Why is SCOTUS Creating a Federal Common Law of Patents?

By Eric Guttag
December 10, 2018

In other areas of federal law, SCOTUS has made it abundantly clear that federal common law doesn’t exist. So, why does SCOTUS believe it can create what is, in essence, a federal common law of patents?

why does SCOTUS believe it can create what is, in essence, a federal common law of patents?In crafting our Constitution, the Framers very carefully designed the three branches of government (legislative, executive, and judicial) to be co-equals.  Those Framers made clear that each of these co-equal branches had designated roles reserved to that branch and that branch only.  It also goes without saying that each of the three branches have encroached on roles assigned to other two by the Constitution, all too frequently to grasp power that is not theirs to exercise.

First to do so was the legislative branch, especially following the American Civil War and up through the late 19th Century as Congress and its members became the major power brokers.  Next was the executive branch when President Theodore Roosevelt greatly expanded the power of the presidency in the early 20th Century, sometimes to such an extent that he sometimes may have caused his fellow Republican, friend, and former judge, William Howard Taft, to cringe at what the latter might view as exceeding the executive branch’s Constitutional mandate.  (By the way, Taft would be the only U.S. President to also be Chief Justice of SCOTUS.  His opinion in Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923), which upheld the patentability of an improved Fourdrinier machine for making paper that took advantage of “gravity” in terms of the degree of pitch of the forming wire, is one the current Justices of SCOTUS would do well to read as it relates to issues under Sections 101 and 103.)

Finally, the judiciary, through SCOTUS, starting primarily in the 1950’s and with an increasing velocity and regularity exerted a “judicial activism” that would cause the highest court in the land to be referred to sometimes (and often derisively) as a “super legislature.”  For example, in the emotionally-charged 1973 case of Roe v. Wade, a majority of SCOTUSC created, out of thin air, a women’s “right to an abortion,” seen by some in the legal community as an extreme form of such “judicial activism.”  By contrast, some might also view the seminal 1954 case of Brown v. Board of Education of Topeka, Kansas which held that “separate” cannot be “equal” in our public schools as another example of judicial “activism.”  But I and others having a judicial philosophy which would be characterized as “originalist” (sometimes referred to as a “strict constructionist”), and generally “textualist” (meaning I’m wary of what constitutes true “legislative intent” although not to the extreme of the late Justice Scalia who basically ignored it completely) view it as rectification of a major misstep by SCOTUS in the 1896 case of Plessy v. Ferguson that segregation in public facilities complies with the Equal Protection clause as long as those segregated facilities were equal in quality.

So you may now ask:  what does all this historical discussion about Constitutional roles of these three branches of government have to do with patent law?  Well, implementation of the Patent Clause, as well as articulating U.S. patent policy was expressly reserved by our Constitution to Congress.  Also regrettably, as evidenced most recently for over the past decade or so, SCOTUS has decided (again) to weigh in as a “super legislature” on how Congress has implemented the Patent Clause in the various patent statutes, as well as to grasp to itself what U.S. patent policy should be, even if Congress expresses that policy otherwise.  Such judicial (and in my view and others Constitutionally improper) overreach has included:  (1) interpreting patent statutes to have “implicit exceptions” that Congress refused to include (e.g., in Mayo, Myriad, and Alice, where does 35 U.S.C. § 101 refer to “abstract ideas,” and “laws of nature” as being excluded?); (2) formulating views on patent policy expressly reserved by the Patent Clause to Congress, especially when Congress not so subtly suggested to SCOTUS that the Federal Circuit (expressly created by Congress in 1979 and becoming operational in 1980) was to be the primary arbiter of patent law jurisprudence; and (3) interpreting existing patent statutes many years after their creation to have meanings different from those repeatedly expressed in prior rulings by the Federal Circuit (e.g., in eBay, what is the appropriate standard for issuing permanent injunctions under 35 U.S.C. § 283?, in KSR International, what is the appropriate standard for obviousness in 35 U.S.C. § 103, and in Oil States, how can 35 U.S.C. § 261 possibly be interpreted as referring to patents as other than a “personal property right” which means those rights cannot be “taken” (invalidated) other than by 5th Amendment “due process” and only in an Article III court?).


Pre-Federal Circuit:  SCOTUS’ Unquenchable Thirst to Control Patent Law Jurisprudence and Ignore Congress’ Express Words in Patent Statutes

What’s even worse is that this isn’t the first time that SCOTUS has brazenly exerted such judicial “activism” in patent law jurisprudence, and even more shockingly, by those Justices, especially Justice Thomas, who would consider themselves to be “originalists”/“textualists.”  (Justice Thomas’ anti-patent stance ever since his 2006 eBay opinion, and more recently in his Myriad, Alice, and Oil States opinions, is particularly puzzling, given that he authored the unanimous opinion in the 2001 case of J.E.M. AG Supply v. Pioneer Hi-Bred International that held utility patents could still be obtained on sexually reproduced plants, even in view of the Plant Variety Protection Act for sexually reproduced plants and the Plant Patent Act of 1930 for asexually reproduced plants.  He also disagreed with his fellow conservative Scalia in the 2006 case of MedImmune v. Genentech on the proper standard for filing declaratory judgments.)

Prior to 1952 when Congress enacted most of the patent statutes that now make up Title 35, SCOTUS had construed the term “invention” in such a way that, unless you could establish that the claimed invention provided “synergy” (i.e., the whole of the “invention” is greater than the sum of its parts), it was virtually impossible to establish the validity of the patent, especially if it was deemed to claim a “combination of old elements.”  This ultra-high “synergy” standard for patentability elicited from Justice Robert H. Jackson (well-known for his pithy quotes) an oft repeated one:  “the only patent which is valid is one which this court [i.e., SCOTUS] has not been able to get its hands on.”  See Jungerson v. Ostby, 335 U.S. 560, 571 (1949) (also stating at the beginning of his dissenting opinion that “I think this patent meets the patent statute’s every requirement” and concluding with “I agree with the opinion of Judge Learned Hand below” that the patent was valid).  In the patent law arena, the current Justices of SCOTUS might also need to be reminded (repeatedly) of another famous and scathing quote by Justice Jackson:  “Reversal by a higher court is not proof that justice is thereby better done.  There is no doubt that if there were a super-Supreme Court, a substantial proportion of our reversals of state courts would also be reversed.  We are not final because we are infallible, but we are infallible only because we are final.”  See Brown v. Allen, 344 U.S. 443, 540 (1953) (concurring)(emphasis added).

Following enactment by Congress of the 1952 patent statutes, this unitary concept of “invention” was divided into three separate provisions in Title 35:  Section 101 defining “usefulness” (utility), including the four statutory classes of patent-eligible subject matter; Section 102 (novelty); and Section 103 (obviousness).  Further undergirding these three sections on patent-eligibility/patentability were Section 100 (defining what the terms “invention” and “process” mean), as well as Section 112 (in the first paragraph, describing the “enablement”/“written description” requirement, and in the second paragraph, that the specification must “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention”)(emphasis added)).  As many acknowledge (including at least some SCOTUS Justices), the late Judge Giles Rich of the Court of Customs and Patent Appeals (CCPA) and later one of the judges of its successor, the Federal Circuit, was one of the major, if not primary, architects of these 1952 patent statutes.

In interpreting what these three provisions of the 1952 patent statutes on patent-eligibility/patentability mean, especially Section 103 (obviousness), many in the patent bar would later hail the 1966 decision SCOTUS decision of Graham v. John Deere Co. as a “watershed” case, even though the patent in that case (for an agriculture drill) was deemed unpatentable as being obvious under Section 103.  (The suggestion in Graham that these 1952 patent statutes, especially Section 103, merely codified prior SCOTUS patent law jurisprudence would likely still cause Judge Rich to “roll over his grave.”)  But others, including me and Professor Adam Mossoff, see certain statements in Graham which, even if only considered dicta, express an alarming unwillingness by these Justices to release their grasp on patent law policy that the Patent Clause reserves to Congress, and Congress alone.

One such problematic statement is that this clause “is both a grant of power and a limitation” on Congress, including stating that Congress’ authority is “qualified,” is “limited to the promotion of advances in the ‘useful arts,’” and in exercising the “patent power may not overreach the restraints imposed by the stated constitutional purpose.”  But besides wondering as to whether SCOTUS in Graham has correctly articulated the historical context and meaning of the Patent Clause, Professor Mossoff has rightly questioned why those Justices so frequently refer and cite to Thomas Jefferson in interpreting what the Patent Clause means and who really has the “authority” to determine how that power should be exercised.  See Mossoff, “Who Cares What Thomas Jefferson Thought About Patents?  Reevaluating the Patent ‘Privilege’ in the Historical Context,” Cornell Law Review, Vol. 92:953 (2007), stating critically and ironically about Graham:  “In 1966, the Supreme Court discovered that Thomas Jefferson was the founder of American patent law.”

As Professor Mossoff points out with exquisite clarity and accuracy in his 2007 article, SCOTUS’ view in Graham that Jefferson is a relevant source for the meaning of the Patent Clause is a canard, a complete fallacy and judicial fantasy having no factual, and more importantly, no historical basis.  Jefferson was certainly a Founder of America as the primary author of our Declaration of Independence, but was most definitely not a Framer of our Constitution.  (As accurate history reflects, Jefferson was not a delegate to the Constitutional Convention, and deliberately so as he did not want replace the existing Articles of Confederation which he favored with this new fundamental document.)  Instead, SCOTUS would have done better (and would have been far more historically accurate) to consider the views of Jefferson’s protégé, James Madison, who was not only a delegate to the Constitutional Convention, but wrote the only contemporaneous statement on what the Patent Clause meant, namely Federalist Paper No. 43.

