A Toxic Brew – and the Cure for the U.S. Patent System

By John White
December 12, 2016

American flag dangerRecently I provided my advice for the Trump Administration with respect to the U.S. Patent and Trademark Office. My advice was simple – revert to a user friendly approach led by careerists who manage the day-to-day operations of the Office with political operators standing to the side to do what they do best.

As full of insight as my observations may have been, other issues tend to dominate how any prescription or remedy might be viewed and implemented by whoever assumes the mantle of Director of the USPTO. For example, the recent article by Gene Quinn discussing the wish list of reforms put forth by the patent infringer lobby should put everyone on notice that these moments of policy consideration, between administrations, create pools of advice from across the patent spectrum. Some good, and some not so good. Mix them together and you get a Toxic Brew.

Why Toxic? Look at the name calling and attendant labeling the Internet Association continues to use. We need to dispatch unhelpful labels, which only obscure the merits of any discussion of how we go forward. Here is an example: The patent infringer lobby (aka – efficient infringers of which Goggle is probably most notorious) has been pitted against the troll lobby (aka – Patent Assertion Entities (PAEs), Universities, aggregators, etc.) for the past several years, with the infringers (aka – technology thieves) largely winning the day against the latter (aka – patent muggers/extortionists). This narrative is responsible for passage of the America Invents Act (AIA), and a number of Supreme Court decisions that seem cognizant of these proxy battles even when the case they are deciding has nothing to do with either.

It is hardly surprising that calling one a technology thief or a patent extortionist will create irreconcilable sides to a given issue and, depending on your perspective, place you on the side of good or evil. Worse (and both sides do this), each perspective has tragic mom and pop anecdotes illustrating just how dire their situation has become! On the one side, without patents, or worthless patents, no small entity/start-up can obtain funding to proceed, or the funding they had dries up; on the other side, you have baseless lawsuits driving unsuspecting defendants to the wall. This way of defining the issues is not helpful to anyone and results in both an administrative and legislative stalemate. All stakeholders suffer by virtue of inaction; a toxic brew, indeed, which undermines the vitality of innovation. Everyone loses.

You see, patent policy is a compass heading set by those largely outside of our insular patent realm. To them, our jargon is dense, esoteric, and incomprehensible. This is underscored by the statement from the Supreme Court bench by the late Justice Antonin Scalia that this patent stuff is “gobble-de-gook.” While you may have disagreed with Justice Scalia’s decision no one could serious characterize him as being “intellectually deficient.” The point being, we need to make suggestions that are well understood by those beyond our little realm, and we need to reconcile these opposing issues before we start issuing policy statements. Legislators are influenced by the last person (and/or last $$$ contribution, if you’re truly cynical) who passed through their office. To make progress, we need to put forth a united front to address commonly perceived problems. If we don’t, the risk is a status quo that is rapidly hollowing out the US patent system.

To wit: last week, I attended a very useful symposium on 35 USC 101 that laid out how dire things have become. The Supreme Court has run two areas of technology, bio and software, into a legal ditch from which there is no escape. Supreme Court decisions on 101 are flatly irreconcilable; and, the interim band-aids being applied by the Court of Appeals for the Federal Circuit are like staunching a dam break with a bucket. It is way, way, too slow and hit-or-miss. The formerly expansive scope of 101 (as recently as Diamond v. Chakrabarty and Diamond v. Diehr, in 1980 and 1981 respectively) has been unwittingly narrowed to exclude huge fields of endeavor and, accordingly, research investment and US patent filings have tanked. Why? The risk of loss, both past and future, is profound. It should be no surprise then that research and progress in these two fields is decamping and moving off-shore, along with the attendant jobs and economic activity. In essence, the boundless technical future, upon which the US economy has long thrived, is being given to others with whom the US competes.

No one, on either side of the political aisle, or on either side of the PAE v. Efficient Infringement argument wants to see this outcome, yet it is this dispute that renders progress impossible. The new Administration has loads of priorities: healthcare, immigration, national security, etc. If we want patents to make that list, and it can, we need to come forward, collectively, with an agreed legislative fix for patents. Someone has to broker peace. That someone has to have a reflexive understanding of where and how to make the fix. If Google and Qualcomm and Pfizer and Ford and Tech Transfer and Independent Inventors all walked around Capitol Hill with the same PowerPoint slide deck – presto – legislative fix done. It would easily tag onto any other of the myriad legislative items that will likely occur. Until we collectively do that, however, nothing happens. Capitol Hill will not broker peace among us, they are not equipped to accomplish that, especially when so many other matters clamor for attention.

As for the 35 USC 101 conundrums, here’s the fix. DO NOT MODIFY 101! Rather, modify the definitions in 35 USC 100 as follows, and also supply a one paragraph legislative history as to why this definition was changed. Be crystal clear! I suggest the following, with new language to be added to the statute underlined:

35 USC 100(a): “The term ‘invention’ means invention or discovery, whether of a naturally occurring or man made phenomena.”

