A New Court and a New Fix for Alice and Patent Eligibility under Section 101

By Robert Isackson
January 11, 2019

Henry Schein, Inc. v. Archer & White Sales, Inc, a case examining a judicially-created exception to the Federal Arbitration Act, may hold clues to how the Supreme Court will approach patent eligible subject matter going forward. Specifically, the three judicial exceptions to patent eligibility could be found, unanimously, inapplicable at the Court’s next review of the issue.

Judicial Exceptions and Patent Eligibility under Section 101In a unanimous Supreme Court decision dated January 8, Justice Brett Kavanaugh authored an opinion applying a statutory construction principle to the Federal Arbitration Act (FAA) that may foreshadow how the new Court, applying the same principle, will dramatically reshape how federal courts must approach patent eligible subject matter challenges by eliminating the judicial exceptions—abstract ideas, laws of nature and natural phenomenon—and thus moot the debate that has followed (and preceded) the Court’s Alice decision.

No Judicial Exceptions

In Henry Schein, Inc. v. Archer & White Sales, Inc., Case No. 17-1272, the Court considered the Circuit split over whether the “wholly groundless” exception to an FAA provision requiring the arbitrator to decide issues the parties had agreed to arbitrate could be relied on to permit a district court to determine in the first instance whether a particular dispute was arbitrable, notwithstanding that the parties had agreed arbitrability questions should be decided by the arbitrator. The Court unanimously held that the exception does not apply. The reason is simple. As Justice Kavanaugh explained, acknowledging that the FAA had been adopted by Congress and signed by the President: “The short answer is that the Act contains no [such] exception, and we may not engraft our own exceptions onto the statutory text.” Henry Schein, slip op. at 7. Hammering home this rather unambiguous principle, Justice Kavanagh noted: “Again, we may not rewrite the statute simply to accommodate [a recognized] policy concern.”  Id. at 8.

That noise you just heard was dozens of decades of jurisprudence applying the well-known three judicial exceptions to patent eligible subject matter—abstract ideas, laws of nature, and natural phenomenon—which do not appear in the Patent Act, flying right out the window. The little pop was the judicially created obviousness type double patenting defense following.

Seismic Shift Ahead?

Does Henry Schein, reflecting a unanimous Court’s interpretation of a statute, reflect a shift to now interpreting statutes such that exceptions not found in the text cannot be applied? Certainly, such an argument can be made, and one might expect the Court to treat all statutes, including the Patent Act, in the same manner, as the Court has done before, e.g., eBay. In other words, the three judicial exceptions to patent eligibility, which courts at all levels throughout the land have struggled over since their inception—and which the U.S. Patent and Trademark Office has likewise struggled over and addressed with its parade of guidelines, even now being revised—and which nowhere appear in the text of the Patent Act, could be found, unanimously, inapplicable at the Court’s next review of the issue.

Perhaps this will happen sooner that one would normally expect in the slow world of Supreme Court case law. Indeed, this might just explain why the Court on January 7 asked the U.S. Solicitor General to submit an amicus brief in the Berkheimer case, which is currently before the Court on petition for certiorari. Berkheimer frames nicely the issue of patent eligibility and how district courts should handle motions to dismiss patent infringement claims under Section 101 and Alice. Although the issue framed by the cert petition is whether factual questions underlying an application of judicial exception to patent eligibility require the district court to defer ruling on the motion until the factfinder has resolved those issues, e.g., after trial, this just might be the case that the Court employs to make definitively clear that the 101 motions simply should be denied because the judicial exceptions are not found in the Patent Act and thus no longer apply.

It also might explain why, as the IP press has reported, the two senators are meeting with industry groups to discuss potential legislative amendments to Section 101 as an alternative fix to the current patent eligibility jurisprudence. Clearly, under Henry Schein the Court must intend to strike the judicial exceptions to patent eligibility—because they don’t appear in the statute—and it will be up to Congress to tell us what they really mean about what is patentable subject matter, and what is not. Perhaps Congress can, in a bipartisan way, figure out and put in the text any limits on patenting anything under the sun made by man that is a “new and useful process, machine, manufacture, or composition of matter …”  35 U.S.C. §101.

Who would have thought patent eligibility would finally be resolved so clearly, simply, and quickly? Hopefully, Congress will move quickly on that legislative effort to avoid a catastrophe from unintended consequences for our already challenged patent system.

