Sherry Knowles Scrutinizes an Activist Supreme Court and its Unconstitutional Approach to Patent Eligibility

By Gene Quinn
January 16, 2019

“The Supreme Court has brazenly admitted it is not following Congress’ statutory instructions on patent eligibility in several cases. And it has carried out virtually none of the required statutory construction. It is judicial activism in the extreme.”

Sherry Knowles Scrutinizes an Activist Supreme Court and its Unconstitutional Approach to Patent Eligibility

Sherry Knowles

Sherry Knowles is one of the best known patent attorneys you will find. She is a former Vice President and Chief Patent Counsel for GlaxoSmithKline, where she led the charge on behalf of the industry to fight back the claims and continuations rules package the United States Patent and Trademark Office made final in October of 2007. Since gaining industry renown for her efforts, she has been identified as one of the top 10 most influential people in the intellectual property world, one of the top patent attorneys in the world, one of the top patent strategists in the world, and the accolades go on and on.

Knowles, never afraid to take up the good fight, has turned her focus on the ongoing patent eligibility debate. She and co-author Dr. Anthony Prosser have just published an article in the John Marshall Intellectual Property Law Review arguing that the Supreme Court’s patent eligibility test is unconstitutional. See Unconstitutional Application of 35 U.S.C. §101 by the U.S. Supreme Court, 18 J. Marshall Rev. Intell. Prop. L. 999 (2018) by Sherry M. Knowles and Anthony R. Prosser, Ph.D. It’s an article I find particularly persuasive because, as I have often written, there is no support anywhere in the Patent Act or Constitution for the Supreme Court to add layers to the patent eligibility inquiry beyond those specifically and literally defined by Congress.

Before anyone decides to dismiss Knowles’ article as interesting, but legally impractical, it is worth noting a potential opening surprisingly presented by the Supreme Court. While the Knowles article has been pending for months, just days before its publication earlier this week, the Supreme Court in Henry Schein, Inc. v. Archer & White Sales, Inc. concluded that there is no statutory authority for judicial exceptions under the Federal Arbitration Act. “The Act does not contain a ‘wholly groundless’ exception, and we are not at liberty to rewrite the statute passed by Congress and signed by the President,” wrote Justice Kavanaugh for the unanimous Court.

Could courts become persuaded that judicial exceptions to statutes are now disfavored by the Supreme Court as being outside the authority of the Judiciary? See A New Court and a New Fix for Alice. That is what the Supreme Court said in Schein. It needs to be argued. Schein provides a roadmap, and so does this important article by Knowles.

I had the opportunity to speak with Knowles on the record on Monday, January 14th. Below, without further ado, is our conversation.

QUINN: Sherry, congratulations on the publication of your article today. I know you are busy so let’s jump right into the conversation. Why did you take the time to write a law review article?

KNOWLES: When anything gets as messed up as patent eligibility is in the United States the best thing to do is to go back to the basics, and that’s what we tried to do. The basics in this case is the U.S. Constitution, which grants Congress the sole right to promote the progress of science. The Constitution does not tell Congress what kind of advances should be promoted. And the Constitution does not grant ANY power to the U.S. Supreme Court to either create or modify Congress’ means to promote science. So, we did two things: we tracked the wording of Congress’ patent eligibility statute starting from the enactment of the U.S. Constitution to the present day and we compared it to the development of SCOTUS’ parallel inconsistent case law, which has become common law.

The first paragraph of the report gives our finding- “A or B” is inconsistent with “A not B”, which is why the application of 35 USC 101 by the U.S. Supreme Court is unconstitutional. There have been many articles on 101, but none have clearly called a spade a spade with the factual research to prove it— SCOTUS has developed its own common case law that is insolubly inconsistent with the U.S. statute, and by doing so it is acting illegally. There is no other way to describe it.

QUINN: I think you’re right. The statute itself comes from the Constitution and the only place in the Constitution the word “right” is used is in conjunction with the famous Art. I., Sec 8, Clause 8.  And this requirement gets translated by Congress into Section 101, which in its very basic terms is supposed to allow those people who invent or those people who discover to obtain a patent as long as other things are satisfied.  And those other things are as long as it’s new, not obvious, it’s useful and you can describe it. This was so well understood to be correct it’s hard to imagine that the Supreme Court has changed everything.

KNOWLES: Yeah.  The U.S. Supreme Court has stated that early congressional enactments give “contemporaneous and weighty evidence” of the Constitution’s meaning. Well, the very first Patent Act of 1790 used the disjunctive “invented or discovered” in the first clause of the patent eligibility statute and except for a few early years, this disjunctive description has been used consistently over about 230 years through over 30 amendments to the Patent Act.

Our research confirmed that there has been very intense interest by Congress in patent eligibility since the Constitution was enacted in 1787, and the repeated recodifications of the disjunctive “invents or discovers” in the patent eligibility statute shows a crystal-clear intent. Interestingly, in the 1952 Patent Act, a major overhaul of the patent statute, Congress did something that was remarkable, and of course, we don’t see judicial opinions referring to it. Congress not only maintained the eligibility of inventions and discoveries in the disjunctive, it actually added a definition of invention into Section 100 of the Act. Congress’ definition states that an invention is an invention or a discovery.  So instead of removing the scope of patent eligibility for applied discoveries, it went in the opposite direction and emphasized the intent that discoveries be patent eligible by adding a definition to Section 100.

QUINN: Right, right.  Now I know what the answer to this question is, Sherry, but can you for the record explain why is it that the word “discovery” matters so much to you?

KNOWLES: Well some of the most important innovations in America have been based on applications of how things in nature work and in part we can say that since we live in nature, everything is an application of the law of nature. And as you know and I have said before, I am a breast cancer survivor and I owe my life to inventors who brilliantly discovered the anti-cancer activities of certain isolated natural products. In particular I am referring to doxorubicin and taxol. I tracked down the inventors of doxorubicin who were from a start-up company in Milan, Italy named Farmitalia. I wanted to thank them— I think more people should identify the inventors of drugs that have changed their lives.  Unfortunately, they had passed, but I met a colleague of theirs who told me that the inventors would never have done the research to discover doxorubicin if they thought they couldn’t get a patent on the discovery in the U.S. for commercial sales. Wow. That is why the framers of our Constitution included Art. 1, Sec 8, Clause 8 and why Congress for the last almost 230 years has insisted that the United States promote the progress of science by rewarding discoveries.

QUINN: It is shocking that a large portion of the life sciences industry has been so negatively impacted by the Supreme Court’s decisions and then the Federal Circuit’s interpretation of those decisions over the last five or six years, correct?

KNOWLES: For sure. In our article, we trace SCOTUS’ 101 cases and what we find is that there is virtually, and typically literally, no statutory construction analysis. The Supreme Court knows how to carry out statutory construction, and historically cases have turned on the placement of a comma, phrase or wording. Where the Constitution gives sole authority to Congress, the Supreme Court’s only job is to understand the literal terms of the statute as presented and then apply that statute to the facts at hand, whether they agree with the statute or not. If anyone can identify a SCOTUS statutory construction analysis of the first four words of 101 — whoever invents or discovers — we will give them a prize. A safe bet because it doesn’t exist.

QUINN: Yeah, I think that’s probably true.  And that leads me to a question that I’m starting to ponder. I wonder as I look back through these cases, whether the Supreme Court is more to blame or whether the Federal Circuit is more to blame.  And at the end of the day it doesn’t really matter who’s to blame, we’re in this current state of things. Direction Iancu has called it the “101 morass”, but I just think that along the way there has been a hesitancy to do the right thing.  For example, in the life sciences area you see the invention that was at issue in Sequenom v. Ariosa and everybody thought it was a truly meritorious innovation, including Judge Linn, but it goes down as patent ineligible.  At what in point in time is the Federal Circuit supposed to stand up for good jurisprudence? I think the Supreme Court is supposed to paint with a broad brush and then the Federal Circuit is supposed to come in and pain with a much more refined brush. We are starting to see the Patent Office do that, but it’s taken too long.