As Professor Mossoff correctly observes, the views expressed by Madison in Federal Paper No. 43 on the Patent Clause (in which the “exclusive right” granted should be considered in the context of Locke’s “natural rights” theory and the concept of “social contract” prevalent at the time of the creation of our Constitution as “securing important property rights,” or “what natural-rights-influenced politicians and jurists called ‘privileges’”) do not support (and are in fact opposed to) the “Jeffersonian story of patent law” expressed by SCOTUS in Graham.  See especially page 957 of Professor Mossoff’s article which says:

What is missing today in these oft-repeated historical claims [i.e., including those by SCOTUS about Jefferson’s supposed view of the Patent Clause] is an appreciation of the intellectual context of the eighteenth and nineteenth centuries – an era dominated by the labor theory of property and the social contract theory of civil society.  Recognizing this past intellectual context is important in understanding history, if only because that context is radically different from the utilitarian and positivist paradigm that dominates our political and legal discourse today.

It also wasn’t that long after Graham that SCOTUS started exerting its judicial “activism” in interpreting the 1952 patent statutes to add requirements that those statutes did not express and that Congress had, in fact, not included.  One of the first was in the 1972 case of Gottschalk v. Benson, written by Justice William O. Douglas, the most virulently anti-patent of the SCOTUS Justices, which held that a method for converting numerical information from binary-coded decimal numbers into pure binary numbers for use in programming conventional general-purpose digital computers was “merely a series of mathematical calculations or mental steps” and did not constitute a patentable “process.”  That would be followed by the 1978 case of Parker v. Flook, an opinion written by another virulently anti-patent Justice, John Paul Stevens, that made the astonishing proposition that a previously unknown “algorithm, or mathematical formula, is like a law of nature,” and thus part of the “prior art” under Section 103.  (In 2013, Justice Stevens would also write a 41 page concurrence, actually a dissent, in the 2010 case of Bliski v. Kappos which disingenuously argued that recently added Section 273 was a “red herring” as to whether “methods of doing business” were patent-eligible under Section 101).  Fortunately, SCOTUS, at least temporarily, changed course in its interpretation of Section 101 in the 1980 case of Diamond v. Chakrabarty and the1981 case of Diamond v. Diehr.

Besides rewriting what Section 101 means and requires, SCOTUS also did the same with Section 103, as shown in the 1969 case of Anderson’s-Black Rock v. Pavement Salvage (claimed invention combining in one machine chassis the spreading and shaping equipment along with a radiant-heat burner held unpatentable, overturning a 4th Circuit Court of Appeals ruling to the contrary), as well as the 1976 case of Sakraida v. Ag Pro (claimed invention on a water flush system to remove cow manure from the floor of a dairy barn held unpatentable, also overturning a 5th Circuit Court of Appeals ruling to the contrary, often crudely and derisively referred to as the “cowshit” case).  In both of those cases SCOTUS essentially restated that “synergy” was required for the patentability of “combinations of old elements.” But as accurately observed by the late and former Chief Judge of the CCPA and then the Federal Circuit, Howard Markey, all inventions comprise, in some way or another, a “combination of old elements.”  Indeed, this suggested requirement for “synergy” in both of these cases cannot be reconciled with the second sentence of Section 103 which says that “patentability shall not be negatived by the manner in which the invention is made.”  In both of these cases, SCOTUS deemed itself free to ignore this express language in Section 103, apparently (and distastefully) believing that, in terms of patent law jurisprudence, it is not governed by the Rule of Law enacted by Congress, but, instead, can act by the Rule of Judicial Fiat.

What makes SCOTUS’s assertions in patent law jurisprudence that there are these “exceptions” or additional “requirements” particularly annoying to many of us in the patent bar is that patent law is essentially statutory.  In other words, there should be no “federal common law of patents” that allows SCOTUS (or any other court for that matter) to make “exceptions” to or make additional “requirements” for what is already expressly written in the patent statutes.  Indeed, in other areas of federal law, SCOTUS has made it abundantly clear that “federal common law” doesn’t exist.  The most famous example is Erie v. Tompkins where SCOTUS overturned its prior view of a “federal common law” applicable in cases involving diversity jurisdiction.  So we in the patent bar may rightly ask:  why does SCOTUS believe it can create what is, in essence, a “federal common law of patents” to supplant or modify the existing patent statutes?

TO BE CONTINUED… Up next will be discussion of the creation of the Federal Circuit and how Congress initially succeeded in rebuffing the Supreme Court’s dominance over patent law jurisprudence. 

The Author

Eric Guttag

Eric Guttag  
Mr. Guttag has over 38 years of corporate and private intellectual property law experience on patent, trademark, copyright, trade secret and unfair competition matters, computer and Internet law, including patent application drafting, prosecution, and patentability studies; infringement and validity studies; international patent prosecution; patent and know-how licensing; consulting, confidentiality, clinical study and research agreements; trademark searches and opinions; trademark registration and prosecution; trademark freedom-to-use studies and trademark litigation and dispute resolution.

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

Discuss this

There are currently 81 Comments comments.

  1. Anon December 10, 2018 9:27 am


  2. EG December 10, 2018 10:11 am

    Hey Anon,

    Thanks much, I thought you’d like what I’m doing in this article. And stay turned because “there’s more” you should like.

  3. Adam Mossoff December 10, 2018 12:21 pm

    I appreciate the intent and spirit behind this article, but the idea that federal courts have never created a common law of patents is incorrect, both historically and legally. It is equally incorrect to say that property rights in land are purely “common law” (judge-made decisions), as these have been defined by statutes as much as property rights in inventions. The argument remains incorrect even after Erie Railroad v. Thompkins (1938), in which the Court wrongly held that there was no federal common law. I explain this in a new article in which I criticize the Court’s decision in Oil States and many academics and commentators who falsely argue that patents are “public rights” because they are allegedly statutory rights. My paper can be downloaded here: https://ssrn.com/abstract=3289338

  4. Paul Cole December 10, 2018 1:08 pm

    The arguments in this posting coincide with the contents of a personal brief that I filed before the Supreme Court amicus curiae in the Recognicorp case https://www.supremecourt.gov/DocketPDF/17/17-645/22427/20171204145518298_17-645.amicus.final.pdf of which the first two fundamental issues were:

    “1. Whether claimed subject-matter which falls as a matter of substance and not mere outward presentation within one of the eligible categories of 35 USC §101 positively enacted by Congress can be denied patentable eligibility by a US court using the doctrine of judicial exception without contravening the doctrine of separation of powers.

    2. Whether a court is entitled to hold that claimed subject-matter falls into one of the judicially excepted categories without first considering whether or not it falls into one of the categories positively enacted by Congress as being eligible.”

    In argument, the four statutory eligible categories and the judicial exceptions were represented in a Venn diagram as non-intersecting sets, and reference was made to Antonin Scalia and Bryan A. Garner, Reading Law The Interpretation of Legal Texts, Thompson/West, 2012, pages 93-100, Omitted-Case Canon.

    If problems under section 101 were put to students, in my opinion those who considered the judicial exceptions without considering the relevant scope of the statutory provisions would merit a failing grade in any law school in nay university where the common law is taught. It might be helpful if this opinion were cited on occasion to the judges of the Federal Circuit.

  5. EG December 10, 2018 1:16 pm

    Hey Adam,

    A fair enough comment, one I need to mull some more as I highly respect the research, including historical research, you put into your views. I’ve at least scanned through your draft article that you provided links to.

    I do share you concern about characterizing rights as “public” or “private” depending upon whether those rights are or are not based upon statute. Another complicating factor is that patent rights don’t simply spring from a general clause (e.g., as many do from the Commerce Clause), but specifically from the Patent Clause. But those “exclusive rights” are also not self-enabling as Congress has to enact the patent statutes for those “exclusive rights” to come into play. Indeed, I think of “public rights” more as those rights which the Constitution doesn’t specify and which were not present in the “common law” at the time the Constitution was enacted. That may not be the same view as yours but is how I view the “public” versus “private” rights debate.

    Also, Congress has specifically characterized patent rights in Section 261 as “having the attributes of personal property.” Yet the majority in Oil States just blips over that characterization in Section 261.

  6. Paul Cole December 10, 2018 1:23 pm

    Following up from my previous comment, the relevant passage from my brief that might be quoted with advantage reads:

    “The undesirability of considering only the exceptions to a section of a statute without also considering the positive provisions of that section needs no elaboration. A student at Bournemouth University who repeatedly and wilfully followed this approach would not only receive a failing grade, but would be interviewed to discuss his or her aptitude for a career in law. The opportunity to correct this plainly undesirable practice within the Federal Circuit in one that needs to be taken.”

    For example, in Ariosa not only was the second step of the claimed process transformative and conducted by the hand of man and hence eligible in and of itself, but also the conclusion that the result of amplification was a natural product was on the face of the opinion of Judge Reyna erroneous by a factor of 1,000 to 1,000,000. Errors of this type and magnitude raise issues not only of judicial correctness but of fitness to practice law.

  7. Mike December 10, 2018 2:51 pm

    @ Prof Adam Mossoff,

    Given that the AIA passes muster under Due Process and Takings, could you enlight me on your opinion regarding patent rights and the social contract in Federalist 43 and how Federalist 44 speaks to rights and the social compact in light of the Ex Post Facto clause? The article “The Civil Ex Post Facto Clause” — found here http://ssrn.com/abstract=2469141 — shows how the original meaning of the Ex Post Facto Clause was not limited to criminal law, but also civil law, and even J. Thomas is not convinced of the holding in Calder (1978) creating the criminal-only limitation and willing to reconsider it. (“In an appropriate case, therefore, I would be willing to reconsider Calder and its progeny to determine whether a retroactive civil law that passes muster under our current Takings Clause jurisprudence is nonetheless unconstitutional under the Ex Post Facto Clause.” Eastern Enterprises v. Apfel (1998) (concurring).) “I mean, I was thinking as I was reading the briefs, sometimes we have accidental theme days at the Supreme Court. So today’s accidental theme is: When 30 years of practice goes against you, what happens?” — Justice Kagan, TC Heartland, oral argument, and their ultimate ruling overturned that 30 years of practice.

    I find relevance here given that the AIA was retroactively applied whereby IPRs can be instituted on patents having preAIA priority dates, and Oil States was left open, given that the Petitioner did not argue on retroactivity. Further, I find it quite unfair for the AIA to be retroactively applied to my own preAIA patents, as I did not agree nor enter into any such “patent bargain” established by the AIA, and had I known that such new procedures would retroactively apply to my patent, I would have never disclosed my invention to the government and the public in the first place.

