enough of that! That is just a waste of time and money. We should seek to eliminate technological overlap in patent applications, wherever possible, since that not even an efficient use of human capital. Only the very best innovations should be allowed to naturally bubble up to the top and be granted unambiguous (universal) patent protection and those who first conceive of and devise such ‘significant innovations’ should be publicly recognized and rewarded, regardless of when they lay claim to them or how they lay claim to them. Significant new ideas and inventions always have a fairly specific source. It’s not that hard to identify who invented what (especially in the 21st century). Sometimes it’s only a matter of doing an internet search (rather than ‘just’ a patent search). Stolen inventions should never be allowed to be patented by others – period! We also need to go back to Interference Proceedings, that once again would allow ALL evidence of invention to be considered (not just the last 12 months of it).

  19. Anon November 30, 2018 8:27 pm

    George,

    I hardly know where to begin in my disagreement with your views.

    You appear to understand none of innovation, history, or the law.

    Your desire for “less” numbers and “more” home runs simply does not accord with how innovation works.

    You seem to have a rather odd and entirely uninformed view of innovation, and I have to wonder where you developed such convictions.

    I minored in the history of science and technology as part of my engineering degree, served in product development and engineering both as an engineer and in management roles for decades well before I turned to law. What you describe simply has no tether to reality and that makes me wonder what drives you to talk so.

  20. B December 1, 2018 1:24 pm

    @ Gene

    EXCELLENT ARTICLE, but I have one disagreement.

    You state: “Indeed, the outcome of cases is entirely dependent upon the three-judge panel drawn by the patent owner, which speaks to a Court that is hopelessly fractured and incapable of delivering on its sole objective.”

    The same judges can come out 180 degrees on the same issue within a week. Take evidence, for example. Stoll was on-board with Berkheimer, but she outright lied in In re Villena regarding the nature of evidence and that the USPTO supplied substantial evidence. Taranto’s decisions are so fractured as to be laughable if he weren’t busy destroying vast swathes of commerce.

    You name a position and I can cite two cases where each and every judge on the CAFC has come out on opposite sides. This isn’t “division,” it’s schizophrenia.

  21. Gene Quinn December 1, 2018 7:55 pm

    B-

    Agreed. That would still be panel dependent though. It seems to me (perhaps I’m mistaken) those Judges that swing both ways on eligibility seem to be influenced by who they are surrounded by on the panel. Still, your observation is definitely worth of note.

  22. Night Writer December 2, 2018 10:12 am

    @20 B Taranto’s decisions are so fractured as to be laughable if he weren’t busy destroying vast swathes of commerce.

    Taranto is clearly trying to make 101 the same as in the EPO.

    Hey —-boy—yes you boy Taranto—what gives you the right to do this? You have violated your oath to the Constitution. Addditionally, —boy—look at Europe —-boy—-and look the USA—boy. Why is it that the USA has 10 to 100 times more people working in industries where we used to have patent protection than Europe? Why is that —-boy—-?

    You are a disgrace Taranto.

  23. B December 2, 2018 11:32 am

    @ Gene “Agreed. That would still be panel dependent though. It seems to me (perhaps I’m mistaken) those Judges that swing both ways on eligibility seem to be influenced by who they are surrounded by on the panel. Still, your observation is definitely worth of note.”

    Gene, when Judge Newman can’t get a simple 101 issue correctly (Bhagat), Judge Taranto outright lies about the holding of McRO to justify his holding in Investpic, Judge Stoll lies about Berkheimer (and the fact pattern) and ignores the APA to reject Villena, all I can say is the CAFC has overstepped and each and every judge should be reviewed for ethics violations.

    I need to go to the SCOTUS now in the off-chance to get some justice and honesty for my client. ZERO – and I mean Z E R O – applications have survived a 101 rejection for the USPTO and a handful have survived 101 challenges from the courts.

    Extreme stupidity cannot explain it anymore. Dishonesty is all that is left.

  24. B December 2, 2018 11:40 am

    @ Paul Cole “This kind of careful analysis is just what is needed.”

    In his book on Nonobviousness and the 1952 Patent Act, John Witherspoon (former clerk to Giles Rich) quotes former USPTO Commissioner Casper Ooms: “You ought to read the statute. There’s a lot of good law in the statute.”

    In one of my briefs, I outright demanded that the CAFC tell us where it gets its authority to rewrite 101. I also demanded some definition of the term “inventive concept.”

    Wasted time. They declined to answer. They will never answer.

  25. B December 2, 2018 11:58 am

    @ Anon “Taranto is clearly trying to make 101 the same as in the EPO.”

    As dysfunctional as the EPO is, they’re not this bad. Maybe Paul Cole might weigh in.

    “Hey —-boy—yes you boy Taranto—what gives you the right to do this?”