KNOWLES: I do believe the Federal Circuit is in a bit of a bind.  It is an inferior court.  It has to issue decisions that are consistent with the Supreme Court whether it likes them or not. We would like to see more dissenting concurrences, which say we don’t think this is right but we’re bound by it.

I talked before about our legal research that tracked every amendment to the patent eligibility statute since the enactment of the Constitution. We then laid beside the legislative history the Supreme Court cases applying the statute. And what we found was pretty shocking. The Supreme Court has brazenly admitted it is not following Congress’ statutory instructions on patent eligibility in several cases. And it has carried out virtually none of the required statutory construction. It is judicial activism in the extreme. When a court cites to its own prior cases as controlling precedent instead of the controlling statute, it is the bellwether sign that it has crossed over into creating common law.  For example, in Gottschalk v. Benson, the only reference to the wording of 35 USC § 101 is relegated to a footnote. The opinion relied on SCOTUS’ own earlier case law, and an un-adopted recommendation from a Committee to the President in the Executive Branch. In Parker v. Flook, Justice Stevens said, referring to Gottschalk,  “The holding that the discovery of that method could not be patented as a process forecloses a purely literal reading of 101.”

QUINN: Yeah.

KNOWLES: It is pretty disturbing.

QUINN: It really is.  And I wonder, are you familiar with the case that just came out from the Supreme Court a few days ago?  Henry Schein, Inc. v. Archer & White Sales, Inc.?  Justice Kavanaugh wrote the opinion. It was a case dealing with the FAA, but the question was whether or not there was an exception – a judicial exception to the statute. Kavanaugh wrote that “the Act contains no ‘wholly groundless’ exception and we may not engraft our own exceptions onto the statutory text.”  So I wonder—

KNOWLES: That is a wonderful example Gene. We see in Diamond v. Chakrabarty that SCOTUS begins to institutionalize its “judicial exceptions” to patent eligibility. We have researched this issue deeply and we have found no basis in the U.S. Constitution or source of U.S. law that grants the Supreme Court the power to make a judicial exception to any federal statute. Where is the basis for this power? I urge it doesn’t exist.

In Mayo v. Prometheus, the text of 101 was used only as an introduction to the judicial exceptions. The Supreme Court wrestles with the exceptions when it gets to Bilski v. Kappos where Kennedy says that any suggestion that the Court’s case law deviates from the terms of the Patent Act has only been for an “explanation for the exceptions”…and that these judicial exceptions don’t give the Court carte blanche to impose other limitations that are inconsistent with the text and the statute’s purpose! It is almost hard to unpack that. Kennedy seems to be saying the court has made a few unauthorized exceptions to a federal statute but we promise not make any more? And Breyer admits in Mayo v. Prometheus that too broad an interpretation of the unauthorized judicial exceptions might eviscerate patent law, in other words, we are off the map but we have to stop before we destroy the law altogether?

QUINN: Yeah.

KNOWLES: Everyone talks about the judicial exceptions to patent eligibility like it’s a mantra, like it’s a given. When are we gonna stand up and say that it is not a given. Not only is it not a given, it’s not even authorized by the U.S. Constitution or any other U.S. law.  It’s unconstitutional.  It’s not a mantra.

QUINN: Well right. And now we have this case from the Supreme Court which was unanimous. Maybe there’s new hope here that things will be different.  I totally agree with you and think your analysis is spot on.  I’ve called these exceptions extra-statutory.  I don’t like calling them judicial exceptions because I think that sanitizes them.


QUINN: What they are is they are extra-statutory.  In addition to the statute. The Supreme Court has decided in their wisdom that the statute is not enough so they have come up with two additional requirements that get added on top of the statute and I, like you, don’t see anywhere in the law where that is allowable.  That’s not the role of the Supreme Court. It never has been, although they do try and take that power from time to time.

KNOWLES: No.  The only reason why I like the words “judicial exception” to the statute is because they are a massive admission against interest that the Court is acting unconstitutionally.

QUINN: Right.  They admit that it’s not in the statute.

KNOWLES: Yes, it’s a classic admission against interest.

QUINN: It is.  I couldn’t agree with you more.  I like your article, I hope everybody reads it. So, perhaps the only remaining question is where do you think we go from here?  It seems to me for the first time in a long-time people are talking about this in a different way. I think in part of that has to do with the Director talking about it in a very open way and testifying to Congress that he doesn’t know what’s patent eligible.  And I think he’s just being honest, because if we’re all honest we really don’t know what’s patent eligible unfortunately until we see the door open and the three judges on the Federal Circuit walk in.  And then we’ll know. It’s that kind of arbitrary.

KNOWLES: This discussion has to go to Congress where it belongs. I hope that the legal research we have done can inform those discussions. Congress will be able to see the 230 year history of the scope of patent eligibility in the disjunctive of ‘inventions or discoveries’ going all the way back to the founding fathers and the Constitution. That is awe inspiring and should not change. It is part of the fabric of what made the United States the great leading innovator that it has been and must stay. Congress should be reminded that it added a definition of invention in Section 100 in 1952 to unambiguously include discoveries.

Congress should also be advised that somewhere the Supreme Court took a left turn and decided to create a parallel case law on patent eligibility that is inconsistent with the statute. That gets us back to the first paragraph of our article that the recent Supreme Court cases are unconstitutional because “A or B” is inconsistent with “A not B.” “A or B” comes from the first four words of 101 “whoever invents or discovers”. “A not B” is best illustrated in the statement of Justice Thomas in the Myriad case that “groundbreaking, innovative or even brilliant discovery does not by itself satisfy the 101 inquiry (i.e., an invention cannot be a discovery). As we indicate in the article, it is hard to imagine a more unconstitutional statement than that discoveries cannot be patented when the statute the Court is applying states that any invention or discovery can be patented.

QUINN: I agree all around.  I think over the next several years that things will change but we’ll have to continue to be vigilant.

KNOWLES: One of the points that we make in this article goes back to the famous case of Marbury v. Madison where the Supreme Court ruled it can review the constitutionality of federal statutes.  Well who oversees the constitutionality of the U.S. Supreme Court decisions?  I think that’s a really important question. The course correction is to go back to Congress and get another statute passed that tells the Supreme Court to get back in line. There is no private right of action and the time it takes to go to Congress to pass another statute is of the length that one wonders if that’s actually a remedy. It points out a kind of a dark spot – maybe even a hole– in our tripartite form of government. There is no short-term solution to unconstitutional behavior by the U.S. Supreme Court.

QUINN: I agree, and certainly when you’re dealing with an area as important as fast-moving technology, these answers need to be handled much faster than what they are.  Slowly responding to matters of great importance to innovators powering a technological economy is a recipe for falling behind in the global marketplace. And we have seen the U.S. slip in the annual U.S. Chamber IP rankings, which is very concerning.

KNOWLES: I’m glad to hear that the Schein case is consistent with and even supportive of our legal research.  And we very much appreciate IPWatchdog for giving our article some attention. It is now open source legal research and we hope folks will use it in their briefs, give the copies to Congress, and maybe even the Supreme Court. Let’s get this conversation started.

QUINN: Well thank you very much Sherry, I really appreciate it.

KNOWLES: My pleasure Gene. And I would like to thank my co-author Anthony Prosser, Ph.D. for all of the weekend hours of legal research he contributed.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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

Discuss this

There are currently 67 Comments comments.

  1. Anon January 16, 2019 2:40 pm

    Regarding the “new opening” (and as provided in the comments section of that thead), see also the additional roadmap as to how the Court may extract itself from its own Gordian Knot, vis a vis Justice Kavanaugh’s “three factors for the Court to overturn its own decisions” in the oral arguments of the Tax Board v, Hyatt case.

  2. Anon January 16, 2019 3:32 pm

    Let me (not so humbly) add:

    Particularly, comment posts 20 and 27.

