Alice at Age Four: Time to Grow Up

By Meredith Addy
September 18, 2018

To be successful, patent practitioners must show the PTO, courts, and Congress the importance of our clients’ innovations and explain why the type of technology should not dictate whether there is enforceability.

https://depositphotos.com/71442281/stock-photo-grow-up-reminder-for-young.htmlIn June 2014, the U.S. Supreme Court issued the now much-maligned Alice decision, which ostensibly provided guidance on patent eligibility under 35 U.S.C. § 101. The decision was obtuse and capable of many different interpretations.

Four years later, the patent landscape demonstrates that Alice has become a train wreck for innovation. This article looks at the damage wrought by litigants and trial courts in applying flawed interpretations of Alice, and the U.S. Court of Appeals for the Federal Circuit’s abdication, at least until recently, of its responsibility to interpret Alice.

Court in the Crosshairs

It was no surprise that the U.S. Supreme Court granted certiorari in Alice. By 2013, the Federal Circuit clearly had been struggling to provide guidance on what types of inventions should be patent-eligible. Upon grant of en banc review in Alice, the Federal Circuit specifically asked the parties and amici curiae, “What test should the court adopt to determine whether a computer-implemented invention is a patent-ineligible abstract idea?” However, its en banc decision completely failed to establish such a test — much less provide unified guidance. Instead, the Court issued a per curiam opinion accompanied by six other opinions.[1] Certiorari was close to inevitable.

The rest, of course, we know too well. The Supreme Court determined that patent claims drawn to a computer-implemented scheme for mitigating financial “settlement risk” were not patent-eligible under Section 101. But it was not the High Court’s judgment of “not patent-eligible” that so disrupted the innovating community. It was the subsequent warped interpretations of Court’s opaque analysis.

Armed with Alice, infringement defendants successfully convinced district courts to use the Alice decision’s alleged “teachings,” found in loose language, to suffocate patent infringement cases before they even got started—by invalidating patents on the pleadings. Such pleadings invalidations became rampant despite long-standing procedural rules and patent doctrines that taught against them, not the least of which was the presumption of patent validity.

Patent cases are notoriously complicated and difficult to resolve. Sadly, Alice’s novel allure of an early dismissal enticed the district courts time and again to ignore established practices. Alice allowed judges to blithely bypass unpacking specific statutory sections, avoid application of patent precedent to complicated technologies, and ignore interpretation of patent claim terms.

[[Advertisement]]

The Resulting Carnage

Unfortunately, the Federal Circuit failed to rein in this rout of Machiavellian creativity, which it could have done by relying on well-settled procedural process and patent doctrines. Once a district court succeeded in invalidating an entire patent without considering the claims or the underlying technology, the Federal Circuit refused to correct the wrong for the hundreds of litigants appealing those lower court dismissals. In most cases, the Court declined to craft any sort of explanatory opinion, relying instead on its ability to issue a one-word decision – “Affirmed.”[2]

After four years, over 90% of cases appealed to the Federal Circuit on patent ineligibility grounds have been affirmed.  Ninety percent. As of the end of August 2018, the Federal Circuit has reversed or vacated only 9.[3],[4]

Upstream of the Federal Circuit, since Alice, over 810 district court decisions have addressed patent eligibility. Of those 810, around 480 decisions, or about 60% percent, found claims unpatentable under Section 101.[5]  Of those 480 invalidations, 355 of them, or about 74% resulted from a Motion under Federal Rule of Civil Procedure 12(b)(6) or 12(c).[6]  Think about these numbers: in a scant four years, 355 district court decisions have invalidated patents just on a pleading, without looking into what PHOSITA would think, much less conducting a claim construction.

How does this happen when a patent is presumed valid? And, when factual issues under Rule 12 are supposed to be resolved in favor of the patentee? I cannot imagine what Judge Giles Rich would be thinking now, as his thorough and nuanced approach to establishing clear patent precedent has been thrown aside by recent jurisprudence.

And let’s take one closer look. Of those more than 480 district court patent invalidations under Section 101, there have been only 122 appellate decisions. Only about 25 percent of the district court invalidations continued to appellate decision before the expert Federal Circuit.[7]

In other words, simply by filing a patent infringement complaint, over half the time, the patentee not only lost the litigation, but also lost its patent right, and 75% of those losses were not appealed.  If those numbers don’t confirm the benefits of efficient infringement, I’m not sure what does.

Of that lucky 25% that had the resources to request Federal Circuit review, fewer than one-half of them, or 57 of the 122 appeals of district court invalidations, received opinions from the Federal Circuit.[8]The rest received the dreaded “Rule 36 Affirmance,” which provides no guidance to the litigants or to others trying to navigate these dangerous waters.[9]

Even today, the Federal Circuit’s post-Alice decisions tell us that no financial patent is safe from Section 101. And, if you can believe it, no Federal Circuit decision has defined what “abstract” means, even though courts have invalidated several hundred patents as being “abstract.”[10]

It is also clear that Alice has affected how software and financial applications are handled at the Patent Office, which has issued three Guidances trying to unravel Alice.[11]Even so, it remains difficult to know how to draft an application that will militate against a Section 101 rejection. In the Patent Office’s technology group 705 for example, the rejection rate remains above 90%.[12]

While these statistics are relatively easy to determine, the upstream shift in how or whether innovation will be developed and protected is more difficult to quantify and much more far-reaching.

Glimmers of Hope?

This year, the Federal Circuit appears finally to have awakened from its slumber. In two recent opinions, Aatrix v. Green Shades and Berkheimer v. HP, the Federal Circuit embraced long-established procedural rules and patent doctrines.  Recognizing first that there may be underlying factual determinations in patent eligibility, especially when a patent is presumed valid, and also, that a motion to dismiss on the pleadings fails if the non-movant raises factual discrepancies.[13]

These two recent cases along with various building blocks provided by the few other Federal Circuit decisions, provide a tinge of silver around the edges of the dark cloud cast by Alice, providing hope that once again, we can develop sensible, cogent precedent for district courts and the PTO to follow on Section 101.

This is no fairy tale.[14] Rebuilding the innovation landscape and providing the proper scope of protection for software and financial innovations will take time and focused efforts by those who can effect such change.

There is movement in Congress to amend Section 101. Several legislative proposals attempt to avoid the innovation mire, but they are complicated and face resistance – not least due to the relative unfamiliarity to many in Congress of the complexities of patent law and the harm that has resulted from Alice. It’s worth noting that in our current, volatile climate on the Hill, amendments to patent -eligibility may not be the most pressing matters on the minds of our members of Congress.

While Congress grinds away, however, the Federal Circuit should be able to continue to clarify precedent under the current statute. Section 101 did not hinder innovation until courts tried to give it teeth that don’t fit its jaws. With Berkheimer and Aatrix, maybe we begin to move into a more stable environment.

Section 101 requires simply that: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” Judge Rich aptly interpreted the Patent Statute as having a gatekeeping function, with Section 101 the first of several doors that must be opened. The Supreme Court has repeatedly issued similarly broad teachings on eligibility, as covering “anything under the sun that is made by man.”[15] Nothing has changed in the wording of the statute since the 1980s, only the warped, astigmatic, anti-innovation lens we are bringing to it.