    His black robe and his binky

  26. George December 2, 2018 5:33 pm

    @ Night Writer

    “boy”?!!! REALLY? And you’re allowed to post this personal diatribe, while some of my comments were ‘filtered out’ just for respectfully disagreeing with some of the others? How do you justify that, Gene? Hopefully you don’t like those kinds of derogatory comments (or promote them), do you?

  27. George December 2, 2018 5:40 pm

    12/02/2018

    @ B

    But you’ll still gladly accept their money, right? I would only do that on a contingency basis now (i.e., ‘iff’ my inventor clients ended up with ‘valid’ patents)! Would help to remind me everyday how badly messed up the system is and work (hard) to actually DO something about it (or I’d go broke trying)!

  28. George December 2, 2018 6:20 pm

    12/02/2018

    Let’s just let (really smart and ‘all knowing’) computers (at least initially) decide these things from now on (or soon), OK? They can analyze millions of pieces of information (way beyond just patents) and then decide what is and is not original, compared to what’s already out there – even before a patent gets issued! Any problems with that, attorneys? Any problems with ‘computerized discovery’?

    Computers HAVE TO BE at least consistent, and CAN’T BE biased (in human or political ways). And, their results can always be compared to those of human experts, to see which are better! Why would anyone have a problem with that? I’m sure inventors wouldn’t mind (especially if that analysis was included in the filing fees or able to reduce later re-examinations to a few hundred dollars)!

  29. Anon December 3, 2018 7:21 am

    “George” appears to be the latest “tech guy fake attorney” tr011ing this site (in a pattern long noticed).

    His last three posts, taken in reverse order:

    As to the “AI” and using it for “discovery” (hint: search in examination is never called “discovery” by attorneys), you are or should be aware that Iancu recently announced that very thing. I am not aware of any attorneys being upset about this. That you want to float this out as some type of strawman “I’ll bet you would be upset if the tables were turned” indicate your lack of legal background and your (minor) association with the computing arts.

    Your lack of legal background is only emphasized with your reply to “B,” and your “call” for only operating on a “IF” basis. What “sounds good” to you only shows a collision of many fallacies and lack of experience in the field.

    As to wanting to call out Night Writer for his “sharpness” with the “boy,” comment, meh, I have never been one that demands “politeness” at all times. In fact, more than once I have supplied a John Maynard Keynes quote pertaining to why words should be sharp. I am not certain why you have (or merely project to have) posts not showing up. Perhaps you are attempting to post with a false email account (most likely). Perhaps you are trying to embed multiple links. Perhaps there is another reason. In any case, you should be aware that those who repeat post and show their bonafides for discussions on the merits do tend to get more slack for emotive words.

    That’s something to keep in mind instead of your strawman and obviously fake projections.

  30. Paul Cole December 3, 2018 10:22 am

    @ B 24, 25

    Your frustration is completely understood.

    The problem, despite what Anon says, is NOT with the Supreme Court. It is with the Federal Circuit, which could have done with a very well-deserved reversal in Ariosa. Some of the opinions I have read would deserve a failing grade at any law school at any university where the Common Law is taught.

    But there is one area of undoubted blame. The EPO considers the claim as a whole, disregards the non-technical features and then considers eligibility of the remaining features. The Supreme Court turned down this sensible approach in Prometheus v Mayo. In Europe it seems to work quite well, and things seem to have settled down somewhat.

  31. B December 3, 2018 11:45 am

    George “But you’ll still gladly accept their money, right? I would only do that on a contingency basis now”

    My last round at the CAFC Judge Stoll violated two statutes, at least five Supreme Court cases and lied outright about several things in her abysmal 2.5 page opinion that took five months to write. I never knew the CAFC was so sleazy. I am taking the case to the SCOTUS on my dime, because I am that angry.

    Does thismake you all warm and happy?

  32. B December 3, 2018 12:00 pm

    @ Paul Cole “The problem, despite what Anon says, is NOT with the Supreme Court. It is with the Federal Circuit, which could have done with a very well-deserved reversal in Ariosa”

    Ariosa is easily one of the stupidest decisions to ever grace a long list of CAFC atrocities. Rather than address the undeniable truth that the claims weren’t preemptive, Judge Reyna declared that his analysis, right or wrong, trumped the truth an made it moot.

  33. Anon December 3, 2018 4:01 pm

    Mr. Cole is simply incorrect (and I have “carefully” explained why many times now).

    Is there blame to go around?

    Absolutely.

    I have also gone into detail on this as well (including not just the judicial branch).

    But to continue to pretend, as Mr. Cole apparently does here, that the Supreme Court is blameless is beyond ludicrous.

  34. George December 3, 2018 5:07 pm

    12/02/2018 (archived)

    @ ‘Anon’

    “Perhaps you are attempting to post with a false email account (most likely).”