  3. Pro Say January 16, 2019 4:31 pm

    Thanks Sherry, Anthony, and Gene.

    Enough is enough.

    American can’t take — or afford — any more of this innovation denying and stealing 101 / eligibility baloney.

    Schein, and Sherry & Anthony’s article / args / cites, are now my #1 arg in any future 101 / eligibility battles.

  4. Night Writer January 16, 2019 5:00 pm

    This is a good article. I think misses a couple of thing. In Alice, the Scotus has added another argument that claims that are abstract may tend to not promote so are not constitutional. And that the exceptions are tied to the “to promote” language of the Constitution.

    Additionally, I think that you should include Deener. There is fairly broad recognition in that case of the claims.

    “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 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.

  5. Anon January 16, 2019 6:54 pm


    Please (please) do not be like Malcolm Mooney and the late Ned Heller and pretend that a counter to the point that you want to present has NOT been made.

    This mindless repetition of yours grows dull.

  6. peter brady January 16, 2019 10:51 pm

    Nice article. Knowles is a legal scholar and draws her conclusions with an unbiased eye. An independant eye that is solely interested in discovering, or more appropriately uncovering, the distorted evolution of patent law in the United States.
    She is looking to Congress to help correct the situation. Yet, so many in Congress have special interests and are supported by deep-pocketed lobbyists.
    Just look at the efficient infringement movement and its effects.
    Great job!

  7. Paul Morinville January 17, 2019 3:05 am

    The practical problem with SCOTUS legislating is that there is no reasonable mechanism for the public to teach SCOTUS the effects of their legislation. Yes, anyone can file as an amicus and explain what their legislation does on the ground to people and the economy, but just to speak can cost thousands of dollars thereby excluding the very people who are effected by the court’s legislation.

    However, when legislation is passed in congress, anyone can explain the effects to lawmakers at the minimal cost of a trip to their lawmakers office, an email or a phone call. And, anyone can walk the halls of congress where most lawmaker offices want to hear what they have to say so they can understand the effects of legislation.

    So when the courts write law (as SCOTUS so often does), they do so blindly having taken a skewed and incomplete view from only those parties with money.

    In effect they implement policy and have no idea what that policy will do.

    In the case of 101’s exceptions, SCOTUS blind policy has killed our innovation engine. There is no longer early stage investment in the US for the most important technologies to our economy and national security. Sure phone apps still can attract investment, but that is because the market is controlled by Google and Apple, where virtually all phone apps are sold.

    But real technology, like artificial intelligence, block chain, enterprise software, quantum computing, etc., cannot earn early stage investment because the only asset most inventors have is junk. Startups in those tech areas earn early stage investment in China, and this is a very real national security threat.

    The flawed people arrogantly unaware of their blindness on SCOTUS have absolutely no idea what they are doing, yet they believe they do and they boldly, blindly, go forth anyway.

    SCOTUS is now completely untethered from the Constitution, which unfortunately remains tethered to whatever they decide.

    SCOTUS is an arrogant flag that blows a very cold wind on all of us.

  8. Night Writer January 17, 2019 8:23 am

    @5 Anon Do you get that I was one of the first to say that the judicial exceptions were not constitutional? I’ve made most of the arguments that are in the articles of this post? Plus most of your rebuttals are arguments that I have made. Do you get Anon that I am not saying it is a valid argument, but that it is the argument that the Scotus has put forth? The Scotus is saying their exceptions are tied to the language of the Constitution–not me.

    Do you get that I keep this front and center because it is the argument the Scotus is making and needs to be addressed. I have even referenced an article from the 1960’s that explained how Congress should address legislation when the Scotus was claiming that their interpretation of a statute is based on the Constitution.

    Seriously, Anon, read what I write and stop trying to push your ego into this.

  9. Night Writer January 17, 2019 8:29 am

    I would add about this article is that the Scotus is quite well aware of the conjunctive and disjunctive nature of discovery.

    What they have done is say (explicitly in Alice) that the exceptions are tied to the language of the Constitution as I quoted above. I think you not addressing this article is a fatal flaw of your article. You need to address their argument in Alice that does explain why it is OK to change the disjunctive into a conjunctive.

    The fact is that the Scotus has a Constitutional argument (as I have pointed out from day 1 of Alice and have gotten so much flak for it is ridiculous). The Scotus has an easy come back.

    (Anon, I think your problem is that you have so used to dealing with MM where there is really no need to read his posts or his responses that you are trying to treat us all like we are MM. Read what we wrote and think. Your statements to me are just not on point and have little to do with my position.)

  10. Night Writer January 17, 2019 8:50 am

    @7 Paul

    I think this is right and I think the only hope for a patent system is to prove these issues.

    I also think that academics that have published papers that misrepresent cites and facts need to be punished if we are going to go forward. Nothing would be bigger for patents than to have Mark Lemley removed from Stanford for academic dishonesty.

  11. Curious January 17, 2019 10:18 am

    This mindless repetition of yours grows dull.
    Amen. NW continues to confuse policy making and law-making (the province of Congress) with constitutional interpretation (the province of SCOTUS). In creating “judicial exceptions,” the Supreme Court is writing law — they are acting like they were a superior branch of government and not a co-equal branch. If SCOTUS thinks a law is unconstitutional, then the remedy is to strike it down — not amend it using terms (e.g., “abstract idea”) that they refuse to even define.

    Section 101 was not intended to be anything but a general introductory statement that precedes the “conditions and requirements” portion of 35 USC.

    A point raised previously and worth repeating here is that the titles of Sections 102 and 103 includes “Conditions for patentability,” where Section 101 does not. Under Section 282, defenses for invalidity include “any ground specified in part II as a condition for patentability” and “any requirement of section 112, except that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.” Nowhere is Section 101 mentioned as a defense. If Congress intended that compliance with Section 101 was to be a defense, then Section 101 would have been labeled as a condition for patentability.

    Many of us have been saying that the emperor has no clothes for quite some time. It is refreshing to say a serious article say exactly the same thing (although some apparently revel in trying to give SCOTUS cover for their power grab).

  12. EG January 17, 2019 10:19 am

    “The Supreme Court has brazenly admitted it is not following Congress’ statutory instructions on patent eligibility in several cases. And it has carried out virtually none of the required statutory construction. It is judicial activism in the extreme.”

    I agree whole heartedly with this. As my own IPWatchdog posts recently noted, SCOTUS is utterly brazen in disregarding the express language of 101, as well as 100(b) that says “inventions or discoveries.”

  13. Anon January 17, 2019 10:36 am

    Night Writer,

    Quite the contrary, my rebuttals are directly on point, and it is most odd that you have not even tried to address them, all the while it is YOU that is pushing “what the Supreme Court will do” as YOUR position.

    You keep on dismissing what I have put to you instead of addressing those points.

    In fact, here, you want the Knowles/Prosser team to address something THAT I HAVE ALREADY ADDRESSED, and you claim that their position is flawed because the Court will take “their easy path.” That very same path to which my rebuttals attack.

    This is NOT an “ego thing” for me – and your claim as such sounds in the type of deflection that Malcolm Mooney would engage in.

    Instead of what you are doing, please provide a substantive reply to the points put to you.

    Please, no more evading.
    Please, no more “the Court says so” type of position from you. We (most) ALL KNOW that the Court has been less than forthright. Several of us (me being a principal provider) have been trying to get people to acknowledge the necessary starting point of realizing that the score board is broken.

    My rebuttals (particularly, posts 20 and 27) are directly on point to what YOU keep on leaning on. I “get” that YOUR leaning on them is that you are saying that THAT is what the Court is going to say. I “get” that you personally may not feel that the Court is not “valid” in saying what they are going to say, but your constant posts that ONLY say “what the Court is going to say” simply does NOT advance the conversation precisely because counter points HAVE been presented to “what the Court says.”

    The Knowles/Prosser paper comes to the same point (of a broken score board) through a separate avenue. But the path that I have paved remains there for you (and for all) to actually walk down.