 

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The Author

Robert Isackson

Robert Isackson is a Parter with Leason Ellis. Practicing for over thirty years, Rob Isackson is an accomplished, front-line IP litigator, counselor, and advisor fluent in all aspects of intellectual property: patents, trade secrets, trademarks, copyrights and designs. With a primary focus on IP litigation at the trial level, particularly patent and trade secret disputes and commercial disputes over technology issues, Rob’s IP practice includes appellate litigation as well as providing strategic counseling, advice and opinions on strength of IP rights, freedom to operate and litigation risks, patent and trademark prosecution, portfolio assessments, trade secret audits, negotiation and drafting of IP transactions and agreements, and M&A IP due diligence.

For more information or to contact Robert, please visit his Firm Profile Page.

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Discuss this

There are currently 40 Comments comments.

  1. Concerned January 11, 2019 10:08 am

    Bravo, let’s hope!

    I have no problem with the exceptions if in the law and expressed by Congress.

    Also, the examiners should follow official USPTO memos or do not even put them out.

  2. JTS January 11, 2019 11:25 am

    Have not read the case. Does Henry Schein hold, without qualification, that no judicial exception can be upheld for any statute? That would be remarkable. At the least, one could argue that judicial exceptions survive if they were in place when a statute was updated or passed.

    In any case, even if Schein doesn’t represent some powerful rule of interpretation, it might reflect a majority having a philosophy at odds with Alice and it’s relatives.

  3. Fix 101 January 11, 2019 11:28 am

    Not a fan of the man in general, but is Brett Kavanaugh the hero we’ve been waiting for?

  4. Anon January 11, 2019 12:10 pm

    Am I dreaming?
    (again?)

    Is it April?

  5. Anon January 11, 2019 12:13 pm

    …or does this have anything to do with IBM’s quantum computing advances (and the realization that once that Pandora’s box is opened, we are going to desperately need the very type of innovation that has so long now been under attack?

    (Nah, that would be giving way too much credit to the Court)

  6. EG January 11, 2019 12:39 pm

    If the petition for cert in Berkheimer is granted, expect this case to be brought up in both the respondent’s main brief, as well as the amicus briefs in support of the respondent. They’ve got nothing to lose in doing so.

  7. Pro Say January 11, 2019 1:39 pm

    Going forward, this case and argument based thereon should be included against judicial exceptions to eligibility made against claims.

    I will be.

  8. Night Writer January 11, 2019 4:09 pm

    >>Clearly, under Henry Schein the Court must intend to strike the judicial exceptions to patent eligibility—because they don’t appear in the statute—and it will be up to Congress to tell us what they really mean about what is patentable subject matter, and what is not.

    I see an issue in that the Scotus always claims that the 1952 Patent Act incorporated their exceptions.

  9. Jianqing Wu January 11, 2019 4:37 pm

    The price the mankind has paid for the three doctrines:

    I have done my own research for more than 17 years. The U.S. patent law is primarily responsible the tens of millions of early deaths from chronic diseases and cancer in the world each year. Those three doctrines preclude the most viable research which would lead to cures for all diseases.

    Now, medicine is focus the body part without paying attention to mind part. So, it treats human body as chemical reactors. Despite the fatal flawed model, medicine then uses “scientific validity” to influence the world and holds it out as the only legitimate medicine (which cannot cure chronic diseases contrary to millions of medical miracles in cancer and chronic diseases).

    The three doctrines exclude all inventions in the mind-body model, which controls personal health. Due to those ancient doctrines, no body attempts to patent for inventions in the mind-body model. Up to this point, few studies have been done to understand neural-nerve signals in regulating diseases. Some aspects of the signals can be sensed only by persons. Emotional shock can make some people die instantly, and good emotional adjustments can help people slowly heal chronic diseases.

    Due to those doctrines, no body ever did serious research in how exercises modulate the biological mind in the body (the central nerve system’s signals). Even if someone did a study, it is trivially important, obviously due to lack of funding for studying exercise. So, all exercises are viewed as same. The exercises in some cancer research involve only 18 MET hours week for two weeks. Researchers could not find how 300 MET will affect cancer reversal.