Certainly, technology has evolved: coding and applications of algorithms, development of genetic modifications, and diagnostic treatments. But these technological developments are no different in their newness from from earlier developments that Section 101 handled, such as “practical applications for mathematical formula.”[16]

The trial courts interpreting Alice have forgotten, what Judge Rich once stated masterfully: an analysis performed solely under Section 101 cannot alone impart patentability. Rather, “If the invention … falls into any one of the named categories [in Section 101], [the inventor] is allowed to pass through [the door of Section 101] to the second door, which is § 102; ‘novelty and loss of right to patent’ is the sign on it.”[17] Of course, the inventor also must pass through a third door: “obviousness and loss of patent right” is the sign on that third one.

Determining patentability by invoking a series of doors, of which patent eligibility is merely the first, reflects a progression in logical order. By ignoring these three separate doors, courts post-Alice have forgotten the separate, sequential requirements of the patent statute found in Sections 101, 102, and 103, opting instead to conflate all of those requirements into an overburdened Section 101 alone. Thus, it has caused confusion not only in the law but also for the innovators in our economy. Confusion stalls innovation, because complexity and costs increase for inventors, while incentives correspondingly decrease.

What To Do?

With Congress otherwise preoccupied, fighting to amend the patent statute post-AIA may not be the fastest way to stabilize the innovation economy. Instead, we need to return to a traditional analysis of what is patentable under all the sections of the statute. Rather than foisting all analysis on an overburdened Section 101, we need to return to application of tried and true procedural rules and presumptions, and continue to build useful precedent.

The Federal Circuit has started to do so, it appears, in Aatrix and Berkheimer: call it steps A and B. And going forward, practitioners must assist the Federal Circuit in filling out this alphabet, by continuing to provide the Federal Circuit, the district courts, and the PTO with the type of analyses these institutions need to rebuild the doctrine.

Consider these means to helping achieve that:

  1. Speak Up. Many patent practitioners remain silent, adhering to the dogma that we are merely advocates for our clients. And, in truth, many of our largest companies are happy with the innovation carnage.[18] Technology giants can, and do, efficiently infringe. However, voicing your opinion on the damage being done from mistaken interpretations of Alicewill help right the course.  Educating the Courts, the PTO, and Congress about the damage that has occurred and what the correct interpretation of Section 101 should be is a valuable first step in overcoming the sweeping movement towards promoting efficient infringement.[19]
  2. Keep Preparing and Filing Applications. Well-drafted patent applications – thoughtful and deliberate, still should prevail at the USPTO, survive challenges, and provide the building blocks for further clarifying Section 101 doctrine. The current confusion should not prevent organizations from filing patent applications on their valuable innovations. Maybe one job of the advocate is to explain to our clients the benefits of continuing to protect innovation. The law is changing at such a rapid pace that we cannot know during prosecution what will pass muster during subsequent challenge. If we don’t file, we can only fail. We do know that options, in the form of claim variations, provide more future certainty. File applications that anticipate tomorrow’s law by delivering a breadth of claims that range from the border of eligibility to something most examiners will agree today passes muster.
  3. Inoculate Your Applications from Current Section 101 Challenges. Use recent case law as a road map to insulate your applications from being denied under too broad of an application of Section 101. Use the PTO Examination Guidance to understand how the agency reviews eligibility. Clearly disclose the benefits of the invention, the improvements over the prior art, and exactly where the innovation falls in a larger system, etc.
  4. Prepare Infringement Complaints that Reveal Issues of Fact. Provide claim charts, highlight potential factual disputes, and attach the relevant portions of the file history if needed. Attach an expert declaration to the Complaint that explains how the accused device reads on the claim. Anticipate that Rule 12 motion — and let your complaint be the response. If a defendant has to disagree with your well-stated factual assertions, there is no basis for a Rule 12 dismissal. Of course, this type of detail is not required for notice pleading, but it is required to rebuild the confidence in the stability of Section 101. And, these types of filings, along with the resulting court decisions, also provide tools for further clarifying Section 101 doctrine.

The debacle represented by Alice is reversible over time, but the Congress, a governmental agency, and even the court system itself are not likely to resolve the challenge to innovators without the assistance of the bar and the industry. Drafting fewer but stronger patent applications will be a worthwhile start. The alternative is not acceptable.

Savvy and creative patent lawyering will prevail over time. To be successful, patent practitioners must show the PTO, the courts, and Congress the importance of our clients’ innovations and explain why the type of technology should not dictate whether there is enforceability. Please join me in this fight.

_______________

[1] CLS Bank Int’l v. Alice Corp., 717 F.3d 1269 (Fed. Cir. 2013).

[2] Federal Circuit Rule 36.  Entry of Judgment – Judgment of Affirmance without Opinion.

[3] In reverse chronological order, the reversals are: Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018); Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018); Visual Memory, LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017); Thales Visionix, Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017); Amdocs v. Openet, 841 F.3d 1288(Fed. Cir. 2016); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016); Rapid Litg. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042 (Fed. Cir. 2016) (rev’g district court holding that claims drawing to an ineligible law of nature); Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016); Enfish v. Microsoft, 822 F.3d 1327 (Fed. Cir. 2016). (Note: The author argued successfully for Thales Visionix, Inc., at the time only the sixth such reversal.)

[4] One of the reversals came out of the Court of Federal Claims, whose statistics otherwise have not been included in these calculations.  See Thales Visionix,850 F.3d 1343.

[5] Docket Navigator Search of District Courts, Rule 12 Motions or Summary Judgment, and Patent Eligibility, since Alice.

[6] Id.

[7] Compared Docket Navigator district court results with the sum of the Federal Circuit opinions on Section 101 and Federal Circuit Rule 36 decisions where Section 101 was at issue since Alice.

[8] Statistics cover all post-Alice Federal Circuit Section 101 decisions, including Rule 36 affirmances.

[9] Many the Federal Circuit opinions on Section 101 were non-precedential, following the same flawed logic used by the district court.

[10] “The Supreme Court has not established a definitive rule to determine what constitutes an ‘abstract idea’ sufficient to satisfy the first step of the Mayo/Alice inquiry. . . .Rather, both this court and the Supreme Court have found it sufficient to compare claims at issue to those claims already found to be directed to an abstract idea in previous cases.”  Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (internal citations omitted).

[11] http://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility.

[12] https://developer.uspto.gov/visualization/allowance-rate-uspc-class.

[13] Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018); Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).

[14] See Addy, Behemoth Tech and the Little Innovators, A Fairy Tale That’s All Too True (For Aren’t They All?) — and Patently Allegorical Business De Novo, http://www.businessdenovo.com/?p=248.

[15] Diamond v. Chakrabarty, 447 U.S. 303 (1980).

[16] See, e.g., Gottschalk v. Benson, 409 U.S. 63 (1972) (holding that the presence software did not make an otherwise patent-eligible machine or process patent ineligible);Diamond v. Diehr,450 U.S. 175 (1981);see also Thales Visionix, 850 F.3d 1343.

[17] In re Bergy, 596 F.2d 952 (CCPA 1979).

[18] Quinn, If patent laws were correctly caibrated to spur innovation the efficient infringer would pay.  http://www.ipwatchdog.com/2016/10/16/patent-laws-spur-innovation-efficient-infringers-pay/id=73726/

[19] See Protect American Innovation: The Campaign for Patent Reform,  http://www.protectamericaninnovation.com/, a grass roots organization focusing attention on the damage to the U.S. innovation economy through articles inventor stories.

 

Image Source: Deposit Photos.