  14. Curious January 17, 2019 10:36 am

    Do you get that I keep this front and center because it is the argument the Scotus is making and needs to be addressed.
    It has been addressed ad nauseam — SCOTUS doesn’t get to make the laws. Also, SCOTUS is not a fact finder — as such, their “may tend not to promote” language is way out of line. It is the job of Congress to hold hearings as to whether or not a law will promote the progress of science and useful arts. Moreover, it is up to Congress to balance

    As stated by Knowles, “The basics in this case is the U.S. Constitution, which grants Congress the sole right to promote the progress of science.” Hence, SCOTUS has no say.

    Let’s think back to our constitutional law class — what kind of scrutiny is SCOTUS applying to 35 USC 101? Rational basis? Intermediate scrutiny? Strict scrutiny? If 35 USC 101 was to actually be reviewed, my guess is that it would be based upon rational basis review. In this situation, the question to be asked is are the government’s actions are rationally related to a legitimate government interest? In this case, I think the answer to that question would be “yes.” As such, I don’t think that SCOTUS can reasonably strike down 35 USC 101, which is the Court’s remedy for an unconstitutional law.

  15. Eric Berend January 17, 2019 12:31 pm

    Two words.

    Ultra Vires.

    Unfortunately, the Inventors no longer care. This looks much as it always has over the past 15 years or so: the judge-attorney-legislator overclass dispensing gobbledygook to justify the treacherous exploitative deception of the Inventor or patentee, for the purpose of unjust enrichment of others.

    Put simply, you all chopped too many of our heads off, while telling everyone else we “deserved it”. The rhetorical “patent troll” guillotine of Inventor character assassination has been promulgated and practiced too freely, too gleefully and for far too long, for any other outcome. And, there can be no doubt that the SCOTUS happily joined that party.

    Whether by means of the pollyanna, halcyon yesteryear promises of wealth and economic heroism “Horatio Alger” respectability and status used to induce the enormously risky personal and financial sacrifices necessary to attempt the invention of new technologies, famous some generations ago; or, by means of public opprobrium, character assassination, academic bribery and digerati online mobsters called “pundits” and “progressive thought leaders” so as to engender this notorious ‘patent troll’ myth, replete with generic death threats literally calling inventors and patentees the “worst evil in the world” – it should be quite obvious that our agency and humanity is regarded with extreme contempt.

    While all of the above legal described legerdemain was established and practiced at American Society’s highest levels, a maelstrom of agitated moralist zealots was loosed upon the commons, an absolute torrent of mostly younger, college and high school aged persons ardently convinced that “patents are evil!”. Simultaneously, academics were recruited to burnish the “movement” with a color of intellectual legitimacy, so as to further the corrupt regime’s ploy in destroying Inventors.

    So go ahead, all of you – fuss over the disaster YOU all created. Where Inventors are concerned, it no longer matters. Why should we bother? YOU all in the said so-called “superior” overclass, will only set up yet another ‘shell game’ to make sure that the ‘sucker’ Inventors are swindled out of our hard-won discoveries.

    When a human being makes value choices as to his or her own life, the malevolence of others, matters. The hatred of others, matters. The treachery of others, matters. The power abuses of established authorities, matters.

    “Move Fast And Break Things!”, matters.
    Inventors, do NOT matter.

    The engineers are no longer driving this bus!

    To the point entire, the very heart of the matter: the ‘engineers’ (e.g, inventors) are not only no longer interested in “driving this bus” – we now loathe and despise the presumption that we should do so for less than nothing: an “opportunity” to be personally ripped off and publicly denigrated.

    It is MUCH MORE IMPORTANT to Americans, that impromptu flash mobs of online digerati moralist dictators with an overbearing superiority complex, get to ‘FEEL’ SO morally superior to a “lowly” Inventor who – ‘gasp! oh no!’ – still believes in the ‘verboten’ anti-Marxist concept of private property.
    That, is what the U.S. Patent system now represents, to a U.S. inventor.

    And, that the august Purple Nine of the Black Robe – the Supreme Court of the United States of America – enjoy expressing the very same Inventor-hating opprobrium in their lofty stations.

    A trap to be exploited by, a swindle to a called a ‘sucker’ for, a racket to justify plundering the fruits of inventors’ talents and labors, a legal toy with which to play favorites and reward illicit influences with – THIS, is what the U.S. patent system truly appears as, to any Inventor with any current awareness and sense of his or her own dignity. The American Inventor was not just ‘taken to the woodshed and whupped’: the stigmata invoked is so damaging to any notion of respectability, let alone the confidence necessary to venture into the unknown that is the art, science and practice of inventing the future, that the Inventors have fully abandoned the field.

    That this essential human component has been so specifically harmed and derogated by the judge-legislator-attorney overclass while the loss, pain, suffering and abandonment of any meaningful participation by Inventors in the classic implied Constitutional bargain of Article 1 Section 8 Clause 8, are all summarily and blithely ignored, speaks volumes about the motivations of the corrupt judiciary, legislature, and the society of the esquires feasting on this massive exploit.

    You are all of you slaves to Google and the rest of the BigTech SiliCON Valley IP PIrate Gang, unless and until substantial evidence to the contrary appears – if ever. Without a doubt, THAT, is what your precious ‘U.S. patent system’ truly represents, to an Inventor today.

    If anyone is “so” concerned as to actual take notice of our absence: before you dare presume to “want us back” – try taking YOUR knifes out our collective ‘backs’, first.

  16. anonymous January 17, 2019 12:46 pm

    Good article. I would like to have seen a cite to Judge Plager’s dissent in Interval Licensing, where he lays out the case that, “In light of the statutory criteria for patent validity established in the Patent Act, there is no need, and indeed no place in today’s patent law, for this abstract (and indefinable) doctrine.” He continues, “The ‘abstract ideas’ idea, when used for denying a claimed invention’s patent eligibility either before or after a patent is issued, cannot thus function as a valid rule of law.”

    The PTO’s 2019 Revised Guidance on Patent Eligibility also mentions Plager’s dissent, at fn. 2, albeit characterizing it as a stakeholder’s expression of “concern with the proper scope and application of the ‘abstract idea’ exception.”

    ALL OF US should submit comments to the 2019 Revised Guidance, reminding the Office of the Schein holding and Plager’s own words – “judicial exceptions” to eligibility cannot be the law. The executive branch has just as much of a duty to ensure the constitution is followed as does the judiciary. While the 2019 Revised Guidance seemed like a good step forward, the Office should refuse to reject applications on the basis of any “judicial exception.” That is the only way for the Office to “tread carefully.”

    Lastly, while we’re talking about statutory construction, even congress is limited in the power it has, in that it must act only “by securing . . . the exclusive right.” The words “by securing” must have meaning. I’m aware of no court interpreting those two words specifically. Anyone else? In the SCOTUS oral argument in Oil States, Breyer started down the path, asking “do people gain a kind of vested interest or right after enough time goes by”? He posited 10 years and huge investment in the technology, but still the answer was “It doesn’t matter.” This concept of quiet title in a patent must be further pursued, particularly in light of congress having authority to act only “by securing” an exclusive right. Any revised 101 legislation should also include a patent incontestability provision, providing a patent owner quiet title for AT LEAST the majority of the patent term, if not substantially more. The words “by securing” and “limited times” and “exclusive right” must function together, and each phrase has meaning.

  17. Night Writer January 17, 2019 1:12 pm

    Curious and Anon—the two of you need to work on your reading comprehension.

    Curious aren’t you the one that criticized me for saying the judicial exceptions were unconstitutional? I think you were. Years ago I said this. And you said you didn’t care where the judicial exceptions were from or what the justification were for them. In fact the arguments this article made are the same ones I’ve been making for years. Plus go back to your Constituional law class and look for cases where the Scotus is saying that the statute itself isn’t unconstitional but the application of it is unconstitutional. That is what is happening with the judicial exceptions.

    And again–the two of you keep shooting the messanger. I am not saying that I agree with the Scotus. What I doing is presenting their argument that I am sure they will trot out in the next 101 opinion.