Legislative History of 100(a): This definitional change is expressly intended to overrule the Supreme Court decisions of Myriad and Mayo such that a discovery of a new naturally occurring or man made phenomena, and any application thereof in a process, fall within the ambit of patent eligible subject matter.

35 USC 100 (b): “The term ‘process’ means process, art, or method, whether accomplished manually or through the application of an intermediate controlled device, such as a computer, and includes a new use of a known process, machine, manufacture, composition of matter, or material.”

Legislative History of 100(b): This definitional change is expressly intended to overrule the Supreme Court decisions of Bilski and Alice such that computer implemented methods and the machine control instructions leading thereto are within the ambit of patent eligible subject matter.

Done. 101 is fixed. Investment may resume, the future is secure.

My next few articles, in the spirit of a modern “patent federalist paper”, will seek to fix the PTAB and Post Grant procedure(s)!

The Author

John White

John White John White is a US patent attorney and a patent lecturer. He is CEO/Managing Director of www.PCTLearningCenter.org, and he is also the principal lecturer/author of the PLI Patent Bar Review Course, a course that he originally created in 1995. By now, John has personally taught close to 65% of all practicing patent attorneys and patent agents how to successfully become admitted to the Patent Bar. John has also taught numerous US Patent Examiners at the United States Patent & Trademark Office (USPTO) in the “Law and Evidence Course” necessary for them to advance to Partial Negotiation authority as Examiners. John serves as an expert witness in patent litigations and is regarded as a leading authority on patent practice and procedure. He also maintains a select patent practice, Berenato & White, and also assists start-up technology companies increase and monetize their patent portfolios through his affiliation with SorynIPGroup.com.

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 as of the time of publication 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.

  1. Night Writer December 12, 2016 12:29 pm

    I don’t think this would change Alice. The reasoning in Alice is that the claims were unconstituionally granted because they tend not to promote and any claims that fit the test in Alice tend not to promote and were unconstitutionally granted.

    I don’t know anything that will fix that. There was scholarship (the real type not the Lemley type) back in the 1950’s about what to do in situations where legislation has run afoul with the the justices interpretation of the Constitution. There are options, but all say you have to go beyond mere amendments to the legislation.

  2. Night Writer December 12, 2016 12:35 pm

    If anyone wants to get a sense of just how far afield the academics and CAFC judges are from reality–“I do not claim the construction of the individual parts of the machinery used in the several processes before described, but the combination and arrangement, by which they are made to produce thread from wool, or other fibrous material, by a continued operation.” That is from a patent from 1836.

    To my mind, one focus must be on enforcing ethics. Mark Lemley regularly publishes papers that misrepresent cites, misrepresent the law, misrepresent the facts, and have glaring omissions. Hold Lemley to account and others like him. That will be a giant step forward. Example of Lemley’s misrepresentations: “software has no structure”. Example of Lemley’s omissions: no mention that colleges teach (like MIT) that functional language is meant to represent known solutions and those that those skilled in the art can readily obtain.

    Muck out Stanford Law School as a good start and then go after all his progeny that he has spawned. Hold them to an ethical standard and the quality of the dialogue will soar.

  3. Anon December 12, 2016 12:47 pm

    Night Writer,

    Look again at your first paragraph and realize that the need to make any type of projection into the future (let alone one that may only “tend” to occur) screams out the ultra vires nature of any decision that would rest on such unfounded and unprovable, subjective assertions about some future state.

    The Supreme Court is limited in its authority (no matter if that authority masquerades as implicit or explicit re-writing of statutory law) or if the Constitutional grant of authority is raised as some untethered spector. Their authority – even under Cinstitutional cries – is limited to present case or controversy and cannot extend to what may (and only may) happen at some projected future point in time (a projection mind you based solely on their own gut feelings – and unsubstantiated, uncross-examined whispers of “friends of the Court.”

    Remember back a few years and the strength of character evidenced in Judge Rich and his ability to flatly reject the plain dicta of a Supreme Court that simply was not supported by the words of Congress.

    We – the royal we – have grown into mere followers and worshippers of the Supremes and the (false) belief that they can do no wrong.

    Leastwise, that “we” are those attorneys who would advocate a blind compliance and would hush the others of us that do speak out against the actions of the Justices.

  4. step back December 12, 2016 1:02 pm

    Noting Gene’s recent post on patent claiming “basics”

    it occurs to me that many of us suffered through years of apprenticeship where a more senior patent practitioner would mark up our sorry attempts at claim drafting with red ink.

    Then on one foggy day’s morn’ we found ourselves as the senior attorney marking up some poor junior attorney’s work product with red ink. We had forgotten that we traveled the same tortured, red bricked road years back.

    The “Supreme” minds of SCOTUS never took that journey. Yet they know with instant jiggery pokery what a claim is, what it is “directed to”, whether it recites “significantly more” and whether it “tends” to stifle “innovation” more so than promoting it. What amazing personages they all truly are. Sigh.