    These new procedures greatly changed the social compact. As a result of the AIA, in all respects, a patent is no longer secure until it survives all possible IPR challenges (this new de novo examinational procedure to which there is no limit to the number of challenges), which means inventors, even those already having obtained patent grants, now must obtain an additional wealth financial resources in order to obtain the same level of security once previously inherent in the preAIA patent grant, which means that it is a lot more expensive (unreasonably expensive) for an inventor to even get to the state where she can enforce her patent rights. For example, small inventors like me seeking legal representation cannot afford the costs, even under a contigency-based arrangement, simply because the likelihood an attorney will take a case on contingency is now almost non-existent because, as a result of the AIA, obtaining that same level of security once previously inherent in a patent grant must be obtained first. So, tack on hundreds of thousands more to even get to the point where an attorney will entertain contigency talks. Essentially, the AIA destroys the very inventors the patent system was meant to protect.

    I would appreciate your perspective.

  8. Gene Quinn December 10, 2018 10:01 pm


    You say the Supreme Court incorrectly held there is no federal common law, but that is what the Court held, and it has continued to be upheld over and over again. That is a continuing problem with the Supreme Court. Even when they clearly overrule a decision they refuse to call it overruled because they prefer to pretend that they have never gotten more than a small handful of cases wrong. So, that then means they need to live with the consequences. So, there cannot be any federal common law. That is well-established, black letter law.

    The exceptions to the Erie doctrine are few. There is no federal common law “absent some congressional authorization to formulate substantive rules of decision, federal common law exists only in such narrow areas as those concerned with the rights and obligations of the United States, interstate and international disputes implicating the conflicting rights of States or our relations with foreign nations. and admiralty cases.” Texas Industries, Inc. v. Radcliff Materials, Inc., 451 U.S. 630 (1981). Patent law is not one of the exceptions, and that should rather clearly mean there is no justification for a federal common law of patents based on the Supreme Court’s own precedent.

    Of course, the Supreme Court doesn’t think that the judicial exceptions and ignoring of the statute is the creation of common law. They have usurped the Congress and supplanted themselves as supreme and final arbiters of patent law and policy. Disgusting in every way. They ignore generation of law when convenient and cite stare decisis to uphold their own idiotic decisions.

  9. Curious December 11, 2018 8:42 am

    So we in the [legal] bar may rightly ask: why do[ judges] believe [they] can create what is, in essence, a “[] common law []” to supplant or modify the existing [] statutes?
    Fixed it for you. And the answer is because that is what judges do — if they don’t like the law, they find some way to “interpret” the law into something they like and/or they fill in gaps of statutory law in a manner that (frequently) leaks out over the edges.

    It takes a very principled judge to say “the legislature already spoke on this issue … I cannot set aside what was created by elected representatives of the people.” However, even the most principled of judges will step over the line to fix a perceived wrong. What happens is that if you stop over the line enough times, you forget that the line is even there.

    BTW … I do not believe too much in labels just as “originalist,” “strict constructionist,” and “textualist.” In my opinion, these are merely excuses to justify certain policy decisions — we know the hot button issues. However, where an “expansive” reading of the Constitution is needed based upon policy needs, these labels get thrown aside. Without getting into a debate over these hot button issues, the salient point is that nearly all judges (particularly those higher up the food chain) are driven by policy — whether they want to admit to it or not.

    I’m not saying I like any of this. However, this is the system we are working in, and I see no cure outside of the legislatures crafting tighter laws with less ambiguities and gaps to fill.

  10. Night Writer December 11, 2018 9:19 am

    To my mind, Alice is very easy to read. The holding is clearly that any claim granted that fails the test in Alice was unconstitutionally granted.

    So it isn’t federal common law, but a test to see whether or not a claim is Constitutional.

  11. Night Writer December 11, 2018 9:33 am

    Oil States. The problem with that decision is that the evidence they used for a finding of fact that the privy counsel was still invalidating patents at the time our Constitution was adopted. The minority contested it and the majority cited to a Lemley “article” in a law “journal.” Law journals are not peer reviewed. Furthermore, it is well documented that there are no ethical standards for law professors. There is no recourse one may take to enforce an ethics complaint against a law professor. A law journal article should carry the same evidenciary weight as a comment on a blog post.

  12. Bemused December 11, 2018 11:02 am

    Gene Quinn@8: “They have usurped the Congress and supplanted themselves as supreme and final arbiters of patent law and policy. Disgusting in every way. They ignore generations of law when convenient and cite stare decisis to uphold their own idiotic decisions.”

    Dang, wish I had said that!

    (All teasing aside, that was perfectly articulated, Mr. Quinn.)

  13. Tim December 11, 2018 12:07 pm

    I learned how terrible and underhanded our legal system was after it cost me a huge sum, after VRNG vs IP Internet was overturned by 2 of 3 unscrupulous judges, “Mayer & Wallach” APPEALS CT, who tossed the case, after Judge Jackson’s 12 man jury found them guilty of infringement on every count 12-0. And Google took it to the “right judges”, even though the only qualified judge Chen who has a degree in computer tech highly dissented. Vringo had Atty David Buies take the case to the Supreme Court and the court wouldn’t even look at the case. And Google “today” is answering to congress (just going thru the motions), and nothing will happen, as Google has padded all with donations. Meanwhile Vringo shareholders lost all! Today, VRNG is no longer FH, but now XSPA and after drops and splits, the stock is at $0.19 a share.

  14. Anon December 11, 2018 12:43 pm

    Night Writer @ 11,

    That is not how the judicial review of a law works vis a vis the law’s constitutionality.

    That elevates a result (and Ends) of a law above the means OF the law.

    One cannot have the same law be and not be “Constitutional” on its face.

    (there is room her for an “as applied” condition, but that does not appear to be what you are talking about). When the “as applied” remains moored on UNSPECIFIED definitions of terms that resolve down to a “I know it when I see it,” you do NOT have the Rule of Law in play).

    be careful here – if you want to dance the “it’s constitutional” dance, for every step you want to take in one direction, I will provide you three steps in the opposite direction.

  15. step back December 11, 2018 1:21 pm

    Curious @9

    There is no legislation that can stop the “creativity” of the judges.
    35 USC 101 says “ANY” new and useful machine, … composition of matter.
    How do you rationally find a hole to squeeze past “ANY”?
    SCOTUS “found” one, their allegedly long held medieval belief system.

  16. Night Writer December 11, 2018 1:28 pm

    @14 Anon

    I get what you are saying and I agree. But it is not ME. It is the justices that have done this.
    The holding of Alice is clear. I have no not seen one rebuttal to my comments where I quote from the Alice decision to illustrate why it is a holding that the claims were unconstitutionally granted.

  17. Curious December 11, 2018 2:03 pm

    Anon @ 14

    That is not how the judicial review of a law works vis a vis the law’s constitutionality.
    Agree. Constitutionality refers to the law — not to a particular patent. Patents are invalid. Law are unconstitutional.

    The problem with SCOTUS (re)writing law is that there is (effectively) no one to tell them when they did a bad job. SCOTUS reviews law — not makes findings of fact. However, they did exactly that in this quote:

    “[M]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it,” thereby thwarting the primary object of the patent laws. Mayo, supra, at ___ (slip op., at 2).”

    First, whether or not monopolization of abstract ideas (i.e., the basic tools of scientific and technological work) “might tend to impede innovation more than it would tend to promote it” is a finding that SCOTUS concocted out of thin air themselves. Also, one would be hard pressed to find a better example of a combination of weasel words than “might tend to impede.” As such, their “finding of fact” is, all reality, less a factual finding and more a supposition.

    As such, the principle that underlies the case law is based upon a GUESS by SCOTUS that certain categories of inventions do not promote the progress of science and the useful arts. Moreover, rather than determining that a patent to a particular invention is troublesome, they are going to throw out the baby with the bath water.

    Let’s look at another quote from Alice: “We have ‘repeatedly emphasized this . . . concern that patent law not inhibit further discovery by improperly tying up the future use of’ these building blocks of human ingenuity.” I would have a problem if SCOTUS cabined their decision to real “building blocks of human ingenuity.” However, with the exception of O’Reilly v. Morse, I cannot recall a Supreme Court case that remotely involved a patent that would legitimately inhibit a real building block of human ingenuity.

    Also, SCOTUS’s comments about “inhibit further discovery” is another finding of fact that doesn’t have a firm basis in reality. In reality, researchers and scientists pay little mind to patents. In the vast majority of instances, to the extent that a researcher or scientist has engaged in an infringing activity, it is so minimal that value of that infringement wouldn’t even come close to justifying the actions of a patent holder in asserting the patent. Patents have little value outside of commercial contexts. As such, there is very little need to protect these so-called building blocks of human ingenuity. Moreover, to the extent that non-commercial entities need protection from patents, that should be the should be the job of Congress to undertake — not SCOTUS.

  18. Caretaker December 11, 2018 2:30 pm

    While I believe that Roe v. Wade was correctly decided and has sound basis in the Bill of Rights, there is not only no support for “judicial exceptions” that are not grounded in a constitutional provision (such as the abstract idea “exception” being required by the right to free speech and thus free thought — “abstract ideas”), but also the Constitution expressly otherwise grants the power to make the patent laws only to Congress, not the Courts. Decisions like Alice are therefore clearly incorrect for these reasons alone — then add on much prior Supreme Court law that Alice directly contradicts. This awful state of affairs — Alice in particular — is one of the greatest disappointments in my legal career, particularly in view of obvious havoc and serious damage it is causing to our country and yet neither the Court nor Congress will take action to undo it.

  19. B December 11, 2018 5:03 pm

    The SCOTUS declared in Bilski that no known definition of “process” requires a machine or transformation, yet said same SCOTUS declared that a “process” must have an inventive concept.

    Just insane.

  20. Anon December 11, 2018 5:35 pm

    might tend….”

    “Might” naturally carries with it “might not.”

    This is a clear sign of projective, subjective and conjectural policy-driven ultra vires re-writing of statutory law in order to reach a desired Ends.

    This is NOT an item of present case or controversy (otherwise, the future projective subjective and conjectural phrase would NOT be used).