The Author

Meredith Addy

Meredith Addy is a partner with AddyHart P.C., where she focuses her practice on a unique blend of business and legal strategy. Addy has over 25 years of litigation experience and has handled more than 30 cases before trial courts and argued more than 40 appeals to the Federal Circuit. Addy has held leadership positions at several AmLaw100 firms and is a recipient of many awards and honors. She has testified before Congress to address issues relating to the Federal Circuit and the state of patent law. Addy has been a member of the Federal Circuit’s Advisory Council and a member of the board of directors of the Federal Circuit Bar Association. She is also a founder of the Richard Linn American Inn of Court, which is directed to intellectual property, and she served as its first president. Addy has also been recognized as one of the Most Influential Women in IP Law by Law360. For more information, or to contact Meredith, please visit her profile page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 53 Comments comments.

  1. Night Writer September 18, 2018 12:33 pm

    Thanks Meredith Addy. Some good advice in there and the article identifies some reasons that this has happened.

    I would add: 1) that Obama allowed Google to select the CAFC judges and they selected anti-patent and non-science (in general) judges. 2) Academia has lost all its compasses and now encourages wild unethical conduct, e.g., Mark Lemley.

  2. Night Writer September 18, 2018 12:37 pm

    Probably too should discuss in context Alice with the SCOTUS. E.g., Oil States where Mark Lemley’s article was used in a dispositive factual conclusion as evidence–an outrage.

    And probably the context of the greater bifurcation of american politics that has lead judges to feel free to become judicial activist.

  3. Concerned September 18, 2018 12:59 pm

    Berkheimer could not be found with a search warrant in my final rejection of June 2018. We argued both it and Bahr’s corresponding memo, the USPTO ignored them both.

    The mother lode of all evidence was tossed, the USPTO maintains my claims are routine, well understood and conventional. The USPTO cannot be bother by truckloads of evidence.

  4. Anon September 18, 2018 1:36 pm

    Just a side note: your footnote 11 has “grabbed” the period as part of the hyperlink

    You have to edit the hyperlink to arrive at the proper “abstract” location.

  5. Joachim Martillo September 18, 2018 6:38 pm

    Concerned@September 18, 2018 12:59 pm,

    Did the Applicant file a notice of appeal?

    Did the Examiner provide a factual basis for a finding that each claim only recites well-understood, routine, and conventional activity in addition to a judicial exception to which each claim was alleged to be directed?

    Did the Examiner take Official Notice?

  6. Curious September 18, 2018 6:56 pm

    I would add: 1) that Obama allowed Google to select the CAFC judges and they selected anti-patent and non-science (in general) judges. 2) Academia has lost all its compasses and now encourages wild unethical conduct, e.g., Mark Lemley.
    Can you give it a rest? You’ve been pumping out these allegations for years now.

    As to point 1), do you have any PROOF that Obama allowed Google to select these judges. If so, please provide links to evidentiary support. Moreover, to the extent that Obama-appointed judges have nixed patents under 35 USC 101, there have been Obama-appointed judges that have also upheld patents under 35 USC 101 and there have been a lot of non-Obama appointed judges that have jumped upon the “let’s kill all patents under 101” bandwagon. Mayer is probably the worst of them all, and he was appointed by Reagan.

    As to point 2), what is this “unethical conduct” you speak of. Sure, he shades the facts and law the way he wants it to turn out. However, any good advocate will do the same. At worse, he calls himself an academic, when in fact he is just a hired gun. It isn’t “wild[ly] unethical” to espouse a position that you and I happen to disagree with. For those that have read my comments over the years, I am no fan of Lemley. However, I’m not going call him as as being wildly unethical.

    Making wild accusations doesn’t help our side (e.g., like your frequent calls to have the entire Supreme Court impeached — except now I’m assuming you’ll exempt Gorsuch). Making wild accusations merely stamps you with the kind of label oft-associated with those wearing tinfoil hats. It becomes quite easy for the other side to dismiss arguments that the CAFC is biased against patents when they can say “look at the crazy assertions being made by pro-patent side — they are basically accusing Google of buying off the President.” While such an accusation may resonate with a certain select group of individuals, those that occupy the vast middle ground (and tend towards reasonableness over partisanship) will outright dismiss those accusations. It is those in the vast middle ground that we need to persuade, and unless you have unimpeachable proof, I would lay off sensationalist accusations.

  7. concerned September 18, 2018 11:56 pm

    Joachim Martillo @ 5:
    I am the applicant. My attorney is drafting the appeal to the PTAB. Notice of appeal on file.
    No “Official Notice” by the examiner or factual basis. The examiner quoted court cases outside my field of technology, which the MPEP and Bahr’s memos state the rationale must be in my field of technology.
    I noted this PTAB reversal for my attorney:
    PTAB Appeal decision dated 2018-05-30 for US App No. 12/852,224 at pages 4-5:
    Appellant contends that the Examiner “failed to establish that claim 1 merely recites ‘computer functions that are well-understood, routine and conventional activities.”‘ App. Br. 7 ( emphasis omitted); see Reply Br. 2, 4–5. More specifically, Appellant asserts that “the Examiner has not provided any supporting evidence for asserting that all claimed functions are ‘well-understood routine, conventional activit[ies]. “‘ App. Br. 8; Reply Br. 2, 4. Appellant also asserts that “[ s ]imply because the general function of ‘analysis and storage of data’ is ‘well-understood, routine, and conventional’ does not of itself establish that claim 1 ‘s ‘engine [that] determines [a] payment hierarchy via an automated learning algorithm that analyzes subjective assessments’ is routine or conventional.” Reply Br. 3; see App. Br. 8.
    …Based on the record before us, we agree with Appellant
    The truckload of evidence includes documents from every end user (all 50 states) that none of my claims are being used, or routine, or conventional or well understood. Also, on record are documents from the Social Security Administration and 2 accredited universities.
    The claims are novel and non-obvious. I do not have a 102, 103 or 112 rejection.
    And my (network) claims would cause the Social Security Administration computers to perform in a way never achieved prior while providing significant post-solution activity. My solution is rooted in computer technology as that is where the inaccurate, incomplete, or fraudulent information is submitted electronically plus resides with no technical solution available prior to my claims. McRO, Enfish, Bascom, etc.

  8. B September 19, 2018 9:00 am

    @ Ms. Addy “Unfortunately, the Federal Circuit failed to rein in this rout of Machiavellian creativity, which it could have done by relying on well-settled procedural process and patent doctrines.”

    Yes, it took the CAFC six years to determine whether something is well-understood, routine and conventional is an issue of fact even though Mayo expressly stated it used evidence to make its determinations.

    The CAFC has yet to announce that “a fundamental economic practice long prevalent in our system of commerce” is an issue of fact. Indeed, the CAFC Rule 36’ed me in 2016 when I argued this very thing, and denied rehearing on the issue en banc. See, e.g., Alice, 134 S. Ct. at 2356 (citing evidence in the form of textbooks to demonstrate that the claims at issue were directed to “fundamental economic practice[s] . . . .”).

  9. Mark Nowotarski September 19, 2018 9:01 am

    Meredith has a good point. It’s time to take action.

    For those that have the time tomorrow (Thursday September 20 at 12 noon to 1 pm EDT), Lexis is sponsoring a free webinar “Engineering Patent Applications to Avoid Alice”. It will provide practical guidance on two of Meredith’s key action items “Keep Preparing and Filing Patent Applications” and “Inoculate Your Patent Applications from Current Section 101 Challenges”.

    It should be a good session.

