Is Brookings Pushing an Efficient Infringer Narrative with Biased Panel Discussion?

By Steve Brachmann
December 13, 2017

The Brookings Institution will hold a panel discussion today, December 13th, titled Advancing U.S. Innovation by Reforming Patent and R&D Policy. The policy forum, part of Brookings’ Hamilton Project for producing evidence-based policy proposals designed to promote economic growth, will supposedly look at current challenges caused by rules governing intellectual property and how current policy often impedes innovation rather than promoting it.

The trope that IP policy impedes innovation is heavily used among members of the efficient infringer lobby as they continue to call for further reforms to weaken the U.S. patent system while protecting their own vested interests. Calls for “balanced patent policy” to create a more level playing field come from entities such as the High Tech Inventors Alliance, a lobbying organization freshly minted this July to represent a collection of major tech firms who have pushed for legislation that would further undermine patent ownership in this country. They also come from panel witnesses appearing before committees of the U.S. Congress, some of whom give testimony which cannot be backed up by anything in the public record.

Unfortunately, there’s every indication that today’s event at Brookings will feature more of the same kind of misguided rhetoric on perceived issues with the patent system which don’t truly exist. The evidence for this starts with the moderator for the day’s final roundtable discussion, titled Realigning Incentives to Increase Patent Quality. The moderator for this discussion will be Tim Lee, senior reporter of tech policy for Ars Technica. Lee has written in the past on the effects of “ridiculous patent litigation” and has given space to viewpoints which want to limit patentability in certain sectors, such as in business methods. Lee has also been very critical of appellate court decisions in patent cases in recent years to the point that assertions he’s made on case law regarding the patentability of software inventions border on the ridiculously absurd. This individual, who has a clearly anti-patent viewpoint, will be controlling the discussion during the final panel roundtable on patent policy.

There is research out there which suggests that the world of tech media and news pushes subjective narratives more often than business or general news publications, further raising doubts as to whether Lee can sustain a principled discussion of U.S. patent policy as roundtable moderator. A media survey released this past summer by the Center for IP Understanding (CIPU) found that nearly 90 percent of news coverage on patent infringement stories which uses the term “patent troll” shows signs of high subjectivity, and tech publications like Ars Technica use the term twice as often as either business or general news publications. (Disclaimer: The author of this article is the main author/researcher of the CIPU media survey.)

Anyone who was hoping that there would be some balance among the various viewpoints contributed by the other panel participants would be sorely disappointed. One of the panel participants will be Edward J. Black, president and CEO of the Computer & Communications Industry Association (CCIA) since 1995. CCIA has regularly lobbied for positions which serve members of the efficient infringer lobby to the detriment of patent owners. They’ve publicly misrepresented the Federal Trade Commission’s (FTC’s) patent assertion entity (PAE) study released in October 2016, calling it a “patent troll study.” The language of the FTC’s own report contemplates the use of the term “patent troll” as prejudicial regarding the societal impacts of a particular business model of patent monetization, though that hasn’t stopped seemingly reputable news outlets like Fortune from making the same mischaracterization.

Other areas of the patent reform debate which the CCIA has attempted to influence concerns proper venue in district court infringement proceedings. CCIA was quite supportive of the U.S. Supreme Court’s decision this May in TC Heartland LLC v. Kraft Foods Group Brands LLC and Black personally stated that the Supreme Court’s decision could curb “venue shopping” and Black again equates PAEs and patent trolls in a Huffington Post piece published on the case last December. In that piece and another CCIA blog post following the Court’s decision in May, Black trots out an oft-debunked figure on the supposed $29 billion in annual costs which “patent trolls” place on American businesses. Further, CCIA is part of the group of patent system stakeholders which have caught apoplexy over the patent arbitrage deal made between Allergan and the St. Regis Mohawk Tribe, having recently filed an amicus brief with the U.S. Patent and Trademark Office on the sovereign immunity defense being pursued by the tribe at the Patent Trial and Appeal Board (PTAB).

Although Black seems to be particularly biased among members of the panel, it doesn’t appear certain that other members of the panel have the ability to correct any distortions existing in the roundtable dialogue. Another panel participant is Melissa Wasserman, law professor at the University of Texas at Austin. She co-wrote a paper with Duke Law School professor Michael Frakes and published in 2015 which reinforces much of the efficient infringer narrative that the USPTO is granting bad patents, a pretty subjective claim given the fact that it’s very difficult to define what a bad patent is. Also, the argument pushed by Frakes and Wasserman that the USPTO is incentivized to grant more patents than it should to collect fees seems to take the patent prosecution process, which can take many years and involve multiple rejections, a little lightly to say the least. In any event, the fact that the co-authors dubbed their research as a “quasi-experiment” is a good indication that they might not take the empirical nature of their own research all too seriously.

Finally, the panel includes Lisa Cook, associate professor of economics and international relations at Michigan State University. Although her resume indicates that innovation is one of her current research areas, there’s no clear indication that she has a good deal of experience in patent policy. She does have a good deal of experience serving at Harvard University, a college which has published blatantly anti-patent analysis in the recent past, so she could be of a certain pre-informed opinion.

It’s really sad to note but it does appear that the anti-patent smear campaign being perpetuated by the efficient infringer cabal has come home to roost at an unexpecting Brookings Institution. In early July, The Wall Street Journal ran an article exposing Google’s vast campaign to influence academic research on various policy matters, including patents. It’s also not as if Brookings is above the potential taint of paid influence as a New York Times article published in August 2016 detailed how Brookings worked with various corporations donating money to Brookings to deliver policy results.

