A Few Thoughts on the Supreme Court’s Section 101 Jurisprudence

By Senator Chris Coons
February 8, 2017

The following post is based on a keynote speech Senator Coons delivered at a conference entitled, “The Supreme Court’s Section 101 Jurisprudence: Dangers for the Innovation Economy,” on December 7, 2016. It has been edited by Senator Coons’ staff for clarity.


Senator Coons

Senator Chris Coons (D-DE) speaking on December 7, 2016.

Developments in the law of intellectual property are beginning to create real roadblocks for future innovation, an issue that patent professionals see more clearly than many in the House and Senate. This is particularly true in the case of patent-eligible subject matter.

Until recently, Section 101 of the Patent Act of 1952 acted as a coarse filter, with the remaining patentability requirements of Title 35 doing the heavy lifting on whether a patent should issue. This arrangement let examination focus on whether the inventor had disclosed enough information and whether he or she had made a sufficient advancement in science or technology. Over the last eight years, however, a series of Supreme Court decisions on Section 101 have substantially moved the line on what is patent-eligible. These rulings have created uncertainty about the validity of previously issued patents, many of which companies have already relied upon to justify significant research and development investments.

Our current problem appears twofold. First, courts are calling into question whether patents should be granted at all to inventions made in critical areas of our innovation economy, namely medical diagnostics and computer software. Second, the manner in which case law has been developing is creating profound uncertainty on what is and what is not patentable. Whether or not one gets a patent or that patent survives in court should not depend on which patent examiner your case is assigned to, or what judge you appear in front of. Such ambiguity has serious implications in the investment sector, where confidence is essential. If we are regularly seeing such levels of inconsistency, then we have an area where the jurisprudence is insufficiently clear, and which may necessitate congressional action to provide clarity and consistency.

Why should Americans care about patent-eligible subject matter? For one, eroding patent protection has worrisome implications for long-term investment in research and development, negatively influencing American predominance in emerging technologies. If, for instance, a business has less confidence in patent protection and its ability to gain a return on investment, that company is going to make lower investments in research and development over the long term. The average consumer will not see the impact of lower investment immediately, but an emerging decline will be apparent to patent practitioners—such as the experts gathered in this room—well before it begins to impact American consumers more broadly.

Lower investment in research and development has real consequences. Take, for example, Alzheimer’s. The human and budgetary costs to our country of failing to address Alzheimer’s are staggering, with projected federal government expenses up to one trillion by 2050. Without sufficient investment in diagnostics, we will not be able to adequately address this looming public health crisis and so many others.

Another likely consequence of restricting patent eligibility is that innovators in those fields will instead shift to trade secret protection, which they may see as the only realistic option to protect their investment. Inventors should certainly have the option to choose trade secret protection. That’s why I joined with Senator Orrin Hatch (R-UT) to introduce the Defend Trade Secrets Act, which President Obama signed into law last year. This new law creates a federal private right of action to defend trade secrets for the first time, making it the last aspect of intellectual property rights to be so protected.

The Defends Trade Secrets Act represents a significant, positive step forward. So why is a switch from relying on patents to trade secrets an issue? Put bluntly, relying on trade secrets when it is not appropriate to do so inhibits cooperative research by putting advancements into silos, shielding it in a way that does not expand the collective storehouse of human knowledge. That is the benefit behind the incentives created by patents: an individual obtains a limited monopoly in exchange for sharing their invention with others, thereby advancing the world’s scientific knowledge. By moving away from patents and towards trade secrets, research being conducted in emerging areas of innovation will stagnate under a shroud of silence. If we reduce meaningful patent protection, then we are essentially incentivizing the wrong choice for the long-term benefit of society.

Equally worrisome is the sheer amount of ambiguity that the developing Section 101 jurisprudence is creating. A great deal of ink has been spilled in trying to discern a clear path through recent Supreme Court decisions. Trial judges must decide this issue early in a case without a fully developed record and under conflicting precedent. Patent examiners must interpret these rulings and try to apply this complex body of law to each application consistently within a limited amount of time. Finally, a decision falls upon inventors and investors. They too must confront this legal quagmire when deciding whether they should seek a patent or trade secret protection, while businesses face compounding uncertainty in their investments.

I am particularly concerned about the impact this case law has on the patent application process. Instead of focusing on novelty and clarity, examiners and applicants alike spend time struggling to make sense of Section 101 jurisprudence. That is a serious misallocation of the limited resources of both patent examiners and applicants, leading to longer examination times and less reliable patent grants. Delays in patent review and patent grants can interrupt a startup’s lifecycle, negatively influencing employment growth, sales, and subsequent innovation. This is just one of several factors lengthening patent examination, but it is one that may warrant a congressional response.

In short, these factors harm prospects for U.S. economic growth. More worrisome, we are conceding areas of technological and medical innovation to our competitors. Europe and China do not follow this Supreme Court jurisprudence. Instead, they are roaring ahead and providing patent protection and clarity in areas where we are not. We already have a IP licensing trade surplus of about $85 billion, but we are running the risk of undermining this competitive advantage.

There are reasons to be concerned, but it remains important that the dialogue not stop here. This is where you come in, because the patent practitioner and advocacy community understands this issue far better than most members of Congress. The challenge before you, as practitioners in the field, is that you often notice the prevalence of these issues before the legislative community. In that sense, you function much like the proverbial canary in the coalmine.

For the benefit of our innovation economy, when you all agree there is a problem, and you see a clear solution that requires congressional action, that should serve as a call to action. While there have been substantial divisions between the IP creator and user communities on patent litigation reform, I understand that there have been remarkably constructive and very broad conversations convened by a number of organizations on the issue of patent eligibility. This conversation is one that I find particularly encouraging, and it is my hope that we will have a bipartisan commitment on the part of Congress in this sphere as well.

I remain dedicated to tackling this issue. If you conclude that there is a legislative path forward—one that is sensible, that provides for predictability, and that will restore our competitive edge—I welcome that input. I care about highlighting this issue, identifying credible, bipartisan solutions and getting those passed, because while so many other issues occupy us right now in Congress, we should not let this one continue to get away from us.

Let me just offer some final overarching principles about how we might ideally legislate on this issue. First, it should be technology-neutral. Congress should not be favoring one industry over the other—picking winners and losers—through legislation. Second, we should not make it more difficult for new technologies to receive patent protection. By definition, we have difficulty conceiving of what the most revolutionary technologies of the coming years or decades will be, and our laws should be flexible enough to reflect that reality. We must recognize that innovation occurs in areas that a decade ago would have been difficult to even conceive of today. Finally, the process of determining what is patent-eligible needs to be clearer and simpler. Resolving the drag on the system that I have elaborated upon in these remarks should be our chief concern.

To conclude, let me simply thank you for this assemblage of brainpower, skill, and years of experience. Additionally, let me commend IPWatchdog and the Innovation Alliance for bringing attention to this very important policy issue, and allow me to offer my engagement, support, and services as a junior Senator from the First State, Delaware. With one of the highest percentages of patent holders and Ph.D.s per capita in the country, Delaware residents value getting this right, and so do I. Thank you.

The Author

Senator Chris Coons

Senator Chris Coons represents Delaware in the United States Senate. Senator Coons is a member of the Senate Appropriations, Foreign Relations, Judiciary, Small Business and Entrepreneurship, and Ethics committees. Having spent eight years working in the private sector for an advanced materials manufacturing company in Delaware prior to being elected to the Senate, Coons knows firsthand how important intellectual property protections are to promoting investments in breakthrough technologies and cures. On the Senate Judiciary Committee, he has fought to strengthen and modernize our nation’s patent system and establish new protections for American inventions and innovations.

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 116 Comments comments.

  1. Night Writer February 8, 2017 5:23 pm

    I particularly like the part about applicants having to focus on 101 rather than the invention.

  2. Gene Quinn February 8, 2017 5:30 pm


    Yes. Senator Coons definitely understands that problem. I’ve had the opportunity to speak with him several times and he speaks about patents, innovation and technology without notes. He grew up in an innovative family and worked for a large chemical company prior to being elected. He is not just interested in what we do, he understands what we do. Very encouraging to have people like him so interested in patent issues.


  3. Independent Inventor February 8, 2017 6:09 pm

    Senator Coons,

    Thank you for all that you have done, are doing, and will continue to do to help the American innovation economy; including us hard-working but beleaguered independent inventors.

    The answer to this eligibility quagmire is a simple one: Abolish 101.

    As you’ve pointed out, all the other patentability requirements do all that needs to be done.

    Sometimes the simplest solutions really are the best solutions.

  4. Time Is Now To Act February 8, 2017 6:41 pm

    Senator Coons – I post this comment truly hoping that something can be done to return order to our Innovation Economy; one that my spouse and I are proud to work in and hope to mentor our children in the future provided the same incentives to invest that attract us to the sector exist for them.

    I represent the situation many innovation firms, small and large, find themselves in today. As an Inventor working at a small firm, I have seen exactly the scenario you detail unfold before our eyes. The ambiguity and uncertainty you have detailed has, since the Supreme Court decision in Alice and institution of faux courts such as the PTAB, played out like a nightmare right before our eyes.

    Investors, public and private, no longer have a guide post to benchmark the efficacy of the patents that support innovations. This issue does not just affect small firms such as ours but has already undermined the public stock prices of strong innovative firms. Many firms, customers and suppliers alike, act as if the protections afforded by patent system do not exist and this ambiguity gives them *incentive* to perpetrate wrongdoing.