    Wrong – and that could be considered defamatory (or company ‘disparagement’), Anon (which you would know to be careful not to do, if YOU are really an attorney)! You might want to ask Gene to confirm your public ‘accusations’ next time (BEFORE making them)! By the way, I at least use my real first name! How about you? Are you really THAT paranoid, that you can’t even risk doing that?

    Also, I brought up ‘discovery’ as an EXAMPLE of what computers are now ALREADY capable of doing! You really think your job is that ‘hard’ and that ‘important’ that you will be ‘immune’ from replacement by computers? No wonder you lose patent disputes and objections and have to resort to name-calling?! And as to your claim of being an ‘expert’ on computers and algorithms and the history of technology . . . you appear not to even remember about the Jacquard loom (and it’s first ‘programs’)! So much for expertise in the history of technology! Were those ‘programs’ ever allowed to be patented, Anon?

    https://en.wikipedia.org/wiki/Jacquard_loom

    By the way, AI is now able to ‘fold proteins’ – something that was almost impossible to do before this year, even by the most skilled human ‘experts’!

    https://www.theguardian.com/science/2018/dec/02/google-deepminds-ai-program-alphafold-predicts-3d-shapes-of-proteins

    Hate to tell you this, ‘Anon’, but folding proteins is a LOT harder than even patent law, especially since I’m able to do the later without even having attended law school (and, I’m getting better and better at it every year)! – George (real name & real email address).

  35. George December 3, 2018 5:28 pm

    @ Anon

    Never said (or even tried to imply) I was a lawyer – just someone who (actually) knows a whole lot about math, physics, computers, algorithms, inventions and their history! I would have cited cases, the MPEP and CFR’s more, if I wanted to do that. I’m an inventor, entrepreneur and R&D business owner, who’s been granted patents that have yet to be challenged and which are actually being ‘used’ in commerce. Been in the R&D business for over 35 years now! Not many others can say that! Want to challenge those claims, too (I wouldn’t)?

  36. George December 3, 2018 5:38 pm

    @ B

    “Does this make you all warm and happy?”

    If it actually happens, it sure will and you will become the hero of many inventors! Good luck (and if you succeed, maybe you can start using your real name too)! I might try to get to make it to the SCOTUS too (initially pro se) – but not counting on it! Who knows, might even ask the ACLU to help me!

  37. B December 3, 2018 9:37 pm

    @ George

    Unfortunately, the SCOTUS is a Hail Mary play at best. I have low expectations given the CAFC’s dishonest handling.

  38. B December 3, 2018 9:40 pm

    “But to continue to pretend, as Mr. Cole apparently does here, that the Supreme Court is blameless is beyond ludicrous.”

    I don’t think anyone is saying the SCOTUS is blame free. I think his point is that the CAFC acted like a garbage multiplier set to “extreme.”

  39. Night Writer December 4, 2018 9:30 am

    @38 B I don’t think anyone is saying the SCOTUS is blame free. I think his point is that the CAFC acted like a garbage multiplier set to “extreme.”

    What the Scotus did was bad–real bad. What they did was hand a tool to the federal district judges and CAFC that could be used to invalidate any patent claim and large swaths of patent claims. The CAFC has not cabined the tool but rather created fragmentated and inconsistent case law.

  40. B December 4, 2018 11:38 am

    @ Night Writer

    “The CAFC has not cabined the tool but rather created fragmentated and inconsistent case law”

    That’s a bit of an understatement.

  41. step back December 4, 2018 12:06 pm

    Night and B at 38/39,

    Ultimately what we have is corporate capture of all three branches of US government, the judiciary, the legislature and the executive. Step back and recognize the bigger picture.

    https://patentu.blogspot.com/2018/11/raw-capitalism-versus-independent.html

  42. Night Writer December 6, 2018 1:34 pm

    @41 step back: yup. I followed the link and read it.

    Yup. About right. I suspect that there is a learning curve and a lot of people will just stop filing.

  43. B December 7, 2018 5:56 pm

    @ Night Writer “Ultimately what we have is corporate capture of all three branches of US government . . . ”

    Don’t you mean the three chambers of congress?

  44. Anon December 9, 2018 10:24 am

    George @ 35,

    Overlooked your bombastic and self-lauding reply, but not on purpose. Maybe it was one that was released late. As it is though, coupled with your reply at 36 (which I had seen), perhaps you should realize the limits of your experience. You want to jump into the world of legal observations based solely on your non-legal experience. I would gladly match BOTH my legal and non-legal experience to your one-sided misconceptions.

    As it is though, I care little for any engagement that calls for “outing,” and your “my real first name, does not provide the “real” that you think that it does.

    That being said, I am glad to hear that you are using a real email address. I do not know why then that your posts do not make it through, and I too have seen some intermittent results on that end. It was about three months ago now that a processing change in emails was noted – with many hitting posting delays. Perhaps there is some degradation there.

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