    Not only has Separation of Powers been trampled…

    (the Judicial Branch writing the statutory law that is patent law — that has been assigned on a Constitutional basis to a single specific branch of the government — based on policies that the Judicial Branch wants to invoke),

    …but their own Constitutional Limitation of Powers (IF the power they want to use was theirs TO use) is offended. They may not write a policy law so dependent on such conjecture — even if they were allowed to write the law in the first instance.

    Throw into that mess, the Void for Vagueness doctrine being trampled…

    …(set a law with undefined terms resulting in a clear “I know it when I see it, but it remains undefined until I see it),

    and the re-written statutory law by the wrong branch of the government beyond their Constitutional power (even IF they were the correct branch) takes yet another beating.

    Can one earn a triple F with one effort?
    Have the Justices no shame?

    Any (and all) attorneys worth their salt should be appalled by this.
    Non-Attorneys should be appalled by this.

    Even Supreme Apologists should be appalled by this.

  21. Anon December 11, 2018 5:49 pm

    Gene @ 8,

    I will take your comment one step further (and repeat a past point – but on target here):

    The CAFC has labeled the “protocol” set forth by the Supreme Court (the Alice/Mayo ‘analysis’) as Common Law law writing.

    It is bad enough that the Supreme Court bucks and ignores what happened in 1952 when the then Congress became too upset with an anti-patent Supreme Court and stripped the Court of the ability to use Common Law law writing to set the meaning of the term “invention,” gist of the invention,” or any of more than a dozen other like terms.

    The Supreme Court does this by refusing to follow what Judge Rich – the jurist who would know best, since he helped write the statutory law set forth as to why the former single paragraph was broken up into the law of 101/102/103, with Congress opting instead of “invention” or “gist” or the like, to go with the concept of obviousness instead.

    As I indicated, it is bad enough for our Supreme Court to ignore this law.

    But then they set the brow-beaten CAFC to follow in their (undefined) foot steps and ALSO develop Common Law.

    Worse even still, we have the Executive Branch administrative agency adopting the “very same” Common Law law writing for prosecution!**

    Not only is the Judicial Branch encroaching on the powers of the Legislative Branch – so too is the Executive Branch.

    Enough is bloody well enough. Sadly, our legislative branch is so divided (and bought, thanks to the likes of Citizens United), that they do not seem to know or care that their authority has been stolen from them.

    ** I still dream of Iancu waking up one morning and realizing that the Executive Branch should not be engaging in Common Law law writing, and holding examiners to ONLY apply 101 case law on exactingly similar fact patterns (of which, of course, are not there, and could be taken care of with 102).

  22. Anon December 11, 2018 5:52 pm

    Night Writer @ 11:

    A law journal article should carry the same evidenciary weight as a comment on a blog post.

    Bite your tongue – I would put my blog posts on a higher ground, carrying more evidentiary weight. 🙂

  23. B December 11, 2018 6:33 pm

    @Professor Mossoff “It is equally incorrect to say that property rights in land are purely “common law’’

    I think the point of this article is that, since the 1952 Patent Act, the SCOTUS is supplanting statute with its own preferences. Judge Plager’s dissent in Licensing Interval is on point – especially given that it looks a lot like the last brief I filed at the CAFC.

    It only took the Federal Circuit 4-5 years to see this folly. Thank god someone there is reading the occasional brief.

  24. EG December 12, 2018 6:37 am

    “There is no legislation that can stop the ‘creativity’ of the judges.”


    Oh, to the contrary, it’s called jurisdiction stripping. I discuss that in one of the later installments of my article which should be posted later.

  25. EG December 12, 2018 6:40 am

    To all:

    Thanks so very much for your comments. I was hoping that this article would stimulate discussion and dialogue, and you’ve exceeded my wildest dreams. And there should be more to stimulate you with upcoming installments of my article to be posted later. Again, many thanks.

  26. Night Writer December 12, 2018 7:34 am

    Frankly, at the end of the day, I think everyone is kidding themselves. I think patents are finished as real means of innovation. I suspect that in the next downturn that patent filings for inventions made in the USA will drop 40 percent. Already the number of patent filings for inventions made in the USA has dropped over the last five years (which is masked by China building their patent system and filing in the USA.)

    I suspect that the patent system in the USA will be a zombie for the foreseeable future. There is so much money poured into the machines to keep patents down that there is little hope. The CAFC is stacked with anti-patent judges that Obama appointed and were likely chosen by Google. Academia is riff with people that are paid to generate anti-patent literature. The Scotus has been anti-patent for a long time and will continue to be. The Scotus I suspect just buys what large corporations tell them that patents are no longer an effective means of providing incentives for innovation.

    There really is no hope. Patents will become like anti-trust law in that it will continue but only the most egregious violations will be enforced.

    Sorry guys and gals but that’s the way it is. (And just consider how many things I have predicted over the last 10 years that have come to be.)

    And just think of all the people that are getting paid to spend their day destroying the patent system and how the rest of us have to try and save it as part-time warriors.

  27. EG December 12, 2018 8:27 am

    Hey Night Writer,

    Don’t give up the good fight, even though I agree that the current state of the U.S. patent system is alarming . if we who care about U.S. patent system simply give up without fighting them “tooth and nail,” the multinational tech Goliaths will prove they can win by simply by engaging in a “smear campaign” funded by Google bucks and the like. (I share Anon’s view that Citizens United was a huge and egregious error by SCOTUS.) I’d rather go down “with guns blazing” than to allow this new Evil Empire (aka, the multinational tech Goliaths, especially those in SV who’s only allegiance, if you can call it that, is to their shareholders, not the U.S.) to achieve their “efficient infringer” ends. I am “my father’s son” (also a patent attorney and former examiner), and he would NEVER, EVER give up the good fight here.

  28. Eric Berend December 12, 2018 8:27 am


  29. Eric Berend December 12, 2018 8:47 am

    @26., ‘Night Writer’:

    I credit you with being one of the first to recognize the true ‘lay of the land’ in thisd domain. I have tried searching for a comment I wrote that stated much the same from 2015, but I have discovered that all Google-based search sites or services have virtually erased me from referential existence.

    Just yesterday, these corrupt evil bastards admitted, bald-faced, that they deliberately distorted searches for the term “idiot” to show President Trump as the first result shown. It is no mere paranoia, but rather, the ugly truth, that personal and corporate power abuse sentiments are key elements of Google so-called ‘secret’ search “algorithm”.

    “Move Fast And Break Things!”. Assassination alone, is too good for these clowns: a good measure of slow torture is well indicated and deserved, beforehand (disclaimer: the preceding sentence is ideation only. There exists no true intent to act on the notions thereby expressed in said preceding sentence by the author of this comment.).

  30. David Boundy December 12, 2018 8:47 am

    EG, Gene @8, and Anon@21 —

    Each of you have contended that the Supreme Court “held there is no federal common law.” That’s not correct. The Supreme Court held that there is no general federal common law. The Supreme Court provides interstitial interpretation of terms that require interpretation — whether it’s to resolve the tension between “free exercise” and “establishment” clauses of the First Amendment, define scope of “due process” or “equal protection of the laws” in the Fourteenth Amendment, or elaborate the term “invention” in § 101.

    The Wikipedia article on common law is pretty good on explaining the difference. https://en.wikipedia.org/wiki/Common_law#Disambiguate_statute

    I don’t like what the Supreme Court did in BilskiMayoMyriadAlice, but I can’t see where it’s unconstitutional.

  31. Eric Berend December 12, 2018 9:23 am

    As I have predicted, there will be NO potential for positive change and the settlement of legislative and judicial uncertainly that expresses the U.S. Constitutional Patent Clause in its actual founding intent, until a generation of Americans suffers massive economic pain as a result of the loss of technological leadership in the world.

    Once “ordinary Americans” experience being ordered around by Chinese-made robots controlled by Chinese-made AI, then and ONLY then, will they dimly begin to understand. Of course, cue up the “it’s becuase the inventors failed us” canard emanating from the pirate-and-politics stench house of Alphabet/Google/etc., convincing the FRANKLY QUITE STUPID masses that ‘see, we told you patent troll inventors are evil!’.

    I can foresee a time when even the mere mention of being or having been an inventor, will result in violent impromptu attacks in public or private, against that unfortunate person.

    Now go ahead – brand me crazy or insane for expressing such a notion. However, I would remind the reader that every single prediction I have made thus far seen in this forum, has come true. I cut my mental teeth on astronomical science and designing simulations – both in game form and otherwise – from when I was six years old.

    Prognostication is my strongest suit. In a 2004 bankruptcy proceeding for the sale of an asset comprised of a U.S. patent for microengineering technology, before the U.S. Bankruptcy Court, District of Massachusetts (the Standard MEMS case), in a prospectus seeking investment for this purpose, my projected bid before the hearing predicted a winning bid of $35,000. At the hearing, the actual inventor appeared and submitted a winning bid of $33,000. (There wasn’t sufficient investment gathered by me to that point, so I bid what was assured, at $25,000).

    Those esteemed attorneys practicing in bankruptcy will recognize the one-time, sealed-bid nature of such sales. It’s certainly not like the stock markets. If the winning bid was $100,000, there would have been no opportunity to re-price or re-bid according to the revealed price of another bid received. The pricing prediction described above, was but one example of my ability in this regard, across a variety of industrial disciplines.

    Still so sure I am ‘talking crazy’ when I predict future violent perpetrations against anyone called an “inventor”? I have more examples similar to that described above. And, to the very point of my prediction: Google/Alphabet has demonstrated, time and again, that it acts as if U.S. law does not apply to it and the activities of it and its IP pirate ilk, the denizens of SiliCON Valley.

    Their vicious and brutal destruction of the inventor in the United States of America, amply demonstrates that if there is a possibility of deflecting ignorant public opinion with a further calumny engendering out-and-out violent attacks against inventors, they would gladly do it. The sheer zeal with which they have created such public hatred for actual, real-life inventors, also amply demonstrates that there would be absolutely no compunctions about perpetrating such a further crime (beyond that already committed).

    Motive, means opportunity.
    Need I remind those august members of the Bar reading this who have practiced in criminal law, that there is a mountain of evidence supporting these contentions?