  5. Anon December 12, 2016 1:11 pm

    step back,

    Have you seen the quote attributed to Justice Sotomayor on that “other blog” concerning understanding (or perhaps more to the point, not understanding) claims?

    It is on the Lifetech/Promega thread.

  6. Night Writer December 12, 2016 1:17 pm

    @3 Anon: I think Alice is ultra vires unquestionably. I agree Anon that a person with character like Rich would have stood up to the Alice decision. Maybe Chen will.

  7. angry dude December 12, 2016 2:53 pm

    “On July 31, 1790 Samuel Hopkins was issued the first US patent for a PROCESS of making potash, an ingredient used in fertilizer. The patent was signed by President George Washington”

    I just don’t get how can anyone have any problem with patents on processes

    Naturally, all industrial chemical processes nowadays are controlled by computer software algorithms (see Diamond v. Diehr)

    What is wrong with those dudes on scotus and cafc ?

  8. EG December 12, 2016 6:28 pm

    Hey John,

    I like your idea of “fixing” this mess created by the nonsensical Mayo/Alice framework through 100(a). Might need to tweak the definition of “invention” some more to make it clear that the Diehr concept of the “invention” being defined by the “claim as a whole” applies. Also, I might add after “computer” something like “or software controlling the operation of the computer” to make clear that “hardware” = “firmware” = “software” for patent-eligibility purposes.

  9. EG December 12, 2016 6:49 pm

    Hey John,

    One other thing: you might also need to reflect expressly in 100(a) that the terms “invention” and “discovery” have equal status. See EIBEL PROCESS CO. v. MINNESOTA & ONTARIO PAPER CO., 261 U.S. 45 (1923) which notes the importance of “discovery” to “invention.” The current nonsensical Mayo/Alice practically makes the term “discovery” meaningless in current 100(a). That would certainly help medical diagnostic methods like those that went down in Sequenom.

  10. Night Writer December 12, 2016 8:20 pm

    @8 and 9: EG: Alice will withstand any amendments to the patent act. What do you think is the basis for the Alice decision if not the Constitution? And if the Constitution why do you think an amendment to 101 would get around Alice?

    Nothing suggested in the article will circumvent Alice. It will be in full force.

  11. Anon December 12, 2016 8:45 pm

    Night Writer,

    As explained previously, the Supreme Court themselves have tied patent eligibility to section 101.

    It is a disservice to give credence to the view that any eligibility decision by the Court has Constitutional protection, as that would go against the very Constitution itself which delegates authority to write patent law to the legislative branch and NOT to the judicial branch.

  12. step back December 12, 2016 9:47 pm

    EG @9,

    The Alice/Mayo fiasco stems in part from SCOTUS misunderstanding of how science works.

    There are no laws “of nature”.
    That is just euphemism for consumption by the popular press and the lay public.

    Mother Nature does not come down from her mountain top with clay tablets upon which are inscribed “her” laws.
    We humans have narratives and theories about how our universe might be put together. History shows that the narratives constantly change. We humans of finite cognitive ability may never understand how the universe truly works. Those so-called laws, are man-made theories and not the inevitable fundamental work of Mother herself.

  13. angry dude December 12, 2016 11:21 pm

    step back @12

    well said

    every “law of nature” we know of is entirely man-made theory, a limited approximation to Mother Nature

    from Newtonian mechanics to Special relativity

    From molecular composition of matter to atomic structure, to neutrons, protons, electrons,… quarks etc

    I wish Scotus justices took some elementary college classes in physics and chemistry

    Those decisions are complete and utter nonsense and should be somehow reversed

  14. Curious December 13, 2016 3:50 am

    No one, on either side of the political aisle, or on either side of the PAE v. Efficient Infringement argument wants to see this outcome
    I disagree. The efficient infringement people LOVE this outcome. There is no downside for them to move jobs/development offshore. They are already doing it. Efficient infringement is all about those at the very, very top of the food chain (i.e., the software mega-moguls) maintaining their massive margins — by co-opting technology they didn’t invent. These people aren’t in it for the long term. They don’t have the best interests of the US economy in mind — they are just scooping in as much $$ as they can while they can. It is pure self-interest.

  15. EG December 13, 2016 7:56 am

    “The Alice/Mayo fiasco stems in part from SCOTUS misunderstanding of how science works. There are no laws ‘of nature’.”

    Hey step back,

    It goes beyond SCOTUS misunderstanding “how science works,” but as happened in Mayo, Breyer grossly and deliberately misrepresenting what is a “law of nature.” The claimed method in Mayo, though poorly drafted in my opinion, involved no such “law of nature” as the thiopurine drugs, for which the metabolites were measured for the claimed method, are a “man-made” drug. What you saw in Mayo by Breyer is essentially “pay back” by him for cert in the LabCorp case being sent back to the Federal Circuit as being “improvidently granted” over Breyer’s vociferous dissent.

  16. Anon December 13, 2016 9:44 am

    The dynamics in LabCorp were definitely in play.

    As were the inter-Court politics in the Benson-Flook-Diehr trilogy.