The Author

Steve Brachmann

Steve Brachmann is a freelance journalist located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He writes about technology and innovation. His work has been published by The Buffalo News, The Hamburg Sun,,, Motley Fool and Steve also provides website copy and documents for various business clients and is available for research projects and freelance work.

Warning & Disclaimer: The pages, articles and comments on 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 Read more.

Discuss this

There are currently 49 Comments comments.

  1. Anon December 13, 2017 9:56 am

    It’s 1984.


    Or is that “still?”

  2. angry dude December 13, 2017 10:05 am

    same sh1t different day
    black is white and white is black and blah blah blah
    who pays salaries to those “scholars” ?

  3. EG December 13, 2017 12:14 pm

    The Brookings institute is nothing more than a mouthpiece for the efficient infringer lobby, as well the anti-patent law academia that include Bessen, Meurer, Lemley, Feldman, Chien, amongst others. I’m still waiting for this group to provide any reliable and unbiased factual evidence, study, etc., that shows patents “impede innovation rather than promoting it.”

  4. Ron Katznelson December 13, 2017 4:54 pm

    The post above deals with the parties involved and their agendas but not with the substance and premise of the Report’s content. It is also important to examine the substantive “proposals” involved. The Report is not only a one-sided proposal – it is a pernicious blueprint for killing the patent system using stale counterfactual rationales that have long been debunked. The “proposal” includes three components:

    1. Eliminating “Patent Office’s incentive to grant invalid patents.” Frakes and Wasserman propose to do this by shifting all PTO patent production costs (nearly $5,000 per application), to upfront fees paid prior to the patent issuance – including for those who receive no patent after examination. According to their reasoning, when filings go down, the PTO ups the issuance rates to maintain the revenue stream – and those decisions are somehow made without regard to the merits of a given case. First, the authors’ paper describes no administrative mechanism inside the PTO that actually works in the direction they hypothesize. It rather shows ignorance of the real workings of the PTO and the way examiners are “incentivized” – examiners get the same credit for final rejections as they do for allowances. Moreover, during the period of the data analyzed, examiners were subject to penalties for excessive erroneous allowances but not for erroneous rejections (which were not really measured), a mechanism that operates contrary to their PTO funding “throttle” theory. Collecting fees post issuance rather than upfront could have had no effect on allowance rates and the authors have pointed to no mechanisms in management control that was allegedly at play in pushing for more liberal allowance policies.

    The proposal would double what Congress intended the mix to be for upfront fees when it instituted the maintenance fees system in 1982 to fund the PTO fully from user fees. See Slides 5-9 in my 2012 PPAC presentation in opposition to even a milder “front-end fee loading” trend proposed by the PTO, to suppress filings. . The PTO’s front-end fee loading share is already the highest in the world, having been second to the highest in 2012. See Slide 9. As my PPAC presentation explains, maintaining low front-end costs and shifting them to maintenance fees (i) enables applicants to defer patenting costs until they achieve commercial success – supports startups; (ii) provides low cost opportunity for discovering inventions that are worth investing in; (iii) casts a wide prospecting net on many more innovations;(iv) fosters more disclosure – even from ultimately-unsuccessful applicants; and (v) maintenance fees provide stronger incentives for early termination of useless patents – reduces IP barriers for others.

    2. Increasing examiner time. This would be laudable but it also means increasing user fees. But make no mistake – this too is designed to suppress filings in the guise of “patent quality.” The PTO can improve examination quality substantially by training and enhanced supervision efficacies using current resources. PTO examination cannot be error-free given fixed resources. As I explain in my comments to PTO at, Congress was mindful of the importance of making the patent system affordable to all.. Congress has determined the desired balance between patent acquisition costs and examination error rate by setting fees at the level set by statute in 35 USC 41. Turning our patent acquisition costs to those of Europe will only harm – not improve – American innovation.

    3. “Limiting repeat applications”. This is euphemism for limiting continuation and divisional applications – an effort to deny patent protection to inventions disclosed but not initially claimed in the original applications. This is a throwback to attempts in proposed legislation by Rep. Issa in 2005 that was shot down; attempted again in rulemaking by the PTO in 2007 and was struck down by the courts in the Tafas case. The reason for increased share of continuations in patent filings is not due to abuse but rather due to product lifecycle contraction and the patent scope erosion. See Ron D. Katznelson, “Patent Continuations, Product Lifecycle Contraction and the Patent Scope Erosion. – A New Insight Into Patenting Trends.” Southern California Law Associations Intellectual Property Spring Seminar (2007). . Curtailing continuations and divisions is a direct assault on the American patent system.

    These proposals must be rejected in full. Here, academic economists are wading into the intricacies of the patent world, based upon a faulty hypothesis, drawing ill-informed conclusions to support that hypothesis, and proposing administrative solutions that are extremely harmful.

  5. Edward Heller December 14, 2017 8:19 am

    For my observation, the other side has been controlling the dialogue for a very long time – leading up to the AIA, and since. While we in the patent community not beholden to the efficient infringement powers have been making our arguments, they have largely been ignored until the issue of the constitutionality of IPR was taken up by the Supreme Court of the United States of America. The briefing showed just how damaging IPR is to the patent system. It also shows the split between those who rely on patents for the businesses and those who rely on efficient infringement for their’s.

    We can never match the power and influence that money brings to the table. But we can match that influence thanks to the Supreme Court of the United States that is there to help when the other side goes a step too far.

  6. Curious December 14, 2017 8:58 am

    There is no question that Ars Technica is in the hip pocket of the efficient infringers. Then again, why wouldn’t they be? Companies like Google are the lifeblood of Ars Technica — they need the access. Ars Technica kowtows to the likes of Google every day and twice on Sunday. Google et al. knows it. Ars Technica knows it.