    Need I remind the reader: their heartfelt, dyed-in-the-wool, set-in-stone modus operandi is –


  32. Eric Berend December 12, 2018 9:27 am

    Correction: ^ ^ ^

    for my comment above, where it reads

    “Motive, means opportunity.”

    should read instead as

    “Motive, means, opportunity.”

    (YES! – it’s a proverbial “missing comma”!)

  33. Anon December 12, 2018 10:49 am

    Night Writer,

    That which falls may rise again.

  34. Gene Quinn December 12, 2018 10:51 am

    David @30-

    As I explained at comment #8, the Supreme Court explained the exceptions to the Erie Doctrine in Texas Industries, Inc. v. Radcliff Materials, Inc., 451 U.S. 630 (1981). Patent law is not one of the exceptions. So if you want to say there is no “general federal common law” that is fine, but there is still no common law of patents unless and until the Supreme Court overrules the Erie Doctrine and Texas Industries.

    We all know the Supreme Court will NEVER overrule the Erie Doctrine, and they won’t overrule Texas Industries either. So, you can pick and choose whatever precedent you want that may support you, and I can pick and choose whatever precedent will support me. In absolute terms however, the precedent is on my side because the statements in cases that are still good law and have not been overruled are extremely direct.

    There is no federal common law “absent some congressional authorization to formulate substantive rules of decision, federal common law exists only in such narrow areas as those concerned with the rights and obligations of the United States, interstate and international disputes implicating the conflicting rights of States or our relations with foreign nations. and admiralty cases.” Texas Industries, Inc. v. Radcliff Materials, Inc., 451 U.S. 630 (1981). Patent law is not one of the exceptions.

  35. Anon December 12, 2018 11:15 am

    or elaborate the term “invention” in § 101.

    Mr. Boundy, respectfully, that was expressly taken out of the hand of the Court in the Act of 1952.

  36. David Boundy December 12, 2018 11:20 am

    Gene@34 —

    I think we’re talking past each other. Texas Industries says what I thought it would say — “There is, of course, ‘no federal general common law.'” Texas Industries explains the execptions, where a federal court can act with no grounding in statute. For example, courts can write on an empty slate for federal debt securities — courts can develop rules for federal securities even where the statute is entirely silent. They can’t do the same thing for securities in private companies–those laws have to be either by statute or regulation.

    But I said something very different–I pointed out that federal courts have the power to “interpret,” to formulate interstitial common law. The paragraph of Texas Industries that you mention doesn’t mention patent law, because taht paragraph is only about “general” common law. Texas Industries doesn’t say a doggone things about interstitial, interpretive common law.

    You see this everywhere — who has the power to take two contradictory laws and resolve the conflict? The courts. Who has the power to resolve the meaning of “product” in 35 USC § 271? The courts. And who has the power to decide the meaning of the word “invention” in § 101? The courts.

    Again, I don’t think the Supreme Court has done so wisely. But that’s a different issue.

  37. David Boundy December 12, 2018 11:28 am

    Another example to show the difference between “general” common law and “interstitial.”

    Remember the “hot news” case, International News Service v. Associated Press, 248 U.S. 215 (1918)? A federal court could create a cause of action for misappropriation of “hot news,” with no statutory grounding, before Erie but not after.

  38. David Boundy December 12, 2018 11:41 am

    Sorry to be dribbling this out.

    Remember your first year contracts, torts, and property courses? Most of the law in these areas has no statute. State courts have the power of “general common law” and can create new torts like “intentional infliction of emotional distress” out of thin air and personal sense of justice. That’s the “general common law” power that federal courts don’t have.

    Remember, in your first year legal writing class, you learned how to take advantage of ambiguities in statute, and frame an argument to pull a court your way in resolving the ambiguity. Every court has that power, including federal courts. That interstitial power to interpret extends to every federal statute.

    Did you notice that you left out the word “general,” except when you’re quoting either Texas or me? That’s the word that makes all the difference.

  39. David Boundy December 12, 2018 12:11 pm

    Or another example, The canons of claim constuction. Statutory? No. Entirely common law. But because the rest of the Patent Act can’t be rationally administered without canons of claim construction, federal courts have the power of interstitial common law to make up these canons. Are they any less “law,” or are they unconstitutional, because they’re federal common law instead of statute?

  40. EG December 12, 2018 12:19 pm

    Hey David,

    Whether or not we agree, I really do appreciate your comments here. The issues here are of profound significance on the continuing vitality of the U.S. patent system, and especially a consistent and balanced treatment of patent law jurisprudence.

    What gives me, Gene, and many others in the patent bar “heart burn,” as well as leading us to suggest SCOTUS is engaging in a forbidden “federal common law of patents” is how UNBALANCED and generally patent-adverse the rulings from SCOTUS have been for over decade. Even worse, it reflects a continuing pattern that has occurred at least twice, first before the 1952 patent statutes were enacted, and later before the Federal Circuit was created in 1980. And that pattern is without regard to whether the Justice is considered to be “liberal” or “conservative.” In this regard, please consider the further installments of my article, one of which was just posted today.

    You may not feel this way, but I, Gene and others in the patent bar are frankly outraged by how SCOTUS feels it is free to bend patent policy to its will, using factually unsupported assertions such as how “patents may inhibit research” (there being not reliable proof of such assertions), especially given that the Patent Clause makes clear that patent policy is for Congress and Congress alone to determine what that policy is. In other words, what I’m addressing here in my article is a serious “separation of powers” issue that the Justices of SCOTUS (other than Gorsuch and perhaps Kavanaugh) seem to feel free to ignore or give lip service to. Again, read the follow up installments of my article and you’ll see why I’m concerned (as well as appalled) by how SCOTUS acts when it comes to patent law jurisprudence.

  41. Anon December 12, 2018 1:46 pm

    Interstititual and interpretations have NOT been what the Court has been doing in the area of 101.

    Stevens lost his majority position in Bilski because he would have expressly over-written words of Congress.

    You hearken back to law school days reminds me of the one hour six minute mark of the film The Paper Chase (1973).

    One of the critical aspects that I have seen in the modern era is a more careful view of separation of powers and other foibles of the Supreme Court. And to me, this is far more healthy than an over-fawning view that the Court can do no wrong (that they are Supreme and final and don’t bother with challenging them).

    Especially in patent law, wherein challenges to such cases as Benson and Flook brought about Diehr and Chakrabarty, and that we NEED challenges to what the Court is doing with 101 (as being evidenced with EG’s series).

  42. Gene Quinn December 12, 2018 1:53 pm


    The Supreme Court can certain resolve meaning between statutes, but the problem is with 101 there is nothing to resolve. The meaning of the statute is perfectly clear on its face. Instead, the Court has decided to foist on the industry what they admit is an extra-statutory test. They have created their own test that is separate and additional to the statute. Is that the creation of common law? It sure seems that way, and it seems to violate the exceptions set forth in Texas Industries.

    The problem you have is you are trying to rationalize what the Court did when there can’t be any rationalization. They didn’t seek to define the meaning of the word “invention”. There is nothing in any of their cases that defines the word, although in Step 2B we hunt for it, whatever it is. They also have created an entire body of common law around what is an abstract idea because they won’t define that term, which is a term not found in the statute. Same goes for “significantly more.”

    If the Court limited itself to resolving the meaning of terms in the statute that would be perfectly fine, but you are comparing apples and oranges when you say that is all they have done with 101 and that is why they haven’t created federal common law. They have done far more than interpret terms, they have legislated from the bench, ignored the simple and plain meaning of the statute that was settled by the same Supreme Court in Chakrabarty and Diehr for 30+ years and caused the creation of volumes of common law that has nothing to do with the statute because the terms and concepts find absolutely no basis in the statute. By definition they have created a general common law of patents, and that is not one of the Erie exceptions.

  43. Gene Quinn December 12, 2018 2:10 pm


    Your attempts to poke holes in this are too cute. Really? You are likening canons of statutory construction to the usurpation of Congressional authority the Court has undertaken relative to 101?

    OK. I’ll bite.

    Sure, the Supreme Court can legitimately engage in construing a statute.

    Now, how about you explain how creation of an entirely and admitted extra-statutory regime that goes beyond a simple one-sentence statute is merely construing a statute? Clearly, the Supreme Court is not construing 101. They have implemented an entirely new and extra-statutory test that goes on top of the statute, and that test has required federal courts to create case law interpret the language used in that extra-statutory test. None of that is authorized by the Constitution, the Statute, Erie, Texas Industries or any other Supreme Court case.

  44. David Boundy December 12, 2018 2:59 pm

    EG@40 and Gene@42 —

    I couldn’t agree more — Bilski, Mayo, Myriad, Alice — EXTREMELY unwise. Verging on irrational. Unbalanced. Fact-finding without evidence on appeal. You bet. All of that stuff. But those are all Federal Rules of Civil and Appellate Procedure issues. Not the constitution.

    Unfortunately, the quartet are grounded enough in the statute, the word “invention,” that it’s not unconstitutional. The factual and economic bases of your complaints are entirely valid — I agree with them. But a legal argument only works if the right facts are connected to the right law. It doesn’t work to try to hook your facts into the “general common law” point of Erie or Texas Industries.

  45. David Boundy December 12, 2018 3:43 pm

    § 101 may be perfectly clear to you, and when you get a Presidential appointment and Senate confirmation, then your opinion counts, as one of nine.

    Last time the nine who then counted were asked, the language of § 101 was perfectly clear to them too, the other way, That’s the kind of ambiguity that’s within judicial interstitial common law authority.

    Let’s apply your reasoning to the canons of claim construction. What term in the statute requires the canons?

    Another similar example — Metalizing Engineering/D.L. Auld one-year secret commercial use forfeiture. Is it in the statute? Nope. Pre-AIA § 102(b) only applies to public use, and the Metalizing Engineering bar only applies to non-public use (and it only bars the individual inventor, it’s not prior art against the world), so Metalizing Engineering is not § 102(b). Any other statutory grounding? Well, “abandonment” of § 102(c)? But “abandonment” and “commercial use” are kind of at odds, right? Nonetheless, we accept that Metalizing Engineering has sufficient grounding in the statute that we don’t challenge it as unconstitutional. The Helsinn case challenges it as nonstatutory, but not unconstitutional.