    (Modesty forbids me from mentioning who one of the presenters will be)

  10. Concerned September 19, 2018 9:13 am

    B @8:

    We will be arguing the same thing. It is hard to take USPTO rejections when their statements are false on the surface and they know it.

  11. Mark Nowotarski September 19, 2018 9:15 am

    Concerned @7

    Congratulations to your attorney for the reversal of 12/852,224! That’s in one of the most difficult work groups of the patent office, 3690 (i.e. art units 3691 – 3697 financial inventions). I just finished reviewing the statistics on ex parte appeal decisions in this work group. In the past 12 months there were about only about 20 101 reversals out of 400 101 decisions. The appeal brief for that application should be an excellent guide to others preparing 101 appeals in this work group.

  12. BP September 19, 2018 9:59 am

    Recent PTAB decisions are from filings pre-Berkheimer and include decisions that do not cite Berkheimer, yet cite post-Reply Brief (Forwarding Fee) Fed Cir case law for evidence to support rejections under Step 2 Mayo/Alice. As that case law/evidence is not “prior to an appeal hearing before the Board”, those decisions should be designated as including a “new ground”. However, that is not what the PTAB is (in most instances?) doing. The PTAB is largely digging up new case law/evidence, and/or evidence not cited by an examiner, to affirm examiners on Step 2. Every PTAB decision citing post-Reply Brief (Forwarding Fee) case law/evidence to affirm without designation as a “new ground” of rejection should be challenged by a Request for Rehearing to designate the rejection as a “new ground”, citing In re Biedermann: The APA requires the PTO “to provide prior notice to the applicant of all `matters of fact and law asserted’ prior to an appeal hearing before the Board.”

  13. B September 19, 2018 10:09 am

    @ BP ” The PTAB is largely digging up new case law/evidence, and/or evidence not cited by an examiner, to affirm examiners on Step 2.”

    The PTAB is actually citing case law as evidence. There’s nothing so screwed up as this. It’s a violation of due process and an improper application of collateral estoppel.

    However, don’t expect the CAFC to respond to this nonsense. I know personally.

  14. Night Writer September 19, 2018 11:16 am

    However, any good advocate will do the same. At worse, he calls himself an >academic, when in fact he is just a hired gun.

    That is NOT the standard for an academic journal. And I have read some of his papers in depth and looked up the cites. I stand by what I said. And, of course, I speak of his behavior when he is claiming to be an academic and making statements or writing academic journals. The standards are quite different and Lemley’s articles would not pass the test for a brief submitted to court. For example, he leaves off well-known sources that are counter to his assertions in his paper. For example, in one paper he said that software has no structure and gave no counter reference. I stand by what I said.

    >>s to point 1), do you have any PROOF that Obama allowed Google to select these judges

    What I have is circumstantial evidence of Google visiting the White House and making large campaign contributions. I know there is other evidence out there and frankly I think the burden of proof rests with Obama in how he made those appointments. Given, for example, that we know that he paraded Lee in front of the SV tech community for approval to appoint her.

    And, yes, some of the judges that Obama has appointed don’t seem to have been terrible. But that doesn’t mean anything. That is often the case that judges cannot be controlled. Chen, for example, isn’t terrible, but when appointed he was very anti-patent and very anti-information processing. His views seem to have become more measured. But some of the appointments are have and are terrible.

    Anyway, to sum up: for Lemley I base my opinion on my first hand experience reading his papers and checking his cites. For the appointments, I base it on how Lee was appointed, the access Google had to Obama (unprecedented), the large campaign contributions, the selection of obvious anti-patent and non-science trained judges, and other information that is out there and information about the extent to which Google has lobbied Congress and influenced all decisions related to IP.

  15. Night Writer September 19, 2018 11:19 am

    Curious >>Making wild accusations doesn’t help our side

    Except they are not wild accusations. With Lemley they are first hand readings of his papers. With the judicial appointments they fair inferences from a boatload of circumstantial evidence and as well as a pattern of behavior.

    Frankly, what is not helping our side is not pointing out these massive problems. What is hurting our side is not having a transparent process in how these judges were selected. What is hurting our side is not holding Mark Lemley accountable for unethical conduct in writing journal articles.

  16. Night Writer September 19, 2018 11:26 am

    Curious >> (e.g., like your frequent calls to have the entire Supreme Court impeached —

    I realize the chances of this are pretty much zero. But, the point of this is that the justices are completely out of control. A discussion of impeachment could bring out is a method of talking about what behavior of the justices would warrant impeachment and how could we identify that behavior and try to find boundaries to their interpretation of the Constitution and holdings.

    For example, in Oil States they made a factual finding that was dispositive based on a journal article of Mark Lemley that is not peer reviewed. Is that conduct that would warrant impeachment? Maybe. With Oil States and Alice what we see is they could pretty much fabricate any opinion they felt like fabricating. Where are the boundaries? Is the boundary only a political one where any opinion that will be carried out is fine?

    Etc. Maybe you need to calm down Curious and try to look at some of the structural problem in our system that have led us to where we are.

  17. BP September 19, 2018 11:29 am

    @B – yes, I have seen that, case law as evidence. EPG as evidence under Step 2, the PTAB “abstracts” claim language to meet the dictum/dicta of EPG. Let’s call it “hindsight abstraction”, abstracting claim terms to arrive at an unreasonable interpretation with an eye to meet dictum/dicta in EPG to reject under EPG – while ignoring the actual holding of EPG.

  18. JNG September 19, 2018 3:07 pm

    As I noted yesterday, I think we should start calling these made up judicial “abstract idea” 101 exceptions rulings for what they are: bastardized An-Alice-sis with the first four letters denoting the origin of the doctrine

  19. Anon September 19, 2018 3:41 pm

    I have pointed out that even the CAFC has called the application of the Supreme Court Alice/Mayo protocol: common law law writing.

    It’s bad enough that the judicial branch engages in common law law writing under 101 (which was stripped away by Congress in the Act of 1952), but we now have the Executive Branch engaged in common law law writing.

    Fact patterns would need to be a dead-on exact match for the Executive Branch to “faithfully” apply “the law” in its execution of examining applications under the law.

    Of course, such exact matches would never happen.

    ALL of the (additional) use of the Supreme Court weapon of the “Gist/Abstract” sword — especially by the executive branch — is ultra vires.

  20. anony September 19, 2018 4:07 pm

    What I’d like to see added to section 101:
    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. >>>A process implemented on a machine is patent eligible. Even when the machine is a generic computer. Even when the process manipulates data. Even when the data is financial.<<<

  21. B September 19, 2018 4:30 pm

    @ anony “A process implemented on a machine is patent eligible. Even when the machine is a generic computer. Even when the process manipulates data. Even when the data is financial.”

    This is generally stated in s 100(b), which states a process includes a new process on a known machine. Bilski states “process” doesn’t require a machine or transformation, and that the term “process” should take its ordinary, contemporary meaning.

    My point is that the necessary language is already there. Just that the black robe crowd thinks it knows better than the legislature.

    That said, maybe 101 can be amended to read: “Judges too stupid to read this shall be hung”

  22. Curious September 19, 2018 7:03 pm

    Lemley’s articles would not pass the test for a brief submitted to court.
    But articles don’t get judged by the same standard. Lemley is a shill for EFF (i.e., the “let’s ban software” people). That doesn’t make him wildly unethical — just a tool.

    What I have is circumstantial evidence of Google visiting the White House and making large campaign contributions.
    Wasn’t it Carl Sagan who popularized the aphorism that “extraordinary claims require extraordinary evidence”? I’m sure there are a lot of other companies that made large campaign contributions but we aren’t all claiming that they got to stack the court at the CAFC.