    When attempting a deeper understanding of the Court’s own scrivening (even as they attempt to denigrate applicants’s attorneys with that word), these “non-legal” items are very much part of “the rest of the story” (with a nod to the late Paul Harvey).

  17. Anon December 13, 2016 9:50 am

    …my view on the LabCorp dynamics was that Breyer was able to impress upon the other Justices that the lower court was actively disrespecting the Supremes with references to Breyer’s (vociferous) views being “not the law,” when that view was being put forth as arguments in cases that came up after LabCorp.

    My view is that Breyer took such references very personally, held a deep grudge, and the rest of the Bench saw an opportunity to appease Breyer.

  18. Ron Hilton December 13, 2016 11:48 am

    Even if “invention” includes discovery of a naturally-occurring phenomenon, wouldn’t that fail the novelty test in terms of patentability? Even with bio patents there needs to be some kind of human engineering involved, as opposed to pure science. I think the clarification regarding “process” to include a computer-driven process has a much better chance of success. The only opponents to that are the free-software socialist fanatics.

  19. EG December 13, 2016 11:54 am

    “My view is that Breyer took such references very personally, held a deep grudge, and the rest of the Bench saw an opportunity to appease Breyer.”

    Hey Anon,

    I agree with you take completely.

  20. Night Writer December 13, 2016 12:01 pm

    @11 Anon: The justices said in Alice that the abstraction exception goes way back before the 1952 Act which they said merely codified their case law.

    Everything in Alice says that the decision is based on the Constitutionality of granting the claims of Alice and not 101. Clearly–clearly–it was not statutory interpretation that led to Alice, so then what was the basis of Alice, if not the “promote” clause of the Constitution?

    I absolutely agree with the law of nature discussion above. I posted a link to a blog where they went through the philosophy of the law of nature claims. The blog explained that the law of nature business ended in about 1300.

  21. Night Writer December 13, 2016 12:02 pm

    Again though, changing 101 is not going to remove Alice. The case law on this is very clear.

  22. step back December 13, 2016 12:34 pm

    Night @20

    Can you post the link to that blog here? Thanks.

    Clearly the false ideology of there existing so-called laws “of nature” has not gone away. The SCOTeti cling to that concept like they cling to their notion of infallibility. Much of the popular press regurgitates it again and again. So it did not end in the 1300’s.

    I see nothing wrong with telling young children a tale about “laws of nature” much as I see little wrong with telling them that Santa Claus will bring a gift if they had been good rather than naughty.

    When it comes to patent law in recent times, SCOTUS has been very very naughty. So no gifts of praise and adoration for them. At least not from this side of the discussion.

  23. jbavis December 13, 2016 3:23 pm

    > “On the one side, without patents, or worthless patents, no small entity/start-up can obtain funding to proceed, or the funding they had dries up; on the other side, you have baseless lawsuits driving unsuspecting defendants to the wall. ”

    Stop. Right. There. Plenty of software companies have been proving this wrong. Afterall, software companies have been flourishing as much as ever – yet by all accounts on this very website – software patents are at their weakest ever.

    > “If Google and Qualcomm and Pfizer and Ford and Tech Transfer and Independent Inventors all walked around Capitol Hill with the same PowerPoint slide deck – presto – legislative fix done.”

    Large corps and independent inventors are inherently in conflict. Google recognizes this and has taken immeasurable steps to reduce the risks of threat to them (at the expense of the small innovators).

    However, one area these conflicting entities may have in common is China. Show how both large and small American entities are threatened by Chinese copying and you’ve got SOMETHING to start bringing these disparate entities together. Show how jobs are being lost to China and you’ve got Trump’s attention.

  24. Anon December 13, 2016 6:54 pm


    You make one (not small) mistake: large transnationals have no allegiance to the US.

    If things are not to their liking here, they can (and do) simply pick up and go elsewhere (even to the extent of not actually “going” anywhere and simply moving their “tax base” off shore).

    China simply is not the same type of threat to Transnationals as it would be to actual US concerns.

  25. Anon December 13, 2016 7:07 pm

    Everything in Alice says that the decision is based on the Constitutionality of granting the claims of Alice and not 101.

    That would be incorrect.

    The Court MUST have a tie to substantive patent law (a tie to what Congress has written) and not a tie to the Constitutional because if they were to tie directly to the Constitution, their scrivenings would violate that very same Constitutional Clause which is a delegation of authority to the particular branch of the government entrusted to write the statutory law that is patent law.

    I “get” that you think that no matter what, that the Court will try to arrive at their desired ends, but they cannot get there if Congress did not let them.

    The Court simply does not have that authority. The Constitutional clause is a delegation of authority, and not substantive law in and of itself. This is why it is important to note exactly what is contained in an appropriate Supreme Court decision, and what part of a decision – no matter how “strongly” worded by the Court – lacks authority. The Court simply is not allowed to provide the “advisory judgment” that ties to any subjective and merely possible (note the indicator of such with the word “may”) result of something happening in the future. The verbiage concerning substantive law today that may (not will, but only may) inhibit rather than promote has no legal authority. Sure, it “echoes” the Constitutional grant of authority, but it is a subjective and purely conjectural statement. It is NOT a proper “interpretation” of statutory law written by Congress – the actual item that the Court is addressing.

