Reactions Roll in On Congress’s Proposed 101 Framework: ‘The Right Approach’ or ‘A Swing and a Miss’?

By Eileen McDermott
April 18, 2019

“The problem is not that the statute is incomplete, it is that the Supreme Court refuses to carry out strict statutory construction of the words of the statute, as it does in other areas of law, like the tax code.” – Sherry Knowles

Russ Slifer

Russ Slifer

Yesterday, members of congress announced in a press release a proposed framework to fix patent eligibility law in the United States.

Reactions to the framework were mixed. While many are delighted that the issue seems to be getting real attention on Capitol Hill, others are skeptical of some of the proposals. For example, Russ Slifer, former Deputy Director of the United States Patent and Trademark Office (USPTO), described the framework as “a big swing and a miss”:

Waiting for Congress to help is often the worst course of action. The result, if there is one, includes too many compromises that just lead to new unintended issues. The Senate Judiciary Subcommittee on Intellectual Property’s draft outline for patent eligibility is a prime example. I applaud the subcommittee for trying to hit the ball out of the park, but this is a big swing and a miss.

Recognizing that court created judicial exceptions to the patent statute have resulted in an unworkable patent was an important start. The outline, however, merely changes the exceptions from judicially created to legislative exceptions. Codification of the court’s exceptions just embeds them for generations into the law, while allowing the courts to “interpret” them.

I envision a long line of cases interpreting the statute to determine what is a Fundamental scientific principle, Product that Exist solely and exclusively in nature, Pure mathematical formulas, Economic or commercial principles, or Mental activities. How can a court ignore all the precedential opinions already on the books?  Just think about the Supreme Court answering the simple question of what constitutes generic technical language or generic functional language. We can do better than compromising the patent system further! – Russ Slifer

James Pooley

Others were more generous and applauded Tillis, Coons and the relevant members of the House for taking action:

The most important and immediate goals for reforming patent eligibility are predictability, predictability and predictability. This framework, coming from legislators who understand the value to our country of a robust and sensible patent system, is exactly the right approach. It will restore much-needed certainty to the acquisition and enforcement of patent rights, reducing costs for all stakeholders. – James Pooley

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From the Hill: Staffers Seem Open to Comments

Having attended the meeting on the Hill yesterday in which the framework was released and discussed prior to being circulated to the public, Todd Dickinson of Polsinelli, and the former USPTO Director, said that he can understand how those seeing the proposal without having taken part in the dialogue might be alarmed. “There are still some big questions to answer, but I left the meeting encouraged by the momentum,” Dickinson told IPWatchdog. The discussion, which he described as decidedly “more lawyerly” than previous meetings on the topic, included staffers for both the House and Senate, and from both political parties, which “is a good sign that there is a continued intention to do something,” he said.

Todd Dickinson

The 40-plus attendees of the meeting asked a range of questions and, in many cases, the staffers seemed open to taking the comments under consideration. Some of the sticking points were around how to apply the “practical application test” to ensure the defined categories of exceptions to patentable subject matter are construed narrowly and what the methodology is going to be for revising the framework as comments come in. Dickinson was particularly curious about the implications and possible interpretations of the framework’s inclusion of “products that exist solely and exclusively in nature” and “pure mathematical formulas” as exceptions.

Though encouraged by the bicameral, bipartisan effort, Dickinson noted comments questioning whether Section 112 should also be fixed, and the relative silence of those present from the tech industry. If efforts get sidetracked by additional reforms, or concerns are brought up down the line by particular industries, it could prolong debate. “They still have a lot to work through,” Dickinson said. “Who knows how long it will take?”

More Reactions

Sherry Knowles

Sherry Knowles, Founder of Knowles Intellectual Property Strategies and former Senior Vice President and Chief Patent Counsel at GlaxoSmithKline, said that, while she “appreciates the efforts” of the Senators and Representatives involved, “to address the extreme problems caused by the Supreme Court’s case law, which is inconsistent with the current statute,” she “would urge the Senators and Representatives to support recodifying Section 101 with the following wording:

Whoever invents or applies a discovery which results in 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. Judicial exceptions to this statute are expressly prohibited, and instead, the Court is required to carry out strict statutory construction.

She continued:

I am against a defined, closed set of categories of excluded subject matter because they could lead to unmeasurable mischief by the Supreme Court, which could consider that they are in essence, codifying their exceptions. “Fundamental scientific principles” can be construed by the Court to indicate a codification and approval of their “abstract ideas” or “law of nature” tests and they will decide cases in the same way they have been. Likewise, the “Products that exist solely and exclusively in nature” category would be construed by the Court to affirm the Myriad decision. The proposed excluded categories are fraught with vagueness, and would be an invitation to the Courts to create more difficult law. I appreciate the suggestions by the Senators and Representatives to add “instructions” on how to apply their exclusions (therefore codifying exceptions “plus”), however, my concern remains.