    And of course this article needs to deal with the argument presented by the Scotus in Alice. The Alice argument justifies turning the disjunctive into a conjunctive.

    Frankly, the two of you need to learn to respect other people’s opinions. Mine are well thought out and have developed over many years of analyzing 101 cases at the Scotus. I took a class from the person that wrote Benson (the person in charge of IP for the DOJ) and wrote a paper on 101 long before it became an issue. In fact, I predicted back in 2004 that 101 would be used as it is now.

    (And seriously Curious you are quite the shape shifter. You were lambasting me for saying the judicial exceptions were unconstitutional and now you are taking the opposite side and being just as aggressive. You were the one that keep saying it didn’t matter where the judicial exceptions were from that they were there and the only recourse was legislation. I said no that the judicial exceptions were unconstitutional, which you laughed at.)

  18. Paul Morgan January 17, 2019 1:22 pm

    NW, your third paragraph Sup. Ct. quote above [Deener?] on their long history of decisions on unpatentable subject matter is essentially identical to that recited in Diamond v. Chakrabarty itself.

  19. Mike January 17, 2019 1:57 pm

    I’ve posted comments on this website often. I appreciate this piece from Sherry Knowles. Being a breast cancer survivor hits home with me, as my wife is fighting breast cancer. Knowles says she owes her “life to inventors who brilliantly discovered the anti-cancer activities of certain isolated natural products. In particular I am referring to doxorubicin and taxol.” Although I do appreciate the discoveries in medicine, I don’t see eye to eye with Knowles regarding the full nature of her debt. She *additionally* owes her life to being fortunate enough to be in the category receiving statistical benefit. This clearly indicates that there still is no cure for everyone, and *THAT* shows the need for patent protection to encourage innovation all the more.

    Yes, my wife took the best medicine possible for her particular cancer sub-type, tumor size, lymph node involvement, her2 copy number, etc. This included a chemotherapy regimen for taxotere, carboplatin, herceptin (tratuzumab) & perjeta (pertuzumab). She also underwent bilateral mastectomies and comprehensive radiation. She is currently taking extended adjuvent therapy (neratinib), as well as medicine (letrozole) and shots (lupron) for inducing early menopause to shut down her ovaries and estrogen production. We are being as aggressive as possible, but in all due respects: we are crossing our fingers.

    The standard level of care using these medicines is purely based on a game of statistics and whether or not my wife falls into a studied patient population with statistically significant results. Then we base decisions based on percentages. This is no cure. This is gambling.

    Is this the best we can get?

    There is much more work to be done, for example, in immunotherapy and personalized medicine, but protecting research in these area runs the risks of being considered “abstract”, “natural phenomena”, or “laws of nature” with our current laws.

    From Alice:
    “[M]onopolization of [the basic tools of scientific and technological work — laws of nature, natural phenomena, and abstract ideas] through the grant of a patent might tend to impede innovation more than it would tend to promote it.”

    My question for “We” the People:
    Is SCOTUS basing their law-making decision to create judicial exception on a fear that something MIGHT TEND to impede innovation? Are they forgetting that a patent is not a permanent monopoly? It encourages publishing of discoveries? It actually *promotes* innovation?

    The Constitution is clear: it is the securing for limited times to inventors the exclusive right to their respective discoveries that PROMOTES the Progress of Science and useful Arts. Does SCOTUS no longer believe that securing for limited times to inventors the exclusive right to their respective discoveries promotes innovation? If Congress thought that patents on laws of nature, natural phenomena, and abstract ideas would impede innovation, they would have provided such limitation. But they did not. Where does SCOTUS go off on their “belief” that something “might tend to impede?” Do they base decisions on fear and mere possibilities, or on what Congress (and the Constitution) intended. Perhaps they should re-read the text.

  20. Anon January 17, 2019 2:15 pm

    Night Writer – how did you let Malcolm Mooney take over your moniker?

    You dip into the Accuse Others routine with wanting me (and others) to engage with “reading comprehension” when it is apparent that you haven’t even bothered to read my posts.

    Please stop now and read my posts.

  21. Steven Thrasher January 17, 2019 2:28 pm

    Good article. When you pull back to 10,000 feet, the clarity is stunning.

  22. Curious January 17, 2019 5:27 pm

    Curious aren’t you the one that criticized me for saying the judicial exceptions were unconstitutional? I think you were.
    I seriously doubt it. At most, I said that SCOTUS was making it up and they weren’t following the text of 35 USC 101.

    Plus go back to your Constituional law class and look for cases where the Scotus is saying that the statute itself isn’t unconstitional but the application of it is unconstitutional.
    Do you have a cite for me? I don’t recall those cases.

    What I doing is presenting their argument that I am sure they will trot out in the next 101 opinion.
    You think any of us happened to forget their argument? We don’t need a reminder. Frankly, their justification really doesn’t matter. What really matters is that SCOTUS is impermissibly rewriting a statute to their own liking. They don’t get to do that. That’s the job of Congress. Why they justified the rewrite is not nearly as important as the fact that they engaged in the rewrite.

    Mine are well thought out and have developed over many years of analyzing 101 cases at the Scotus. I took a class from the person that wrote Benson (the person in charge of IP for the DOJ) and wrote a paper on 101 long before it became an issue. In fact, I predicted back in 2004 that 101 would be used as it is now.
    Toot your own horn much?

    You were lambasting me for saying the judicial exceptions were unconstitutional
    Sorry … you got the wrong guy. I’m not the kind of attorney that is going to throw around the phrase “unconstitutional” willy-nilly. Seriously, you need to relax. BTW — you should know by now that anytime you throw out your pet theory, Anon and/or I are going to push back. Get used to it.

  23. Pro Say January 17, 2019 6:16 pm

    Thank you for your heart-felt post Mike.

    May the Good Lord and your wife’s doctors bring her — and you and your entire family — through this.

    One can only imagine how many millions of lives will be needlessly lost in the years and decades to come because life-saving cures will never see the light of day due to this 101 / eligibility morass.

    It has to stop.

  24. Night Writer January 17, 2019 7:54 pm

    Curious—you are the one that argued with. I said the judicial exceptions were unconstitutional and you said they were fine and it didn’t matter and that I was an embarrassment for arguing that the judicial exceptions were unconstitutional. In fact, you said that the Scotus could not do something unconstitutional.

    Anon—what is the matter with you? I will continue to make the Scotus’s argument as that is the argument they are making. You are parroting back to me the arguments I’ve made and then criticizing me. Twilight Zone.

    Curious and Anon–I am not going to respond to you further regarding this topic. Curious has flipped his arguments to mine and now doesn’t even admit that he used to tell me I was an embarrassment for saying that the judicial exceptions were unconstitutional. Now Curious says I am an embarrassment for explaining to people the Scotus’s argument in Alice. Hate to break it to you two dears, but what I am saying will become relevant just as when I was saying the judicial exceptions were unconstitutional has now become relevant.

  25. Night Writer January 17, 2019 7:56 pm

    And Anon, you don’t even seem to have a point. I explain to people the Scotus’s argument in Alice and you come back with “rebuttals”. What are you rebutting? Do you understand that I am presenting the Scotus’s argument? Do you get that? I get all the problems with their argument. I made them myself the first time.

    Do you get that I am bringing up their argument as I believe that they will trot it out in response to a new statute or some of the Constitutional arguments presented in the article? Do you get that?

  26. Litig8or January 17, 2019 8:44 pm

    The author relies heavily on statutory text “inventions OR discoveries” but seems to miss that the Constitution itself uses only the latter term (“to their respective writings and discoveries.” At the time of the Constitution, the word “discovery” does not mean what I think this author thinks that word means today (or in 1952, etc.). So ironically, the author is saying that the Supreme Court is acting “unconstitutionally” by interpreting Section 101, the vary language that the author relies on is found only in the STATUTE, and of course, a statute that goes beyond the Constitution is unconstitutional. So the Court has construed Section 101 in a way that makes the Statute not unconstitutional.