    Unfortunately, most of Ars Technica’s readership doesn’t know it, and they assume that Ars Technica is giving them a balanced view of the patent process.

    I read an interesting article in the NY times a few weeks back —

    It had this great quote talking about Facebook and how they copy Snapchat’s features:
    But Snap’s pivot is more than a necessary business move. It’s an indictment of our current tech landscape, and a warning sign for other start-ups hoping to take on the largest internet companies on their own terms. If a wildly creative company with an app used by 178 million people every day can still be crushed by Facebook, how is anyone supposed to succeed.

    However, this is the tech world we live in. We have the likes of Ars Technica telling the tech world that patents are ruining it for small startups. However, the reality is that patents are the only things that could have protected Snapchat’s (or any startup’s) distinctive features.

    This quote is also from the same NY Times article:
    Facebook and Instagram, which is owned by Facebook, have been trying to copy Snapchat out of existence for years, and they might be succeeding.

    PATENTS ARE WHAT ALLOW SMALL PLAYERS TO COMPETE WITH THE BIG PLAYERS. <– this is why all the big tech players are trying to neuter the US patent system. You won't read anything like that out of Ars Technica. Had Snapchat invested in patent protection and had the US patent system not be neutered over the last decade or so, Snapchat would have a fighting chance.

  7. Curious December 14, 2017 9:16 am

    For my observation, the other side has been controlling the dialogue for a very long time – leading up to the AIA, and since.
    Just remember Ned — many of us consider you to be on “the other side” when it comes to your positions on the patentability of software. You only came to “our side” when IPRs were targeting all technology — including the technologies that you were concerned about.

    I am reminded of the bargain that Neville Chamberlain made. Perhaps you thought that “the other side” only wanted to eliminate software patents. However, I have no doubt that “the other side” won’t be happy until patents on all technologies are rendered useless — this result ensures that the patent system won’t harm their oligopolies.

    Ned — you wrote tens of thousands of words as part of “controlling the dialogue” for “the other side.” That will not be forgotten. I hope, you were at least advocating for the benefit of a client.

  8. Edward Heller December 14, 2017 9:22 am

    Curious, I do not see the issue of patenting “business methods” to be an important issue for the small inventor or the startup. Patenting software that actually improves machines is quite another thing altogether. That is why I think Versata was wrongly decided.

    I can only hope that you and others will eventually listen to me because you know that I do not have an efficient infringer agenda behind my words.

  9. Anon December 14, 2017 9:53 am

    Mr. Heller,

    I not only second the words of Curious but would also point out that your continued tactics in advancing the agenda of anti-business method and anti-software*** CONTINUE unabated across many forums.

    That sheepskin you wear does not hide your actions (in toto).

    ***even as you indicate that you “feel” that some software may be eligible, your larger – and actual – writings on the topic do NOT measure up

  10. Edward Heller December 14, 2017 9:55 am

    anon, no not confuse and conflate my stance against business methods with any anti-software bias. Software does improve computers and if the software itself is claimed, I think it should be patentable subject matter.

  11. angry dude December 14, 2017 10:36 am

    Edward Heller @10

    “Software does improve computers”

    Statements like this play into hands of anti-software patent activists

    Software IS a (special-purpose) computer when executed. Period.

  12. PTO-Indentured December 14, 2017 11:10 am

    No Comparison:

    Systemic loss/demise attributable to evident dismal performance of the US patent system under AIA


    Actual (proven) loss attributable to alleged ‘patent troll’ cases occurring on occasion.

    Or seen another way: proven US innovation according to pre-AIA rules vs AIA (patent-death) rules.

    The next lever to further neutering the PTO and US innovation? Getting folks to believe so-called ‘bad’ patents can simply be replaced with ‘perfect’ patents.

    Why, who wouldn’t want such a perfect thing?

    Where each perfect-patent survives AIA/PTAB/so-called BRI/IPRS/Serial IPRs. Where perfect-patents get proven ‘valid again’ by millions of $ in defense. Where years of a patent’s life get eaten up in the process. Where oodles of efficient infringement occurs in the meantime–unless and until a case is actually decided such that any claims with real teeth remain. Oh…and where there’s a good chance attorneys’ fees end up being payable by the patentee.

    Voila! Perfection!

  13. angry dude December 14, 2017 11:47 am


    I have advocated for years (Gene can confirm) that examiner’s time spent on each (hi-tech) patent application should be drastically increased with the accompanying increase in PTO examination fees (at least by 2-3 times but even 10 times is OK with me – my patent is not for math challenged examiners)
    However, knowing how US federal government works from inside out I have strong suspicion that this increase in examination time WILL NOT be reflected in the “quality” of resulting work: properly searched for prior art, examined and granted US Patents
    The swamp must be drained first.
    Right now the rest of the world is laughing at the USPTO systematically undoing large percentage of work they did in the first place. Utterly ridiculous and extremely detrimental to the economic (and moral – by breaking trust in government institutions) health of this country.

  14. Edward Heller December 14, 2017 4:27 pm

    Software IS a (special-purpose) computer when executed.

    Strongly disagree.

    Is this kind of definition that attempts to define software in a way that allows the patenting of business methods and the like. It creates opposition not only by people who do not like business methods, but also by the courts. It is, I think, partly why no one in Congress really wants to listen to us about the PTAB and other serious problems with the AIA. First they hear a complaint about IPR. Next they hear a complaint about Alice. Then they stop listening.