The proper application of the categories “a new and useful process, machine, manufacture or composition of matter” already excludes mental activity and unapplied mathematical formulas, as well as products as they are found in nature without man-made manipulation thereof. The problem is not that the statute is incomplete, it is that the Supreme Court refuses to carry out strict statutory construction of the words of the statute, as it does in other areas of law, like the tax code.

Thus, in my opinion, little progress would be made with the proposed language, and instead, the difficulties might be cemented. I urge the Senators and Representatives to support either a simple repeal of 35 U.S.C. 101 (so that patentability rests only on §§102, 103, 112, etc)  or a simple amendment to 101 that includes instructions to the Court as suggested above, instead of creating categories of exclusions, however elaborated on. I also urge the Senators and Representatives to provide at least legislative history that the intent is to expressly repeal Myriad, Mayo and Alice. – Sherry Knowles

Paul Morinville

While he agreed with the framework’s proposal to “keep existing statutory categories of process, machine, manufacture, or composition of matter, or any useful improvement thereof,” Paul Morinville, founder and former President of U.S. Inventor, Inc. and President of SemiComm HK, took issue with much of the proposed language.

With respect to the proposal to “Eliminate, within the eligibility requirement, that any invention or discovery be both ‘new and useful.’ Instead, simply require that the invention meet existing statutory utility requirements,” he said:

Whether an invention is “new” is a question already answered under 102 and 103. Answering it under 101 confuses the evaluation by opening multiple tracks to develop case law to construe the claims and create new exceptions. Therefore “new” should be removed from 101 to provide clarity and de-confuse analysis of claims.

Whether an invention is “useful” is a question already answered in-part under 112. 112 asks if the invention as claimed can be made in the real world. If it can, it may be useful. But that does not determine if it will be used. No person can predict if anyone will use an invention and therefore the question of usefulness cannot be answered at the time of the invention. For example, at the time that the Slinkey was invented, very few people would have thought people would buy and use it. But someone invested in its commercialization. When people bought the Slinky, its usefulness was proven by the market. Whether there is a market for an invention is the only way to determine if an invention is useful.

Conversely, if an invention is not useful, nobody will buy it. If nobody buys it, it can never be litigated. The truth is that it does not matter if a patent is issued for a non-useful invention because there can never be a negative effect from litigating the patent as there will be no infringement. Indeed, around 97% of patents are never litigated because they are either not commercially viable (not useful), thus not infringed, or not commercially valuable, thus damages are too small to return the cost of litigation.

However, there is a positive effect of issuing patents that are not useful. The invention is disclosed to the public so others can improve it and potentially create a marketable product.

Whoever determines whether an invention will be useful at the time of invention will too often be wrong, which will too often deny patent protection for meritorious inventions, thus “useful” should be removed from 101.

101 should be amended to read as follows:

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.

With respect to the closed list of exceptions proposed by the framework:

The courts have proven over the centuries that they are incapable of deciding subject matter eligibility because they err on the side of invalidity. It is therefore dangerous to list any specific categories of invention as per se patentable or unpatentable. Doing so will end with entire new fields of invention wrongly excluded from patent protection.

Nobody can know the future and how any particular category (included or excluded) will morph and branch into new technologies. We are seeing this happen with software/hardware morphing into a new category of artificial intelligence (AI). AI is primarily built on three excluded categories – mathematical formula, economic and commercial principles, and mental activities. There can be no doubt that the courts will view AI as patent ineligible because it is built on three excluded categories. Many other fields of invention will get caught up in this as well.

The most disturbing category is Economic and commercial principles. These are business methods by another name. This is a direct attempt by big tech to protect their monopolies.

No category of invention should be per se patentable or unpatentable. 102, 103 and 112 already work to make the call.

Thus, the first recommended change to 101 would read as follows:

Whoever invents or discovers any, without exception, new and useful process, machine, manufacture, or composition of matter, or any, without exception, new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.- Paul Morinville

If you have a different take on the framework that you’d like to share, please email editors@ipwatchdog.com.

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The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

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

Discuss this

There are currently 74 Comments comments. Join the discussion.

  1. Ternary April 18, 2019 1:46 pm

    I like Sherry Knowles’ addition: “Judicial exceptions to this statute are expressly prohibited, and instead, the Court is required to carry out strict statutory construction.” It confirms Congress’ Imprimatur to make law. And that is where it should be. Very good Ms. Knowles.

    If one thing has become clear, it is that the Courts have no clue where science and technology are going. This while abstract concepts are more and more translated into useful machine properties. To try to identify the “abstract idea” in an invention increasingly becomes an outdated fool’s errand. An effort to reverse technology to a vision of mechanical times. Congress should move patent law into the 21th century.