    This is my 25th year in the technology sector as an Inventor, Board member and leader of innovation firms. I am encouraged and heartened to hear you speak out on this situation and I urge you to focus your legislative energies on the items you outline and on reining in the patent (read: innovation) genocide occurring with the USPTO.

    Thank you for your efforts on behalf of the U.S. and our technology protections. Your work on this issue has the potential to stop the damage to innovation and protect our great country’s leadership position for all Innovators.

  5. Jeff Lindsay February 8, 2017 8:27 pm

    So good to see a senator who both cares about and understands IP, and the mess that inventors face in the 101 quagmire. May it be tamed soon. It’s choking innovators.

  6. angry dude February 8, 2017 9:30 pm

    Too little, too late…

    The doc said ‘to the morgue’, to the morgue it is!

  7. Inventor February 8, 2017 9:36 pm

    Coons for President!
    Finally an honest politician who gets it, and better, can speak and write about it clearly. There may be hope after all.

  8. step back February 8, 2017 9:38 pm

    101. Whomever …. Patent claims that include as part of their covered subject matter any new and useful process, machine, manufacture or composition of matter shall be patent eligible.

  9. Inventor Woes February 8, 2017 10:11 pm

    Interesting that many here are not in favor of what the AIA did, yet they praise the author of this article. In fact, Senator Coons voted for the America Invents Act at least twice.

    Senate Vote: https://www.govtrack.us/congress/votes/112-2011/s35

    Senate Vote agreeing to House Amendment: https://www.govtrack.us/congress/votes/112-2011/s129

  10. Gene Quinn February 9, 2017 9:19 am

    Inventor Woes-

    Are you familiar with the STRONG Patents Act?


    We can criticize those who voted for the AIA, but why would you continue to criticize someone who has seen the problems caused and is trying to fix them? Seems rather a shallow way of thinking.

  11. Night Writer February 9, 2017 9:29 am

    @10 Gene: It does raise questions, though. When I read the AIA, it was obvious that IPRs were going to weaken patents.

  12. Bemused February 9, 2017 9:38 am

    Folks, If we want to support Senator Coon’s invaluable efforts on behalf of the inventor community, think about contributing to the senator’s campaign. His website is http://www.chriscoons.com and the “Make a Donation” button is on the right side of the landing page. I don’t work for Senator Coons (in point of fact, I’ve never met or even spoken to the senator) but as one of the truly few US senators who really “gets it” our community should support him as much as possible. I just made a campaign contribution (wish it was significantly larger) via Senator Coon’s website and the process is fast and easy.

    (Gene: Apologies in advance if this post violates any forum rules on content. This isn’t meant to be a political statement. Just me trying to help out a man who deserves our support.)

  13. Ron Hilton February 9, 2017 10:33 am

    The Intellectual Property Owners Association (IPO) has come up with a good 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 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 would create the technology-neutral clarity that the courts need.

  14. Raymond Van Dyke February 9, 2017 10:49 am

    This ongoing attack on the patent system is a truly bipartisan issue that affects all Americans and is a threat to our way of life. Extreme effort must be made to counteract the lobbyists of some large corporations muddying the waters, making all innovators who seek patenting evil trolls. Additionally, the 101 issue has gotten way out of hand, and the USPTO has lost focus on the proper evaluation for innovation, especially the next generation of inventions that are increasingly abstract and marvelous. Isn’t novelty and non-obviousness enough? Thankfully, Senator Coons sees the situation clearly. Hopefully, the negative portrayal of inventors and the invention process of late will be reversed soon with Senator Coons’ help, and the USPTO, now on a frolic and detour, will get back on track.

    The Licensing Executive Society Washington DC Chapter is planning a symposium on this issue for the Spring.

    Ray Van Dyke, LES Washington, DC Chapter Chair

  15. Inventor February 9, 2017 11:44 am

    Raymond Van Dyke@14,

    A small nit pic, not directed solely to you, but it bothers me that some tend to use Innovator and Inventor interchangeably. They carry different meanings. Big Tech has chose to call themselves Innovators and, imo, likes to blur the difference between invention and innovation.
    The constitution protects Inventors, who need not be Innovators. The Big Tech implication is that if you are not an innovator, then you are not worthy.
    Big Tech may very well be innovative without ever inventing anything and under this umbrella may well indeed infringe in order to be innovative. Thus I like to draw a distinction between inventor and innovator.
    A bit of a nit pic, but I think also part of that “extreme effort” that we need to exert to overcome corporate lobbyist nomenclature – what an Orwellian name “America Invents Act”….Anti-Inventor Act, would be closer to reality.

  16. Eric Berend February 9, 2017 12:00 pm

    While I am not pleased with the Senator’s votes for the AIA, I also perceive that he was but one of a raft of Senators, who were persuaded to vote for the Act on the presumption of good faith in the representations made, about the so-called “patent troll” canard and about provisions for due process administrative equivalents such as IPR (despite the Article III Court obviation issue). I am certain that the results of the abominable implementation of the AIA at the USPTO, are not what was ‘sold’ to Sen. Coons and the others, in securing their commitments to ‘aye’ votes in the Senate.

    I am not prepared to roast the man for his mistakes, if that is how those votes are to be characterized; not when he evinces this degree of nuanced understanding of the critical roles and issues involved; and, not when we see a politician that is willing to engage the topic and act in a positive way.

  17. Paul Morinville February 9, 2017 12:41 pm

    Inventor Woes @9. Many in congress and many of those who supported the AIA now regret doing so. I think they had no idea it would be implemented in such a hostile manner and really did not think enough about the effects. Also, this is a symptom of the problem in the way Congress actually works. Most of the detailed discussion is done in committee and often behind closed doors. Then the committee makes its assessment of the good and bad along with its recommendation on how to vote to the general membership who are not on committee. These folks not on committee do not have the deep information and vote pretty much how their party members in committee say to vote. Seldom do they do their own deep analysis unless their constituents actually bring up the problems of a particular bill.

    While Senator Coons did voted for the AIA, I suspect he would not now. He is very much a friend to small inventors and one of the few good friends in Congress. Hirono is also a good friend to inventors.

    So, disparaging one of our few friends is bad business. And importantly, we as constituents need to make a better case to their representatives in Congress well before the bill comes up for a floor vote.

    Congress listens to the chatter. They take their cue from the phone banks and mail on how to vote. If the chatter is strongly one way they vote that way. We need to make that chatter louder on our side. We did not do that in the AIA and it passed. We were loud and active in the Innovation Act and we killed it. Now we need to do it to pass legislation on 101 and to either repeal the AIA or de-nut it. (de-nut is a Minnesota farm boy term for castration)

  18. Edward Heller February 9, 2017 1:34 pm

    Sen. Coons, there are two problems in 101 jurisprudence, one relating to claiming discoveries of products of nature and laws of nature which the Supreme Court has long held that one cannot are the property of all not the property of the discoverer, and the struggle about what software inventions are patentable.

    In the case of products of nature or laws of nature, the Supreme Court does not allow claims to directly or indirectly claim products of nature or laws of nature. Since O’Reilly v. Morse, the Supreme Court has required an inventive application of a law of nature. In the case of products of nature, the Supreme Court requires inventive processes of using the products, There has been no fundamental change in Supreme Court jurisprudence in this area for very long time. The recent case involving Mayo only reiterated that the claims in that case were not directed to patentable subject matter because there was no inventive application of the law of nature.

    The problem of patenting software has been with us since computers first became prominent in the 60s. Ultimately, the courts do not like to allow the patenting of things like mathematical algorithms or business methods where the computer is just nominally employed – there is no real software invention involved. In contrast, the courts have long recognized that computer programs applied to improve conventional processes, such as molding processes, or computers or computer systems are patentable subject matter.

    Back in the 90s, the Federal Circuit approved a case known as State Street Bank which authorized the patenting of business methods by simply requiring that they be conducted on a computer. In the 2000’s, the Federal Circuit changed his mind in a case called In re Bilski. But rather than simply overturning State Street Bank, the Federal Circuit came up with a new test, called machine or transformation test, that many thought was too strict and would not allow the patenting of many software inventions.

    On appeal to the Supreme Court, the Supreme Court reversed the Federal Circuit unanimously – stating that the machine or transformation test was not the exclusive test, even though all justices agreed it was an important test because claims passing that test were almost surely to be eligible subject matter. However all judges unanimously agreed that the business method claims before in that case were not patentable subject matter while they split 5-4 on the reasons why they were not patentable subject matter.

    The majority simply called the claims “abstract” – without explaining what abstract meant or why the claims were ineligible. The four justices in “dissent” pointed this ambiguity out, observing that the majority anything but clear in its reasoning. The dissent would have rather to simply declare business methods ineligible subject matter.

    Since Bilski, the Federal Circuit, the district courts, and the patent office have all struggled “abstract.” The patent office in particular simply summarized the novel features of a claim and declares them abstract without any reasoning involved in the declaration – consistent with the lack of reasoning or explanation in Supreme Court opinion in Bilski itself.

    I therefore fully agree that we need to clarify the situation with respect to “abstract.” If the claims in Bilski were ineligible, and a majority of the Federal Circuit and a unanimous Supreme Court declared the claims there to be ineligible, they should be declared ineligible because the business method process disclosed in that case was not a statutory process. Basically, the dissent in Bilski was right. We should not try to invent other reasoning at this time as to why the Bilski claims were ineligible subject matter. That would be foolish and imprudent.