    We all should be very clear about this critical distinction.

  26. Night Writer December 13, 2016 7:35 pm

    @25 Anon: Not sure what you guys don’t get about this. Below it is very clear that this is not statutory interpretation, but a holding that granting the claims was unconstitutional. I agree it is wrong for the SCOTUS to do this, but that is what they did. No amendment to 101 or 100 is going to change Alice. But, I am almost always right and few people ever listen. And you have no answered my question of if this isn’t a holding that the claims were unconstitutional granted then what is it?

    We have described the concern that drives this exclusionary principle as one of pre-emption. See, e.g., Bilski, supra, at 611-612, 130 S.Ct. 3218 (upholding the patent “would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea”). Laws of nature, natural phenomena, and abstract ideas are “`”the basic tools of scientific and technological work.”‘” Myriad, supra, at ___, 133 S.Ct., at 2116. “[M]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it,” thereby thwarting the primary object of the patent laws. Mayo, supra, at ___, 132 S.Ct., at 1923; see U.S. Const., Art. I, § 8, cl. 8 (Congress “shall have Power … To promote the Progress of Science and useful Arts”). We have “repeatedly emphasized this … concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity. Mayo, supra, at ___, 132 S.Ct., at 1301 (citing Morse, supra, at 113).

  27. Night Writer December 13, 2016 7:39 pm

    @all of you: just read what they wrote. The long held exception (back to Morse) is not going to change because you re-write 101 or 100. How do you change a long held exception based on the Constitution? There are real law journal articles on this (not the Lemley type). But you guys continue on with your fantasy.

    Section 101 of the Patent Act defines the subject matter eligible for patent protection. It provides:

    “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101.
    “We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. ___, ___, 133 S.Ct. 2107, 2116, 186 L.Ed.2d 124 (2013) (internal quotation marks and brackets omitted). We have interpreted § 101 and its predecessors in light of this exception for more than 150 years. Bilski, supra, at 601-602, 130 S.Ct. 3218; see also O’Reilly v. Morse, 15 How. 62, 112-120, 14 L.Ed. 601 (1854); Le Roy v. Tatham, 14 How. 156, 174-175, 14 L.Ed. 367 (1853).

  28. step back December 13, 2016 7:47 pm

    Night @27

    They have never had a long-held “framework” of determining what a claim is “directed to” and whether it contains something “significantly more”.

    This is fake news and fake history.

  29. Night Writer December 13, 2016 8:33 pm

    @28 step back:

    “We have interpreted § 101 and its predecessors in light of this exception for more than 150 years.” Well, they are the SCOTUS so it doesn’t matter if it is fake news. The SCOTUS makes fake news real news.

    Don’t really get what you guys are thinking. If you want to get rid of Alice, then come up with a realistic proposal so at least we know what we need. Nothing in this blog post nor in the comments will change Alice.

  30. step back December 13, 2016 11:34 pm

    100 (k) [new] The provisions of this title including the eligibility for patenting of any invention or discovery that provides a new and useful machine, process, manufacture or composition of matter or improvement thereof shall not be supplemented or negated by any court.

  31. Night Writer December 14, 2016 2:41 am

    @30: step back: that would not work. Congress cannot make a law that the SCOTUS cannot find something unconstitutional. It violates the separation of powers. Congress could remove review by the SCOTUS.

    I read a good paper from the 1950’s about this. It was right on point–what can Congress do if the SCOTUS finds a portion of a law unconstitutional and Congress and Congress wants to negate the SCOTUS holding. It is a very tough problem.

    There is no doubt that Alice is not statutory interpretation, so merely changing the statute is not going to fix the problem.

    Not sure why you guys continue to think Alice can be fixed with changes to 100 or 101. The “exception” below is clearly based on the Constitution–not statutory interpretation.

    The law givers sayeth:

    “We have interpreted § 101 and its predecessors in light of this exception for more than 150 years.”

  32. Night Writer December 14, 2016 2:46 am

    As a general note, by the way, there are great law journal articles from the 1950’s and 1960’s that really lay out how this works. You have to update it with any current cases, but they put out all the issues in a fair manner. I don’t know what happened to our society, but now almost all the law journal articles are like a Lemley article where the writer is unethical with intentional misrepresentations of the cites, the law, and the facts. They seem to only want to try and get some result which justifies their perfidious behavior.

  33. step back December 14, 2016 3:23 am

    I don’t know what happened to our society …

    Night @32

    That is an even deeper dive issue.
    Let’s just say that ours is not quite the “Greatest Generation” but rather a significantly lesser one that cannot distinguish between truth, honesty, deception and misdirection. That situation will not be remedied by a campaign slogan regarding making us great again by way of fiat. It takes enormous amounts of work and studying to develop a personal knowledge base of how the universe actually operates.