    And, yes, some of the judges that Obama has appointed don’t seem to have been terrible. But that doesn’t mean anything.
    You continue to overlook the point that almost all of the judges at the CAFC have been terrible — regardless of who appointed them.

    the access Google had to Obama (unprecedented)
    Unprecedented access? Are you serious? If so, how did they let Kappos slip by? While Kappos wasn’t perfect, he was light years better than who preceded (Dudas) and followed (Lee) him.

    Frankly, what is not helping our side is not pointing out these massive problems.
    Who said anything about not pointing out the problems with the system? Obama’s judges are no worse than the other judges, so why do you continue to make it an issue? As for Lemley, he is what is is — a paid tool for the anti-software community. That doesn’t make him “wildly unethical.” Ethically, he is advocating, as strongly as he can, for his clients, which is what he is supposed to do as an attorney.

    A discussion of impeachment could bring out is a method of talking about what behavior of the justices would warrant impeachment and how could we identify that behavior and try to find boundaries to their interpretation of the Constitution and holdings.
    Once you raise the specter of “impeachment” based upon your belief that the justices got the law wrong, you’ve pretty much lost those in your audience that were on the fence and who could be persuaded. That line of attack just doesn’t resonate. I’m sure you could find a group of attorneys (and any side of any issue) that could raise the same arguments that you are: the justices are ignoring the law, they are making of facts, yada yada yada. Once you go down the impeachment path with your arguments, the average reader is just going to tune you out.

    Your heart is the right place. However, these kinds of arguments fall flat. Do you read anybody in the mainstream media who talks about legal issues advocating for the impeachment of Supreme Court justices? If not, why not? The why not is because it makes for a lousy argument/opinion.

    try to look at some of the structural problem in our system that have led us to where we are
    That’s an easy one. It is the golden rule — those with the gold get to make the rules. This is plainly obvious in Congress. As for the Courts, as I have written before, the Courts have this innate dislike towards patents because they see them as monopolies (i.e., anti-competitive), which have long been disliked by the Courts. The Courts see the negative aspect of patents (i.e., the litigation that attempts to prevent somebody from competing) but they don’t see the positive part of the bargain described in the Constitution (i.e., the promotion of the progress of science and the useful arts). We, as patent attorneys, get to see both sides of the bargain and can appreciate why inventors have been given this powerful right (i.e., an exclusive right to their discoveries).

    While it might be nice to have Federal Circuit judges with real world experience in patents, the Federal Circuit isn’t all about patents, and thus, we are stuck with a bunch of touchie-feelie types who really understand the importance of patents.

  23. B September 19, 2018 11:27 pm

    @ Mark “Inoculate Your Patent Applications from Current Section 101 Challenges.”

    Good idea. How do you do it when there’s no standards?

    I’m not trying to be a smart-ss, I’m stating that its impossible when certain APJs will reject a claim 100% of the time, and the Federal Circuit is still running in circles?

  24. Joachim Martillo September 20, 2018 6:37 am

    B @ September 19, 2018 11:27 pm

    Here’s the approach I would use for a trading invention of the sort Bilski claimed.

    I would try to reformulate a trading claim into a game claim that protects a game which the trader plays against the market. So far SCOTUS has not taken aim at game claims which have been around for over 100 years.

    Financial method claims like Alice are more difficult. I might write the claims around a novel structure stored in memory. Certain types of financial method claims might be demonstrably at least partially non-mathematical and well beyond anything that could be considered praxis (well-understood, routine, conventional activity — I hate the SCOTUS formulation) in the financial industry.

    In the pharmaceutical industry, if the precedent of Vanda v. West-Ward is not enough, you might have to be prepared to argue against the application of the Alice/Mayo two-part test to Prometheus-like claims. Maybe you could persuade a panel (I would profile the judges) that Alice contradicts Mayo and that the inventor’s claim is patent-eligible. If you had an unlucky draw on the panel, you should carefully request a rehearing with an argument that focuses on the logical inconsistency between Alice and Mayo while you strategically prepare to make a petition for a writ of certiorari to SCOTUS.

    The logical contradiction between Alice and Mayo must be resolved.

    As long as SCOTUS provides guidance of p and of ~p, an Examiner, the PTAB, DC, the ITC, and the CAFC can make any decision and still be following SCOTUS’ guidance.

    I explain the contradiction in Did SCOTUS Botch Its Own Test in Mayo v. Prometheus and Break the US Patent System?. It’s short, but I needed graphics.

  25. Mark Nowotarski September 20, 2018 8:29 am

    B@23

    I will touch on this during the webinar at noon today, but the short answer is, as much as possible, express the client’s invention using only terms of art for subject matter that is solidly (to the extent anything is solid these days) statutory.

  26. Joachim Martillo September 20, 2018 1:33 pm

    The Boston Patent Law Association is probably about to sign on to proposing an amendment to 35 U.S. Code § 101. I fear that anything making § 101 more complicated (including the suggestion of anony@20 [September 19, 2018 4:07 pm]) will only make the patent-eligibility situation worse.

    This situation does not arise from either stupidity or malevolence. It’s simply hard for a non-technical person (or even a technical person outside of his area of expertise) to wrap his mind around the rapidly changing topography of knowledge that becomes the basis of new inventions.

    The problem seems particularly acute in electronic, financial, pharmaceutical, biotech, and biochemical arts. Those working on the patent side of Intellectual Property law may need help in visualizing patent-eligibility and patentability.

    Creating a CAD system for patent-eligibility would be straightforward. Creating area-specific cadasters for patentability would take a few years of work, but at this point a visualization system for patentability may be necessary.

    I discuss in Cutting Through Gordian Knot of Patent-Eligibility. Sorry for the redirection. I needed some graphics to clarify the subject.

  27. Night Writer September 20, 2018 7:07 pm

    @27 Curious

    You didn’t respond to the substance of what I said. I am very comfortable with my positions. I am not interested in pleasing middle level bureaucrats but in focusing on what matters. It is weird how passionate you are in trying to change me.

  28. Night Writer September 21, 2018 9:03 am

    @27 Curious

    As a side note Curious, I know the top academics in patents. I’ve talked to them about like I post on this blog and they have said they agree with me. Some say what I started saying that “Benson is the root of all evil in patent law.” Others I’ve heard to start pick-up my mantra that Alice is witch law.

    And, I am sure there is no better thing that could be done for patent law than hold Mark Lemley accountable for his unethical conduct. You want to ignore massive breaks in our system. For example, I have linked to a prominent professor at U. of Chicago who has said that law schools protect their professors to the extent that it is impossible to discipline a law school professor at the top schools. In fact, he tried for years to get a Harvard Law School professor disciplined for plagiarism and said that the dean of HLS ignored him.

    Etc. It is also interesting the way you think you can rollover me. I don’t know what gave you the impression that I am some pushover that you can just ignore.

  29. Curious September 21, 2018 11:25 am

    Etc. It is also interesting the way you think you can rollover me. I don’t know what gave you the impression that I am some pushover that you can just ignore.
    Rollover you??? Oh please, I have made comparable comments to “anon” about his writings. You and he are frequent posters on this blog, and this blog has the type of reach to policy makers in our world that few have. I have been writing on the “internets” for going on 40 years now. I have long learned that the most important thing anybody has when expressing their opinion is their credibility.