    With respect to software, the Federal Circuit has done yeoman’s work in recent jurisprudence to clarify the situation. Software inventions that provide improved computer operations and/or functionality are eligible subject matter either because such claims are not abstract or because they represent inventive applications. It may be that legislation in the software area is unnecessary at this time. But if any legislation should occur, I would recommend that the legislation not allow, directly or indirectly, claims like in Bilski or State Street Bank to be patentable subject matter. Both the Federal Circuit and the Supreme Court fundamentally agree that such claims should be ineligible.

    Moreover, Congress has repeatedly legislated against business methods in a variety of fashions, first introducing a prior use provision regarding business methods after State Street Bank first came out, instituting a new “covered business method” postgrant review, and declaring patents on tax methods ineligible subject matter.

    In my personal opinion, the IPO proposal fails because it will allow the patenting of business methods. Moreover, as in State Street Bank, it will allow the patenting of math or business methods or anything provided that the claim recited doing the method on a computer. Such are not computer inventions. Nor are they software inventions. They are nonstatutory inventions unrelated to the useful Arts.

    Finally, you should be aware that 101 in its current form was drafted by none other than Thomas Jefferson, the nation’s first “patent Commissioner.” The patent act of 1793 varied from the patent act of 179o important ways. First, it added “compositions” as one of the categories of patentable subject matter. Second, it added the requirement that the subject matter be “new.” The requirement that the subject matter not be known or used was retained. Thus the subject matter had to be both “new” and also not be known or used by others.

    The primary reason for the addition for “new” is the corresponding introduction of compositions as patentable subject matter. Obviously, when speaking of machines, arts, or manufacturers, the other classes of subject matter in 101, these are necessarily new or improved. But not so compositions, which can be discovered in nature. Thus the requirement that “new” be something other than not previously known takes meaning here. The obvious intent is that compositions discovered in nature could not be patentable subject matter. This that has been the consistent view of the courts ever since. The Supreme Court in Myriad, expressly held that human DNA was not a “new” composition of matter within the meaning of 101.

    My central concern with the IPO draft centers on its elimination of the requirement of newness from 101. This “newness” is not the same thing as not being publicly known in terms of prior art. It is an independent requirement that has to be retained.

    Thank you for listing.

  19. Night Writer February 9, 2017 1:50 pm

    @17: Well we finally see the true Ed the Ned. Everyone read it and then the next time Ed the Ned claims he is pro-patent, quote it to him.

    “Ultimately, the courts do not like to allow the patenting of things like mathematical algorithms or business methods where the computer is just nominally employed – there is no real software invention involved”

    That statement Ed the Ned is nonsensical. And, there is no reason given by you that if there is no “real software invention” involved that 102/103 would not be adequate to deal with it.

    But, the biggest thing is entering the 101 world of Ed the Ned is to have to try to understand all these strange abstractions that he employs like “mathematical algorithm”, etc., that have no definite meaning and which have this history of judges trying to attach “math” to “laws of nature.” And, the entire concept of a “law of nature” is from the medieval period. We have seen in many cases the abuse of the law of nature exception where the functioning of the human body is somehow called a “law of nature.”

    You are a very anti-patent person Ed the Ned.

  20. Gene Quinn February 9, 2017 2:12 pm


    You say: “So, disparaging one of our few friends is bad business.”

    I don’t think Inventor Woes is on the side of the inventor or patent owner. His comments on other threads make it seem as if he is on the side of the technology users (i.e., infringers). His moniker – “Inventor Woes” – seems more mocking than anything.


  21. step back February 9, 2017 3:10 pm

    Ned @18

    Sorry to be blunt, but you are full of sh8. So are the SCOTeti.
    There are no “building blocks”.
    There are no Laws “of Nature”.
    Human “ingenuity” includes that of complimenting ourselves on how clever we are.

    We are not clever. We are vane. We are arrogant. And yes, most of us are full of sh8. Some of us like to nakedly parade that condition in front of others.

    The electrons don’t care what noises we thin-haired primates make. They move nonetheless (quantum mechanically that is). They do so inside computers and they do so within the wave functions of chemical compounds (aka compositions of matter). The mere fact that you don’t believe they exist inside computers is your problem, not that of the electrons.


  22. Edward Heller February 9, 2017 3:50 pm

    step, we all agree that the central problem with Bilski is the lack of definition of abstract and any reasoning in Bilski as to why the claims there were ineligible. Four justices agreed with this, which will help us persuade Congress on this point.

    Rather than defining “abstract,” why don’t we simply propose that “abstractness” be considered under 112 as a problem with enablement, description and definiteness? This has long been Night’s proposal. I agree with it.

  23. Edward Heller February 9, 2017 3:51 pm

    step, as to “laws of nature,” I am in tentative agreement with you.

  24. step back February 9, 2017 3:55 pm

    If you agree, why do you insist that computer related inventions are not real?

  25. Fulchand Shende February 9, 2017 3:55 pm

    Thank you Senator Coon for taking up this issue. It has been troubling issue in the prosecution. The guidelines provided by the USPTO with regard to the 101 are somewhat difficult to weave through. To put simply, anything made by man under the Sun – anything which is artificial should be patent eligible subject matter. However, recent Office Actions are contrary.

  26. step back February 9, 2017 3:58 pm

    The problem with Bilski is that he (they) had the audacity to sue big oil.
    The problem with Alice is that she (they) had the audacity to sue big bank (CLS).

    The problem with the SCOTeti is that they are so full of sh8 (up to eyeballs and above) that it blinds them from seeing they are so full of sh8.

  27. Edward Heller February 9, 2017 4:29 pm

    step, perhaps I did not make myself clear. If the requirement is that the invention improve a computer or a computer system, simply saying do this business method calculation on a computer does not provide an new or improved computer system. However, if the claim is directed to actually software improvements, the claim is directed to improvements to the operation or utility of the computer or computer system.

    The Federal Circuit has now seen this difference in a number of cases and has been approving software invention that provide improved computer operations or utility. This is a positive direction, in my view.

  28. Night Writer February 9, 2017 5:19 pm

    @27 There is no prohibition against business methods (whatever that is), but what is clear is that business methods change by the introduction of new technology. The modern CRM systems are an example of this. Why do you want to exclude all of these machines?

  29. Paul Morinville February 9, 2017 5:37 pm

    Edward, The result of denying business method patents (whatever that is) is to enable and sustain monopolistic corporations.

    A major role patents play is to attract investment to risky and unproven ventures. I tried to show this effect in this article. http://www.ipwatchdog.com/2016/12/20/google-classroom-picking-economic-winners-losers/id=75861/

    In the new world of the internet and connected things, many business models were created that could not have existed before. They were indeed patentable under the law. The article is about eLearning, but eLearning was just one of these many models. Online auctions, social media and online purchasing are others. When the first people ventured into these businesses, they did not exist and the risk of failure was very high. Patents attracted investment by managing that risk and providing an exclusive right in a very fast changing environment, which allowed people to build these companies to see which would work and succeed. Since the courts and the PTO pretty much eradicated these sorts of patents, large incumbents (or those who became incumbents like eBay, Facebook, Amazon and others) simply create their own version and run the innovative company that invented the model and took all the risk out of business. This acts to deter investment in new innovation related to the internet.

    There is a legitimate societal interest in patenting business methods. It is to enable capital to flow to startups in high risk ventures, which stimulates the overall economy and creates jobs.

  30. Inventor February 9, 2017 7:10 pm

    Edward Heller@18
    re: “…
    With respect to software, the Federal Circuit has done yeoman’s work in recent jurisprudence to clarify the situation. Software inventions that provide improved computer operations and/or functionality are eligible subject matter either because such claims are not abstract or because they represent inventive applications.
    I was reading your “short history of patent law” above until I got to the excerpt above and had to stop.
    IMO, this statement displays a distinct lack of understanding of software.
    In particular, you say: ” improved computer operations and/or functionality”
    This sounds a lot like Clarence Thomas’s Alice decision. Software is ok and patentable if it improves the functionality of hardware….come on….that is terrible,
    certainly no “yeoman’s work.”
    I have a BSEE and an MSCS, and have done work toward a PhD in Systems.
    I’ve worked to design both hardware and software. Those who do not understand software think it is a mathematical law of nature or something.
    With all due respect, what you folks need to grasp is that one can capture an invention in either special purpose hardware OR general purpose hardware, combined with software. One can express their invention in either. The job of a Systems Engineer, once the requirements are defined is to decide which to implement in hardware and which to implement in software. The tendency is to minimize the amount of hardware- for many reasons. Do it in softare if possible. Both should be patentable. One’s invention need not make a computer run faster in order to be eligible. This is an absurd idea.
    Think of a malfunctioning satellite in orbit which contains both hardware and software. Let’s further assume one has the option of fixing it in either hardware or software. Let’s further assume we have the ability to remotely reprogram the satellite from the ground. Where would you like to express your invention in hardware or software? Obviously it’s cheaper to upload new software than it is to travel into space and swap out hardware. This is an extreme analogy, but in general illustrates why it is often easier (less expensive) to implement in software than in hardware. I hope this makes some sense. Whether one expresses (implements) their idea in pure hardware or in the combination of general purpose hardware (e.g. computers) and software shouldn’t make a damned bit of difference to the patentability. SCOTUS needs to grasp this. Perhaps Gorsuch can help?