    Hint: it does not operate according to the magical powers granted by Justice Breyer to King Tut’s abacus man in the Alice orals. But then again Breyer is not knowledgeable enough to understand that such is what he is doing in his Socratic hypotheticals. He is no Judge Giles Rich. 🙁

  34. John White December 14, 2016 6:14 am

    Ease up folks. The S.Ct. has long had a “deep seated antipathy” to monopolies, of which they view a patent as merely one variety. This ill-informed prejudice has long held sway over their patent decisions. By the 1940’s their notion was, all backed by their reading of “progress” in the constitution, that a patent grant was only justified by a “flash of genius” “. That is, a Nobel Prize contribution was the only real basis for a patent and few should be issued. This was soundly and completely rejected by the writing and passing of 35 USC 103 in 1952. This is the legislative function. The current “implicit” exceptions to 101 found by the S.Ct. are from their own dicta (ie, shear imagination). This is not the way our Constitutional system works. If it did, no statute could stand scrutiny, and would be pointless, in any event. So, not to worry, Alice can be swept away by the adjustments I propose, just like the wrongly discovered “flash of genius” test of long ago. We just need legislators with courage.

  35. Anon December 14, 2016 8:27 am

    Night Writer,

    I am well aware of the quote you provided and the dicta that you continue to try to elevate into a holding (and thus law).

    You remain incorrect, just as the dicta you quote remains dicta.

    The plain fact of the matter is that not everything the Supreme Court writes is “the law.”

    To kow tow to the notion that the Supreme dicta is tied directly to the Constitution (and thus would need a Constitutional amendment to change) is legal error.

    Your own (last) quote reflects this:

    “We have interpreted § 101 and its predecessors in light of this exception for more than 150 years.” (emphasis added)

    While the “light” they speak of (in Orwellian doublespeak) is their view of the Constitutional Clause – their subjective and entirely conjectural “may” or “might” – the object of law that they are addressing remains “§ 101 and its predecessors.”

  36. Anon December 14, 2016 8:35 am

    And let’s not forget (as the Court would like to forget), that there is a critical difference between “§ 101″ and “its predecessors”:

    Prior to the change in 1952 which created the separate section of 101, Congress had shared its authority for the similar words in the prior single paragraph with the Court to define what “invention” meant through the Court’s power of common law evolution.

    That power was stripped away in 1952 (and the Court no longer has that common law power) when Congress instead choose to explicitly break up that single paragraph and inserted section 103.

  37. Night Writer December 14, 2016 9:25 am

    @34, 35: Anon–the question for those that want to change Alice is whether the SCOTUS could and would write those same quote above for any amendment to 101 or 100. I think the answer is that they can just re-cycle those exact same quote above; thus, Alice will live through the proposed changes from Mr. White.

    Anon–you can’t just rant that what they have done is wrong. We all know that. And we all know they don’t care and will do it again.

  38. Night Writer December 14, 2016 9:28 am

    And—again–focus. We do not have something that we want that would negate Alice that we could actually ask for from Congress. That is pretty bad. Right now the only slim hope is that the SCOTUS reverses itself.

    Even if Congress wrote, Alice is expressly overturned by this new law, it would not prevent the SCOTUS from writing exactly what they did above with an added sentence or two about how Congress cannot overrule Constitutional issues with mere laws.

  39. Anon December 14, 2016 9:44 am

    Night Writer,

    You keep on making the same mistake in what you say the Court will do. The problem is that no one has told the emperor that he has no clothes.

    Your view is that even if the emperor is so told, the emperor will continue to strut around in the buff.

    The issue though is that the Court simply is not as powerful as you suggest.

    Awhile back on the Hricik side of “that other blog,” Prof. Hricik wrote a post detailing a number of ways that the Court has been over-ridden. This 101 issue is not any more “special” than any number of those other instances.

    Yes, it would take a forceful and aware Congress to take back its rightful (as in Constitutionally allocated) power, but by understanding what that allocation means, and what the separation of powers means, and what the prohibition against advisory opinions means, the Court can be curtailed from its desire to legislate from the bench concerning statutory subject matter.

    There simply is no such thing as “Constitutional subject matter.” No matter the dicta used.

  40. step back December 14, 2016 11:38 am

    Of course all this is wishful thinking.

    Patents, inventors and inventions are one of the last things on the minds of the new Congress. They have bigger goals. Repeal the laws of nature and make America great again by way of royal fiat.

  41. Night Writer December 14, 2016 12:55 pm

    @34 John White: Your flash of genius argument is a good argument, but I think that these “exception” are far more ingrained in the SCOTUS jurisprudence so that even if Congress wrote that this legislation is expressly meant to overturn Alice, I don’t think that the justices would comply.

    Well, I will grant you that this is like everything with the SCOTUS (@39 Anon) that you never know what they will do until they do it. But, I think we should have a better wish list than put something in the legislation that the SCOTUS may or may not comply with.