    A business method run on a computer is not a new machine or a machine process. Neither is software that has nothing to do with computer processing, the use of computers in processes that pass the MOT or in larger apparatus.

    Moreover, 101 is not simply about newness and utility. It is also about the four classes: machines, manufactures, compositions and processes; and the latter are the kind of processes that describe a machine operation or that make one of the other classes. Broadly, the MOT, even though the Supreme Court did not approve of that test as exclusive.

  15. Joachim Martillo December 14, 2017 4:51 pm

    Edward Heller@December 14, 2017 9:55 am

    Does software invariably improve the computer as a machine? I did a lot of work on Emacs (a extremely flexible unimode text-editor) back in the middle 80. Emacs improved my computer environment tremendously, but I could not assert that Emacs made my microVax II better as a machine.

  16. Anon December 14, 2017 6:16 pm

    the use of computers in processes that pass the MOT or in larger apparatus.”

    Pure balderdash.

  17. Anon December 14, 2017 6:16 pm

    or that make one of the other classes

    Even worse balderdash.

  18. angry dude December 15, 2017 9:27 am

    Edward Heller@14

    It remains to define what “business method” patent is… ultimately all patents are about business

    Is famous RSA patent on public key cryptography algorithm a business method patent ?

    Absolutely, if used in context of any e-commerce application

    And does it even comply with MoT test ? Most certainly no, unless of course it’s implemented purely in hardware

    You are on a slippery road, dude, which leads nowhere

    “Anything under the sun that is made by man” – that’s what it should be, nothing more and nothing less

  19. Anon December 15, 2017 11:30 am

    ultimately all patents are about business

    Not only is this directly true, but “business” itself has LONG now been subject to the “scientific method” (well since the days of Deming) and is fully within the scope of utility as envisioned by the US Sovereign scope of patents (the Useful Arts).

    It is beyond strange to see the contortions by those with a penchant AGAINST “business methods” and the alignment between the arguments made by those who are anti-business method patent with those that are anti-software patent and those that are simply anti-patent are unmistakable.

    It is in this type of regard, Mr. Heller, that your “allegiance” draws the wary eye.

    Sure, there are aspects now that “bug you” as to the fruits of earlier anti-patent efforts, but make no mistake – you have fingerprints not only on those earlier efforts (for example, prior user rights), but your continued crusades against types of patent coverage align you more often than not with the anti-patentists.

  20. Edward Heller December 15, 2017 12:06 pm

    I think there is no doubt that the reason Supreme Court did not categorically bad business methods is that there is no good definition of what a business method is. But what happened? Arguably something worse: abstract.

  21. Anon December 15, 2017 1:08 pm

    Mr. Heller,

    That you do not recognize (apparently) the dysfunction involved with the Supreme Court and their “Gist/Abstract” sword (instead seeking to ‘blame’ business methods is one of the reasons why your “recent conversion” is looked upon warily.

    Your remaining agendas are not pro-patent agendas.

  22. Curious December 15, 2017 1:09 pm

    Curious, I do not see the issue of patenting “business methods” to be an important issue for the small inventor or the startup.
    Then you need to get out and see where people are innovating.

    The barriers to entry for improving “hardcore” technology have gotten a lot higher. You aren’t going to see many “garage inventors” in the field of semiconductors. Also, it is really hard to break into software that runs the backbone of the internet. Where there is a lot of development — by men and woman out of their proverbial “garage” or coffee shop as the case may have it — is at the user interfaces. These people are creating the tools that the average person is using to improve their life — and the type of tools that the likes of you and “the other side” have been trying to deny patent protection for years.

    Oh … and I forget … after many, many years of asking, we still don’t have a definition of “business method” to work with.

  23. Curious December 15, 2017 1:26 pm

    Moreover, 101 is not simply about newness and utility. It is also about the four classes: machines, manufactures, compositions and processes
    You always seem to forget about the “or any new and useful improvement thereof.” Software is an improvement to a machine. Also, when claimed as such, software is also a process.

    Regardless, I see that you are firmly back pushing the agenda of “the other side.”

    It is, I think, partly why no one in Congress really wants to listen to us about the PTAB and other serious problems with the AIA. First they hear a complaint about IPR. Next they hear a complaint about Alice. Then they stop listening.
    And you thought appeasement was going to work? Oh … I toss software to the wolves and they’ll be happy. The SAME people who have been advocating eliminating software patents also want to eliminate ALL patents. First they went after so-called business methods. Next they are going after biotech and software as a whole (regardless of whether or not it improves a computer or not). In the end, they want all patents gone (or effectively neutered).

    What you fail to appreciate is that once “the other side” was able to convince the Courts to carve off a slice of patentable subject matter from the whole, it becomes a lot more easier for the Courts to continue to do so. In one of your favorite cases, Benson, SCOTUS started the nibbling. After Bilski, the bites became bigger. However, after the Federal Circuit decided to ignore the warning from Alice about “tread[ing] carefully in construing this exclusionary principle lest it swallow all of patent law,” the biting has become wholesale devouring of vast classes of subject matter. Once you can justify playing favorites in one instance, it becomes much easier for the Courts to start playing favorites in other instances.

    The term “slippery slope” gets overused in the law (and elsewhere) but it applies here. Once the anti-patent people were given a voice, they weren’t going to stop at just “business methods.”

  24. Edward Heller December 15, 2017 1:44 pm

    Curious, I do not “always” forget about improvements.

    Also, things went South with Benson with software. Considering Benson and Flook, State Street was wrongly decided. Bilski was a correction. Alice followed Bilski and adopted the Mayo “test,” which is simply, Hotel Security.