  31. Edward Heller February 9, 2017 7:33 pm

    Inventor, I absolute do not disagree that software can be inventive. But there has to be real software and the claims must be directed to that software.

    The problem comes when one describes and claims a mathematical formula, for example, such as we found in Benson and Bilski. Saying, do it on a computer is not a claim to software. It is an invitation for someone else to write software, and the invention is in the mathematics or algorithms.

  32. step back February 9, 2017 8:06 pm

    what you folks need to grasp is that one can capture an invention in either special purpose hardware OR general purpose hardware, combined with software

    Inventor @29

    What many of us techno nerds don’t get is that we are falling prey to the mind bend rhetoric of them who are versed in the dark arts of deception.

    There is no such thing as a “general purpose” computer.
    Think about it.
    General purpose means it can do anything and everything.
    No such machine exits.
    The phrase sounds innocuous.
    You are a sucker if you fall for it though. Just like you are a sucker if you mindlessly accept other stoop8 phrases like Laws “of Nature”, “Fundamental building blocks of science and technology” and “Natural Phenomenon”.

    The mind spinners had you caught in their spider’s trap even before you stepped out the door.

    Be wary. Arm yourself. Make sure you fully understand what FUD means. Memorize the many tactics of rhetoric. Appeal to vanity, appeal to authority, logical fallacies. If you don’t know these you lose before the game even starts. Regrettably they don’t teach these in engineering classes.

  33. step back February 9, 2017 8:12 pm

    Ned @30.

    No no Nanette and Ned.
    A computer is a machine. Period.
    When a computer computes, physical real (nonabstract) things happen. The electrons doth move.

    35 USC 101 says “machine”.
    35 USC 102 says entitled to a patent.

    The burden of proof (based on facts, not poetry) on doubters is to demonstrate anticipation or obviousness or lack of utility. If you can’t do that, it IS a new and useful “machine”. Period.

  34. angry dude February 9, 2017 8:22 pm

    Edward Heller @27

    “software invention that provide improved computer operations or utility”

    dude, you are full of it just like scotus critters

    there are no “software inventions”, there are no “general purpose computers” and there is no “utility” in general (e.g. you might be of some “utility” to your wife but nonetheless completely useless here)

  35. angry dude February 9, 2017 8:41 pm

    Edward Heller @30

    “The problem comes when one describes and claims a mathematical formula”

    Another piece of complete bs

    I described and claimed mathematical formula in my patent – as a method and apparatus for performing some DSP operation to achieve certain result…

    Just like the creators of MP3 compression technology described and claimed mathematical formulas in their patents so brainless punks like you can enjoy music on the go…

    Just like the creators of RSA cryptography described and claimed mathematical formula in their patent so brainless punks like you can shop on the internet..

  36. Inventor Woes February 9, 2017 10:09 pm

    Gene @10

    This guy is a politician. He probably rode the wave of anti-troll sentiment when the AIA was passed and now that things aren’t going so well for patent owners he’s riding the wave of anti-AIA sentiments. He doesn’t care about you or me. He’s simply abating fears for short term political capital.

  37. Inventor Woes February 9, 2017 10:16 pm

    angry dude @34

    There is no way you can claim a mathematical formula. This because they are discovered instead of invented. The same way Einstein could not patent E = mc2. The same way you can’t patent gravity, but you can patent a machine that uses gravity. To say otherwise is to ignore reality, and I think SCOTUS realized this when they espoused their 101 opinions. They are looking at the bigger picture, not the identity politics view of the single inventor (who has a narrow view of the bigger picture). It is their job as arbitrators and is not judicial activism, as the intent of the founding fathers was that laws of nature, abstract ideas, and natural phenomena cannot be patented. Even if you take the strict interpretation approach, these judicial exceptions are necessarily implied. Whatever modality of judicial interpretation you take, things like mathematical formulas cannot be patented.

  38. step back February 9, 2017 10:24 pm

    Angry @34

    It’s not clear whether Ed the Ned is a blog troll or really believes the bs he shovels. One thing you need to watch for is when they start using the tools of rhetoric against you. We techno nerds are typically not schooled in these dark arts. Just as it takes years of study to understand modern computers and how they work (as energy consuming physical machines), it takes a long time to learn the many tactics of rhetorical argumentation. Even when you know about it, you are not immune. It works on humans. We are all human. Ergo it works on us.

    Of course when one takes a clipping of the Trump wig and pastes it on Gene’s head as the author of the below blog does, it is easy to tell what you are dealing with (gutter level school yard bully tactics):


  39. Inventor Woes February 9, 2017 10:31 pm

    step back @37

    Ad hominem tactics aside, that picture is pretty funny 🙂

  40. angry dude February 9, 2017 11:29 pm

    Inventor Woes @36

    US Patent 4,405,829

    c = m^e (mod n)
    m = c^d (mod n)

    Now stop using inet – including email and online shopping

    put up or shut up, pleeeeze

  41. step back February 10, 2017 1:05 am

    Pop open the picture and repeat after me
    This is not a pipe
    This is not a pipe


  42. Anon February 10, 2017 7:32 am

    Mr. Heller,

    Respectfully, you continue your relentless attack on forms of innovation/invention that you simply are personally against, and in so doing, pervert the law to your own ends.

    That is simply reprehensible and you should desist from your crusade long enough to gather the inte11ectual honesty to reframe what you are doing as reflecting the change that it would be, instead of twisting the law that is and mangling history (specifically, the Act of 1952).

    Far too many people in the blogosphere are aware of your tactics for your posts to go unchallenged, and your relentlessness in pursuing your goals is causing serious disparagement upon the legacy that your mark will leave behind.

  43. Inventor February 10, 2017 7:55 am

    step back@37
    Gene looks good with a blonde comb-over. Dr. Roy could benefit from one himself don’t you think? Dr. Roy seems not to like the constitution when it comes to protecting inventions….perhaps his status should be extremely vetted the next time he goes through an airport. Just a suggestion. lol 🙂

    step back@31
    I think that “generally” we’re on the same side.
    re: “…
    There is no such thing as a “general purpose” computer.
    Think about it.
    General purpose means it can do anything and everything.
    No such machine exits.

    Of course, technically, you are correct.
    Please allow me to modify my definition of general purpose computer, since, after all, Inventors are allowed to be their own lexicographers.
    For the purposes of my point (which I hope was not lost) let’s say a general purpose computer is one that runs software and which can be reprogrammed in some manner….thus making it useful for more than one task.

    Back to the point…that being that there should be no distinction made by SCOTUS, et.al., over whether an invention is implemented in hardware or software. Both should, in “general” be allowable. Further let me point out that creating a machine that does not run any software should not automatically make it allowable. I would assert (dare I use that word) that a law of nature and/or abstract idea and/or algorithm can be captured purely in hardware. To equate software to mathematics is like thinking that a “general purpose” computer can only be a 4-function calculator. Those who make this argument have one agenda in mind and that’s to insulate Efficient Infringers from disruptive tech….in this example, to protect sales of sliderules. This too will pass!

  44. Concerned February 10, 2017 8:22 am


    I can’t agree with your statement any more,

    “Whether one expresses (implements) their idea in pure hardware or in the combination of general purpose hardware (e.g. computers) and software shouldn’t make a damned bit of difference to the patentability.”

    I would like to add your post; think of the biggest trend in Software over the last two decades, “software is eating the world”. Advancements in semiconductor technology, often characterized as “Moore’s Law”, have made microprocessors both powerful and cheap enough to enable common hardware functions to be implemented in software. I’ll provide another common example of this tradeoff Inventor is describing. The latest video compression standard, called HEVC (H.265 standard) which we all use on our smartphones and big screen TV’s, etc., is implemented in a combination of processing cores (i.e. software) and hardware blocks. Should the software implementation of such a huge improvement in the art of video compression automatically disqualify it as not patentable subject matter? Of course not.

    Another example, helps if you understand programmable logic devices, are FPGA’s. FPGA’s are a single chip hardware device that are used primarily because one can implement a design in software, download it to the FPGA, and then perfect the design to get it ready for market very quickly. FPGAs enable a company to get a product to market blazingly fast because it doesn’t take all the time (e.g. multiple years) to develop a semiconductor chip mask set, the related manufacturing process, and the associated expenses of manufacturing a new semiconductor chip. Does this mean an important new algorithm like video compression that reduces video to half the bit rate of its predecessor standard with no quality impact should not be patentable subject matter because it is implemented in software and runs on a programmable FPGA? Again, absolutely not! Improvements in video compression is just one example, and are most definitely patentable subject matter and whether implemented in “pure hardware or in the combination of general purpose hardware (e.g. computers) and software shouldn’t make a damned bit of difference to the patentability.”

    Bemused@12 thank you for your suggestion regarding a donation to Senator Coon’s. Let’s support someone who gets how important patents are to the US economy.

  45. Edward Heller February 10, 2017 9:00 am

    Concerned@43. When I read posts such as yours I almost cry. No one, and I mean, no one is objecting to improvements to machines and processes that are implemented alternatively by software or by hardware. That is simply a red herring.