  2. Pro Say April 18, 2019 4:00 pm

    Best, most certain action to insure protected American innovation:

    Abolish 101.

    Second best: Sherry’s recodification of 101:

    “Whoever invents or applies a discovery which results in 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. Judicial exceptions to this statute are expressly prohibited, and instead, the Court is required to carry out strict statutory construction.”

  3. Paul Morinville April 18, 2019 5:01 pm

    Pro say, keeping new and useful will give the courts a hook to reinstate the abstract idea. It’s time to get rid of it.

  4. Jon Lenon April 18, 2019 7:09 pm

    #kill101 #killEbay/Alice/Mayo/TCHeartlend #killPTAB

    Remove and kill 101 and AIA Act/PTAB

    These laws only serve Silicon Valley

  5. Curious April 18, 2019 10:48 pm

    Whoever invents or discovers any, without exception, process, machine, manufacture, or composition of matter, or any, without exception, improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
    I believe I once proposed using the “without exception” language. I like it because it is both short and delivers a clear message to the Supreme Court.

    I would also propose the following language:
    Without exception, whoever invents or discovers any process, machine, manufacture, or composition of matter, or any improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Compliance with this section is not a condition for patentability under section 282.
    The last sentence merely explicitly states which should have been implicit. Sections 102 and 103 are explicitly described as conditions for patentability. 35 USC 101 is not.

    Another proposal would be to add “non-natural” or “human-made” in place of the prior language of “new and useful.” This merely codifies the “include anything under the sun that is made by man” language from the legislative history. This would temper any concerns that patentable subject can include things already found in nature.

    I’m also not adverse to carving out an exception for a purely mental process — i.e., a process, as claimed, that can be performed solely in the human mind. How does somebody prove infringement of a purely mental process anyway? Along those lines, it does not have to be codified as an exception to 101. Rather, it can be codified as some type of heightened evidentiary requirement that prevents mental thought from being used to establish infringement. In short, language of this sort would ameliorate people’s concerns that patents will be used to regulate thought.

    The goal isn’t just to put together language that is perfect for people that are pro-patents. The goal is to put together language that can get enough support to pass through Congress. This means taking into account concerns from people that aren’t necessarily anti-patent but are concerned about patents going too far.

  6. Paul Morinville April 19, 2019 1:25 am

    Curious, “I’m also not adverse to carving out an exception for a purely mental process — i.e., a process, as claimed, that can be performed solely in the human mind. How does somebody prove infringement of a purely mental process anyway?”

    But inserting it is dangerous. The courts already effectively remove any references to a computer from the claims when they evaluate it and invalidate it as purely mental.

    You are right. You cannot write a claim chart of a purely mental process. So if one is patented, who cares? Nobody can get sued, so nothing bad can happen of a purely mental process is patented.

  7. EG April 19, 2019 8:22 am

    I feel Knowles restatement of 101 is the best I’ve seen so far. Straight, to the point, and NO EXCEPTIONS.

  8. Christopher Noble April 19, 2019 9:01 am

    The dialogue (at least as represented by this article) seems to be dominated by “interested parties” advocating for broader definitions of what is patentable. IMO, the pendulum has already swung too far in that direction. A lot of future earnings (by patent-owning entities and patent attorneys) are at stake. Making the patent system “robust” and beneficial to society does not necessarily equate to making it broader.

  9. Night Writer April 19, 2019 9:06 am

    The fact is that Alice is based on a holding that abstract claims as defined in Alice are unconstitutional. Why else does the Alice opinion go through an explanation that the claims in Alice may tend not to promote?

    The SCOTUS may go along with a statutory change, but they may also simply say that the exceptions are based on the Constitutional need for the claims to “promote” and keep the exceptions.

  10. Anon April 19, 2019 9:54 am

    Solid points there, Curious.

  11. Anon April 19, 2019 11:08 am

    Night Writer,

    Stop your nonsense. Your “but the Constitution” argument as support for the Court’s meddling is DOA.

  12. Night Writer April 19, 2019 11:13 am

    My point and question is — if the new 101 doesn’t change the reasoning below then the SCOTUS will just keep the abstract exception.

    “We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. ___, ___, 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).

  13. anonymous April 19, 2019 11:26 am

    I think abolishing 101 would not be a successful strategy and would not pass. The next best alternative is the following, slightly modified from the IPO/AIPLA suggested amendment:

    (a) Patent eligibility.—
    (1) AMENDMENT.— Section 101 of title 35, United States Code is amended to read as follows–
    Ҥ 101. Patent eligible subject matter.
    “(a) Whoever invents or discovers, and claims as an invention, any useful process, machine, manufacture, composition of matter, or any useful improvement thereof, shall be entitled to a patent therefor, subject only to the conditions and requirements set forth in this title.