    Personally, it is in my best interest to have the people advocating for the same positions that I am to be credible. Those that frequently read this blog are also aware of the long-term anonymous contributors since they oftentimes complement (or criticize) what is being written in the mainline articles. Both you and anon bring a lot of good information to this blog. However, you both tend to go down paths that damage your own credibility. For you, it’s your obsession with Lemley and Google and your accusations against them. I have no problem you accusing them, but if you are, at least present evidence to support your allegations. If Lemley misrepresents the law, then identify one of his misrepresentations and then provide a counter argument as to why one of his writings is a misrepresentation. If you think has inordinate influence over patent policy, then point out that Lee was previously employed by Google. However, calling for impeachment of Supreme Court justices, calling another attorney “wildly unethical,” or describing the Federal Circuit as being bought and paid for by Google is the type of over the top statements that causes one to lose credibility. If you don’t care that you sound like a crackpot, then that’s on you. However, I care because you are advocating for my side and I want my side to win.

    To be complete (and to show that I just don’t pick on you), I have mentioned to anon about his battles with MM (on the other blog) that devolve into a mud throwing contest that gets quite boring after the first 100 times you read the same comments thrown out time and time again. He may have fun doing it, but it tires even his most ardent supporters (of which I am one). He also has a tendency to throw out obscure references to arguments he has made in the past (e.g., the Grand Hall theory, fire-hosing monkeys, asking what state one is barred in, using obscure acronyms) that only serve to confuse the reader (even one, like myself, who has been reading his stuff for untold years) as to the point he is trying to make.

    I’ve talked to them about like I post on this blog and they have said they agree with me.
    Talking in private is not the same thing as advocating in public.

    I am sure there is no better thing that could be done for patent law than hold Mark Lemley accountable for his unethical conduct.
    I could think of a dozen of things that would be better for patent law than to hold Mark Lemley accountable. For example, there is the repeal of the AIA, amending 101, overturning KSR, clarifying that 101 is not a condition for patentability under 282 … I could go on, but you get the point. Again, you are presenting an over-the-top statement that just doesn’t hold water.

    BTW — I note that still haven’t addressed my point that the “Obama judges” are no worse than the other judges at the CAFC.

  30. Night Writer September 21, 2018 12:53 pm

    @29 Curious

    >>I have been writing on the “internets” for going on 40 years now.
    Me too.

    >> If Lemley misrepresents the law, then identify one of his misrepresentations
    I have listed 10’s of problems with his journal articles. And above I listed a serious transgression in saying that software has no structure.

    I have given plenty of evidence to suggest that Google had a large hand in the selection of the CAFC judges. And there is plenty more that has been posted including a recent article that investigated the extent of Google’s influence in policy.

    With the justices I have listed in detail actions of theirs which are outrageous. E.g., the Oil States citing to Lemley’s article.

    > I could think of a dozen things…
    You don’t get it. Those dozen things aren’t going to happen as long as their Lemley’s working to stop them. There would be no Oil States without Lemley. The AIA probably wouldn’t be passed without Lemley. Etc.

    Etc. Etc. You just don’t address the substance of my arguments, although perhaps you are right that I overstate my cases so I will try to moderate my comments a bit more.

    >>BTW — I note that still haven’t addressed my point that the “Obama judges” are no worse than the other judges at the CAFC.

    I did address this point. I told you that I have linked to a blog that keeps track of the judges 101 decisions and that the Google appointment judges are the ones that have invalidated the most claims under 101. Plus Taranto is a nightmare. He is like Lemley. Genius. Anti-patent. Judicial activist.

    BTW: I know some of this stuff first hand in that I used to work for a law firm that was hired to lobby Congress during the writing of the AIA. Of course, I have to be mindful of client confidentiality. I used to get one attorney that would call me up and try to get me to help him formulate arguments to burn the patent system down (at least add amendments like bifurcation to the AIA that would hurt patents a lot.)

  31. Pro Say September 21, 2018 5:06 pm

    Curious @ 29: +1.

  32. Night Writer September 22, 2018 6:03 am

    Curious @ 29 —Pro Say not really.

    Curious, the more I think about what you’ve said the less I respect it. Your argument is to just skip over reality and try to market ourselves to middle level politicians to try and get stronger patents. Guess what? That hasn’t worked.

    I understand the system. I’ve illustrated that many times with my predictions. I know at this point, though, that nothing say to you will have an affect. You seem to think you can skip over reality and present marking arguments to win. Won’t work. You’ve skipped over the evidence on Lemley, Google, the Google judges, etc. that I presented with rollover me type of arguments that have no connection with how the system works.

    On the other hand, let’s look at me. Years before Alice I said what the SCOTUS was going to do was find a way to allow dist. ct. judges invalidate patent claims with SJ. Ned (who also realized how unethical Lemley is) said Night Writer read Rader’s dissent in Bilski. I did and said immediately—that’s it. The SCOTUS is going to use abstract to burn the system down. You see? I understand the system and can predict what is going to happen. You sound like a commercial from Pepsi.

    You think you can keep flying a plane from 20 years ago when Lemley is out on the wing disassembling the last engine right now. Lemley is always three steps ahead of you. Not me—you.

    I accurately predicted the IPR were going to weaken the patent system by over 50 percent. They did. It wasn’t hard to figure out when you face reality.

    I also have the top intellects in the patent world who agree with my analysis. The fact is —again my prediction–the only way we are going to get strong patents again is by facing off people like Lemley and quantifying the hold Google has on the IP system of the US.

    Yes Trump has given us a little bit of help. But getting legislation through Congress would be almost impossible at this. The Googles are strongly entrenched. (And still you don’t understand the system. Google cannot be entrenched without the Lemley’s.)

    Anyway, etc. Not impressed by your arguments Curious. I’d sum them up as ignore reality and try to market ourselves to middle level people. Not going to work. And if you respond to me actually show me that you have read what I wrote. This rollover my arguments with glib assertions is lame.

  33. Night Writer September 22, 2018 7:23 am

    Learn some respect Curious. You remind me of the people that presented better than I did when I was an engineer, but whose solutions were always inferior to mine. I remember one person that reminds me a lot of you. He was so convinced that his solution was better than mine that he just kept complaining and complaining. Finally, the VP of engineering (probably about 5,000-20,000 people worked for him) told us to make presentations to all the top people in the corporation with our competing solutions. The person like you was so sure he would win because his shirt was tucked in and his slides were so pretty. But, of course, I crushed him. They put me in charge of him and chose my solution. Time and time again I run into people like you.

    People like you have for some reason thought they were smarter than me or know better than me all my life. You don’t. You have no idea what you are talking about Curious. The tragedy is that we need people like you to push out the right message. We need people like you to come after Lemley and Google. We don’t need people like you saying be like me and sell a coke–because you don’t know what you are doing.

    Anyway, Curious, again you have wasted a lot of my time with your nonsense.

  34. Jianqing Wu September 23, 2018 4:25 am

    Alice severely impacts inventing, researh, and commercialization activities in nanotechnolgoies…..

  35. Anon September 23, 2018 9:55 am

    Curious,

    All well and fine and good for you to feel that somehow credibility is diminished by engaging others.

    I tend to think the opposite, as the not engaging is what ensares so many of the Lemming types. By choosing to say nothing (generally), one allows the Propaganda machine of “Repeat a Lie Often Enough” to run rampant. Engaging does NOT diminish the logic given, and even fighting fire with fire with sharp words does not diminish the content of what is shared along with the sharp words. Make no mistake, my use of ad hominem and sharp words is not done in a vacuum, and I still provide salient points (a deep contrast in any ‘battle’).