    Due to the three doctrine, the medicine can use only one assumption: disease is cured only by synthetic drugs. While all diseases could be self healed, drugs cannot cure any real chronic disease. Now, there are tens of millions of premature deaths. We find ourselves in a world of incurable diseases.

    I have kept writing about those three doctrines to Congress, politicians, organizations…. I hope the courts will completely throw out those doctrines. I will be the first to patent a few mental exercises for curing chronic diseases (of course, I will not enforce against individual uses except institutional use). I find that even getting rid of cancer can be a rather simple for those who have a willpower to fight.

    Patentability should be based upon invention’s true inventiveness and true utility to the mankind. That court needs to wipe out all obsolete case laws that have impacted every person in the world. The price the mankind has paid up to now for those obsolete case laws is mountains of dead bodies. I hope readers will convey my personal messages to all justices and other judges. I can prove.

  10. Bemused January 11, 2019 6:33 pm

    Guys, its a nice pipe dream but don’t hold your breath that this decision foreshadows SCOTUS doing away with the judicial exception morass of Alice.

    The Schein case was a Federal Arbitration Act case. Anyone who has followed SCOTUS jurisprudence dealing with the FAA knows that for the last 10-15 years SCOTUS has perverted, twisted and stretched the text of the FAA way beyond anything the drafters envisioned in an unceasing effort to close the court-house doors to litigants and to push them into private dispute resolution.

    The Schein case is nothing more/nothing less than a continuation of SCOTUS policy expanding the power of arbitrators and the reach of the FAA. Zero chance this has any impact on patent law.

  11. Anon January 11, 2019 6:46 pm

    Sidetracked at SCOTUSBLOG with the argument summary for California v Hyatt(went there for this case), but this caught my eye:

    Kavanaugh suggested, overruling is proper when a precedent is “egregiously wrong,” has “severe practical consequences,” and generates “no reliance.

    The question remains (when it comes to patents), would the Court EVER admit that it has been “egregiously wrong?”

    As to the other two, there can be (and should be) ZERO doubt that the mockery engendered by the Court in the area of patent eligibility has had BOTH severe practical consequences, and has generated “no reliance.”

  12. Anon January 11, 2019 6:54 pm

    I see an issue in that the Scotus always claims that the 1952 Patent Act incorporated their exceptions.

    Except for the fact that the Act of 1952 expressly did away with “invention,” “gist of the invention,” inventive gist,” “inventive step,” and dozens of other like terms of the pre-1952 Common Law law writing Court and instead expressly went with a completely different notion of obviousness?

  13. Anon January 11, 2019 7:42 pm

    I have taken a look at Schein as well as a case cited by Kavanaugh to support his third rebuttal (the “we may not engraft our own exceptions” phrase).

    The attempt here to construe this into the patent situation would be rejected by the Court (and somewhat easily, given the extensive facts in the supporting cases).

    My dream remains a dream.

    There will be no dramatic reshaping. The Court will not use this case as its solution to its addiction of wax nose mashing.

  14. Gene Quinn January 12, 2019 11:48 am

    Bemused-

    You are probably… unfortunately… correct. But what a moment of complete and absolute hypocrisy it will be to see the Supreme Court rely on judicial exceptions to declare any claimed invention patent ineligible. Even Congress would have to take notice.

    I think attorneys need to start arguing to Examiners, to the PTAB and to the Federal Circuit that Schein stands for the proposition that judicial exceptions to a statutory text cannot stand and, therefore, Alice/Mayo has been overruled. Force this issue to the Supreme Court, or force them to deny cert.

  15. Eric Berend January 12, 2019 12:17 pm

    While the principle or doctrine (if such can be viewed that way) seems rather clear, it doesn’t take a cynic to doubt the efficacy of this application to U.S. patent law.

    It is not difficult to foresee: the thicket of anti-Patent Judges at the CAFC and kangaroo court of the PTAB, will continue to perpetrate the present racket against inventors and patentees, and the Supreme Court will simply avoid the seeming disparity by refusing certiorari.

    ‘Anon’ (@ 12., above) is correct: this is not sufficient to dislodge the TWO appellate levels of United States Court’s “…addiction of wax nose mashing”.

  16. Anon January 12, 2019 2:45 pm

    Gene @ 14, Eric @ 15,

    Both correct: while this case (Schein), in and of itself, will not likely suffice, the Court’s own words (scrivining, as it were) SHOULD BE brought to bear against its own addicted hypocrisy.