  46. angry dude February 10, 2017 10:17 am

    Concerned @44

    FPGA is HARDWARE in its purest form (unlike executable code running on MCU or DSP)
    The fact that it can be reconfigured on the fly with new configuration bitstream does not change its hardware nature

    But who knows, maybe cafc or scotus will pass another decision making all interchangeable/reconfigurable hardware equal to “abstract software” and thus unpatentable ?

  47. step back February 10, 2017 10:35 am

    Ned the trout Head @45

    You sir, are the red herring.
    There is no requirement for “improvement” in USA patent law.

    Read 35 USC 101.
    It says “or” improvement thereof.
    The conjunctive indicates that non-improvements are eligible.
    They merely have to be new and useful.

    Read 35 USC 101.
    It says “ANY new and useful …”

    A machine that informs me (yes pure information) of the current state of my medical condition is “useful”. If it gives a reading of no better resolution or accuracy than the previous one (or even slightly worse), it is still “useful”. After that it merely needs to be “new”. Perhaps the new design allows it to be cheaper in cost, perhaps smaller, perhaps more energy efficient. All those issues might go to obviousness, but not to it being “new” and “useful” and thus eligible under 101.

    Please stop muddying the waters with Clarence the Clown antics.
    There are pieces of information that are “useful”, i.e. information about a current or predicted future condition in the real world.

    There are pieces of information that are not “useful”, i.e. false flag information about a statutory scheme 35 UnedsC 101 that exists only in your head.

    A programmed computer is a machine. Period.
    The only question under the real 101 is whether it is “new and useful”.

    Why do you never seem to get that through your ned head?

  48. Inventor February 10, 2017 10:50 am

    Concerned@44 – thank you!

    Angry Dude – thanks to you too!

    Edward Heller@45 – Well then Alice and Clarence Thomas’ decision is a red herring.

    Don’t cry, because, as per Step Back@38, I believe Dr. Roy Schits…himself was indeed celebrating the slow torture and death of software patents here:
    Read his article. He apparently has quite a following.

  49. Inventor February 10, 2017 10:55 am

    p.s. Google’s PTO Director, Michelle Lee, and her “PTAB invalidation and efficient infringement business method” invention is unconstitutional and Dr. Roy, it sucks.

  50. Night Writer February 10, 2017 11:21 am

    @Ed the Ned: You never answered the CRM question.

    The fact is that you want to exclude inventions with no principled reason to do so. You are an anti-patent judicial activist that puts on the feathers of a pro-patent person (probably to get business.)

  51. Night Writer February 10, 2017 11:22 am

    Rader is now asking to be director.

  52. Stephen Curry February 10, 2017 11:25 am

    @49 and for all inventors with PTAB invalidated patents

    Michelle Lee omitted some information she needed to provide to the Senate Judiciary Committe during her USPTO Director nomination hearing such as the patent applications she signed and filed in the USPTO. She also omitted the name of google’s main outside patent prosecution counsel in the below document. Note also that there is also a 3-month gap between her last day at google and first day as SV USPTO Director.


    question for @49 inventor. Can you ask your patent attorney if the above are grounds to challenge the invalidity of all PTAB patent invalidations since Lee was not truthful to the Senate Judiciary Committee and so her past status as USPTO Director seems apparently obtained by not being truthful to the Senate Judiciary Committee?
    Can you direct all US Senators and patent attorneys representing sole inventors and small startup high technology companies to this website IPwatchdog?

  53. step back February 10, 2017 11:29 am

    Inventor @48

    I doubt very much that Clarence the Clown penned Alice on his own.

    The wording of the opinion has too many mind bend tactics and sounds to have been the brain child of merely the Clown. More probably he was the willing tool of them who don’t like America and American inventors too much and are more than happy to behead the patenting system that got America to where it was in a previous time of greatness. That great again state will not be attained with a decapitated patent system.


  54. Night Writer February 10, 2017 11:51 am

    @47 “Ned the trout Head @45”

    Giant laugh! Ned is the most disingenuous person on this blog by far. He epitomizes all that is wrong with the patent system.

  55. Inventor February 10, 2017 11:58 am

    Steven Curry@52,

    A little more disclosure:

    I have not yet had the misfortune of patent invalidation at the PTAB. I worry a great deal about this in the future; however – given the statistics, which are almost certain death.
    I think researching the grounds for a class action suit might be appropriate, except that I don’t think we can sue the government. Perhaps just Lee, for fraud, and/or perjury? Unfortunately I’m not an attorney and as a sole-inventor, I cannot barely afford to continue prosecuting my patents pending. I would hope that all US inventors (not just those already killed at PTAB) would have standing in such a suit against Lee….what a wonderful idea/thought, regardless.

  56. Stephen Curry February 10, 2017 12:03 pm

    inventor@54 Please spread the word.

    We want the next USPTO Director Nominee and any fed position nominee or judicial nominee to be honest to the Senate Judiciary Committee.

  57. Inventor February 10, 2017 12:11 pm

    Stephen Curry@56,

    Done. I’d be curious to see if Sen Coons has an opinion he can share on your question?
    Some questions:
    1) Do you have copies of the applications signed by Lee?
    2) Were the applications published?
    3) Do you happen to have application numbers?
    4) Was Lee the inventor, or an attorney representing Google (presumably the assignee of any patent applications coming out of Google)?
    5) Were the applications signed during those three missing months?

  58. step back February 10, 2017 12:17 pm

    Inventor @55

    The US Supreme Court does not have the authority or Constitutionally granted power to order the US Patent Office to start implementing a patents wholesale killing law like that of the Alice/Mayo framework.

    Congress did not authorize the USPTO to start implementing the Alice/Mayo framework.

    They did it all on their own.
    They (Lee and top brass) should answer for it on their own.

  59. Stephen Curry February 10, 2017 1:37 pm

    @57 inventor

    I don’t have those patent numbers but the numbers are in the USPTO.

    The American public and Senate Judiciary Committee got deceived.

    google’s former main outside patent prosecution counsel in mountain view, norcal (an avid reader of this blog) has all the information you are asking for and the USPTO has those requested information as well. Sorry I can’t be specific for now.

  60. Edward Heller February 10, 2017 1:37 pm

    step back@47, of course new and useful, or improved machines are eligible. We have no disagreement on that. That is why new and improved machines and processes where software is at the heart of the improvement are most certainly patentable subject matter. The Federal Circuit got Versata wrong.

    But there when one claims a new or improved business method, one is not claiming a machine or software. What Alice held is that claims like those in Bilski could not be rendered eligible simply by requiring them to be run on old and generic computers.

  61. Eric Berend February 10, 2017 1:48 pm

    @55, ‘Inventor’:

    If the AIA can empower anyone to have standing for institution of an IPR on what I would presume is a public interest argument or basis, then that very same ‘public interest’ argument should create a basis of standing in any such lawsuit for inventors; whether already harmed by the unlawful implementation and conduct of the USPTO at an IPR or not.

  62. Edward Heller February 10, 2017 1:56 pm

    Paul, at 29, I fundamentally agree with you that patents are necessary to incentivize startups. But in order to bring business methods into 101 there has to be a tie to “machines,” because it is clear that it business methods are not and have nothing to do with manufactures or compositions.

    In order to improve a machine, there at least has to be new or improved software in addition to the overall concept of the business method. Versata, to me, is a good example of what I am talking about even though the Federal Circuit denied the eligibility of the claim in that case. If we need to reverse something we need to reverse that case because it was wrongly decided.

    To the extent that we want to go beyond tying business methods to machines, but to just claiming them in the abstract as in Bilski, we all need to be open and clear about what we are doing. We need to ask that Congress to create a whole new class of patentable subject matter.

  63. Edward Heller February 10, 2017 2:03 pm

    Eric Berend@61, I know the sense of your post is to talk about the public interest, but I would not concede that standing is not required to file an IPR. The recent PTAB case regarding the 11th amendment, the PTAB conceded that IPRs were contested court proceedings between private parties, and for that reason 11th amendment applied because states could not be haled into court against their will at the request of private parties. If states cannot be haled into court at the request of private parties, so private parties cannot be haled into court without standing by the complainant.

  64. Ron Hilton February 10, 2017 2:07 pm

    Edward Heller @60,62 A method is a process and is therefore patent eligible, as long as it meets all the other criteria. You are conflating subject matter eligibility with novelty, non-obviousness, and utility. So yes, an known business method being automated on a known computer is an obvious combination and not patentable. But why would you want to exclude new business methods or business methods that have been improved through automation in useful and non-obvious ways?

    BTW, this is also why it is okay for the IPO amendment to drop “new and useful” from section 101 – it is already covered elsewhere in the statute under novelty and utility. In fact, “new and useful” was an amendment itself, and was not in the original 101 statute as drafted by Thomas Jefferson. Having said that, it would be okay to leave it in, because many people, including you and most of the SCOTUS justices, seem to rely heavily on 101 alone for whatever reason.

  65. Edward Heller February 10, 2017 2:29 pm

    Ron Hilton@64, Jefferson drafted the patent statute in 1793. That is where “new” and “compositions” were added.

    We all know that the 101 was substantially unamended from the 1793 version to the present. In 1952, Art was changed to process, but that was just a nomenclature change according to the congressional history.