  27. Mike January 17, 2019 9:09 pm

    Thank you Pro Say.

  28. Curious January 18, 2019 1:24 am

    I said the judicial exceptions were unconstitutional and you said they were fine and it didn’t matter and that I was an embarrassment for arguing that the judicial exceptions were unconstitutional. In fact, you said that the Scotus could not do something unconstitutional.
    Please … don’t make ___ up, which is exactly what you are doing right now. I know how I write, and what you’ve described does not fit my writing style or how I interact with other professionals. Also, you are attributing arguments to me that I would never make. Seriously dude, you need an intervention. We aren’t out to get you yet you act like you think we are.

  29. EG January 18, 2019 7:01 am

    “So ironically, the author is saying that the Supreme Court is acting “unconstitutionally” by interpreting Section 101, the vary language that the author relies on is found only in the STATUTE, and of course, a statute that goes beyond the Constitution is unconstitutional. So the Court has construed Section 101 in a way that makes the Statute not unconstitutional.”

    So wrong on many levels, litig8or. The Patent Clause isn’t self enabling, but has to be implemented by legislation from Congress, which it has properly done through the patent statutes, including Sections 101 and 100(b). Patent policy is also committed by the Patent Clause exclusively to Congress, not SCOTUS. You should also read Adam Mossoff’s “Who Cares What Thomas Jefferson Thought About Patents? Reevaluating the Patent ‘Privilege’ in the Historical Context,” Cornell Law Review, Vol. 92:953 (2007) which explains why SCOTUS gets patent policy wrong from the get go.

  30. Night Writer January 18, 2019 7:56 am

    @27 Litg8or

    I took a class with the person that wrote Benson (at least what was adopted by the Scotus as he was head of the IP at the DOJ). He made the exact same argument you just did. We used to argue with him a lot and we made the arguments made in this article regarding discovery and he would come back with exactly what you are saying that the meaning of discovery has changed.

  31. Night Writer January 18, 2019 7:57 am

    There is a post all about what was meant by discovery.

  32. Anon January 18, 2019 9:45 am

    Litig8tor has shown himself (repeatedly) to have no desire to actually understand patent law before he speaks on patent law.

    By the way, Litg8tor, your attempt to elevate into some type of “Flash of Genius” was expressly rejected by the Legislative branch in the Act of 1952.

    Night Writer, nice find of that link – plenty of interesting comments in the comment thread there.

  33. John January 19, 2019 4:45 pm

    Great article. I’ve ranted on this a long time. Even before 101, the supreme court has ignored 100(b) forever:

    35 USC 100: When used in this title unless the context otherwise indicates—

    (b) The term “process” means process, art or method, and includes a *****new use***** of a ***known*** process, ***machine***, manufacture, composition of matter, or material.

    It has always been clear that computer software, where apps, are a “new use” of a “known…machine” qualifies. This was purposefully added to clarify, yet the supremes and other courts blithely ignore 100(b), in addition to 101.

    The article is really great though. It shows how Benson got it’s brain damage in conflating 101 with 102/3 and where that came from.

    Major kudos to the author. Not sure this will change anything. Our supreme court has been filled with idiots for a very long time…

  34. Litig8or January 19, 2019 6:04 pm

    Courts have not “ignored” sections 100 or 101. Instead they have interpreted them to exclude things like abstract ideas or laws of nature. That is not the same thing as “ignoring.” Further, as I’ve previously stated, the major argument of this article (about “A or B” is not “A not B”) assumes (but doesn’t prove and I don’t think it can) that the “B” (discoveries) matters. The author seems to argue (not very effectively) that a “discovery” is a lower bar in some way that means that the Supreme Court’s judicial exceptions cases (there are many of them) are “unconstitutional.”

  35. John January 19, 2019 9:12 pm

    Litg8or yea, in other words they ignored it. Just like they ignored the word “or” and reinterpreted “not”. That is ignoring the plain text. Thanks for re-making the point. I like that people like you keep re-making this point in so many wonderfully dense ways. Congrats!

  36. Litig8or January 19, 2019 9:39 pm

    John- name an actual Supreme Court decision where the statutes were “ignored.” There’s not one. Instead, when the patents in such cases were invalidated, the court found that the invention was a composition of matter (Mayo) or a process (Alice), but not a patent eligible one. That’s why those cases (and MANY older ones) hold that there are “exceptions.” I think you’re capable of understanding the difference between these holdings and a hypothetical opinion (none actually exist) where the court ignores the statutes.

  37. John January 20, 2019 7:10 am

    Litig8or, thanks keep digging and reinforcing what I said. Also, did you even read the article? Of course not. The later cases stop citing the statute and self reference common law. But thanks for playing. I look forward to your next post where I can shove your face into it again. As a matter of fact, I’m positive you cannot resist, and this will prove endless fun of me, constantly shoving your face in it. Thanks in advance! I look forward to your repeated misery, puppet.

  38. Anon January 20, 2019 9:23 am

    John- name an actual Supreme Court decision where the statutes were “ignored.” There’s not one.

    There is many.

    In fact, most all Supreme Court decisions dealing with eligibility in the post 1952 era ignore — to a certain extent — just what Congress actually did in the 1952 Act.

    Your problem Litig8or, is that you don’t understand the subject that you want to pontificate upon.

  39. Curious January 20, 2019 11:55 am

    Instead they have interpreted them to exclude things like abstract ideas or laws of nature.
    Interpret them to exclude is REWRITING the statute.

    35 USC 100(a): ”[t]he term ‘invention’ means invention or discovery.”
    Supreme Court: “The Court has long held that §101, which defines the subject
    matter eligible for patent protection, contains an implicit exception
    for ‘[l]aws of nature, natural phenomena, and abstract ideas.’” In other words, discoveries are out.

    35 USC 101: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
    Supreme Court: In other words, “any” does not mean all — it excludes things we don’t think are patentable — including abstract ideas. As for an abstract idea, “we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case.”

    35 USC 282(b): “The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded: … (2) Invalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability, (3) Invalidity of the patent or any claim in suit for failure to comply with— (A) any requirement of section 112, except…”
    35 USC 102 and 103 are labeled as “Conditions for patentability; novelty” and “Conditions for patentability, non-obvious subject matter.” 35 USC 101 is not. 35 USC 112 is also not listed as a condition for patentability, but it is specifically identified in subsection (b)(3)(A).
    Supreme Court: They haven’t spoke on this issue besides stating we’ve done it before. “While these exceptions are not required by the statutory text, they are consistent with the notion that a patentable process must be “new and useful.” And, in any case, these exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years.”

    The long and the short of it is that SCOTUS has not followed the language of the statutes. Instead, they have crafted (ill-defined) exceptions that find no support in 35 U.S.C. Not only have the ignored the plain language of 35 USC 101, in order to provide their judicial exceptions with any teeth, they’ve ignored the plain language of 35 USC 282.

    Claims that are too broadly written can be addressed under the first paragraph of 35 USC 112 for lack of enablement.
    Claims that cover fundamental economic practices long prevalent in our
    system of commerce should easily be rejected under 102 or 103.

    All this being said, I started going to the track of investigating the difference between “statutory stare decisis” (mentioned in Bilski) and constitutional stare decisis. By using the phrase statutory stare decisis in Bilski, SCOTUS said they were interpreting the statute (sorry, NW — not interpreting the constitution). The concept behind statutory stare decisis is that since Congress can easily change the law if they think SCOTUS got it wrong, then SCOTUS will assume they got it right (and not revisit the issue). On the other hand, if they are interpreting the Constitution, they are more likely to reconsider the matter since Congress is much less likely to amend the Constitution. With this in mind, I am now much more convinced (I was already leaning this way before) that the only effective approach to address this mess is a legislative approach. By using the phrase “statutory stare decisis” in Bilski, SCOTUS has signaled that their precedent is here to stay. This isn’t to say that SCOTUS was right — it just means that SCOTUS is unlikely to back down on their interpretation.