    I “get” that you may want to “play clean,” and that is fully your choice (no matter how ineffective that is in the real world).

    As to on-going and long-running memes, your view is noted, but is dismissed. Another of your lack of touch with reality and the lack of realization of the rhetorical tools used against views by those with anti-patent agendas is the “Internet Shoutdown” and “Br’er Rabbit” techniques of pretending that points previously provided (AND provided in detail) were never shared. The attempt is to make thinking about nuanced or intricate legal matters into a “why bother?” or to catch some minor typing error. Those to whom the “memes” are directed are well aware of the more developed positons. That those who would spread propaganda with their own Memes need be checked again and again with the level of detail that “first timers” may benefit from IS exactly the game that they want to play.

    No thanks.

    First timers that are truly interested and that want to engage in a thinking manner are fully capable of searching through archives to find earlier (and detailed) explications. Those not wanting to do so are not likely to engage in critical thinking anyway.

  36. Night Writer September 23, 2018 12:46 pm

    @34 anon and Curious

    The other thing Curious is just completely ignoring is that the anti-patent judicial activists (and unethical) forces have completely and totally kicked our butt. If it was a football game, we’d be behind 70-14 in the fourth quarter. Patents are worth 20 percent what they were 10 years ago and I am sure that Lemley and Google are plotting the coup de grâce. You may want to try to live in the real world Curious.

  37. Anon September 23, 2018 12:54 pm

    To your point, Night Writer, the current state is as it is in no small part because “our side” has been too polite for too long.

    The real world needs guerilla warfare every bit as much as regimented lines of foot soldiers (if not more so).

  38. Joachim Martillo September 23, 2018 4:56 pm

    The destruction of the US patent system has been going on for a long time and results from the confluence of completely unrelated trends that seem to start:

    1) with the first software patent, whose earliest priority application filing goes back to August 16, 1960, and

    2) with the knowledge explosion, which has accompanied the development of digital computers.

    The US patent system reached the current state through a combination of good intentions, of bad intentions, of confusion, and of highly conflicted politics.

    Fixing the patent system requires

    a) a constitutional amendment to get adjudication of validity of issued patents out of the USPTO,

    b) legislation of a legal action to quiet validity,

    c) a Congressionally-instituted joint special committee to investigate corruption at the USPTO,

    d) rational public education in the economics of the patent system

    i.) to replace the misguided patent bargain narrative as well as

    ii.) to explain why a capitalist system needs letters patent to invention to be issued to inventors,

    e) public mobilization on behalf of the patent system,

    f) a better system of searching prior art at the USPTO, and

    g) an alternate path to issuance of a patent based on knowledge visualization so that legal professionals can understand novelty, non-obviousness, and the region of knowledge to be protected by an issued patent as the knowledge landscape rapidly shifts.

    The above elements of the repair comprise a huge assignment, will probably take a lot of money, and will require at least 20 years, but it needs to be done, or the USA is doomed to economic decline.

  39. Anon September 24, 2018 10:12 am

    Joachim,

    There is a MUCH simpler (at lest in theory) path:

    Follow what Congress has actually written.

    To do that though, it appears that Congress may need to invoke an admittedly harsh measure of jurisdiction stripping to remove the Court and its insistence on thrusting its fingers into the Nose of Wax of 35 USC 101.

  40. Anon September 24, 2018 10:26 am

    That being said, elements of your seven part plan deserve some discussion.

    As to a): There is NO need for a constitutional amendment to handle this item. This is not the type of thing for which our constitution is to be amended. As you have professed to not being an attorney, I take this suggestion as hyperbole. However, to lead with this is a weakening move (rather than a strengthening one), and I would simply remove this from your list.

    As to b): This is interesting and very much nuanced. As examination is not intended to be entirely exhaustive, there necessarily remains an element of “unquiet” to all titles of property (be that property a Private personal one or a Public Franchise one) that come with a grant through the USPTO that transforms an inventor’s inchoate right into a full legal right. More discussion is merited on this point.

    As to c): I fully agree. Directly in spite of the clear rule of law that ALL processing of an application is to be done solely on the written record, there has been – and continues to be – FAR too much work in the shadows.

    As to d): I also agree — rationale public economic education can only help all parties, no matter their (professed and un-professed) agendas.

    As to e): I am not entirely certain just what you mean by this point. Can you explicate? IF you mean that the Patent Office should better perform their mandate to ENCOURAGE more patenting because of the very reason why we have a patent system in the first place (which feeds back into D)i.,)), I entirely agree.

    As to f): I agree. I further state (as I have stated for years), that the Office NEEDS to focus on improving examination quality (as opposed to “patent quality”).

    As to g): This is a point that “sounds good,” but the devil most likely is in the details. What exactly does this “alternative path” look like? Why is “alternative” (as opposed to being part of a singular path)? and Why would we want to “fracture” the patent system (keeping in mind the long attempts to fracture the system in benefit of — and to seclude from other “reforms” — Pharma; and that such attempts would result in a universally poorer system).

  41. B September 24, 2018 12:15 pm

    @ Anon “To your point, Night Writer, the current state is as it is in no small part because “our side” has been too polite for too long. . . . The real world needs guerilla warfare every bit as much as regimented lines of foot soldiers (if not more so).”

    On this we agree. Some of my latest briefs border on rude, but only because I quote Giles Rich, who outright mocked the courts on “invention” and their inability to read the darn statutes

  42. Anon September 24, 2018 1:16 pm

    One cannot go wrong in recognizing what Judge Rich tried to do.

    That being said, I also recognize that different forums call for different tactics — and one should expect to treat blog interactions differently than court interactions (as to any outright rudeness and to be careful with even ad hominem that may well may Richly [pun intended] deserved).

    To the end then that Curious was specifically addressing non-court interactions, he is clearly “off.”

    I do give credit to you for advancing the cause of strong patents in the courts, even as I realize that you have been given rough treatment along your path.

  43. Joachim Martillo September 25, 2018 6:06 am

    A constitutional amendment is needed to undo the damage associated with Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 584 U.S. ___ (2018).

    As obnoxious and illogical as it was for SCOTUS to find that letters patent to an invention constitute a public franchise or natural monopoly, one cannot deny that the Constitution never actually states that Congress creates property in the sense of the fifth amendment when it gives Congress power “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries…”

    This proposed amendment will get determinations of validity of letters patent to an invention out of the PTAB and out of the ITC. Adjudication of validity at the PTAB is an open invitation to corruption while adjudication of validity at the ITC is a source of chaos. If a defendant at the ITC believes a patent is invalid under which the owner seeks exclusion pursuant to Section 337, the defendant can bring an action for declaratory judgment under 28 U.S. Code § 2201 – Creation of remedy.

  44. Anon September 25, 2018 9:28 am

    Joachim,

    You are not an attorney and your lack of appreciation of Constitutional law is showing brightly here.

    The damage from Oil States does NOT need a Constitutional Amendment to undue — simple legislation would suffice.

  45. Joachim Martillo September 25, 2018 9:41 am

    The Boston Patent Law Association is probably going to sign onto a proposal to “fix” 35 U. S. Code § 101. I fear anything that adds complexity to § 101 will only create new problems. The real problem may be the knowledge explosion associated with digital technology. There is increasing complexity and difficulty in understanding an invention in the context of human knowledge.