    “(b) Sole Exceptions to Subject Matter Eligibility. A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole, absent a practical application thereof:
    (i) exists in nature independently of and prior to any human activity, or
    (ii) is performed solely in the human mind.

    “There are no other exceptions to patent subject matter eligibility, nor any judicial exceptions, other than those of subsection (b), nor may any other exceptions be created or applied.

    “(c) Sole Eligibility Standard. The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to:
    (i) the requirements or conditions of sections 102, 103, and 112 of this title;
    (ii) the manner in which the claimed invention was made or discovered; or
    (iii) whether the claimed invention includes an inventive concept.

    “(d) The Office shall examine claims of a patent application for compliance with subsections (a), (b) and (c), making a determination of presence of patent eligible subject matter. An issued patent, having been found by the Office to comply with subsections (a), (b) and (c), shall not be challenged in any court for failure to comply with subsections (a), (b) and (c).

    “(e) Once a patent has issued, the Office’s determination regarding patent eligible subject matter in issued claims shall be final and shall not be cause to invalidate an issued patent, nor shall lack of patent eligible subject matter be raised as a defense to an allegation of patent infringement.

    Sense of Congress.—It is the sense of Congress that—

    (1) the term “any” in subsection (a) shall be interpreted broadly;

    (2) the Supreme Court’s recent jurisprudence concerning patent subject matter eligibility has harmed the progress of science and the useful arts, adding so-called “judicial exceptions” congress did not intend, specify by statute, or authorize through exercise of its plenary constitutional authority, and those judicial exceptions are not now being codified;

    (3) the United States patent system must protect and encourage research and development in such scientific disciplines as would promote the progress of science and the useful arts by securing for limited times to inventors the exclusive rights to their discoveries and by providing scientists in the life sciences, computer sciences, and other disciplines, with certainty that their discoveries and inventions are entitled to patent protection; and

    (4) this amendment effectively abrogates Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014) and its predecessors, to ensure that life sciences discoveries, computer software, and other inventions and discoveries are patentable and patent eligible, and that those patents, presumed valid when issued, are and remain valid and enforceable.

  14. B April 19, 2019 11:34 am

    ““The problem is not that the statute is incomplete, it is that the Supreme Court refuses to carry out strict statutory construction of the words of the statute, as it does in other areas of law, like the tax code.” – Sherry Knowles”

    Dear Sherry

    I have this issue front and center at the SCOTUS now.

    I even cited you several times

  15. Liberty April 19, 2019 11:44 am

    The game is rigged Tillis and Coons will not do anything. Im sure they will carve out a section for Big Pharma but the small IP holder will be wiped out. I do enjoy reading this board but the laws are being controlled by the special interest groups that control the government. We live in a fully controlled plutocracy where the laws of yesterday are nothing more then fairy tales. The laws have been manipulated and crafted to serve the elites. Patent are nothing more then a “government franchise” to which companies like Google Apple and Amazon dictate the rules to their employees the Government and the SCOTUS. If you do not think so, just take a looks at Ebay, Alice, Mayo, TC Hearland and the AIA Act/PTAB and you tell me how these rules helped patent holders.

  16. Anon April 19, 2019 12:01 pm

    Mr. Noble,

    Your post is reminiscent of another recent post that postulated feelings (without support) and then attempted to denigrate ALL attorneys as merely being concerned with their pocketbook.

    Opinions are one thing – everyone has one and they may not mean a thing. INFORMED opinions are quite a difference story. Please try to make yours the latter and not just the former.

  17. Curious April 19, 2019 1:03 pm

    You are right. You cannot write a claim chart of a purely mental process. So if one is patented, who cares? Nobody can get sued, so nothing bad can happen of a purely mental process is patented.
    I agree, but it less about the actual impact and more about selling the proposed changes to Congress. The goal is to get enough votes for it to pass through Congress.

    But inserting it is dangerous. The courts already effectively remove any references to a computer from the claims when they evaluate it and invalidate it as purely mental.
    Which is why I suggested making it part of the infringement analysis (as opposed to the eligibility analysis). Moreover, it is also why I emphasized that it refers to “a process, as claimed, that can be performed solely in the human mind.” By making the process computer-implemented, you’ve crossed over that threshold.

  18. Curious April 19, 2019 1:12 pm

    The SCOTUS may go along with a statutory change, but they may also simply say that the exceptions are based on the Constitutional need for the claims to “promote” and keep the exceptions.
    SCOTUS was explicitly relying upon 35 USC 101 in both Alice and Bilski. Also, their “might tend to impede innovation more than it would tend to promote it” language is pretty wishy-washy and is about as well-supported as a two-legged stool.

    SCOTUS presented a very weak and flimsy basis for their exceptions to patentable subject matter. In the face of a clear and unmistakable rebuke from Congress regarding the same, I suspect (and would sincerely hope) that SCOTUS would back off. It wouldn’t be the first time that Congress has put SCOTUS in its place, and this isn’t such a big issue (in the grand scheme of constitutional jurisprudence of the kind that interests SCOTUS) that they’ll push back against Congress.