  46. A Rational Person December 12, 2018 4:39 pm


    Further to your point about the Supreme Court creating an extra-statutory regime with respect to 35 USC 101, here is the justification from Alice for the Supreme Court’s judicial exception:

    “We have long held that this provision contains an important
    implicit exception: Laws of nature, natural phenomena,
    and abstract ideas are not patentable.” Association
    for Molecular Pathology v. Myriad Genetics, Inc., 569
    U. S. ___, ___ (2013) (slip op., at 11) (internal quotation
    marks and brackets omitted). We have interpreted §101
    and its predecessors in light of this exception for more
    than 150 years. Bilski, supra, at 601–602; see also
    O’Reilly v. Morse, 15 How. 62, 112–120 (1854); Le Roy v.
    Tatham, 14 How. 156, 174–175 (1853).
    We have described the concern that drives this exclusionary
    principle as one of pre-emption. See, e.g., Bilski,
    supra, at 611–612 (upholding the patent “would pre-empt
    use of this approach in all fields, and would effectively grant a monopoly over an abstract idea”). Laws of nature,
    natural phenomena, and abstract ideas are “ ‘“the basic
    tools of scientific and technological work.”’” Myriad,
    supra, at ___ (slip op., at 11). “[M]onopolization of those
    tools through the grant of a patent might tend to impede
    innovation more than it would tend to promote it,” thereby
    thwarting the primary object of the patent laws. Mayo,
    supra, at ___ (slip op., at 2); see U. S. Const., Art. I, §8, cl.
    8 (Congress “shall have Power . . . To promote the Progress
    of Science and useful Arts”). We have “repeatedly
    emphasized this . . . concern that patent law not inhibit
    further discovery by improperly tying up the future use
    of ” these building blocks of human ingenuity. Mayo,
    supra, at ___ (slip op., at 16) (citing Morse, supra, at 113).”

    There are at least two major problems with the Supreme Court’s alleged justification for their judicial exception:

    1. There is no explanation in the Court’s “justification” of why the Supreme Court’s 150 year old practice of interpreting patent eligibility 35 USC 101 and its “predecessors” was not affected by the 1952 Patent Statute.
    2. There is no explanation in the Court’s “justification” as to why 35 USC 112 does not address the “pre-emption” issue which the Supreme Court asserts justifies their use of the their judicial exception.

    Therefore the problem with how the Court has interpreted 35 USC 101 is he problem is with 101 is not only that “there is nothing to resolve” but that the “gap” in the statute regarding “pre-emption” that allegedly justifies their extra-statutory scheme also doesn’t exist but is instead handled by 35 USC 112, a section of the Patent Statute that the Supreme ignore in their decision in Alice.

  47. Caretaker December 12, 2018 4:48 pm

    David Boundy:

    Alice is not grounded in the word “invention.” It is only grounded in a supposed “judicial exception,” which, in Alice, is pure semantic antics in holding an actual apparatus or physical method is an abstract idea. That is total nonsense as well as unconstitutional given the plain wording of 101 by CONGRESS, which has sole authority in that arena according to the express wording of the Constitution.

  48. A Rational Person December 12, 2018 5:19 pm


    The basis for the Supreme Court’s use of its judicial exception in Alice is as follows:

    ““We have long held that this provision contains an important
    implicit exception: Laws of nature, natural phenomena,
    and abstract ideas are not patentable.” Association
    for Molecular Pathology v. Myriad Genetics, Inc., 569
    U. S. ___, ___ (2013) (slip op., at 11) (internal quotation
    marks and brackets omitted). We have interpreted §101
    and its predecessors in light of this exception for more
    than 150 years. Bilski, supra, at 601–602; see also
    O’Reilly v. Morse, 15 How. 62, 112–120 (1854); Le Roy v.
    Tatham, 14 How. 156, 174–175 (1853).
    We have described the concern that drives this exclusionary
    principle as one of pre-emption. See, e.g., Bilski,
    supra, at 611–612 (upholding the patent “would pre-empt
    use of this approach in all fields, and would effectively grant a monopoly over an abstract idea”). Laws of nature,
    natural phenomena, and abstract ideas are “ ‘“the basic
    tools of scientific and technological work.”’” Myriad,
    supra, at ___ (slip op., at 11). “[M]onopolization of those
    tools through the grant of a patent might tend to impede
    innovation more than it would tend to promote it,” thereby
    thwarting the primary object of the patent laws. Mayo,
    supra, at ___ (slip op., at 2); see U. S. Const., Art. I, §8, cl.
    8 (Congress “shall have Power . . . To promote the Progress
    of Science and useful Arts”). We have “repeatedly
    emphasized this . . . concern that patent law not inhibit
    further discovery by improperly tying up the future use
    of ” these building blocks of human ingenuity. Mayo,
    supra, at ___ (slip op., at 16) (citing Morse, supra, at 113).”

    1. Given that the Court based their decision in Alice to in light of “150 years” worth of decisions with no discussion of any effect of the 1952 Patent Statute, how is the Supreme Court’s decision in Alice “grounded enough in the” Patent Statute of 1952?

    2. In deciding that that their decision to invoke their judicial exception is based on their concerns about the “exclusionary principle of pre-emption” why was the Supreme Court able to ignore 35 USC 112 of the 1952 Patent Statute which addresses the exclusionary principle of pre-emption by requiring what is claimed in a patent be enabled by the disclosure of the patent? How is the Supreme Court’s decision in Alice “grounded enough in the” Patent Statute of 1952 given that the Supreme Court does not address why they think 35 USC 112 is insufficient to address their concerns about pre-emption?

  49. Anon December 12, 2018 5:26 pm

    Gene @ 42,

    Notably, Mr. Boundy has not responded to my posts @ 35 and 41 – the late great Judge Rich spoke about this (and he more than any other jurist would know of what he spoke, having helped Congress write that law).

    I will note that the attorney oath for the Commonwealth of Massachusetts is perhaps the only State Oath that does not clearly and expressly place an attorney’s duty to the Constitution above treating the judiciary as a favored client.

    Mr. Boundy has been a great champion of strong patents (and the proper placing of an administrative state apparatchik in its proper place), but when it comes to the Supreme Court, I have found his views just do not measure up to that same champion state. This is not to say that Mr. Boundy is a “bad person,” but his views as to the Supreme Court do take on more of a “the Court is my client” tone than one of a “All three branches are properly below the Constitution” tone. I view not treating the Supreme Court with disdain (when such disdain is deserved) to be problematic for a healthy legal system. Whether apocryphaial or not, one of my favorite Ben Franklin quotes is: “It is the first responsibility of every citizen to question authority.”

    And the Supreme Court should be questioned supremely (was it Madison in the Federalist Papers that warned of a too-powerful Central Court?) Federalist paper 51, if I recall correctly? NOT placing the Supreme Court within the checks and balances (making them “Supreme”) is simply a critical legal error.

  50. step back December 13, 2018 12:25 am

    Caretaker @47,

    Alice/Mayo is very much grounded in the word “invents” as found in 35 USC 101 (“Whoever invents any …”).

    What the Justices are saying is that they are all seeing and thus know what you the inventor truly “invented” last summer. They know what your devious deceivious scrivener added on as noninventive camouflage.

    That is why they have their 2-step strip poker game. First they use the magical compass to extract the abstract idea your claim is truly “directed to”. Then they use the dunk-the-witch twice test to strip away the camouflage (all the merely conventional, routine and well-understood stuff) your scrivener added so as to reveal the naked abstract witch. It’s all very rational stuff.(**)

    **You do understand of course that I hold the SCOTUS in extreme low esteem. They are mere sell outs to the corporate interests that brung ’em to the party. The end goal is to own all three branches of government.


  51. Mark Martens December 13, 2018 5:49 am

    Eric, systems often result from ‘incremental change’, one little step at a time.

    I’m an inventor, and within a year or two of my startup receiving patents, the AIA the economic value of all IP began to plummet. Within a year or two of the crashing values of IP I began receiving attention from ‘interested parties’ to purchase that IP at some kind of symbolic cost recovery price. Later it turned out to be Apple and then probably Google.

    I’m a chronic innovator, and have many more startups to launch, but I’m not likely to be willing to through the US patent application process again, even if I had the resources. Perhaps not ever. Small inventors have been effectively shut down as innovation disruptors in the economic system.

    Isn’t THIS perspective relevant to the matter at hand ?

  52. Night Writer December 13, 2018 5:49 am

    I am going to maintain that the holding of Alice is clearly that a claim that fails the test in Alice was unconstitutionally granted. The arguments about common law are just not applicable to Alice. The discussion above regarding the interpretation of the word “invention” in 101 is simply not on point.

    Laws of nature, natural phenomena, and abstract ideas are “ ‘“the basic tools of scientific and technological work.”’” Myriad, supra, at ___ (slip op., at 11). “[M]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it,” thereby thwarting the primary object of the patent laws. Mayo, supra, at ___ (slip op., at 2); see U. S. Const., Art. I, §8, cl. 8 (Congress “shall have Power . . . To promote the Progress of Science and useful Arts”).

  53. Night Writer December 13, 2018 5:52 am

    I really am confused why many highly respected patent commentators are ignoring this passage in Alice and the other 101 cases. The Scotus has clearly and unambiguously tied their Alice holding to the Constitution. And yet, commentators continue to argue about the creation of common law originating from common principles and not becoming afoul of the Constitution.

    Any discussion of Alice that is not based on the passage I quoted above from Alice is simply not on point and incorrect.

  54. David Boundy December 13, 2018 6:30 am

    Anon @49 @41 and @35 —

    I haven’t responded to you because I have told you that I don’t engage with you. You don’t think clearly and don’t write clearly, and there’s no point. Look at your own posts . You disagree with the Court’s statutory construction. That’s fine. I do too. But that isn’t a constitutional issue. The fact that you don’t even recognize that that’s the problem is the reason I don’t engage with you.

  55. Anon December 13, 2018 7:01 am

    The Judge Rich view on what the Act of 1952 entailed is clear, and goes well beyond a statutory construction issue.