    Our patent laws came out of England as affirmed by the Supreme Court multiple times. The English Statute of Monopolies authorized patents on new manufactures, but the English case law soon expanded this to include the art of making new manufacturers. When drafting the original patent statute, our drafters incorporated this English law development into our patent statutes. Art was so understood for very long time and commented on by Supreme Court in cases like O’Reilly v. Morse and Cochran v. Diener. Basically, an Art or process included new ways of making manufactures, which included, in U. S. law, making new machines, manufactures and compositions. This was extended by the Supreme Court in Bell Telephone to include processes that created telephone signals. They were also extended by the Supreme Court and by the Federal Circuit in cases such as Tarczy Hornoch to include machine processes. In this last iteration, we recognize that improved machine processes can include new or improved software in old computers.

    But is also true, that the Supreme Court, and the lower courts, have also consistently held that processes such as mental steps, mathematics, and business methods are not processes within 101, although the Supreme Court in Bilski made it clear that they were not categorically excluding business methods for at least the reason that there was no good definition of a business method.

    So it is not true that business methods (to the extent that we all agree what that means) fall within 101 simply because they are processes. Simply saying so, does not change reality and the history of 101.

  66. Paul Morinville February 10, 2017 2:30 pm

    Edward @62. Business method patents (whatever that means) are almost always tied to a machine. They cause the computer to do something specific. That something specific can make a multibillion dollar company. For example, a shopping cart made Amazon. Without it they could not sell. The Friend button made Facebook. Without it they could not create a social network. Page ranking made Google.

    I’m old enough to remember when these inventions happened (which means I’m over 40). The Internet was new. Websites were just a billboard with company information and little or no functionality except a counter at the bottom to tell advertisers how many people see the site.

    The folks who invented the consumer internet functionality (you would call business methods) we all now know were venturing off into an unknown world. (These inventors were not Amazon, not Facebook and not Google.) There was no way to know if any of these technologies would work or become commercially viable. The real inventors took BIG risks. Their inventions are impossible to hide – once seen they cannot be unseen and anyone could copy them if they became successful.

    Anyone could be a very wealthy corporation or someone connected to money (many serial entrepreneurs are closely connected to major VC money and can access it much easier than most people) who could take the market with their deep pockets and/or by leveraging existing markets.

    If there is not patent protection, the number of startups dwindles. I believe this is a key reason why there have been no real competitors to Facebook, Google, Amazon, eBay, and many other consumer internet companies. I believe that this is the real reason they fight business method patents so hard. They spend millions pumping up the “software in not invention” argument that you regurgitate here.

    The purpose of the patent system is not to create the next highly technical invention, it is to promote the progress. The war on business method patents has retarded progress and created monopolies.

    I think where we disagree is not on business method patentability. It is on the very purpose of the patent system and whether it is intended to create and perpetuate monopolies or not.

  67. Ron Hilton February 10, 2017 2:55 pm

    I stand corrected on the history. Some kind of language regarding novelty and utility have been part of 101 from the first patent act in 1790, even before Jefferson’s version. But it is still redundant with the other sections.

    The other interesting bit of history is that “process” used to be termed “art” which certainly would include the art of business along with any other useful field of human endeavor. The only reason an “abstract idea” fails the utility test is that it has not been applied in the real world. Give it a practical application, and it becomes patent-eligible.

  68. Edward Heller February 10, 2017 3:16 pm

    Paul@66, The purpose of the patent system is not to create the next highly technical invention, it is to promote the progress. The war on business method patents has retarded progress and created monopolies.

    I think where we disagree is not on business method patentability. It is on the very purpose of the patent system and whether it is intended to create and perpetuate monopolies or not.

    I have no disagreement about that patents are essential for small companies to start businesses without being squashed by their larger competitors. To a great extent, new Internet businesses expand the useful arts in ways entirely different than conventional machines, etc.

    Obviously, we all need to consider carefully your argument.

  69. step back February 10, 2017 4:02 pm

    Ed, you keep making excuses for the inexcusable actions of SCOTUS in Alice/Mayo.

    There is no rational underpinning for their fantasies about “generic computers”, “bulding blocks of ingenuity”, 2nd year engineering students or plucking leaves off the DNA tree. They are simply smoking amicus weed. And so are you.

  70. Night Writer February 10, 2017 4:16 pm

    Ed the Ned is it that a computer merely executes a business method (whatever that is), or is it that the technology enables new methods?

    We both know it is the second one and yet you keep pushing the first one. Is it time yet to see Ed the Ned’s hind side? What is clear is that Ed the Ned is unfit to hold any post that has to do with patents. He represents a throwback to Benson and R. Stern.

  71. step back February 10, 2017 4:18 pm

    Ed @60

    Your “business method” is pure smoke and mirrors.
    There is no definition of “business method” other than a circular one.

    I claim a new and improved MRI machine that is used in a radiology clinic operated for the sake of making money, said MRI machine comprising … blah blah blah

    It is still a “new and useful” machine per 101 and is statutory subject matter.

  72. Edward Heller February 10, 2017 4:22 pm

    step, there is a difference between knowing what the law is and why it is and agreeing and/or disagreeing with it. For the record, I strongly disagree/disagreed with the majority decision in Bilski because the Court there invented something entirely new in patent law, albeit seemingly old: Abstract. That left us all adrift for a very long time.

    As to Alice and Mayo, they are nothing new. They are the same analysis conducted by the courts for 150 years prior to State Street Bank, It all started in cases such as Le Roy v. Tatham and O’Reilly v. Morse. The Federal Circuit “panel” in State Street effectively tried to overrule the Supreme Court. That effort was not approved even by the full Federal Circuit which overruled it in In re Bilski.

    It is good to see these things in the perspective of historical analysis.

  73. step back February 10, 2017 6:39 pm

    They are the same analysis conducted by the courts for 150 years

    Nanoo Nanoo Ned, you join the Fib Fabulators Club along with Clarence the Clown. 150 years my behind. Show me the language in Le Roy v. Tatham where there is a 2 part test comprised of spinning the crystal shard on a string to see which direction the claim is “directed to” and then dunking the claim in witch’s water to see if it floats or it is “something significantly more” and thus sinks and drowns.


  74. step back February 10, 2017 6:43 pm

    All that aside, Le Roy v. Tatham is written by a bunch of Medieval throwbacks who knew nothing of modern science or the 1952 Patent Act.

    “… the originality did not consist in the novelty of the machinery, but in bringing a newly discovered principle into practical application, by which a useful article of manufacture is produced, and wrought pipe made as distinguished from cast pipe.” To this charge there was also an exception.
    The word principle is used by elementary writers on patent subjects, and sometimes in adjudications of courts, with such a want of precision in its application, as to mislead. It is admitted that a principle is not patentable. A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right. Nor can an exclusive right exist to a new power, should one be discovered in addition to those already known. Through the agency of machinery a new steam power may be said to have been generated. But no one can appropriate this power exclusively to himself, under the patent laws. The same may be said of electricity, and of any other power in nature, which is alike open to all, and may be applied to useful purposes by the use of machinery.”

  75. Edward Heller February 10, 2017 7:44 pm

    step, it is good that you read Le Roy v. Tatham. Principles and laws of nature in the abstract cannot be claimed, but patents are good for practical applications.

    Morse comments on Le Roy v. Tatham:

    “[T]he principles herein stated, were fully recognized by this court in the case of Leroy et al. v. Tatham and others, decided at the last term, 14 Howard, 156.

    It appeared that, in that case, the patentee had discovered that lead, recently set, would, under heat and pressure in a close vessel, reunite perfectly, after a separation of its parts, so as to make wrought, instead of cast pipe. And the court held that he was not entitled to a patent for this newly-discovered principle or quality in lead; and that such a discovery was not patentable. But that he was entitled to a patent for the new process or method in the art of making lead pipe, which this 118*118 discovery enabled him to invent and employ; and was bound to describe such process or method, fully, in his specification.”

    The more things change, the more they stay the same.

  76. Night Writer February 10, 2017 7:50 pm

    All is fixed with scope of enablement.

  77. step back February 10, 2017 8:28 pm

    Ed @75,

    Again sir, you demonstrate that you suffer from distorted history.
    Back in good ole’ 1852 (date of Le Roy v. Tatham) scientists were just barely coming to understand electromagnetism. (See below link)

    That the fuddy doodley SCOTeti of the day did not understand metallurgy (e.g. workings on metal alloys) comes as no surprise.

    That the fuddy doodley SCOTeti of today do not biotech or computer-tech (e.g. workings of a real computer, not one in the abstract) also comes as no surprise.

    That you keep pretending you have some rational underpinning for your position –well that does come as somewhat of a surprise.


  78. step back February 10, 2017 8:29 pm

    … do not understand biotech or computer-tech …

  79. Inventor Woes February 10, 2017 10:50 pm

    Ed does make good points though. He’s looking at the big picture from a historical perspective, as SCOTUS does. He reads like a jurisprudential scholar that understands how patent law works. He’s not incessantly complaining but providing rational analysis. Keep up the good work Ed!

  80. Inventor February 11, 2017 3:00 am

    step back@58
    re: “Congress did not authorize the USPTO to start implementing the Alice/Mayo framework.”

    Interesting point. Congress did pass AIA,which directs the setup of the PTAB, but I suppose you are correct, Congress did not create new law with Alice, SCOTUS did.
    Should SCOTUS have the ability to legislate from the bench (I don’t think so) and should the PTAB have implemented new procedures in response…probably not….so indeed Michelle Lee should be held accountable. ….just goes to show how important Trump’s appointment of the director of PTO will be.