    As noted on other threads (and also by Kavanaugh), the path to the Court over-ruling itself (and removing itself from the Gordian Knot of its own stare decisis) should NOT be the path the Erwin Chemerinsky suggested (that stare decisis required the court to ask, “Is there anything today that’s before the court that it didn’t have when the earlier case was decided?”) in the oral arguments of Franchise Tax Board of California v. Wyatt.

    Instead, the same Kavanaugh indicated that “In his view, strict adherence to that changed-circumstances principle would have prevented many past overrulings. Instead, Kavanaugh suggested, overruling is proper when a precedent is

    1) “egregiously wrong,”
    2) has “severe practical consequences,” and
    3) generates “no reliance.”

    as provided by Richard Re at http://www.scotusblog.com/2019/01/argument-analysis-the-familiar-yet-fresh-debate-in-franchise-tax-board-of-california-v-hyatt/#more-278500

    1) Egregiously wrong (whether admitted to or not, a not-small separate matter): Check.

    2) Severe practical consequences: Check.

    3) Generates no reliance: Check. (Heck, the Office published directive explicitly calls out the contradictions that the Supreme Court decisions have unleashed in the Common Law development opened up by the Court. There is no reliance, because no reliance is possible with contradictory common law.

    Not unsurprisingly, it was Breyer who wanted to “push back” on the Court admitting its prior errors, even if known, as a “chink” in the Judicial armor. Someone (some child perhaps), should tell the Emporer that that “judicial armor” is well beyond “chinked” AND by the fingers of the Court itself.

  17. Mike January 12, 2019 4:42 pm

    @Gene,

    “I think attorneys need to start arguing to Examiners, to the PTAB and to the Federal Circuit that Schein stands for the proposition that judicial exceptions to a statutory text cannot stand and, therefore, Alice/Mayo has been overruled. Force this issue to the Supreme Court, or force them to deny cert.”

    Amen to that. Either deny cert (exposing the Court’s hipocrisy), or accept to hear the case and rule in hipocrisy. Either way. “Stop breaking the law,@$$hole!” — Quote from the movie “Liar, Liar”.

  18. Night Writer January 13, 2019 9:33 am

    @10 Bemused

    The other point, which I have been making for many years, is that the judicial exceptions of Alice are tied to the text of the Constitution.

    The Scotus says that the basis of the judicial exceptions is that claims that fall within the judicial exceptions tend not to promote.

    Funny, how after all these years that this finally becomes relevant.

  19. Night Writer January 13, 2019 10:29 am

    @9 Jianqing Wu

    Lots of great points about how the exceptions have shaped patent law.

    People need to remember too that when referring to the EPO’s case law that it is not consistent. It is basically a series of safe harbors if the EPO decides that they will grant patent in an area, which is often based on the political power of the company requesting the patent.

    Plus, people have to remember that the only country in the EU that is doing well is Germany and they have a very strong national patent system. Plus, remember that the USA still has 10 times the industry size that the EU has for software.

  20. Anon January 13, 2019 12:01 pm

    Night Writer @ 18,

    I will again (since you again) remind you that “tied to” is NOT a proper legal argument in a Constitutional argument sense. You have not achieved relevancy because your position is not yet properly framed.

    I suggest that you read the Tam case as that case IS a Constitutional argument case.

    Further still, as I have also mentioned, IF you want to make the “tied to” to be your “Constitutional case,” for every one “plank” in your case, I can provide THREE against your case.

    Here, for example, you seem to want to use the plank of ” basis of the judicial exceptions is that claims that fall within the judicial exceptions tend not to promote.”

    First rebuttal: the prospective, futuristic, conjectural, subjective “MAY” (which you omitted) necessarily includes the possibility of “may NOT.” Such attempts as this to use something that has NOT happened, but that MAY merely could (and critically could not) happen at some future point is attempting to base a decision on a future case or controversy, not the present one. Note as well that this counter also touches upon the limitation of the Supreme Court to NOT render advisory opinions.