    Your reasoning falls short Mr. Boundy.

  56. Anon December 13, 2018 8:07 am

    Additionally Mr. Boundy, I have been more than clear as to (actual) Constitutional infirmities pertaining to what the Supreme Court has been doing (and you are well aware of this, due at least to one of those items being that the Void for Vagueness concept applies outside of the criminal law context — a discussion point between you and I inwhich my view was shown to be the better one).

    Certainly, separation of powers, lack of actual present case or controversy (the Court grounding their decision in a futuristic, subjective, projective, and conjectural “may” and “might” — which necessarily include “may not” and “might not”), and the Void for Vagueness issues are Constitutional issues.

    Maybe that “not thinking clearly” belongs to you when the topic is the Supreme Court and their place in our checks and balances, government of limited powers architecture.

  57. EG December 13, 2018 8:24 am

    “Isn’t THIS perspective relevant to the matter at hand ?”

    Hey Mark Martens,

    Highly relevant. One need only look at Edison’s light bulb. If remember correctly, it a is combination of 8 or so incremental changes, none of which by themselves is startling. In fact, I my memory serves correctly, the original prototype of Edison’s light bulb continued to work for at least a century (100 years), but it that form, may not have been commercially feasible to mass produce.

  58. David Boundy December 13, 2018 8:47 am

    Night Writer @53 — another perfectly good argument that Alice is constitutional. Profoundly unwise, and in violation of a number of principles of statutory construction, and Federal Rules, but not unconstitutional.

  59. EG December 13, 2018 8:52 am

    Dear David,

    I suggest you take note of the two comments by “A Rational Person”: How can SCOTUS possibly say what they said in that quote, yet ignore what Section 101 says which is part of the 1952 patent statutes?

    The original title of my article suggests that SCOTUS has exceeded its Constitutional mandate which is to interpret law, especially as Congress has enacted it which includes the 1952 patent statutes, not make law, or especially change the meaning of the patent statutes as enacted and intended by Congress.

    We may have to “agree to disagree” on this point, but that is exactly what SCOTUS has done with patent law jurisprudence. For example, how can the Imperious Seven (as I call them) characterize a granted patent as merely a “public franchise” in Oil States when Congress in Section 261 characterizes it as “having the attributes of personal property? As far as I’m concerned that’s not the Rule of Law, but instead the Rule of Judicial Fiat.

    What’s even worse is that patent law jurisprudence isn’t even a level playing when it comes to SCOTUS. Tell me how many times has SCOTUS upheld a lower court ruling that the patent/claims are valid versus deeming them invalid? Even more significant, can you even point me to a ruling by SCOTUS since 1952 that has overturned a ruling of patent invalidity by the lower court? I thought Justice was supposed to be Blind. But with the manifest anti-patent bias of SCOTUS, it’s obviously not Blind.

    If you sense that I’ve got a very low opinion of SCOTUS as being impartial on patent law jurisprudence, you would be correct. I am “my father’s son.” My late father, also a patent attorney for over 30 years and a patent examiner before that for over 10 years, had an equally low opinion of SCOTUS. Dad would often say “what’s Constitutional is what 5 or more Justices of SCOTUS say is Constitutional,” and I can tell you my Dad was being very cynical and sarcastic.

    My Dad also believed in justice, fairness, and equality. Frankly, that’s not what SCOTUS appears to believe, especially with respect to patent law jurisprudence. Instead, it feels free to exercise its own political agenda, whether or not that is what Congress has expressed or intended in the patent statutes. Indeed, the number of rulings by SCOTUS adverse to the patent owner/inventor speak louder than words.

  60. David Boundy December 13, 2018 10:16 am

    EG —

    Perfectly good statutory construction arguments. But not a constitutional argument. If your argument held water, where would antitrust law be? Compare current law against the text of the Sherman Act, sections 1 and 2.

    The problem is that you’re applying the standard by which an agency is bound by its own regulations, and has only very narrow latitude to interpret, to a different context, the range of interpretation available to an Article III court. The two are wildly different. It’s grounded in history — remember that courts have had inherent authority to make up concepts like “fee simple” and “life estate” and promissory estoppel out of whole cloth for 800 years, while agencies have no such inherent authority, only the authority delegated by Congress. Applying one standard in the other context is not correct.

    I have no gripe with your “not level playing field,” and “justice, fairness, and equality” observations. By and large, I agree with them. As statutory construction arguments. But they’re not plausible as constitutional arguments.

    It seems everyone else has tuned out intellectually, and is no longer paying attention to even the dividing line between where I agree and where I disagree, and continue to argue for the sake of argument. I’ll end my participation here.

  61. Night Writer December 13, 2018 10:45 am

    My last comment about this is that if you read the Alice passage in @52, you will see that it is not a statutory interpretation, but a Constitutional issue.

    That means that no matter what the statute says, Alice is still good law. There are some good journal articles that were written about the issue of how Congress can try to get around this. But just rewriting 101 as has been suggested would not change Alice.

  62. David Boundy December 13, 2018 1:14 pm

    Night Writer @61 —

    We were acutely aware of this problem on the ABA § 101 committee. The antidote, I think, is to embed the opposite language from Diamond v. Diehr, langauge that fell out of Bilski/Mayo/Myriad/Alice: ” The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” If the Court said so in 1981, it seems to me impossible that a future Court would renege on that.

    Thank you for engaging at an adult reading level, and for injecting some reality.


  63. step back December 13, 2018 2:01 pm

    Mark Matens @51 writes:

    Small inventors have been effectively shut down as innovation disruptors in the economic system. Isn’t THIS perspective relevant to the matter at hand ?

    Yes. You are right on target.
    The Supreme Court pretends that it is promoting progress in the useful arts (per Constitution Art. 1, section 8, clause 8) but in fact it is doing the exact opposite.

    All part of a grand scheme:

  64. Gene Quinn December 13, 2018 2:13 pm

    David @60.

    You say: “If your argument held water, where would antitrust law be?”

    The problem is the arguments do hold water. You continue to try and make sense out of a bunch of Supreme Court decisions that cannot be reconciled, which is precisely the point. They say bold and sweeping things, and then do whatever they want.

    It isn’t for us to determine where antitrust law would be, but rather for the Court to explain why they aren’t following their own precedent.

    This is a very serious and recurring problem with the Supreme Court. They won’t overrule any of their decisions, they ignore prior rulings whenever convenient, come up with exceptions to doctrines — like the Erie Doctrine — and then don’t apply them except when it suits them. Then you tell us that our arguments don’t hold water because clearly there is a federal common law just look at all the places where the Supreme Court has violated what they have said in Erie and Texas Industries.

    You are proving my point, albeit unwittingly.

    You also say: “remember that courts have had inherent authority to make up concepts like ‘fee simple’ and ‘life estate'”

    While courts do have that authority, federal courts do not have that authority, which is precisely the point of the limitations found in the Erie Doctrine and why there is supposed to be a limitation on the Constitutional power of the Supreme Court. That is precisely why there are limits to where and when SCOTUS can make federal common law.

    By any reasonable definition, SCOTUS has way overstepped here. And while you continue to say that the extra-statutory regime implemented by the Supreme Court is an attempt to define the word “invention” there is no textual support for that in any of the Supreme Court’s own decisions. Perhaps they could have and should have done that, but rather arrogantly they have simply added a layer of federal common law on top of the statute, which is not their right to do under Erie and Texas Industries.

  65. David Boundy December 13, 2018 2:22 pm

    Anon @56 —

    This is why I do not engage with you. We had the same discussion some time ago. I started by saying “void for vagueness only applies to criminal and for constitutional rights.” That’s all that’s in my 30-year-old ConLaw book (Nowack & Rotunda, 4th Ed. 1991). That was not 100% correct. You pointed out, correctly, that “void for vagueness” also applies to statutes that impose “civil penalties.”

    But I responded that “civil penalties” statutes are statutes that are quasi-criminal, designed to compensate for broad societal harms or harms to the government, or penalties that are high enough to punish. They’re often statutes that are violated by companies, so you can’t put the offender in jail, so “civil penalties” are the next best thing. I pointed out that several constitutional principles that we normally think of as “criminal” also apply to “civil penalties” statutes. I may have given you a list once, I don’t remember.

    In other words, as I pointed out, your exception prooves the rule.

    So here we are again, as if none of the rest of the conversation happened after you first pointed out the error.

    “Void for vagueness” applies to criminal and, I acknowledge, quasi-criminal “civil penalties” statutes, and to First Amendment speech (it might apply to other liberties, who knows). It doesn’t apply to routine civil statutes. At least not according to my 30-year-old ConLaw book (which doesn’t even mention “civil penalties”) or Wikipedia. You’ve never addressed that or provided a counterexample, You just ignore the latter half of the conversation as if it didn’t occur.

    Anon, you don’t read carefully, you don’t engage meaningfully with what others have said, and you don’t test what you’re about to say against a common-sense understanding of the real world before you hit “Submit.” This is why I don’t engage with you.

  66. Anon December 13, 2018 2:42 pm

    That means that no matter what the statute says, Alice is still good law.

    Which only goes to show that Alice is ultra vires, as the ability to pass patent law (“no matter what the statute says”) is NOT granted to the Judicial Branch.

    This, on top of what I noted earlier in that the constitutionality (or lack thereof) of a law is NOT how you see the Court handling the current law [and yes, Night Writer, I do remember your agreement with that point].

  67. David Boundy December 13, 2018 3:18 pm


    You get the last word. And that word is “general.” Which you left out again.

    Your discussion @ 64 is perfectly good as a statutory construction argument.

  68. Anon December 13, 2018 4:28 pm

    Mr. Boundy,

    You have recast and spun our prior conversation. The point there was NOT you going beyond criminal and including “and Constitutional rights.”

    That was my correction to your original position.

    Instead of saying thank you, I get spin and insults. That must have been quite a nerve I touched.

  69. Pro Say December 13, 2018 4:36 pm

    Whew! Yet when all the above is said and argued over, we’re all still left with these two unfortunate facts:

    1. SCOTUS is going to continue to do whatever it wants with impunity.

    2. The only one who can stop it — Congress — refuses to do so.

    With American innovation paying the price.