    In circuit and web system design, as complexity has increased, engineers have developed CAD and other visualization tools to facilitate understanding of design.

    I believe I could create visualization tools to aid understanding claims and their relationship to prior art as well as to their location within the context of human knowledge. Such tools would work by increasing the analogy of invention claiming to land or to mine claiming. I discuss creating technology area specific epistemographic cadastres in Cutting Through Gordian Knot of Patent-Eligibility. Sorry for the indirection. The essay contains some diagrams.

  46. Anon September 25, 2018 10:55 am

    There is increasing complexity and difficulty in understanding an invention in the context of human knowledge.

    I hear what you are saying, but do not follow the logic of what you are trying to say.

    ALL knowledge over time has been expanding (except for historical periods of retraction, a la the loss of libraries of Ancient Egypt). “Digital technology” is NOT the bane that you attempt to portray it to be, as along with that digital technology (and the apparent boon in content) is also a boon in abilities to access, codify, distribute, and manipulate that same DIGITAL data.

    I “get” that you have developed certain talents (vis a vis “epistemogrpahic cadastres”), but you are very much in the weeds with thinking that THAT is necessary (or a fundamental driver). You are suffering from an ages-old condition “analogized” by the quip: “Here, try on my glasses, they work for me.”

  47. B September 25, 2018 2:13 pm

    @ Joachim “The Boston Patent Law Association is probably going to sign onto a proposal to “fix” 35 U. S. Code § 101. I fear anything that adds complexity to § 101 will only create new problems.”

    Yeah, exactly. The courts are incapable of getting the single, clear text of s101 right. Adding a second sentence will likely confuse the courts to the point of madness.

    Given the courts can’t follow statutory construction now, I doubt another sentence will help.

  48. Joachim Martillo September 25, 2018 2:25 pm

    35 USC § 261 already states the following.

    Subject to the provisions of this title, patents shall have the attributes of personal property.

    The rest of the statute even makes a patent deeded property just like land. Yet until there is a Constitutional amendment, SCOTUS will not apply the 5th Amendment to letters patent to an invention and will allow Congress to create administrative mechanisms

    1) for the purpose of invalidating the claims of issued letters patent to an invention and thus

    2) for the purpose of voiding the patent owner’s property “without due process of law.”

    While all the AIA crap and Ex Parte Reexamination can be legislated out of existence, that fix only works until the next time Congress is manipulated into “improving” the patent system.

    The real problem arises because letters patent to invention are legislatively created property and not Constitutionally created property even if Ned tried to pretend that letters patent to invention were like deeded land more than legislatively created property.

  49. Anon September 26, 2018 7:48 am

    “Constitutionally created property”

    What does that mean from a legal standpoint?

    Is land (real estate) a “Constitutionally created property?”

    Joachim, please stop trying to use words in a manner not legally fitting. I know that you have an epistemological background, but your efforts here just do not comport with the meanings of words in their legal context.

  50. LazyCubicleMonkey September 30, 2018 5:46 pm

    So if the discussion is about what the law is, doesn’t the Supreme Court have final say? Alice is the (current) law of the land and the Federal Circuit undermining the Supreme Court seems counterintuitive.

    Regarding many overturned patents due to Alice – there certainly was. But the numbers alone aren’t a very good measure – these aren’t just a random assortment of patents. I would assume weak patents are the ones challenged. What attorney would attempt to invalidate patents that they don’t think they have a chance of invalidating? And not all patents are created equally – especially given the variable amount of experience patent examiners have and the variable amount of time they get to review each application: https://www.brookings.edu/research/decreasing-the-patent-offices-incentives-to-grant-invalid-patents/ https://scholar.harvard.edu/xavier/publications/who-feeds-trolls-patent-trolls-and-patent-examination-process
    It would stand to reason that the lower quality ones would be the ones challenged. And while patents are (legally) presumed valid, it does create a rather bizarre result – for example: 18 hour review of a particular patent by an examiner & approving it can result in litigation cost that runs in the 6 figures (at a minimum) and often higher.

    As far as Alice in particular – I’ve read: https://www.ipwatchdog.com/2015/01/09/a-software-patent-setback-alice-v-cls-bank – and I see that there’s unhappiness/disagreement with what the law [i]is[/i]. Yet, I find myself agreeing with the Supreme Court. An abstract idea/method that was well known/prior art for a long time doesn’t suddenly become patentable if implemented in software and run on a general-purpose computer. Perhaps I’m waaay off here – if abstract idea/method is patentable sans software, why patent the software? And if it’s not, why should a software implementation be patentable? (I’d post all this under the previous Alice posts but they’re several years old and no longer allow posting).

    I also understand the real world problem that the SC may have been trying to solve with Alice – PAE’s were prominently in the news, extracting nuisance settlements, sometimes even suing end users for using infringing products. The settlement letters were sent using a scattershot method – often ensnaring companies that didn’t actually infringe the patent, as stated. Other times, if the settlement letters were sent to hundreds of defendants (and assuming they were actually infringing), how novel could the patent possibly be if hundreds of independent companies came up with the same idea independently? Discovery alone would be more expensive than settling and there was no punishment/downside for frivolous claims – since the PAE’s have no assets. This was a big problem, but I’ve never heard acknowledgement, much less an acceptable solution to this on this blog. I’d love to hear one. With Alice – defendants finally had something to dissuade frivolous claims against them. With Alice & Heartland, the rate of PAE suits has been continually going down – but still not eliminated.

    While all the proposed legislative solutions claims to help the little guy (the lonely inventor) going up against the big corporations (efficient infringers), if you want people like me (or perhaps the public who are also presumably for the little guy), you will need to strike a balance to help the little guys being sued by PAE’s since they’re constituents of the congresscritters you’re trying to convince, just like the inventors. I understand that this is a very hard balance – there’s no easy solution (which is why I find the topic interesting to begin with). I believe the attempt of giving the actual inventor listed on the patent additional rights was an attempt to strike this balance – but based on the articles & comments I saw here, the majority was against it. Being against something is easy – but suggesting a replacement that also protects the little guys from being extorted by nuisance suits by PAE’s and makes everyone happy (or unhappy) is hard – your move.

  51. B October 1, 2018 4:00 pm

    @ LazyCubicleMonkey “Alice is the (current) law of the land and the Federal Circuit undermining the Supreme Court seems counterintuitive.”

    Your point is well-taken, but It is my position that the CAFC isn’t following Alice Corp. For example, Alice Corp. cited evidence that the business method at issue was “long-prevalent . . .”

    The CAFC still believes that it can divine such issues of fact without evidence.

    Bilski is also the law of the land, but the CAFC still requires a “transformation” to be patent-eligible, and is still developing categorical rules to kill patents that clearly pass the statutory language of s101.

    This isn’t to say I approve of Alice or Mayo. I don’t.

  52. Anon October 1, 2018 4:04 pm

    So if the discussion is about what the law is, doesn’t the Supreme Court have final say?

    In a nutshell, No.

    ALL three branches must operate under the Constitution (with its checks and balances). The Supreme Court is not ABOVE the Constitution.

    (by the way, the “tags” for italics and bold and the like use the folling structure:

    Open:
    use “”

    Close:
    use “”

  53. Anon October 2, 2018 5:34 pm

    I see that the tags themselves disappear – even in the singular….

    The open tag begins with a “less than” sign and ends in an “greater than” sign.

    Likewise with the close tag, except a slash is used immediately after the “less than” sign (and prior to the “i” if italics, or “b” if bold).