    These are facts.

    What you are trying to do is overturn 45 years of precedent by essentially arguing the same issues that have already been settled. If there is something to be done, it is Congress that has to do it.

    And do not say that I do not agree that software can improve computers. It can. But computers running software where the invention is not in the software but in the math or business method, then allowing such claims is effectively the same thing as allowing a patent on the math or business method per se.

  25. Anon December 15, 2017 2:22 pm

    Mr. Heller,

    Your “facts” are not facts – and belies the FACT that the Supreme Court is out of control when it comes to patent law (specifically, the law of 101 as written by Congress).

    As noted, you are NOT on the “good side” of the pro-patent fence, no matter the small arguments that you may make as far as patents as property go.

    Your other agendas simply are of the anti-patent camp.

  26. Edward Heller December 15, 2017 2:28 pm

    anon, the Supreme Court is not “out of control.” Without the Supreme Court, we would be in a world of hurt as big money would be able to call all the shots.

  27. Anon December 15, 2017 4:31 pm

    Mr. Heller,

    As should be noted (and as noted by myself in particular) the attacks on the patent system come from more than one philosophical angle.

    You “concern” yourself with but one of those angles (“big money,” or as I have labeled them variously as the Efficient Infringer group, Big Corp, or The Right (not to be confused strictly with the political “Right”).

    You clench tight your eyes though to the OTHER attacks on the patent system.

    Of this other side that attacks the patent system (of which, I have labeled as The Left), one of the principle attackers has been the Supreme Court.

    That you fail to note this (much less recognize this AND think that the Supreme Court is some type of “safeguard” only goes to show how out of touch you are – and EXACTLY WHY you are viewed with skepticism when it comes to being “pro-patent.”

    You simply cannot talk your way out of being viewed in a manner in which your talking has put you in.

  28. Edward Heller December 15, 2017 4:43 pm

    anon, the “left” has not held the Supreme Court for a very long time.

    However, the divide between left and right on the court is a divide between those who favor government over property and those who favor the latter over government. The left is populated on the court by guys like Oren Bracha, Harvard, who the left cites most often in Oil States as stating that patents are mere instruments of government policy and are basically revocable privileges – public rights.

    But with big-money, the little guy never has a chance. At least they have some chance with the Supreme Court, which for a very long time now is had Republican majority on the court.

  29. Anon December 15, 2017 6:01 pm

    Ned – my “Left” – much like my “Right” should NOT be confused with a strict sense of political left or right.

    Your attempt here at “big-money=no chance; but some chance with Supreme Court” only goes to show that you simply do not appreciate the damage that the Supreme Court has done.

    This remains an error on your part – as well as a reason why you are NOT looked upon as a pro-patent person.

    As I indicated, there ARE aspects of which you lean towards being “pro-patent” (for example, property versus public rights). But make NO mistake, you and your gestalt remain on the anti-patent side of the ledger.

  30. Edward Heller December 15, 2017 6:26 pm

    Anon, the recent Supreme Court has done “no” damage except perhaps in eBay. There it was the concurring opinion of Republican Justice Kennedy that did the damage.

    You do recognize that there is a problem that we all face here. The left is pro-government and anti-property. Most the Republican Party favors big business and therefore would tend to favor the efficient infringer. The only Justices we could count on in recent years was Justice Scalia, and now perhaps Justice Gorsuch.

    But Congress, regardless of ideology, pays attention virtually only to getting reelected, an that means they have to kowtow to big business.

  31. Anon December 15, 2017 7:19 pm

    Anon, the recent Supreme Court has done “no” damage except perhaps in eBay.

    That is an indefensible statement.

    You have hung yourself with your own rope.

  32. Curious December 15, 2017 11:13 pm

    If there is something to be done, it is Congress that has to do it.
    They did — see 35 USC 101. It was the Courts that couldn’t leave it well enough alone.

    But computers running software where the invention is not in the software but in the math or business method, then allowing such claims is effectively the same thing as allowing a patent on the math or business method per se
    Again … we still don’t have a working definition of “business method.” Of course “the other side” is perfectly happy with that because if you draw a hard and fast line then you cannot redraw it, and “the other side” wants to continually redraw that line.”

    Regardless, I have yet to see the harm from “allowing a patent on the math or business method per se” that is any different from the harm from allowing a patent on any other human-created endeavor.

    Without the Supreme Court, we would be in a world of hurt as big money would be able to call all the shots.
    LOL … who do you think is benefiting from the likes of Ebay, Bilski, KSR, Alice, Mayo? It isn’t the smaller guys. What world are you living in?

    The left is pro-government and anti-property. Most the Republican Party favors big business and therefore would tend to favor the efficient infringer.
    That’s the problem — both the left and the right have incentives to favor infringers over inventors — and you say “the recent Supreme Court has done ‘no’ damage except perhaps in eBay.”

    The only Justices we could count on in recent years was Justice Scalia, and now perhaps Justice Gorsuch.
    Huh? My read on Scalia was that he was probably the most anti-patent of the conservative wing of SCOTUS.

    I’m sorry Ned, but anybody who has agreed with MM as much as you have in the other blog is not going to get any respect from those of who are looking to protect all patent rights — without reservation. You made your bed a long time ago — you were pushing the Google et al. agenda for the longest time. Google (and many of the other tech companies) are so large and so expansive in their scope that all patents are a danger to them. The AIA and IPRs are their baby, and the likes of you helped birth it.

  33. Anon December 18, 2017 10:10 am

    Mr. Heller,

    Further to my blunt reply at 31, the invitation to you here was for you to recognize WHY you are viewed as being anti-patent. It was not an invitation for you to defend a view that your stances on other matters is somehow “pro-patent.”