  70. Anon December 13, 2018 4:36 pm

    Speaking of “common sense understanding of the real world:”

    If the Court said so in 1981, it seems to me impossible that a future Court would renege on that.

    Someone has not been paying attention to what the Supreme Court has been doing.

  71. David Boundy December 13, 2018 5:05 pm

    Gene @64:

    Against my better judgment, I’ll ask one more question. Section 1 of the Sherman Act reads —

    Every contract, combination in the form of trust or otherwise, or conspiracy, in restraint of trade or commerce among the several States, or with foreign nations, is declared to be illegal.

    I recall the casebook’s first case, from a year after the statute was enacted. It was some kind of routine contract case. One party wanted out just because the contract “restrained” in some sense. The court took “every” literally, and invalidated the contract.

    It didn’t take long for courts to realize that that didn’t work. So, since the 1890s, courts have been readapting so that “every” now means “every restraint of trade that doesn’t meet a ‘rule of reason’ that balances pro-competitive and anti-competitive effects.”

    Is the antitrust rule of reason unconsitutional because the statute says “every?” Every exclusive patent license? Every contract that involves a patent, and thereby restrains? Every exclusive dealer contract? Every contract with a “thou shalt not” covenant?

    Of course not. Because that’s what courts do.

  72. EG December 13, 2018 8:54 pm

    To all:

    I appreciate very much all the comments you’ve provided, far more than I could have ever imagined. That includes those from David Boundy who I’ve known for many years and who’s understanding of administrative law we, who practice primarily in the patent arena, would do well to take notice of. His view that the problem we have here with SCOTUS when it comes to patent law jurisprudence is a statutory construction versus a constitutional issue is a valid point whether you agree with it or not. Believe me, even if David sees the problem differently from some of us, he is just as distressed as we are by how SCOTUS mucks up patent law jurisprudence, especially as it relates to Section 101. So please, please for at least my sake let’s keep the dialogue and debate civil and respectful, unlike that “other patent blog” where just about “anything goes.”

  73. David Boundy December 14, 2018 9:00 am

    Thanks Eric.

    Eric makes the important point–we’re all on the same side here. The BilskiMayoMyriadAlice quartet is badly reasoned, badly misguided, and badly damaging to the economy.

    My point is that to be persuasive, our side has to be credible. The Constitution does not bar bad reasoning or bad policy. Most of the arguments in Eric’s article and in this discussion make fine statutory construction, FRAP, or policy arguments. But they just don’t work as constitutional arguments. The constitutional arguments that I’ve seen here don’t help us move the ball, at least not in the helpful direction.

    So my request is — Please read. Read carefully. Don’t misquote your sources. Don’t misquote the argument you’re replying to. Don’t omit the single most important word from the sentence you quote. Don’t take isolated sentences out of context. Think. Test your hypothesis against what you know by your common sense — do similar cases come out your way on similar reasoning? Are there counterexamples that any competent lawyer will know? Does your reading of a specific case square with what you know of general legal trends? Does your explanation look facially plausible? Do all that, and THEN hit Submit.

  74. Anon December 14, 2018 9:57 am

    …and don’t assume that your view of the Constitutional issues must be correct and that the other side has not thought about the issues before they hit “Submit.”

    As noted, there is a bit of dismissive attitude being “enjoyed” on several of these issues — issues which have been fleshed out over a number of years here.

    Issues such as what the Act of 1952 did (as explained by Judge Rich) — and how this 101 stuff is not “interstitional” but runs to the core of why Congress opted instead to create section 103.

    Issues such as the Supreme Court does have limits to its powers (and that limit is not set aside because the Court merely wants to legislate from the bench).

    Issues such as just how severe should we be in our discussions of the Court’s actions (which, it should be noted, are not the same as how we should advocate if we were ever in front of the Court itself). In my view, there is simply too much “kid gloves” with the Court, and that kid glove treatment itself fails the called for “common sense understanding of the real world.”

    Very much part of that common sense understanding of the real world is the necessary realization that the score board itself is broken.

    We will never fix the scoreboard if we pretend (either out of “professional courtesy,” civility, or even philosophical alignment) that the scoreboard is not broken.

  75. Chris W December 20, 2018 7:54 am

    Excellent topic and some really great contributors, thanks to all.

    I see Frankfurter’s assertion of no fed. common law in Erie RR case as overturning Swift v. Tyson, in which Justice Story basically ensured that federal common law would survive even in the absence of a gold standard. Isn’t the lack of fed. common law almost akin to declaring that we are not operating at Law, but rather that everything is being done in Equity ? And the inconsistency of decisions we’ve seen the past decade or more, isn’t that itself, evidence of lack of fed common law ? I’m inclined to believe the sup. ct. is acting in equity in all cases, and merely administratively making public policy, even though it has the appearance or color of acting at law in some’s minds. Look at the sup. ct. as being a chancery court, do the decisions make more sense that way ? I ponder, that there actually IS federal common law, it is called the Uniform Commercial Code, and is equity. Think of the law of the sea having encroached on terra firma. It serves essentially, the interests of the monied merchant class, right ?

  76. ChrisW December 20, 2018 8:30 am

    I’d put this discussion in my top 5 favorites of all time, you guys are really getting to the kernel of this whole mess. Until there is consistency in the high court, my position will be that it is acting purely in equity. It seems to be acting like a divorce court in a community property state, doing a just and right division. With reference to patent eligibility, the two parties are 1) the public (inventors); and 2) the merchant class that lobbied for the AIA. The question before the court in all cases appears to be, what is just and right for the interests of the merchant class, which includes the banking houses. I view AIA as an over-reach by the merchants, towards maintenance of their monopoly and effectively excluding others from benefitting from innovative contributions. AIA quells their would-be competition rather well, relieving market threats to their capital investments. New tech. is always disruptive to the status quo, imagine you build a $ 10MM oil refinery, then some independent inventor comes along and invents the HF cracking process, obsoleting your capex. Bummer. That’s what AIA protects against – disruptions. It needs to be pushed back, but how ? Counselors say that a drunk needs to hit bottom before they can “wake up”, either by harming someone or some other type of accident. Maybe we’re seeing, in slow motion, the drunk “hit bottom”

  77. Anon December 25, 2018 11:19 am

    Excellent observations ChrisW, and yes, I too had thought that the Court had previously “hit bottom,” and that the “Alice” case would have provided a historical mirror of “Diehr” to the previous cases of “Benson” and “Flook.”

    Alas, it was not to be, and instead we doubled down on the intrusion of the judicial branch into the statutory law writing of patent law.

    And the absolute mess that we have (almost unfathomable), got even worse with Oil States, and the reclassification of patents as Private personal property into being a Public franchise property.

    As I have postulated (and I believe a forthcoming article from EG will explicate), the path forward out of this mess of a Gordian Knot is jurisdiction stripping by the Congress of the non-original jurisdiction of patent appeals away from the Supreme Court and the resetting of a truly neutral (and non-brow-beaten) Article III court with power and direction to make our patent system truly world class once again (that would mean, of course, strong patent rights in the opposite direction of the Efficient Infringement movement).

  78. step back December 25, 2018 2:25 pm

    Anon @77,

    As long as judges (and APJs and examiners) are not required to have competence in the hard sciences, no amount of jurisdictional stripping will help. The true underlying problem is that judges can be fooled into believing any and all forms of unscientific nonsense by the so-called “friends” of the court (amici curie). The oral arguments in Alice and in Prometheus are telling. The justices believe that isolating DNA fragments is like plucking leaves off a tree. The justices believe that inventors play with Lego blocks (fundamental building blocks of human “ingenuity”). The justices believe that patent lawyers/agents are evil scriveners out to employ their devious draftsman arts in a ploy to disguise abstract ideas by clothing them in “conventional” technology wool. Nonsense ideas from nonsensical and misguided senile souls.

    Perhaps the ghosts of Patent Law Past (e.g. Giles Rich) will visit them in their slumbers this Holiday season and set them straight? One can wish, can’t one?

  79. EG December 25, 2018 3:22 pm

    Hey SB,

    I believe you meant Myriad, not Prometheus. Yeah, Our Judicial Mount Olympus could be convinced that the moon is made of green cheese or that the Sun revolves around the Earth. Their technological and scientific ignorance is embarrassing in the extreme-the importance STEM is essentially meaningless to them. Frankly.as demonstrated in the Eibel Process case I cited in this post, Chief Justice Taft shows more understanding of technology than the current 9 Justices collectively.

  80. step back December 26, 2018 2:07 pm

    EG @79

    Thanks for the correction. Yes Myriad.

    Aside form their utter lack of comprehension in matters scientific, the Supremes should comprehend that the admission of Amici Curie briefs into the deliberations constitutes an end run around the entire judicial process. Testimonies that are not subject to perjury charges or cross examination or consideration by a jury are allowed in to influence the thinking of the Justices.

    Clearly the Justices look down with disdain at the rest of us because we spend hundreds of thousands of dollars and many years sending our kids to undergraduate and post graduate schools to study the sciences whereas the Supremes grasp all the subtleties in a few hours of perusing the Amici briefs of the “right” friends.

    Yes Virginia, slicing DNA molecules into fragments is just like plucking petals off the daisy flower. They (the Amici) love us, they love us not, they love us!

  81. ChrisW December 28, 2018 9:33 am

    Something to ponder, what James Madison wrote in the Report of 1800:

    “The resolution [the famous Virginia Resolutions of 1798] supposes that dangerous powers, not delegated, may not only be usurped and executed by the other departments, but that the judicial department also may exercise or sanction dangerous powers beyond the grant of the Constitution; and, consequently, that the ultimate right of the parties to the Constitution [“the parties to the Constitution” are the states], to judge whether the compact has been dangerously violated, must extend to violations by one delegated authority, as well as by another; by the judiciary, as well as by the executive, or the legislature.
    However true, therefore, it may be, that the judicial department, is, in all questions submitted to it by the forms of the Constitution, to decide in the last resort, this resort must necessarily be deemed the last in relation to the authorities of the other departments of the government; not in relation to the rights of the parties to the constitutional compact, from which the judicial as well as the other departments hold their delegated trusts.”