  40. Litig8or January 20, 2019 11:58 am

    Should Einstein have been able to patent “a method of calculating energy by multiplying mass by light speed squared”? Obviously not. Even though that is a method.

    Case. Closed.

  41. Anon January 20, 2019 1:03 pm


    I invite you to look afresh at the Kavanaugh Scissors (the three points under which even the Supreme Court will reverse themselves).

    Links recently given (write up for the oral argument before the Court in the California Franchise Tax Board v. Hyatt case).

    The first of course is by far the toughest, but the second and third may make swallowing that first step approachable.

  42. Curious January 20, 2019 6:49 pm

    Should Einstein have been able to patent “a method of calculating energy by multiplying mass by light speed squared”? Obviously not. Even though that is a method.
    Oh please … it is not a method. Regardless, let’s suppose that in 1905 when Einstein submitted his paper that laid out this theory he was able to get a patent on it, what was the utility? There was none. Einstein’s theory alone is unpatentable.

    Also, the first man-made nuclear reaction didn’t happen until 1942 (or about 37 years after Einstein’s paper). Not even getting into the jurisdictional limitations of a patent, a patent wouldn’t have prevented that. Also, a patent on E=mc^2 woudn’t cover a method of generating a nuclear reaction. It merely describes the results of the reaction.

    Mentioning Einstein’s E=mc^2 is a silly/lazy argument made by people who don’t really understand science and technology. It also reflects a gross misunderstanding as to the amount of additional research and engineering it takes to go from a theory to a practical application based upon that theory. It is an argument made to appeal to people who don’t know any better.

  43. Curious January 20, 2019 7:04 pm

    I invite you to look afresh at the Kavanaugh Scissors
    Just a suggestion, when I do a Google search for “Kavanaugh Scissors” and the ONLY hit I get is your post on Patently’O from a few days ago, then you need to find better terminology to describe what you are referring to.

    Regardless, I assume you are referring to Schein v. Archer. Initially, I was very hopeful about the language from that case. However, that appears to be a case of first impression for SCOTUS. As such, they had no stare decisis to work more. Moreover importantly, they had no statutory stare decisis to work with. In Schein, SCOTUS was working with blank page. That’s not the situation with 35 USC 101. As I have mentioned many, many times on this blog, SCOTUS got it wrong — and badly. However, by invoking “statutory stare decisis” in Bilski, they basically said they consider the matter (regarding the exceptions) settled and they aren’t going to touch it.

    It is an issue that is going to have to be addressed by Congress. While I appreciate everything Iancu is doing, the executive branch has the least power among the three branches of government to do anything about this issue. SCOTUS has washed their hands of it. At best, they can clarify what is meant by an abstract idea so as to limit it to fundamental economic practices long prevalent in our system of Congress. Otherwise, it is all up to Congress. Period. End of story.

  44. Anon January 21, 2019 12:19 am

    The scissors reference is new and penned by me (so I would not expect a google search to help you).

    It also does not flow from the Schein case.

    It comes from the oral arguments in the California Franchise Tax Board v Hyatt case, and is Justice Kavanaugh’s “what does it take for the Supreme Court to overturn its own decisions.”

  45. Sherry January 21, 2019 8:41 am

    Hi Curious

    I appreciate your concern about statutory stare decisis. SCOTUS cannot take comfort or protection from statutory stare decisis for two reasons. First, as discussed in our article, the Department of Justice gave oral testimony during the hearings for the 1952 Patent Act and specifically requested Congress to take the word “discoveries” out of 101. The DOJ raised the typical arguments one would if against the eligibility of applied discoveries. Therefore, Congress specifically heard that testimony and rejected the position. Second, on the contrary, it did the opposite and added a definition of inventions to 100 to explicitly include discoveries. Congress could not have been more clear about what it was doing. There is no statutory stare decisis that supports SCOTUS’ unauthorized common law on patent eligibility.


  46. Night Writer January 21, 2019 10:33 am

    @43 Curious

    Well said about the E=MC^2. I think, though, that this actually needs more. I think that this example has been used to justify the exceptions. We need more complete arguments to counter this.

  47. Litig8or January 21, 2019 11:18 am

    Congress amended the Patent Act in 2011 but did nothing to abrogate centuries of Supreme Court jurisprudence about judicial exceptions to statutory subject matter.

    Drops mike.

  48. Anon January 21, 2019 11:41 am


    Your penchant for mike dropping only accentuates the fact that you just don’t appreciate the area to which you want to pontificate.

    In other words, you merely mouth arguments that are flawed, and cannot seem to even recognize the flaws.

    I suggest that you stop clinging to some notion of “the score board says” and try to understand the larger point being put forward that whatever you think the score board says is just not material because the score board is broken.

  49. Anon January 21, 2019 12:24 pm

    Night Writer @ 47.

    Asked and answered.

    See the addendum already provided directly to you at post 27 at:

  50. Night Writer January 22, 2019 9:14 am

    My guess is that Litig8or is someone like Mark Lemley. This Litig8or person seems to be quite clever.

    @50 Anon. I didn’t ask for anything. And, your response you reference is not adequate. As I said, we (meaning the patent community) need to develop better answers to these bullet points that are used by the anti-patent community.

  51. Anon January 22, 2019 9:59 am

    Night Writer,

    You “asked” with your statement of “need more.”

    I gave you (directly) more.

    Your turning around here and saying “is not adequate” is ITSELF not adequate.

    Maybe engage on the points I have put to you.

    Tell me why you think my points may be inadequate. How are my points inadequate? Being dismissive without more means nothing. Please do more than nothing.

  52. Litig8or January 22, 2019 11:00 am

    Today in Helsinn the Court held that “on sale” had a meaning before the AIA was enacted and that the new section 102 does not unambiguous change that meaning. Thus, the established meaning applies.

    Same with 101. There has been, for many decades, an understanding that certain things (eg laws of nature) cannot be patented. Congress, of course, is presumed to have known this when they enacted the AIA but did not abrogate that precedent.

    Hey, maybe you don’t like the result of my argument, I’m just showing what winning arguments look like.

  53. Curious January 22, 2019 11:50 am

    There is no statutory stare decisis that supports SCOTUS’ unauthorized common law on patent eligibility.
    Sherry — let me preface by saying that I believe that SCOTUS is entirely in the wrong for the points I have already discussed above. However, all the patent cases from Benson onward are statutory stare decisis as to the judicially made exceptions to patent eligibility.

    I’m not a constitutional attorney so I don’t know if the raising of a particular issue, for the first time, is enough for the court to set aside that doctrine. That being said, I still firmly believe that the very best option for a change is with Congress. However, considering how dysfunctional Congress is these days, I don’t suspect we’ll get anything out of them.

    I really wish I could be more optimistic, but I’m not.

  54. Curious January 22, 2019 12:59 pm

    Hey, maybe you don’t like the result of my argument, I’m just showing what winning arguments look like.
    Winning argument: “hey judges, I know there is ZERO statutory support for these exceptions or even that 35 USC 101 is a defense to patent infringement, however, we’ve been doing it this for such a long time, why stop now? [wink, wink, nod, nod]”

    we’ve always done it this way — that’s one killer of a legal argument.

  55. JTS January 22, 2019 2:50 pm

    Great paper and interview. Don’t be so hopeless that Congress won’t fix things. Policy/opinion can swing wildly in modern American politics.

    Even if we assume that Congress implicitly incorporated prior judicial exceptions in the 1952 Act, the problem is that the Supreme Court has added new exceptions or liberally expanded the old ones. And, the basis for doing so, if you look at cases like Alice, is really just making patent policy — i.e., deciding what does or doesn’t promote the useful arts. Courts must sometimes make decisions on close cases based on policy. In the area of patent law, however, whether a decision would promote the useful arts is incredibly complex and unavoidably subjective. The Supreme Court (and CAFC) are in no position to make such judgments. Patent law is an area of law where judicial activism is particularly unjustified and risky. And the outcomes show that. Not only that, by providing a 101 hatchet to fix supposedly bad patents, the Supreme Court has made it less likely that Congress will address the problem of bad patents.