    Second Rebuttal: the very essence of the judicial exceptions in and of themselves concerns matters of policy. The Supreme Court over-reaches its authority by trying to impose ITS policy choices in regards to what may (or may not) “tend to promote.” TWO subparts here: 1) Even beyond the policy intrusion, the actual Constitutional phrase is a delegation of authority, and – like the second amendment – has a phrase that is an “indicator” phrase (as opposed to being a hard and fast requirement — are arms only allowable for militia members?) 2) evidence of this over-reach comes from the simultaneous over and under inclusion of the Court’s intrusion.

    An under inclusion may be considered in a view that improperly constrains “promote” to ONLY include the notion of advance along a (oft times pictured – linear) advance in actual technical capability, with the exclusion of the sense of the word (from advertising) of promote as in disseminate knowledge. The nature of innovation itself (as is known and recognized by those who have actually studied innovation) is one of cross-fertilization and oft includes initial step-backs in actual capability (ESPECIALLY for disruptive innovation). The Court attempts a view not in line with this (basic) understanding.

    An over inclusion is evident in that the Court has certain options when faced with a LAW that is unconstitutional, Here, the importance — in addition to the actual options open to the Court – is to recognize that patents (or even claims in a patent) are not – and cannot be “unconstitutional.” It is only a law that can be unconstitutional.

    As I have also noted, you may (but to date, have not) attempt to make a case of a law being unconstitutional as applied (as opposed to being facially unconstitutional). As I have also noted, this is probably your better path.

    Returning quickly to the options of the Court, the reason why the Schein case has resonated so deeply is that the plain words of the Court (we are not free to write our own exceptions) is reflected in the fact that what the Court has actually done in patent law is NOT “render an interpretation” (to either fill a void or interstitial gap, OR to remove ambiguity) but instead have engaged in actual law WRITING.

    The options to the Court for finding A LAW to be unconstitutional (either facially or as applied) do NOT include the option of the Court to engage in its own writing of the law to change what Congress provided and to provide something else (that happens to make the law fall into the Court’s policy view that patents may be too easily obtained or too broadly covering innovation, or merely that patents to “business” is just too mundane for the likings of the egalitarian Court). Such is simply NOT within the proper authority OF the Court.

    Here, I will note the recent oral argument position advanced by Justice Kavanaugh as a potential basis for the Court to extract itself. See my other posts on this point for its details.

    Third Rebuttal: the actual result of the Court’s intrusion has been the creation of a new law THAT ITSELF fails the Constitutional provision of Void for Vagueness. As much as the Court has expressed its feelings about scriviners (to which, to borrow Justice Sototmayor’s own recent words: why would such invite the action of the Court to do the job that Congress could do?), the Court itself has scrivened so badly in its own re-writing that the resulting law is Void for Vagueness. Note here as well, the point that I have provided in that even Director Iancu has remarked that the ensuing Common Law law writing opened up BY the Court (if we look past the initial rendering of Void for Vagueness in an attempt to allow the vagueness to be “filtered out” with the ensuing Common Law law writing), is full of contradictions already. To this point, I add that what the Court’s scrivining has done (and I so oft have to implore Paul Cole to take stock of this) is set up a Gordian Knot of jurisprudence that WILL NOT be solvable by the actions being undertaken that create the problem in the first place.

    I will insist that if YOU insist on maintaining your argument about the Court’s “tie to the Constitution” that you provide answers to at least these rebuttals.

  21. Anon January 13, 2019 12:10 pm

    Night Writer @ 19:

    People need to remember too that when referring to the EPO’s case law that it is not consistent. It is basically a series of safe harbors if the EPO decides that they will grant patent in an area, which is often based on the political power of the company requesting the patent.

    Very true. As the oft-EPO promoter known as MaxDrei points out, the EPO does not apply a system of stare decisis as does the US.

    To this point then, one of the recent oral argument Kavanaugh remarks (see at least the post at 16 above) should resonate: reliance.

    No reliance is currently possible (based at least on the fact that contradictions are not only not being resolved, but are propagating BECAUSE what the Court has provided is Void for Vagueness).

    The EPO may consider this lack or reliance to NOT be an issue. But it is an issue in this Sovereign.

    Which is also a reminder that patent law is and remains a Sovereign-centric law.

    Plenty of discussion material exists for that point.

  22. Night Writer January 13, 2019 7:27 pm

    @20 anon

    We have been through all those before. The short answer is that the Scotus says so. Just look at the paragraphs of Alice. All they have to say is that the exception in Schein was not based on the Constitution (Alice lays out their argument). Done. Easy to distinguish. I get all your arguments that may have merit, but there is no supreme court of the Scotus that can make them.