    You fail to recognize just why your views bring the anti-patent label, and that is part and parcel of your problem.

  34. Edward Heller December 18, 2017 2:09 pm

    Anon, you do not get to define who is pro-patent and who is anti-patent. People who do not agree with you are not necessarily anti-patent if what you believe in is complete nonsense.

    I am simply a conservative. I believe in the system we inherited from England because it worked. I do not want to tinker with it. I do not want to improve it to the point of destruction. I do not like radical change for the sake of change. The AIA was the worst piece of patent legislation not only in history of the United States, but probably in the history of the world.

    I also did not agree with State Street Bank because it too was a radical change. That radical change brought the backlash of big Tech and Wall Street who together had a lot of influence. Even though Intel invent the term “troll,” the resistance to business method patents brought corporate America and banking America into alliance against the patent system as never before. The patent system long as had problems like Lemelson who was an abuser of the patent system; but State Street Bank was a horse of a different color and all but brought down the system. It is a pity that you do not recognize this.

  35. Anon December 18, 2017 3:04 pm

    Anon, you do not get to define who is pro-patent and who is anti-patent.

    Actually, Mr. Heller, your reply here is one serious MISREPRESENTATION and dust-kicking.

    It is simply NOT a matter – as you would attempt to paint it – that I am deciding what is a fact and what is not a fact. Instead, I am merely noting what is a fact and what is not a fact – BECAUSE they are so. Their status then is NOT because “I say so,” but instead, “I say so” because they are facts.

    And for the record, my views on the matter are not seriously challenged by anyone who is actually pro-patent.

    Further, it is NOT a matter of anyone “disagreeing with me” that makes them pro- or anti- anything. Instead, it IS a matter of WHY they are disagreeing and what views are being pursued in disagreement. IF you are pursuing anti-patent ideals, that is fully your right. However, you do NOT have a right to attempt to spin that as being pro-patent of that it is a matter of MY setting what is pro-patent.

    Your own “protests” here – protest for the wrong reasons (and do not challenge the underlying “truths” that STILL align with my views.

    It matters NOT AT ALL that large entities REACT to something in order for that something to be “deemed” (by you) to be “truth” of not.

    As to whether you are a conservative or not – I really do not care.
    At all.

    That is an unhelpful label.

    Further, as I have mentioned, it is NOT at all your own self-labelled stand that is being criticized or even merely being pointed out. Yes, we BOTH agree that the AIA was “the worst piece of patent legislation not only in history of the United States, but probably in the history of the world.” (at least as far as patent legislation).

    But THAT does not excuse your other positions on matters and how those positions relate to being pro- or anti-patent.

    Your “not wanting radical change” is NOT enough -as YOU do not get to decide what is an acceptable “radical change” or not. Your own penchant for things of England does NOT escape critical thinking for things that WERE changed by our sovereign – BOTH initially and throughout the course of our Sovereign – especially things changed in the Act of 1952.

    You simply do NOT get to make up either facts or law – as is your want in order to “spin” your own desired view of things.

    It is FAR LESS a pity that you think that I do not recognize anything and FAR MORE a pity that you think that I SHOULD be recognizing something and allowing that something to “spin” facts and law to your viewpoint.

    I – respectfully, but adamantly – say thee nay.

    Mu post immediately above your last reply stands.

  36. Anon December 20, 2017 8:03 am

    As witness Mr Heller on the newer thread concerning software patent eligibility, you show your true anti-patent nature. See

    Your posts defending the anti-business method machinations have NO defense, and only serve to exhibit that your “pro-patent” bent is of a limited nature. That you want to paint yourself as being “pro-patent” based on that limited nature and then pretend that your anti-patent streak ALSO reflects some type of being “pro-patent” is not only disingenuous, it has the makings of a great L I E (for it is within the great L I Es that there be a kernel of truth – and the kernel that you exhibit is the portion of being pro-patent when it comes to patents as property as opposed to public rights). With that kernel, you rail against the forces against a strong patent system, but you are every bit WITH those same forces when it comes to business method and software patents.

    You hide behind a label of “conservative” when it is convenient for you to fold into the desires of the “Right” (the Efficient Infringer group) and the desires of the “Left” (the anti-property group) when the SUBJECT of the property is an item that does not fit your ideological bent (business methods and software).

    You hide behind the ad hominem of “radical” when you seek to paint those that have followed the actual law and understand that innovation protection encompasses the four FULL categories (and not treating the “process” category as some mere sub-category according to YOUR notion of PRE-1952 law) and that recognizes that the wide open gate of 101 has been usurped.

    No Mr. Heller, what is radical is turning our own government and its separation of powers on its head with “using” the judicial branch to achieve a re-writing of law, and then pretending that nothing is amiss.

  37. Joachim Martillo December 20, 2017 10:00 am

    I don’t see anything unreasonable in Ned Heller’s posting, and there really must be some point where a program becomes ineligible because otherwise patents could be allowed for the programs of a Jacquard loom or for piano player rolls.

  38. Anon December 20, 2017 10:35 am


    The current understanding of the exceptions to the judicial doctrine of printed matter already suffice to alleviate your concerns. 101 and the Useful Arts removes the arguments of fine arts examples that you present. It is a bit of a strawman to introduce such things (when no one else is doing so) only to knock them down.

    I will note that on other blogs, Mr. Heller has (repeatedly) been called to partake in dialogues pertaining to these concepts and never seems to be able to do so.