  19. Night Writer April 19, 2019 2:12 pm

    @18 Curious, @12 I quote the passage from Alice. Where in Alice do you think that the SCOTUS relied on 101?

    Below what Curious says would be the hope. But the SCOTUS did not rely on 101 for Alice.

    “SCOTUS presented a very weak and flimsy basis for their exceptions to patentable subject matter. In the face of a clear and unmistakable rebuke from Congress regarding the same, I suspect (and would sincerely hope) that SCOTUS would back off.”

  20. Christopher Noble April 19, 2019 2:21 pm

    “Anon”, I am not surprised that my contrarian opinion upsets you. But it is not uninformed. I am an inventor on several issued patents, I’ve negotiated patent licenses on both sides dozens of times, raised money for a patent-derived startup that I founded and ran as CEO, sold patents, I’ve been the client of many excellent IP law firms, I’ve also worked for a NPE and I serve on the Board of a patent-related professional society… My opinion is based on a long career intimately involved with the US patent system.

  21. Anon April 19, 2019 3:39 pm

    Again, Curious – more solid points from you.

    Bravo.

    And more to your post at 18, I have explicated in extreme detail just why the United States Supreme Court would not want to enter into a “Constitutional” debate with Congress, showing why (and more than just “wishy-washy”) its assertions would be decimated if it attempted to take the rightful authority from Congress for the writing of statutory law that is patent law.

  22. Martin Nguyen April 19, 2019 4:59 pm

    “Whoever invents or discovers any, without exception, new and useful process, machine, manufacture, or composition of matter, or any, without exception, new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”- Paul Morinville

    I’m not an attorney neither an English teacher, and obviously I’m not trying to rewrite the Constitution. Just wanted to update to our modern time, and hopefully making it more understandable to what most people would think of at the present time.
    Mr. Morinville, respectfully, don’t mean to correct your wordings, and maybe you should correct mine…

    How about “Whoever invents or discovers any, without exception, new or improvement of process, machine, manufacture, or composition of matter, may obtain a patent therefor, subject to the conditions and requirements of this title.”

    Now, we’re directly making “improvement” as equally important as “new” and emphasizing on “improvement”, as well as NOT making “improvement” as a secondary type.

    And that is just my thoughts.

  23. Curious April 19, 2019 5:15 pm

    @18 Curious, @12 I quote the passage from Alice. Where in Alice do you think that the SCOTUS relied on 101?
    Seriously, do we need to go down this well trodden road again?
    “We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.”
    Notice the language that says the provision itself contains the implicit exceptions — not that the exceptions are found elsewhere.

    We have interpreted §101 and its predecessors in light of this exception for more than 150 years.
    Notice that they are talking about interpreting 101 … not the Constitution.

    Based upon the Supreme Court’s explicit language, the exceptions to statutory subject matter are implicitly found in 101. Your devotion to this pet theory of yours is admirable only in the sense that you have been steadfast in your resolve despite both logic and the law being against you.

  24. Anon April 19, 2019 5:36 pm

    Thank you Mr. Noble,

    Given your long career, are you aware that patent attorneys – like any other attorney, operate under strict ethics codes?

    Your earlier comments do not reflect this understanding. You may have your feelings, but you appear to not understand how those feelings relate to being informed.

  25. Night Writer April 19, 2019 9:03 pm

    @23 Curious

    Actually, what the SCOTUS did was say “implicitly” and implicitly said that it didn’t matter how 101 read that the exceptions applied.

    “Your … despite both logic and the law being against you.”

    Actually, Curious, my arguments account for both law and logic. You have never dealt with the portion of Alice I quoted nor have you dealt with “We have interpreted § 101 and its predecessors in light of this exception for more than 150 years.” So the SCOTUS is saying expressly that the form of 101 has not mattered that the exceptions apply. They then go on to say the exceptions apply because of the Constitution.

    I am not sure why you and Anon continue to believe that somehow you have won this argument when you don’t address the substance of what I say and quote portions of Alice that support my position.

    (I’d remind you that I was the one that years before Alice predicted an Alice type of case that would enable the judges to dismiss cases at the SJ stage. And I was the one that predicted the SCOTUS would largely adopt Rader’s concurrence in Bilski.)

    My current position is that the SCOTUS may maintain the exceptions depending on what exactly Congress does. I’ve pointed to journal articles in the 1950’s that address the problem of Congress re-writing statutes when the SCOTUS has held them to be unconstitutional.

    (But keeping taking your victor laps. Apparently you think quite highly of yourself.)