  23. Anon January 13, 2019 11:33 pm

    The short answer is that the Scotus says so.

    That certainly is not a proper Constitutional argument.

    We have been through all those before.

    And you did not make a proper Constitutional argument either. If YOU are going to continue to postulate as you are doing here, then you should have the decency to at least put together a proper legal argument.

    The Supreme Court is NOT Supreme – and most all** attorneys have an ethical obligation to NOT treat them as if they were.

    ** As I have noted, only the Commonwealth of Massachusetts arguably has an attorney oath that does not place ALL of the branches of the government under the Constitution. The Supreme Court, even at the very top of the judicial branch, still must abide by the Constitution. I provided three basis to counter your assertion. Respectfully, you need to at least try to answer the counters.

  24. Paul Cole January 14, 2019 1:59 am

    “The short answer is that the Act contains no [such] exception, and we may not engraft our own exceptions onto the statutory text.” Henry Schein, slip op. at 7.

    The short answer in the context of Section 101 is that on a Venn diagram the statutory categories and the judicial exceptions are non-intersecting sets. Thus judicial exception CANNOT be invoked to include subject matter that falls as a matter of substance (rather than mere outward presentation) within an eligible category. That is no more than the rule that Justice Kavanaugh stated. If you go back in time, you will find that Justice Scalia was of the same view- the courts can interpret but cannot rewrite statute.

  25. Anon January 14, 2019 4:28 am

    Good morning Mr. Cole,

    Immediately above you repeat something that you have said previously, but that did not make sense then.

    This morning, it still does not make sense.

    Your notion of Venn diagrams and non-intersecting sets simply changes the meaning of the word “exception,” and cannot accord with how the Court has actually ruled.

    You appear to somehow want to construe a distinction between “matter of substance” and “matter of mere outward presentation” as some type of permissible driver that something in the Court’s writings is not a re-writing of the law.

    As much as I might want to — if only for argument’s sake — I cannot arrive at the place that you are at.

    I have previously pointed out that your view does not accord with the Court’s view. The Court is simply not saying what you are saying that they said.

    Maybe you can step through your thinking as to how “exception” means non-intersecting sets.

    As it is, I have to discount your message because your premise is just not reachable.

    The Gordian Knot cannot be untied as you appear to be trying.

  26. Anon January 14, 2019 4:48 am

    “Mere outward appearance” is an invitation to the broken score board of “Gist of the invention.”

    This violates the word of Congress as written in 1952 when Congress purposefully chose to go down the different path of using “obviousness” instead of the Common Law path of “invention” in breaking up what was previously a single paragraph into the new sections of 101/102/103.

    As I have also noted, this invites the Court to ignore 112 as well, as 112 “is interpreted” as providing both the requirement and the authority of deciding “what the invention is.”

    That vests with the applicant (the accused “scrivener”).

    Your view, Mr. Cole, still permits (even invites) the Court to be that scrivener.

  27. Anon January 14, 2019 9:03 am

    An addendum to my post at 20 is in order to provide an additional insight in dealing with the policy intrusion of an egalitarian Court.

    The entire notion of “may impede” is based in an ill-informed view of the very nature of a patent itself: the “negative” right to exclude.

    Again, based in an understanding of innovation (and promotion of innovation), the “stick” of “exclude others” is a mechanism for promotion every bit as much as the carrot for the patentee if being able to be exclusive.

    This is part and parcel of the futuristic, projective, subjective and conjectural LACK of present case or controversy.

    The adage “Necessity is the mother of invention” is around because it has truth.

    It is a promotion to block and FORCE another to innovate around a given item.

    The ONLY (meaningful) impact if the Court position along this line is for those things that absolutely cannot be innovated. This would be akin to a claim to gravity itself.

    This is quite distinct – as a matter of legal impact – from ANYTHING else that can be innovated, including (perhaps especially) anything being tossed around as “merely conventional.”

    Instead of the actual point of “CANNOT innovate around, the Court is merely imposing its policy preference of adding a new path to rejection based on “shouldn’t have to innovate around.”

    But the proper basis for this “shouldn’t have to” is the accursed conflation with other elements of the statute as written by Congress.