    What post was that Anon with other examples of over ridding SCOTUS cases? I think Alice is squarely based on the Constitution. Are there examples of over ridding holdings that something is unconstitutional?

  42. Ron Hilton December 14, 2016 1:26 pm

    @34 John, I like your approach but disagree with the “naturally occurring” part. I think the courts have been right to disallow patents on laws of nature, natural phenomena, and abstract ideas. Laws of nature and natural phenomena fail the novelty test. Abstract ideas fail the utility test.

  43. Anon December 14, 2016 2:21 pm

    Night Writer,

    You continue in error to think that Alice is “squarely based on the Constitution.”

    As pointed out:

    There simply is no such thing as “Constitutional subject matter.” No matter the dicta used.

    There is only statutory subject matter.

    Separation of powers – note which branch controls statutory writing. It just is not the judicial branch.

  44. step back December 14, 2016 2:39 pm

    Ron @42

    The patient in Mayo is not a “natural phenomenon”.
    Mother Nature did not feed and nurture the patient from infancy to current (presumably well fed and infections free) state. Man did. More correctly, his mother and her village and the global economic infra-structure did. If Mother Nature had her cruel and natural ways, the patient would have been dead long ago. Note that survival in prehistoric times was harsh and very short lived. Naturally speaking, there would be no well fed, disease free patient to perform the procedure on.

    There is also nothing in the form of “natural phenomenon” about the testing procedures itself as used in Mayo. Mother Nature does not naturally provide the needles, lab workers, lab equipment and reagents. Man does.

    Therefore nothing in Mayo is “natural phenomenon” except for the part where it is natural phenomenon for human beings to be deeply deluded about how clever they are. And there, SCOTUS fits the bill.

  45. step back December 14, 2016 2:49 pm

    Anon @43

    I get what you are saying and mostly agree.
    I don’t think all the readers here will get the implication of your bolded text.

    So to swallow and regurgitate what you said in more verbose form:

    1. Per the Constitution, Congress and not SCOTUS writes the statutes.
    2. The statute writing powers of the Congress are limited (they cannot at whim write any statute they feel like writing)
    3. However the empowerment section (section 8) of Article 1 does expressly empower Congress to write certain statutes.
    4. One of those empowered abilities is to write statutes “to promote the progress of science and the USEFUL ARTS by SECURING to inventors the EXCLUSIVE rights to their respective DISCOVERIES.
    5. The Constitution does not empower SCOTUS to write contrary laws that strip inventors of the securitzation provided by the statutes that Congress wrote, i.e. Whomever … ANY new and useful process, machine … subject to the provisions of THIS title.

  46. Night Writer December 15, 2016 5:20 am

    @@ Anyone want to take a bet that if 100 or 101 were amended as Mr. White suggests, that the SCOTUS would still apply their 150 year exceptions?

    You can’t make an argument with any credibility that what the SCOTUS is doing is wrong so they won’t continue to do it. Absurd reasoning Anon.

    I hope you get that I agree with you that what the SCOTUS is doing is wrong, but the issue is whether they will continue to do it if 101 and 100 are amended. And, the answer is clearly yes. The flash of genius jurisprudence was really a 103 issue and I think the SCOTUS realized they were wrong so they allowed their case to fall to “the manner in which” amendment. That will not happen here.

    So, again, we have no wish list, but an ill conceived proposal that will not overturn Alice.

  47. Night Writer December 15, 2016 5:22 am

    @45 all that you write buttresses my arguments that the SCOTUS does whatever they want and currently has decided that there are these three exceptions to any 101. Read what I quoted from Alice. They say 150 years, lots of 101’s, “we”, etc. Alice is not overturned by the suggestions in this blog post.

  48. Night Writer December 15, 2016 5:24 am

    Actually, I think it is kind of scary Trump’s meeting with elite of the tech industry. It makes me think that Trump is going to think helping innovation and tech is to help the giants and do their bidding. Trump strikes me as a smart person, but one that does not understand structure and law. Not a good sign.

  49. Anon December 15, 2016 9:25 am

    Night Writer,

    You mistake the larger zeitgeist and the Alice decision itself.

    You are simply wrong in saying that Alice cannot be overturned.

    It very much can (and in my humble opinion, should – with extreme prejudice).

    You are correct in the manner of the larger zeitgeist. Just like the Supreme Court has “scriven” its way around what Congress did in 1952, they will attempt to do again IF Congress acts and (properly) resets their statutory law.

    The Court simply lacks authority to rewrite statutory law. Let me repeat something I said above: there is no such thing as “Constitutional subject matter” – there is only statutory subject matter.

    Congress could pass a law repudiating Alice, and the Court would have to come up with a different way to scriven around such a law.

    That they will do so (or at least attempt to do so), we are in agreement. And that is why I have posited that what Congress needs to do is to employ their Constitutional power of jurisdiction stripping and remove the non-original jurisdiction of patent appeals from Supreme Court review. Yes, to satisfy Marburg, some Article III Court must have power of judicial review, and yes, the current “patent court” of the CAFC is far too tainted and brow-beaten by the Supreme Court to effectively do the job, but that is why I have also posited that Congress create a new Article III patent court.