  26. Curious April 20, 2019 2:23 am

    You have never dealt with the portion of Alice I quoted nor have you dealt
    And you have trouble with your recollection. Both Anon and I have addressed your quotes ad nauseam. SCOTUS has clearly and unambiguously pointed to 35 USC 101 — not the Constitution as the source of the exceptions.

    They then go on to say the exceptions apply because of the Constitution.
    No … they use the wishy-washy language of “might tend to impede.” That is a pseudo finding of fact, but SCOTUS are not fact finders. That language is derived from Mayo and the Supreme Court makes this statement absent any citation whatsoever… i.e., they simply made it up. If the Constitution was the basis for this, SCOTUS would have cited it. They didn’t. In fact, Mayo does not explicitly refer to the Constitution at all.

    I’d remind you that I was the one that years before Alice predicted an Alice type of case that would enable the judges to dismiss cases at the SJ stage
    Before you produce this as an example of your brilliance, we don’t you produce a link to support your assertion.

    I’ve pointed to journal articles in the 1950’s that address the problem of Congress re-writing statutes when the SCOTUS has held them to be unconstitutional.
    I honestly don’t care what journals in the 50s have to say. Additionally, your (prior) arguments have been that the patents themselves are unconstitutional — not the statute. SCOTUS can declare a statute to be unconstitutional — but that is not what they have done. Rather, SCOTUS has introduced language pulled out of thin air based upon a factually-unsupported belief (i.e., “might tend to impede”).

    Regardless, I imagine there have been dozens of law review articles written post-Alice. Shouldn’t they be supporting your position as to why SCOTUS ruled like they did? If so, why don’t you identify some that support your position?

    Apparently you think quite highly of yourself.
    I’m not the one peddling crackpot ideas like impeaching the Supreme Court and that Obama intentionally stacked the Federal Circuit for Google.

    BTW … here is a quote from Bilski:
    This Court’s precedents provide three specific exceptions to §101’s broad principles: “laws of nature, physical phenomena, and abstract ideas.” Id., at 309. While not required by the statutory text, these exceptions are consistent with the
    notion that a patentable process must be “new and useful.”

    Notice how they tied the exceptions to the “new and useful” portion of 35 USC 101. In fact, when you read the entirety of Bilski, at no point does SCOTUS tie the exceptions to the Constitution. Look at all of the old cases that are relied upon. Look at Benson. Look at Parker v. Flook. These cases don’t rely upon the Constitution for their holdings or tie the exceptions to statutory subject matter to the Constitution.

    SCOTUS talks about “‘A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right” and “Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” These weren’t tied to the Constitution in the earlier cases nor in either Mayo or Bilski.

  27. Night Writer April 20, 2019 7:25 am

    @26 Curious

    I think it is time to end this. You clearly are not addressing what I said regarding either 101 or the Constitution. For example, you don’t address what I said where the SCOTUS says they have applied the exceptions for 150 years to all forms of statutes. You and Anon don’t address what I say and then you write these supercilious posts where you claim victory over me.

    Frankly, Curious your statements are amateurish. For example, you seem to think it is some great thing to say the SCOTUS is not a finder of fact and yet we see the SCOTUS become the finder of fact in case after case. In Oil States the SCOTUS became a finder of fact regarding the privy counsel canceling patents before 1800 and this was despite the fact the best evidence they had was a law journal article and the facts were disputed by the dissent.

    You seem to have some wish fulfillment that the SCOTUS is going to act properly and within your interpretation of the case law. You and Anon seem to stroke each other’s ego and somehow believe because there are two of you that your arguments are stronger.

    Address what I am saying if you want to pick this up, otherwise I am cutting this off as neither you nor Anon address my arguments and both of you merely give these statements that you know how the SCOTUS will behave because that is the way they are supposed to be behave. And then you proclaim that you have won some argument with me. You have not won any argument nor presented any convincing arguments. And frankly what you are writing is sophomoric and offensive in that you are stating the most basic analysis and then acting as if I don’t already know this and haven’t taken it into account in my analysis.

    Again–if you want to continue this then address my points and become a bit more sophisticated. Neither you nor Anon even have the slightest clue how to think about this. Both of you act as the SCOTUS is going to follow some straight and narrow road to justice and you just need to figure out what seems the most right. Wrong. The issue is not whether the SCOTUS will follow some straight and narrow road of justice, but can they justify the result they want.

    (And, again, you quoting other case law before Alice not making a Constitutional argument as if that is significant is sophomoric and ridiculous.)

    Frankly Curious, you and Anon are a waste of my time.

  28. Night Writer April 20, 2019 7:37 am

    Curious >>>Apparently you think quite highly of yourself.
    I’m not the one peddling crackpot ideas like impeaching the Supreme Court and that Obama intentionally stacked the Federal Circuit for Google.

    Crackpot ideas? There is plenty of evidence that Silicon Valley companies selected the judges for the CAFC, which includes large donations to the Democratic party and constant access to the president.