    This point then is another factor that defeats the supposed “Constitutional tie” as an indicator of that “tie” being employed in a far too inclusive manner.

    Of course, one natural result of following the Court in “knowing when they see it,” is that others employing the “gift” of the Common Law development are not constrained (likewise) to limiting their basis of “know it when they see it” to any actual truly “cannot innovate around” items.

    This lack of understanding of the value of the stick is directly related to a Court antagostic to the concept of patents.

    And it’s not like history has not gone done that path before… (and directly on the very point at hand at that).

  28. Night Writer January 14, 2019 9:48 am

    Paul Cole >>The short answer in the context of Section 101 is that on a Venn diagram the statutory categories and the judicial exceptions are non-intersecting sets.

    There is no doubt that that is the Scotus’s argument as well. They say that the exceptions are based on the text of the Constitution “to promote.”

    I really don’t get why people want to ignore the plain language of Alice. The Scotus is saying those things are part of 101. The holding of Alice is the claims of Allice were unconstitutionally granted because they tend not to promote.

    I guess people can ignore this all they want, but I’d bet if they re-write 101 or if Berkheimer goes to the Scotus that we will just hear the same thing we did in Alice again.

  29. Night Writer January 14, 2019 10:16 am

    Anon—

    Your statements that I am not making a Constitutional argument are just absurd. I have cut and pasted the language of the Scotus. You can argue all day with them, but the Scotus says plainly that the exceptions are tied to the text of the Constitution.

  30. anony January 14, 2019 11:34 am

    From the non-optimist’s perspective:
    Unless there is a clear shift in the ideology of the SCOTUS, it seems likely that SCOTUS will not touch 101 unless and until the Federal Circuit ‘mistakenly’ clarifies what is or is not an abstract idea (e.g., provides a bright line test that allows applicants to draft objectively eligible claims and successfully argue them as such). If the Federal Circuit were to mistakenly clarify 101 and allow mere mortals to draft patent eligible claims, then SCOTUS would immediately act to remove such clarity and to preserve the subjective judicial tyranny that is modern 101 jurisprudence.

  31. Anon January 14, 2019 11:49 am

    Night Writer,

    You seek to put out dicta as if that dicta were a genuine Constitutional argument.

    You are apparently content to not learn what an actual Constitutional is.

    Even lacking your willingness to learn the difference between what you want to posit, and an actual properly framed Constitutional argument, I still need you to reply on the merits of my reply to your “argument.”

    You can’t “get away with” a short version because I have rebutted your short version.

    Answer the points presented please.

  32. B January 14, 2019 12:22 pm

    Lovely article,

    This is going into certain SCOTUS petition of mine!!!

  33. Night Writer January 14, 2019 7:40 pm

    anon >You are apparently content to not learn what an actual Constitutional is.

    You just don’t seem to get it. It doesn’t matter what you think. What matters is what the Scotus thinks.

  34. Anon January 14, 2019 10:13 pm

    You make a lousy argument.

    Maybe you might try replying to the points out to you?

    Then let me know which state you are barred in. I would like to see what your attorney oath has to say with your view of “well, the Supreme Court can just ‘say it,’ and it matters not at all what others think.

  35. Anon January 14, 2019 10:15 pm

    Put it this way, Night Writer: why are you NOT responding to the points put to you?

  36. Night Writer January 15, 2019 7:28 am

    @34, 35 Anon — The words in Alice are not dicta. And the Scotus makes the argument. It is their argument not mine. And I’d bet a lot that they will continue to use this Constitutional argument.