    This path would (or could) satisfy both Mr. White and yourself.

  50. step back December 15, 2016 12:43 pm

    Anon @49

    It is not the Court that scrivens around the statutory laws and their intents. The Court is but a puppet of them who hold themselves out to be “friends” of the Court (aka amici curie). Why in Myriad Justice Scalia explicitly admitted he does not understand this molecular biology stuff and he is going along merely to get along. The rest of his colleagues were happy to understand it as plucking a leaf off a tree. I have repeatedly pointed out the amicus brief from where they plucked that analogy. They do not have minds of their own. They do the bidding of the ones whom they see as “friends”.

    The friends may have intellectual credentials (eg Lemeley) but those professorial “chairs” don’t come without strings attached. And that’s our justice system in a nutshell.


  51. Anon December 15, 2016 1:16 pm

    step back,

    You sound like our friend Night Writer with the power coming from access to the Emperor.

    As long as the Emperor continues to believe the clothiers (and no child points out his shortcomings), he will continue to strut around in the buff.

  52. step back December 15, 2016 2:18 pm

    One of my favorite fables, The Emperor’s New Clothes.

    Many do not grasp the moral of the story. It’s not about the little boy. It’s about vanity, greed, arrogance, self doubt and know-it-all-ism (the human vices).

    Our Supreme Justices are human. As such they too succumb to all those vices. In their case the tailors are not the purveyors of invisible clothes but rather the bringers of the fraudulent amicus briefs. Yes molecular biology is as simple as plucking a leaf off a tree. You are oh so wise and clever our great and fearless leaders. 😉

    /end sarcasm

  53. Ron Hilton December 22, 2016 12:56 pm

    When the court of last resort makes a bad decision, legislative action in the form of clarifying amendments would seem to be appropriate. But I still think that the mere discovery of an existing but hitherto unrecognized or poorly understood natural phenomenon fails the novelty test. As an analogy, if someone successfully reverse-engineers the trade secret of a competitor’s product, should they be able to patent it? After all, they “discovered” it and were the first to publish that discovery. Clearly, the answer is no. The same goes for anything that is “naturally occurring” – it already exists. Engineering is the domain of patentable subject matter, not pure science.

  54. step back December 24, 2016 7:47 am

    Ron @53 you should know better than to confuse subject matter eligibility under 101 with lack of novelty under 102. If it is a competitor’s “product” then it is on sale or in public use or otherwise available and thus blocked by 102.

    102 (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
    (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or ….

    We need to stop the promulgation of fake information (fake news) about patent law.


  55. Ron Hilton December 24, 2016 12:05 pm

    Step back @ 54 I am not conflating the two, but I am pointing out that the Supreme Court has done exactly that! In other words, they arrived at a correct doctrine but based it upon the wrong statute. I am stating that natural phenomena meet the criteria of being “in public use . . . or otherwise available to the public” – you have made my point for me.

    The Supreme Court also made a similar error with the abstract idea doctrine – it should have been based on utility, not subject matter eligibility.

  56. step back December 24, 2016 2:16 pm

    Ron @55 Happy Holidays to you and all here at the Watch Post.

    With that said, the SCOTeti and them of the Federali who follow them down the Rabbit Hole (Alice) are all a bunch of smug know-it-all scientific illiterates.

    What is it with this “natural phenomenon” nonsense?

    If I go to the top of mount Mauna Loa and measure current CO2 level to be 405 ppm, what is that?


    Is it a “natural phenomenon”? A law “of Mother” herself?

    How do I know that? What is Nature and where does the bright line get drawn between “her” phenomenon and that exclusively of hommus sapienus?

    The science-fiction buzz words that come spewing from the untrained mouths of the philosopher kings of the SCOTUS are mostly pure nonsense.

    Maybe they are semi-intelligent in other areas of law, but for those of us who have to live patent law day in, day out, they are a complete train wreck.

  57. Ron Hilton December 24, 2016 4:25 pm

    Step Back @ 56 Happy Holidays to you too. I would define natural phenomena as that which occurs naturally without human intervention. Laws of nature are man’s articulation of how natural phenomena operate, and constitute the realm of science. Abstract ideas, in the context of both science and engineering, are most succinctly expressed in the man-made language of mathematics and logic, including equations and algorithms, and lack patentable utility unless applied to an engineering problem.

  58. Ron Hilton February 6, 2017 12:41 pm

    The Intellectual Property Owners Association (IPO) has come up with a similar proposal to amend 101, making an exception to eligibility if the claimed invention as a whole “exists in nature independently of and prior to any human activity, or exists solely in the human mind.” Even though I still think that novelty and utility already preclude natural phenomena and abstract ideas, respectively, the courts seem determined to rely on 101, and so a change to 101 is probably going to be necessary. I think the language proposed by the IPO works very well, and overcomes my concerns expressed in previous comments above.