    Again what you show us is that you are sophomoric. I’ve worked for a large law firm that did work for Silicon Valley firms during the drafting the AIA so I know quite a bit about what goes on. You would be hard pressed to find someone who has worked with the K Street firms who would think my ideas are “crackpot.”

    As another example of how sophomoric you and Anon are, let’s consider Lemley and Oil States. You say that the SCOTUS is not a finder of fact as if that is some bright line and you can be sure how they are going to act. Let’s look at a person like Lemley that knows the SCOTUS extremely well. Arguably better than any other attorney regarding patents. What did Lemley do? He knew one of the dispositive issues was whether the privy counsel had invalidated patents back in the when our Constitution was adopted. So he wrote an article and got it published that said the privy counsel had invalidated patents so the SCOTUS could cite to it.

    Curious and Anon–take a step back. You are babes that have no idea how the SCOTUS works. And the two of you present sophomoric arguments that are a waste of my time.

  29. Night Writer April 20, 2019 7:53 am

    Curious and Anon:

    And, by the way, Ned and I discussed Lemley’s position on the privy counsel before Oil States was decided and both us knew what Lemley was up to. Ned, in fact, stated some very harsh things regarding Lemley’s character as Ned believed that Lemley’s position on the privy counsel was based on ignoring evidence and mischaracterizing what evidence there was.

    Ned and discussed this because we both knew that the SCOTUS was go to need to make a finding of fact about the privy counsel. And Ned was focused on trying to get published counter arguments.

    You see my discussions with Ned are the type of conversations people that understand the SCOTUS have. You, Curious, and Anon provide the most ridiculous sophomoric arguments I have ever heard.

    But you two go on with believing you understand the SCOTUS. Let’s have some competitions on the outcomes of the future cases. The proof will be in the pudding. So far I have kicked you both from here to the moon with my predictions and the two of you continue to say the most sophomoric ridiculous things I have ever heard from practicing attorneys.

    I am sure I can look forward to you and Anon continuing to claim victory over me with your silly little arguments. What a waste of my time you two are. And I don’t need your constant insults.

  30. Anon April 20, 2019 9:22 am

    Night Writer,

    Please give Malcolm Mooney back the meme that you are using here.

    You are looking beyond silly, and your attempts to bolster your odd penchant are not on point and do not detract from the point that “your quote” has been directly answered and that you are the one that has not answered any counter points.

    Threatening to “cut off” while you have yet to really do anything on point is you merely running away from the discussion.

    Again.

  31. Night Writer April 20, 2019 11:22 am

    @30 Anon

    At this point I am going to stop responding to you. You do not seem to comprehend what I’ve said and do not seem to care to even try. You just want to say the same things over and over again. Do you not feel ridiculous enough having Curious say the SCOTUS is not a finder of fact? That statement alone discredits the two of you beyond repair.

    Over and out.

  32. Anon April 20, 2019 1:06 pm

    Go ahead and run away.

    Again.

    And for the record, it is not my place to defend what Curious May say. You want to play the Malcolm Mooney game of lumping everyone who disagrees with you into one bucket and pretend that they are all the same.

    Balderdash.

    You throw out strawmen here and pretend that your ability to “predict” has anything at all to do with the point at hand, but it just does not.

    You want to claim some “high ground” because you and Mr. Heller happened to agree on a single point, and yet you ignore the far more complex conversations that I had with that same person, in which in part I explained that the single point that Mr. Heller wanted to stress was — while in itself a solid point — was NOT going to be enough.

    You want to act as if my position on Lemley — which is as established as yours, if not more so — and my position on Oil States is somehow lacking and thus, for the different point here, your view must be the better one.

    Again, utter balderdash. My expressed views on Oil States and the travesty there – tied to the machinations of Lemley happen to coincide with your views. How would such them make your view on this different topic somehow “better?”

    That you decide to go this path — and forego any actual substantive discussion on the points previously out to you — only makes the case that your immediate position is not “better” but is instead FAR weaker.

    I suggest that you try sticking to substantive points and put all the other rhetoric that you are attempting to the side. That rhetoric is not working for you.

  33. Curious April 20, 2019 6:29 pm

    For example, you don’t address what I said where the SCOTUS says they have applied the exceptions for 150 years to all forms of statutes.
    You got 150 years of case law … point out where this case law refers to the Constitution as the source of the exceptions.