  56. Litig8or January 22, 2019 3:07 pm

    Curious states that there is “ZERO statutory support” for the notion “that 35 USC 101 is a defense to patent infringement.”

    See Section 282(b)(2) “Invalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability. ” Sections 100 and 101 are in Part II and specify conditions for patentability. Chapter 10 of the Patent Act (sections 100-105) is entitled “patentability of inventions.”

    Hope this helps.

  57. Curious January 22, 2019 4:09 pm

    Sections 100 and 101 are in Part II and specify conditions for patentability.
    Section 100 specifies conditions for patentability — really? A definition section specifies conditions for patentability — is that what you are saying?

    Part II is entitled “Patentability of Inventions and Grant of Patents.” This encompasses section 100-212. Chapter 10 is entitled “Patentability of Inventions” and covers section 100-105.

    Section 100 is entitled “Definitions”
    Section 101 is entitled “Inventions patentable”
    Section 102 is entitled “Conditions for patentability; novelty”
    Section 103 is entitled “Conditions for patentability; non-obvious subject matter
    Section 104 is repealed
    Section 105 is entitled “Inventions in outer space.”

    Perhaps you overlooked that both section 102 and section 103 EXPLICITLY MENTION “conditions for patentability” and Section 101 does not. Sections 101 and 105 also do not. Sections 102 and 103 are conditions for patentability — the others are not — per the EXPLICIT language used in the statutes.

    Hope this helps even more.

  58. Night Writer January 22, 2019 4:40 pm

    @52 Litig80r “Hey, maybe you don’t like the result of my argument, I’m just showing what winning arguments look like.”

    Unfortunately, I think he/she is right. I suspect the Scotus will not even bother to entertain an argument about the judicial exceptions. They will dismiss the argument just as Litg8or has outlined.

    Congress really is the only hope. Looking to the Scotus would have been like looking to the Scotus to convince them that the flash of genius requirement was unconstitutional or not in the statute. Good luck with that.

  59. Litig8or January 23, 2019 2:02 pm

    Curious, you are certainly wrong. Not everything is a “process, machine, manufacture, or composition of matter,” even if you set aside judicial exceptions. For example it has been held that a “transitory signal” (electromagnetic wave) is not any of these. A claim that claims something not specified in section 101 is not patentable, hence invalid. Invalidity is a defense to infringement.

    Go. Back. To. Filing. IDS’s.

    Leave lawyering to lawyers.

  60. Gene Quinn January 23, 2019 3:45 pm

    Oh Litig8or. What a condescending litigator you are when you get to be anonymous. In my experience litigators think they know everything about patent law, but those that are most vocal like yourself have a first level understanding that falls apart with any level of real scrutiny.

    Would you care to debate me in an open forum instead of hiding behind your keyboard and erroneously pontificating that litigators are the real lawyers and only ones who understand patent law? It would be SO much fun to debate you!

    Knowing you won’t ever agree to come out of the weeds, I’ll point out to others that Litig8or has stepped into it without even realizing it. He has tied invalidity under 101 to defenses to infringement. If that is the case then he has to agree that in order to determine whether a claim is invalid under 101 there must be a full and complete construction of the claim language and Markman process. It is simply illogical to have some defenses based on invalidity of the claims require a full and complete claim construction while other defenses do not. In fact, anyone reading Federal Circuit cases should appreciate the Court is inching ever closer to requiring a full claim construction prior to a 101 analysis.

    Try and keep up Litig8or.

  61. Litig8or January 23, 2019 3:55 pm

    Of course invalidity is a denfense to infringement. An invalid claim is invalid from birth—nothing there to infringe. There is no requirement to even conduct Markman at all. Some judges never do Markman. Silly prosecutor.

  62. Anon January 23, 2019 4:16 pm

    “An invalid claim is invalid from birth.”

    Simply not so.

    A granted patent (and its claims) have – at birth – an existence and level of presumption of validity.

    It takes adjudication to turn that presumption away.

    It is a misnomer to think “invalid from birth” and is one that often comes from those who do not truly understand patent law (which — sadly — comprises more than mere Litig8ors).

  63. Curious January 23, 2019 10:48 pm

    Not everything is a “process, machine, manufacture, or composition of matter,” even if you set aside judicial exceptions.
    I never said that they were — nice strawman. E=mc^2 is not a process, machine, manufacture, or composition of matter.

    it has been held that a “transitory signal” (electromagnetic wave) is not any of these.
    I’m aware of that decision. BTW — electromagnetic signals (e.g., in the form of radio waves and television) are man-made (i.e., manufactures) and will likely be the longest lasting creations ever made by man. These supposed “transitory” things will be propagating through the universe long after mankind is dust. However, why would the Federal Circuit ever let actual science get in the way of a result-based decision?

    A claim that claims something not specified in section 101 is not patentable, hence invalid. Invalidity is a defense to infringement.
    Where is that in the statute again? Care to point that out for me? 35 USC 282 goes to great pains to list all the things that are defenses.

    Also, you fail to appreciate that the USPTO is free to act as the “coarse filter” and apply 35 USC 101. The USPTO examines patent applications, whereas 35 USC 282 applies to issued patents. Notice that difference? As Anon pointed out, once an application gets issued as a patent, it gets wrapped with this presumption of validity. Once issued, a patent gets treated differently than an application.

    Leave lawyering to lawyers.
    LOL — Let me see, did you address the actual language of the statutes I cited? I didn’t think so. So much for your lawyering.

    Some judges never do Markman.
    Some district court judges don’t even understand the standard for a 12b6 motion — sad as it sounds. Moreover, the Federal Circuit doesn’t as well. It took me about 1 hour of research to realize that the Federal Circuit has blessed a practice of killing patents with 12b6 motions that would get squashed at an appeals court that actually understood the Federal Rules of Civil Procedure. Don’t get me started on patent litigators. While there are definitely some very, very good ones out there, there is a bunch of trash as well.

  64. Joshua Timbisha February 6, 2019 8:53 pm

    In my opinion, the main reason for the anti-patenting decisions of the Mayo case and the Prometheus case, was that the Justices of the U.S. Supreme Court felt that it was “icky” and “gross” that one could acquire a patent on naturally-occurring substances or on related diagnostic methods. That’s about all there is to their logic: feeling icky, feeling gross, and feeling uncomfortable. (I have published 2 editions of a 900-page medical textbook, 2 editions of a 1000-page biochemistry textbook, and a 650-page pharmacology book, and also 20 journal articles on molecular biology and biochemistry. I have also published more extensively on patent prosecution than anybody. In view of my background in science and patent prosecution, I feel comfortable with my view that the U.S. Supreme Court based its decisions on the “icky-factor.”)

  65. B February 17, 2019 11:13 pm

    @ LITIG8TOR “Curious, you are certainly wrong. Not everything is a ‘process, machine, manufacture, or composition of matter,’ even if you set aside judicial exceptions.”

    FYI, an “abstract idea” (pre Mayo/Alice) certainly may fall w/i the statutory language of s101. Take for example: A process, comprising exercising abdominal muscles for 8 minutes. However, this claim alone would fail under s102 or s103.

    Now throw in some detail about the particular exercises and the order. Still obvious? Maybe, maybe not but so far practically every “exception” to s101 is extra-statutory and unconstitutional.

    I’m trying to think of a single “exception” under s101 that cannot be better handled under 112, 102 and 103.

  66. litig8or February 18, 2019 8:22 am

    Here’s one: claiming a natural DNA sequence that was heretofore not sequence. Here’s another – Einstein claiming mass by dividing E by light speed squared. These claims are definite and not barred by prior art. But they don’t pass Section 101. As the Court in Diamond v Dieher said, prior art concerns are “wholly apart” from the concerns behind section 101.