    That is no accident, as the pattern of his tactics have played out countless times over at least a half dozen years. Perhaps you don’t see anything unreasonable HERE, and you might be entirely correct in a such a shortened view. But when the larger picture is grasped, when ALL of Mr. Heller’s views, and omissions of law, fact and history are put together, the rather obvious conclusion of his anti-patent standing is more than clear.

  39. Joachim Martillo December 20, 2017 11:02 am

    I don’t see that there is much distinction among

    1. a Jacquard loom program that transforms the Jacquard loom into a specialized machine for weaving a tapestry of the Niña , Pinta, and Santa María on departing from Palos de la Frontera,

    2. a player piano roll that transforms a player piano into a specialized machine for playing Yankee Doodle, and

    3. a Microsoft Word image that transforms the laptop I am using into a specialized machine for editing documents or for making replies on blogs.

  40. Anon December 20, 2017 12:04 pm


    It very much is your “lack of seeing” that is a critical fault.

    I cannot open your eyes to the meaningful difference between the US Useful Arts and the Fine Arts,

    If you cannot see that your strawman induces Fine Arts past their reasonable point in a legal discussion, then that is a roadblock for YOU.

    That “much distinction” is a critical one – no matter how small it may seem to you.

  41. Joachim Martillo December 20, 2017 12:47 pm

    The Jacquard loom makes a product under program control. It is the first programmable device. Napoleon granted Jacquard a patent (lettres patentes) for the device but not for any program.

  42. Anon December 20, 2017 2:11 pm


    You are still closing your eyes to the item (and its relation) to the machine.

    Differences in output along the lines of Fine Arts fall out of the patent picture for that reason.

    When you have a very different situation in which a programmable device is changed – for differences in functionality according to the Useful Arts – you fall well within the sphere of patent law and patent protection.

    Once again, That “much distinction” is a critical one – no matter how small it may seem to you.

  43. Joachim Martillo December 20, 2017 5:37 pm

    Have you looked up the Jacquard loom? It is a completely programmable device (circa 1804!) and manufactures all the articles that a hand loom makes.

    By modern legal standards the Jacquard loom would be a statutory device, but no one ever suggested that individual Jacquard loom programs were patentable or that a Jacquard loom running a Jacquard loom program was an improvement over the original Jacquard loom.

  44. Anon December 20, 2017 6:15 pm


    Your post is all wonderful but still misses the critical dimension of what exactly is “programmable” being addressed to.

    Have you even bothered to read my replies?

  45. Joachim Martillo December 21, 2017 1:37 am

    In patent law SCOTUS has held that merely substituting one underlying for another is not patent-eligible (Hotchkiss v. Greenwood, 52 U.S. 248 (1850)).

    Programmable systems have a long history:

    1) the Jacquard loom (circa 1804) — a programmable device that nowadays we would call domain specific.

    2) the Analytical Engine (conceived 1834 by Babbage and never reduced to practice) — a completely mechanical general purpose programmable computer.

    3) Modern program (conceived 1843 by Ada Lovelace).

    4) Atanasoff-Berry Computer (ABC, 1937-1943) — solves linear algebra equations and more analogous to a PLD than a general purpose program executing computer.

    5) Eniac (1946) — a sort of general purpose computer with no stored memory and programmed by manipulating switches and cables.

    6) Whirlwind I (1947-1951) — a general purpose stored program computer implemented with vacuum tubes and using a magnetic core memory.

    In this 150 year history no one ever suggested a program for such machines is patent-eligible in general. A computer program is not “a new … process [?], machine, manufacture, or composition of matter.” In general a computer program is not a “new and useful improvement thereof”.

    One can argue about process, but SCOTUS has defined a process.

    SCOTUS tell us:

    “A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.”

    [Gottschalk v. Benson, 409 U.S. 63, 70 (1972)]

    I can list all the other definitions that the CAFC or SCOTUS give for process in precedents and then ask, “Is a word processor a method in the sense of subject matter that can be claimed in a utility patent?”

    There might be a method to transform File A to File B, but the word processor is not the method. It is the means to realize such a method.

    In other words, the word processor is a not a method in the utility patent sense. I can develop a patent-eligible method that includes a step directed to using a general purpose computer running a computer program, but in general a computer program is not a method claimable in a utility patent.

    Yet SCOTUS is correct not to exclude the possibility of patenting programs for the following reason.

    In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994) provides the explanation, and Judge Rader, while not a computer scientist, has a clue.

    From the standpoint of the CPU, a word processing program is a data structure that is processed by the CPU. In fact, here lies the problem with claiming a computer program. A word processor is a very complex data structure of data structures.

    [The immediately previous sentence is generally true for all meaningful programs including those of the Jacquard loom and player piano rolls. I perceive music as a sequence of mathematical data structures that describe audible frequencies. Bach understood this point even if not many other people do. The ABC and the Eniac constitute exceptions, but one could probably generate a method claim to setting switches and recabling for the Eniac.]

    So how does one claim a computer program? It is the exact same problem found in claiming a car or an airplane at this point. At this point one cannot claim the invention of a car. An inventor of a new car can try to identify and to claim the novel elements within his new car in separate patents.

    Likewise, one finds the novelty within the 101-patent-eligible data structure that is the computer program, shows non-obviousness, and defines the metes and bounds of the claim.

    Is this procedure consistent with the Alice-Mayo test for eligibility?

    What do you think?

    Here is Lowry’s first claim.