  81. Inventor February 11, 2017 3:31 am

    Paul Morinville@66,
    If there is not patent protection, the number of startups dwindles. I believe this is a key reason why there have been no real competitors to Facebook, Google, Amazon, eBay, and many other consumer internet companies. I believe that this is the real reason they fight business method patents so hard. They spend millions pumping up the “software in not invention” argument that you regurgitate here.
    Good points. I agree.

    I would add that it has been my experience that the Big Tech invasion of government did not stop with buying Congress to pass AIA, using the main stream press to demonize patent assertion in the public opinion; using the Executive branch to influence SCOTUS, the balance of the judicial system, and to appoint Michelle Lee as director PTO……It appears, based on my experience, they have also infiltrated the NSF grant award program as well. I had occasion to apply for SBIR phase I grants with NSF in the area of Internet search. The panel of experts chosen to review my application seemed to be died-in-the-wool Google worshipers.
    The underlying theme for rejecting my effort to gain start-up funding was that Google already does it well enough, why bother. I resolved the one real issue that was raised and applied again for the next cycle, only to hear the same sad Google worship in the feedback from the reviewers. After reading about some of the projects that were approved, the political nature of this organization became apparent. I gave up at that point. Apparently Google’s revenue growth ($89.62B in 2016) has gone a long way to protect their business model from disruptive technology. Obama’s courting of and catering to Big Tech is only the most glaring example of that influence. The $150K they’re offering was not worth the continued up hill effort.

  82. step back February 11, 2017 5:41 am

    IW @79

    Nay nay Ned is no scholar or historian.
    Instead he is part of the New Spanish Inquisition movement which seeks to suppress science and rational thought within the collapsing American empire while consolidating wealth and power into the hands of an elite few.

    The original Spanish Inquisition had the same effect on 15th century Spain. Science and the Enlightenment were banned in Spain, leaving them to rot in their backward beliefs while the rest of Western civilization passed them by:


    Ned’s mission, and perhaps (perhaps) yours too, is to do the same for 21st century America. Clarence the Clown is merely an ideologically driven puppet of them who wish to advance the New Spanish Inquisition in America.

    The cat calls about trolls, innovation stiflers and monopolists is merely a replica of the witch hunting labels used during the earlier Inquisition. There is no rational, legal or scholarly basis for these tactics. It is pure school yard bullying and appeals to them who don’t have much of a critical thinking mind to begin with.

  83. step back February 11, 2017 5:49 am

    Note that the language of Alice/Mayo matches that of the institution of an Inquisition:

    We must launch an Inquisition into whether the claim is “directed to” the heresy of abstract fundamentalism and whether it possesses a “something more” which only we of the Inquisition can know of when we see it.

  84. Anon February 11, 2017 9:02 am

    I am convinced that “Inventor Woes” is a charlatan.

    What are the odds that the email used by that poster is a fake one?

  85. Anon February 11, 2017 9:08 am

    Mr. Heller’s continued “historical perspective” is one that simply fails to give full faith and credit to the intervening voice of Congress in the Act of 1952.

    An attorney – an ethical one – knows better than to misrepresent the law in their advocating efforts – even if those efforts are not directly in a court room.

    Mr. Heller continues to shame himself with his falsehoods and duplicity.
    More than that, he continues to attempt to cloud the actual state of law in pursuit of his known biases against business method and software patents, even has he attempts to hide his animosity towards the latter in this forum.

    Anyone can follow his long, repeated falsehoods and see quite clearly that he is pursuing an agenda not in accord with the current law as written by Congress actually is.

  86. Anon February 11, 2017 9:11 am

    Mr. Heller at 65 posts: “We all know that the 101 was substantially unamended from the 1793 version to the present. In 1952, Art was changed to process, but that was just a nomenclature change according to the congressional history.

    This is an unmitigated lie.

    There is no kinder way of saying it.

  87. Inventor Woes February 11, 2017 11:39 am

    step back @82

    The Spanish Inquisition? Clarence the Clown? Man you’re definitely losing it. You might need some anti-anxiety and anti-hallucination meds…

  88. Inventor Woes February 11, 2017 11:42 am

    Anon @84

    “I am convinced that “Inventor Woes” is a charlatan.

    What are the odds that the email used by that poster is a fake one?”

    Says the guy named “Anon.” Usually when someone’s argument starts to lose on the merits they resort to ad hominems. Guess someone didn’t study argumentative fallacy 101.

  89. step back February 11, 2017 1:01 pm

    Spanish Inquisition? Clarence the Clown? Man you’re definitely losing it.

    Seeing it more clearly. 😉


  90. Anon February 11, 2017 1:07 pm

    Inventor Woes at 88:

    Please educate yourself to the difference between anonymous and pseudonymous writing (very much welcomed by the Founders of this country) and the presentation of a false email (which is not even presented to the readers of the blog).

    As far as “losing an argument – you make an unfounded assertion. As far as the use of ad hominem, you too lose there as well. Not all ad hominem falls to the “argumentative fallacy 101” that you so glibly reference.

    The labeling of you as a charlatan is not merely “ad hominem.” You clearly have a particular agenda to broadcast, and you have no actual experience with innovation and the protection thereof.

  91. step back February 11, 2017 2:13 pm

    @89 continued …

    Clown leaders are all the rage now

    The more insane they are, the more appealing is their rhetoric.

    Clarence preceded the Donald. But both are clowns. Working for them that pull their puppet strings.

  92. step back February 11, 2017 2:17 pm

    @90 True that we have descended to the ad hominen level. But that started when Woeful himself labeled Ned the Sooth-negator as a “scholar and historian”.

    The history that is truly relevant here is that of repeated anti-science Inquisitions both in the early and late Middle Ages as well as now in our Post Modernistic epoch.


  93. Inventor Woes February 11, 2017 5:56 pm


    You’ve really got your panties in a bunch over this email thing. How do you know it’s not a real email? In the end it’s irrelevant anyways. Imagine the writers of the Federalist Papers listing their addresses along with their pseudonyms. That would have defeated the purpose. It’s like you love to contradict yourself. That’s very anti-logic and anti-enlightenment. But hey whatever floats your boat.

  94. Inventor Woes February 11, 2017 5:59 pm

    step back @92

    How is calling him a scholar an ad hominem? Guess I’m not schooled in the dark arts of rhetoric like you are. /sarcasm


  95. step back February 11, 2017 7:08 pm

    Your right. I guess I flunk my Latin exam. Should the fact that you came to praise Nedulous the Incredulous rather than to scold him make it an ob-hominem rather than an ad-hominem? 😉


  96. Inventor Woes February 11, 2017 7:12 pm

    I could have taken the low road and harped on Ed for working for a known troll, Alliacense, but I didn’t (that would have been an ad hominem). Instead I looked to his argument and found that he knows what he is talking about. While it is disturbing that he works for a troll, at least I did not commit the ad hominem fallacy.

  97. Anon February 11, 2017 7:23 pm

    Inventor Woes,

    Your feelings about Mr. Heller’s arguments aside, you still do not get the notion that using a pseudonym (even one named Anon) and using a fake email address are two very different things.

    You are a charlatan, hawking the anti-patent rhetoric that Mr. Heller has been spooning out.

    Your concern for my undergarments is rather misplaced.

  98. step back February 11, 2017 7:34 pm

    Whoa whoa.
    Hold on guys.
    The real issue at hand is whether there is any validity to what Nedulous the Incredulous says about SCOTUS decisions that took place back in the mid 1800’s; long before the 1952 Paten Act and long before modern scientific understandings emerged.

    Nedulous the Incredulous appears to say (but perhaps he should misspeak for himself) that the nonsense that the SCOTeti put out back in 1852 about “principles” and original motives, steam power and electrical power are still valid today. He appears to say that the pure bs that Clarence the Clown invented (in Alice) about fundamental building blocks of human ingenuity is valid in our post-modernistic era. He appears to say that we should not think critically for ourselves or speak critically of the nonsense actions of the SCOTeti with regard to inventions, inventors or the patent statutes.

    Etu Woeful?
    Do you say the same?

  99. Inventor Woes February 11, 2017 7:48 pm

    Ed is taking the more nuanced approach that defines how the law should be interpreted and applied. The principles that go back almost 1000 years through the common law. And resorting to name calling such as Neulous and Clarence the Clown just shows how low you have gone. I guess Michelle Obama was right: “When they go low we go high.”

  100. angry dude February 11, 2017 9:47 pm

    “Inventor Woes” is a troll

    Do not feed the troll

  101. Anon February 11, 2017 10:31 pm

    There is nothing “nuanced” about Mr. Heller’s approach.


  102. Stephen Curry February 12, 2017 12:41 am

    Inventor @57

    Mark Nowotarski found one patent written by Michelle lee
    US Patent No. 6,898,742
    My friend is friends with one of the inventors.

    You can ask Mr. Bilski why Michelle Lee did not list the patent she wrote and filed in the USPTO in her answers to the Senate Judiciary Committee. So here is public proof that Michelle Lee deceived the US Senators.
    We can not have the next USPTO Director nominee being untruthful to the Senate Judiciary Committee

    Now the question to Mr. Bilski (google’s former main outside prosecution counsel based in San Francisco Norcal) is…. why is Michelle Lee hiding from the Senate Judiciary Committee the patents that Lee wrote and filed in the USPTO. One possible answer is that those attorneys who were also involved in reviewing these patents in question is…. that they will tell the Senate Judiciary Committee that Lee will have allow numerous invalidations of patents under her USPTO watch (except in one example of IPRs against Finjan where Michelle Lee’s buddy is Head of Finjan Legal Department) and TC 3600 will be become even more notorious to patent applicants under her USPTO watch, effectively trying to Burn down the USPTO under her USPTO watch. Telling lies to the Senate Judiciary Committee is not to be tolerated or else future federal job nominees might be encouraged to do the same act of lying.