    “We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. ___, ___, 133 S.Ct. 2107, 2116, 186 L.Ed.2d 124 (2013) (internal quotation marks and brackets omitted). We have interpreted § 101 and its predecessors in light of this exception for more than 150 years. Bilski, supra, at 601-602, 130 S.Ct. 3218; see also O’Reilly v. Morse, 15 How. 62, 112-120, 14 L.Ed. 601 (1854); Le Roy v. Tatham, 14 How. 156, 174-175, 14 L.Ed. 367 (1853).
    We have described the concern that drives this exclusionary principle as one of pre-emption. See, e.g., Bilski, supra, at 611-612, 130 S.Ct. 3218 (upholding the patent “would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea”). Laws of nature, natural phenomena, and abstract ideas are “`”the basic tools of scientific and technological work.”‘” Myriad, supra, at ___, 133 S.Ct., at 2116. “[M]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it,” thereby thwarting the primary object of the patent laws. Mayo, supra, at ___, 132 S.Ct., at 1923; see U.S. Const., Art. I, § 8, cl. 8 (Congress “shall have Power … To promote the Progress of Science and useful Arts”). We have “repeatedly emphasized this … concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity. Mayo, supra, at ___, 132 S.Ct., at 1301 (citing Morse, supra, at 113).
    At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. Mayo, 566 U.S., at ___, 132 S.Ct., at 1293-1294. At some level, “all inventions… embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Id., at ___, 132 S.Ct., at 1293. Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. See Diamond v. Diehr, 450 U.S. 175, 187, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981). “[A]pplication[s]” of such concepts “`to a new and useful end,'” we have said, remain eligible for patent protection. Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972).
    Accordingly, in applying the § 101 exception, we must distinguish between patents that claim the “`buildin[g] block[s]'” of human ingenuity and those that integrate the building blocks into something more, Mayo, 566 U.S., at ___, 132 S.Ct., at 1303, thereby “transform[ing]” them into a patent-eligible invention, id., at ___, 132 S.Ct., at 1294. The former “would risk disproportionately tying up the use of the underlying” ideas,
    2355
    *2355 id., at ___, 132 S.Ct., at 1294, and are therefore ineligible for patent protection. The latter pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws.

  37. Anon January 15, 2019 9:18 am

    None or what you posted there is a Constitutional argument Night Writer.

    Read again the quotes paying particular attention to any statutory (as opposed to Constitutional) elements.

    Read and take note of differences between “musts” (which would arise from a true Constitutional position) and “mights” or mere “concerns.”

    And even if you are going to gloss over this and pretend otherwise — then (and especially then), you need to actually take the time and address the rebuttals presented.

    Take ad much time as you need to address these things put to you (and not for the first time put to you), but please do not merely post your stance before you do addrsss them.

  38. Night Writer January 16, 2019 7:34 am

    Anon I’ve responded to all your arguments before. I will only repeat to you that the Scotus is the one that has made the argument and that I will bet a lot that we will see that argument trotted out again and again when and if 101 is changed and when and if the exceptions are challenged. I get all your arguments Anon and I have responded them before. Repeating them over and over doesn’t help your case.

    And stop acting like you are better or have more at stake or are more ethical or moral than me.

  39. Anon January 16, 2019 12:10 pm

    Night Writer,

    As to your claim here and now of “I’ve responded to all your arguments before.” I call BS.

    Please do not have me place you in the same category of Malcolm Mooney and the late Ned Heller.

    While you have perchance may have responded to some of the points that I have countered you with here (and those responses – if I recall correctly – were merely affirming that my arguments were cogent and valid), you have NOT replied to ALL of my arguments, and certainly you have not responded in the view of what YOU attempt to do with YOUR actions on this post (it is YOUR actions in advancing a position that you think that the Court would engage in – this is very much different than any SINGLE case that the Court may have engaged in.

    I point out and stress that YOU are taking a position and that YOU are attempting to classify the Court as having engaged in a deliberate and meaningful Constitutional argument,

    I have challenged YOUR posts to this point.

    If you want to persist in YOUR posts, then you really do need to not only acknowledge the fact that I have made counter arguments – you need to respond substantively to those arguments AND integrate that response WITH your attempts to say that the Court can “get away with” a “we said so” type of argument.

    I challenge you to grab the bull by the horns and ANSWER the point that I have provided IN your (continuing) statements. Please do not be like others that ignore the counter points presented and engage in the Internet style “shoutdown” by endlessly repeating an initial position as if no counter points were ever provided.

    And while I have your attention (on the counter points of post 20), please do not forget the addendum of post 27.

    If you only want to say “The Court will say so,” a full rebuttal (and defeat) of what you say is contained in the counters that I have provided.

    To advance the dialogue (and not just repeat your initial position), you NEED to not only acknowledge that I have made counter-points, not only acknowledge that my counter-points raise valid points, you NEED to integrate those points going forward.

    I (eagerly) await your substantive reply.

  40. Night Writer January 16, 2019 2:55 pm

    https://repository.jmls.edu/cgi/viewcontent.cgi?article=1451&context=ripl

    Here’s a good article.