    1. A memory for storing data for access by an application program being executed on a data processing system, comprising:

    a data structure stored in said memory, said data structure including information resident in a database used by said application program and including: a plurality of attribute data objects stored in said memory, each of said attribute data objects containing different information from said database;

    a single holder attribute data object for each of said attribute data objects, each of said holder attribute data objects being one of said plurality of attribute data objects, a being-held relationship existing between each attribute data object and its holder attribute data object, and each of said attribute data objects having a being-held relationship with only a single other attribute data object, thereby establishing a hierarchy of said plurality of attribute data objects;

    a referent attribute data object for at least one of said attribute data objects, said referent attribute data object being nonhierarchically related to a holder attribute data object for the same at least one of said attribute data objects and also being one of said plurality of attribute data objects, attribute data objects for which there exist only holder attribute data objects being called element data objects, and attribute data objects for which there also exist referent attribute data objects being called relation data objects; and

    an apex data object stored in said memory and having no being-held relationship with any of said attribute data objects, however, at least one of said attribute data objects having a being-held relationship with said apex data object.

  46. Joachim Martillo December 21, 2017 5:06 am

    The patent allowed after the In re Lowry decision can be found at the following URL.

  47. Anon December 21, 2017 9:00 am

    In patent law SCOTUS has held that

    There is your first problem.

    Authority for actually writing statutory law that is patent law has been given to only ONE branch in the US sovereign.

    That branch is not the judicial branch.

    merely substituting

    There is your second problem. You still are not seemingly grasping that the “substitution” aspect of a computer that is RE-programmable is different in kind when what is reprogrammed creates a different functionality.

    You seemed mired in the Fine Arts examples of a type of thing that can be “merely substituted,” but as I pointed out to you, the exceptions to the judicial doctrine of printed matter already take care of that issue.

    A computer program is not “a new … process [?], machine, manufacture, or composition of matter.”

    A double error here. A computer program IS a new manufacture. A computer program is NOT a process. The execution of the manufacture that is a computer program may be a process.

    For someone who has shown in the past a (overly?) strict dedication to the meaning of words, your posts here Joachim are FAR below you.

    SCOTUS tell us: “A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.”

    Not only is SCOTUS WRONG (as Congress has [rightfully] defined process differently, but even SCOTUS has ‘changed its mind’ as to your description (as your description is a paraphrase of the Machine or Transformation clue. A clue is not a legal requirement – and that is what you are trying to make it out to be.

    Is a word processor a method…

    You have conflated yourself. See the bit [sic] above about software NOT being a method.

    Further, even if you want to talk about the “use of” the manufacture of software, you (as Ned has so often been reminded) need to remember the words of Congress: 35 USC 100(b): “includes a new use of a known process, machine, manufacture, composition of matter, or material.

    So how does one claim a computer program? It is the exact same problem found in claiming a car or an airplane at this point.

    The problem is NOT in how one claims it. The problem is the Justices who wish to change the law as if that law were a nose of wax. One “claims it” based on how a Person of Ordinary Skill In The Art would take the claim terms.

    This too is a 112 issue – NOT a 101 issue. Congress has also already dictated which entity gets to decide how to “claim it.” That entity is ALSO not the Court.

    ALL of your reasoning here (and yes, I do see that your examples that I quote here are given to present a certain context) OMITS one critical factor: the Court is acting outside of its proper authority in its attempts to re-write the law of 35 USC 101.

    THAT is the root cause of the problem here.

  48. Joachim Martillo December 21, 2017 10:08 am

    Do you wish SCOTUS to abandon the precedent of Hotchkiss?

    IANAL, but I know we have a common law system in the USA (except in Louisiana in certain courts).

    I agree that a computer program is not a method. It is a data structure and therefore a manufacture. To be more precise, the typical program is a complex or compound of data structures often defined in terms of other data structures.

    We then must ask, “To which of the data structures of a program may a claim be directed?”

    SCOTUS and the CAFC are trying to answer that question.

    In addition to the patent-eligible data structure question above, there are some cases of computer programs where In Re Gulack is relevant, and these would apply when a general purpose computer is used for packet switching or as part of cloud computing infrastructure or in other similar situations.

    As I understand the development of statutory patent law, in 1952 the collection of patent law precedents was codified into the pre-AIA 102, 103, and 112, which were added to 101 whose case law was firmly anchored in British precedents like Boulton and Nielson.

    You may wish we had a Civil Law system like France, but we don’t.

    SCOTUS and the CAFC will not abandon their role in creating case law (except in the case of Chevron deference, which we can all hope will die an unmourned death sometime 2018).

  49. Anon December 21, 2017 12:34 pm

    Do you wish SCOTUS to abandon the precedent of Hotchkiss?

    I wish that SCOTUS would abandon their attempts to rewrite patent law.

    I wish that YOU would see the difference.

    IANAL, but I know we have a common law system in the USA (except in Louisiana in certain courts).

    THAT is no excuse for abrogation of separation of powers. The “common law” approach has its limits – and one of them is directly in place with the statutory law of patent law. One needs not be a lawyer to recognize which branch (which SINGLE branch) was given authority to write the statutory law that is patent law.

    We then must ask,… may a claim be directed?”

    NO – we then “must” not ask such. YOU are presuming the very point of the broken scoreboard and allowing an abrogation of the separation of powers that is at the very root of the problem.

    You may wish we had a Civil Law system like France, but we don’t.

    No. You presume too much. We need NOT a Civil Law system for our separation of powers to be maintained. That you think this DOES show that “IANAL.”

    You should understand that “creating case law” wherein such law is to the interpretation of the statutory law is different in kind form the “creating case law” whereby law is re-written.

    Here in the US, our Sovereign specifically set patent law apart from other areas of law that the “full” common law effects may be practiced.

    This is a critical distinction.