  103. Stephen Curry February 12, 2017 8:41 am

    Inventor @57

    This is really a great opportunity for the US Department of Justice to force Michelle Kwok Lee to be an adverse witness against google regarding lobbying efforts (and any other efforts to look at) adverse to the US patent system.

  104. Night Writer February 12, 2017 8:57 am

    @98: step back

    Step back is correct. The way to think about this is that Ed the Ned comes up with abstractions and then asserts that an invention is some abstract word. The word has some unknown meaning in the head of Ed the Ned and then he tells us a test to see whether a claim is this abstract word.

    And, we see the anti-patent judicial activist have no end to the number of abstract words that they generate.

    Plus, all you need is scope of enablement. I do think that it hasn’t been quite dealt with what do with a pure mathematical formula that is claimed by the person that invented the pure mathematical forumla.

    Also, Ed the Ned never answers the CRM question. Scope of enablement deals with almost every single problem discussed and is the proper way to think about the telegraph cases.

  105. Inventor Woes February 12, 2017 9:20 am

    @angry dude

    Ad hominems again? Nice…

  106. Stephen Curry February 12, 2017 10:01 am

    Inventor @57

    Here’s one more reason why President Trump needs to drain the swamp also filled by Obama.

    – is this another ground for a class action that patent owners and companies (with patents much “later” invalidated by PTAB) can think about, based on illegal federal job appointments ??


  107. step back February 12, 2017 11:57 am

    Woeful @104 and Nedulous the Incredulous @(wherever)

    You two (or is it a same entity?) should sign up for jobs on one of the post-modern Inquisition panels.

    The FUD-Father has promised to create many many great again jobs (believe Him) and yooze people appear to be imminently qualified for an Inquisition panel.

    Tip: If you want to pass the job interview, don’t just cite back to the 1852 Le Roy v. Tatham case where the FUD-dudd SCOTeti couldn’t grasp basic metallurgy. Go back to the 13th century fatwa against science. That was a truly glorious time for “Inquisitive” minds if you know what I mean …


  108. Inventor February 12, 2017 2:59 pm

    Steven Curry@105,

    First time I had seen this article. Excellent article although from 2013.
    The main point being that Obama back-doored Michelle Kwok Lee into place.
    Obama appointed her as deputy director, not as director; even though the director spot was open for over a year. She became defacto director but avoided Senate confirmation, explaining her role at Google, her view on patents.
    Author Bruce Berman, called it well…..too bad no one was listening in 2013.

    Let’s hope Trump is not also sucked into the black hole lead by Google.

    See the excerpt below – this implies Obama was led astray….Today we know that Obama knew exactly what he was doing – based on how he has actively courted Big Tech CEOs, with hand out.

    While Google may be the definitive search engine its patent policies are designed to promote its own agenda, not the future of innovation, inventors or other businesses. It is the job of the President and Congress to refrain from partisan politics and keep a watchful eye on potential conflicts of interest, or their appearance.
    The questionable appointment of Ms. Lee after more than a year without a USPTO Director, and without the Senate’s approval, may very well cement Mr. Obama’s legacy as the anti-patent/ anti-innovation President, and one too easily lead astray.

    Appointment & Timing of “Deputy” USPTO Director Disturbs Many
    December 18, 2013 by Bruce Berman 2 Comments
    By naming former Google IP Chief Michelle Lee Deputy Director the Obama administration has tipped the patent scales in favor of tech businesses with special interests.

  109. Stephen Curry February 12, 2017 4:21 pm

    Inventor @ 108

    Here are the members of the Senate Judiciary Committee. Senator Christopher Coons is a member of the Senate Judiciary Committee


    So what that means is Senator Coons can tell the other Senate Judiciary Committee members that Michelle K Lee previously deceived (was untruthful to) the Senate Judiciary Committee.

    Here’s another patent application (U.S. Application No. 09/249,935 now US Patent 6,636,993) written by Michelle Lee hidden from the Senate Judiciary Committee. I noticed it from Michelle Lee’s USPTO filed application that issued as US Patent No. 6,898,742 which was found by Mark Nowotarski.

  110. Stephen Curry February 12, 2017 4:49 pm

    Lee is good at sugar-coating the AIA/PTAB but she does not understand the role of patents/publications in a free enterprise system.

    What law firm did Michelle Lee come from anyway? really bad training she got it highly seems



  111. Inventor February 12, 2017 7:57 pm

    Stephen Curry@109,

    I looked up the patent you say was “written by” Michelle Kwok Lee (e.g. 6,636,993) in the uspto database. I find the following:
    Inventors: Koyanagi; Yoichi (Cupertino, CA), Schober; Richard L. (Cupertino, CA), Sastry; Raghu (Santa Clara, CA), Tamura; Hirotaka (Atsugi, JP)
    Assignee: Fujitsu Limited (JP)
    Family ID: 22945636
    Appl. No.: 09/249,935
    Filed: February 12, 1999

    I did find her signature on the some of the paperwork filed with the uspto during prosecution of the application for what became patent 698742 patent. Specifically I used Public Pair (unregistered) and it appears she may have been the attorney representing the inventors and/or Fujitsu. Is this what you meant by “written by”.

    If not, what exactly do you mean when you say “written by”.
    Did she write the claims, given the spec?

    Also do you know specifically what question she was asked by the Senate Judiciary Committee (when it’s alleged that she lied); and what her answer was?
    Sorry if I missed this in a previous post.

  112. Stephen Curry February 12, 2017 8:54 pm

    Inventor @111

    Michelle K. Lee failed to disclose the patents and amendments that she wrote and filed in the USPTO per item #12 in this document that she submitted to the Senate Judiciary Committee. Lee seems to have written a lot of blogs in the USPTO website though that she disclosed. As USPTO Deputy Director when Lee submitted this document to the Senate Judiciary Committee, Michelle Lee, of all people, knows she wrote patents and amendments that she filed in the USPTO.
    If President Trump renominates Michelle K. Lee as USPTO Director or Federal Judge, then the Senate Judiciary Committee should know that Michelle Lee was untruthful to the Senate Judiciary Committee.

    My sources told me that Michelle Lee wrote and filed another patent now owned by Hewlett Packard when David Hayes was her superior as head of IP practice group and this patent was not disclosed to the Senate Judiciary Committee and another amendment for another patent owned by Hewlett packard also was not disclosed to the Senate Judiciary Committee. Busted.

    Mark Nowotarski found another amendment Lee wrote and filed in the USPTO and not disclosed to the Senate Judiciary Committee in US Patent No. 6939014

    In Items #15 and #16 of the document submitted to the Senate Judiciary Committee, Lee failed to list her legal activities and legal proceedings involving Mr. Bilski (google’s former main outside patent prosecution counsel and articles contributor in IP Watchdog) and her role in google’s failed acquisition of the nortel patents.

    By the way Inventor, in my stealth mode high technology startup, I am naming one of my invented products currently under development as Bilskis Blob as a Very Public reminder of Michelle Lee’s failed attempt to burn down the American Patent System under the pretext of improving patent quality.

  113. Inventor February 13, 2017 12:47 pm

    Stephen Curry@112
    Long live the Big Bilski’s Blob!
    I wish you luck with your startup. I may too resume my internet search related effort if the assault on US patent law subsides.
    I think it would be important information that MKL should have provided to Senate Judiciary Committee, but not sure it rises to the level of perjury.
    She does list a lot of stuff and would likely just claim she forgot about the stuff she did not list.
    Also she seems to be quite the poster child for revolving door employment …. USPTO–>Google–>USPTO.
    Lock her up! lol

  114. Stephen Curry February 13, 2017 1:17 pm

    Inventor @ 113 point taken.

    However, Michelle knows darn well that her written US Patent 6,636,993 is what convinced the googlers to give her the job as google’s first patent counsel on her way to IPO riches. So it is kinda hard to believe that Lee forgot that she wrote US Patent No. 6,636,993, she’s not that idiotic, just on other items about life.

  115. Stephen Curry February 14, 2017 6:21 am

    Inventor @ 113 Thank you for your well-wishes in my stealth hi-tech startup. Best of luck on your possible start-up as well.

    With General Flynn in the front news, would it not be funny if President Trump nominates Michelle K. Lee as the next USPTO Director, and all the Trump haters will find out in IP watchdog that Lee lied to the Senate Judiciary Committee regarding patents written by her and USPTO filed, and hiding/omitting from her document answer to the Senate Judiciary Committee regarding her agency legal work before the USPTO as carried out by her and her former main outside patent prosecution counsel Mr. Bilski of San Francisco, and the Press would have a field day and IPWatchdog will be headline news in CNN.

  116. Inventor February 14, 2017 6:55 am

    It would be funny, but I would prefer that President Trump nominate wither Rader or Johnson, send MKL packing and cut to the chase….clean up the red-PTAB-tape of regulations at the USPTO and put US patent law back on a level playing field…soonest.
    I for one am willing to forego the entertainment you described for some good olde justice. Post haste Mr. President, please.