    For example, you seem to think it is some great thing to say the SCOTUS is not a finder of fact and yet we see the SCOTUS become the finder of fact in case after case. In Oil States the SCOTUS became a finder of fact regarding the privy counsel canceling patents before 1800
    I really don’t think you understand what it means to be a fact finder. Concerns over SCOTUS finding their own facts are addressed, for example, in this article: https://www.scotusblog.com/2012/04/legal-scholarship-highlight-confronting-supreme-court-fact-finding/

    These concerns include (i) the court stepping outside of the adversarial process, (ii) procedural fairness (i.e., the court relying upon facts not subject to review), (iii) bias (i.e., looking for facts that support one position while ignoring facts that support the other position), (iv) the risk of error (again, because these facts are found outside of the adversarial process there is no chance to determine whether these facts are, in actuality, accurate). The job of SCOTUS is to review the law — not make up facts upon which this review is to be made. The Supreme Court’s statement in Mayo regarding “might tend to impede innovation more than it would tend to promote it” is unaccompanied by any citation. THEY MADE IT UP. Moreover, as I have pointed out before, this is less a statement of fact and more a wishy-washy statement one might expect from a politician.

    There is plenty of evidence that Silicon Valley companies selected the judges for the CAFC, which includes large donations to the Democratic party and constant access to the president.
    Campaign donations are not evidence that particular judges were selected. Carl Sagan once said that ‘extraordinary claims require extraordinary evidence.” If you are going to accuse someone of selling judgeships, you had better have more evidence than merely campaign donations.

    You are babes that have no idea how the SCOTUS works.
    I don’t think you do. You think that Lemley’s discussion on the Privy Council had any substantive impact on their decision? Ideology is what moves much of the Supreme Court — not simple legal arguments. While some cases are easily determined along the lines of liberalism and conservatism, other ideologies come into play. Judges have certain prejudices and those impact their decision. If the LAW was all that mattered, then 35 USC 101 would never be an issue because it is not a condition for patentability and hence it is not a defense under 35 USC 282. A first year law student could easily see that.

    You seem to have some wish fulfillment that the SCOTUS is going to act properly and within your interpretation of the case law.
    Ah … no. I’m resigned to the fact that SCOTUS will continue to misinterpret the current 35 USC 101 as it always has. However, unlike you, I’m not resigned that SCOTUS won’t get the message if Congress tells them to butt out. In Bilski, SCOTUS explicitly referred to statutory stare decisis. Look it up. This means that SCOTUS assumes that Congress has implicitly agreed with a statutory construction if Congress revisits a statute and doesn’t address SCOTUS’s interpretation of the statute. The fact that SCOTUS referred to statutory stare decisis in Bilski means their holding is based upon statutory construction — not based upon the Constitution. If the exceptions were based upon the Constitution, SCOTUS has no need to invoke statutory stare decisis. As it pertains to this discussion, it also means that SCOTUS recognizes the importance of what Congress says on this issue.

  34. Pro Say April 20, 2019 8:40 pm

    . . . all of the above demonstrating yet again that the one and only way to end all this eligibility craziness and foolishness . . . no matter the whys, wherefores, and what ifs . . . is to abolish this innovation-killing Section 101 hydra.

    Should Congress do so, American innovation will rise from the ashes and flourish yet again.

  35. B April 20, 2019 8:47 pm

    “You are right. You cannot write a claim chart of a purely mental process.”

    If there is one thing that I might possibly support is an exception on a “purely mental process” as such would be both an improper intrusion and impossible to support using evidence.

  36. Curious April 21, 2019 5:52 pm

    abolish this innovation-killing Section 101 hydra
    Abolish it, and then nothing prevents the Supreme Court’s exceptions from coming back in. Congress needs to have something in writing that explicitly limits the Supreme Court’s dalliances into law making as to this particular issue. This is why 35 USC 101 needs to stay — in order to place an explicit limit on SCOTUS.

  37. B April 21, 2019 11:40 pm

    @ Curious “This is why 35 USC 101 needs to stay — in order to place an explicit limit on SCOTUS.”

    Insightful. Remove the statute and remove the barrier. Not that the SCOTUS reads the damned thing anyway.

    One needs to really read Bilski in detail to see the irony in the SCOTUS’ nonsense. They live in a fantasy.

  38. Anon April 22, 2019 12:07 am

    explicitly limits the Supreme Court’s dalliances

    Preferably, with Congress and their exercise of their Constitutional power of jurisdiction stripping.

  39. Night Writer April 22, 2019 6:33 am

    I think there is little chance of this being passed. We are going to need more pain and both the White House and Congress controlled by the same party.

    Additionally as I indicated before the Scotus could continue to apply the exceptions based on the Constitution as indicated in Alice. The best route to avoiding this as I have stated before is to have express language in the statute to expressly overturn the exceptions and to either make part of the official record or add to the statute express language that the reasoning in Alice regarding the Constitution is flawed. The avenue for these arguments is clear in that the way the Scotus has used “to promote” as clear problems (e.g., not every claim would have to promote, the Scotus is acting like a fact finder and doesn’t know whether they promote or not, etc.)

    I do think the Constitutional arguments in Alice must be addressed.

  40. Night Writer April 22, 2019 6:35 am

    As I mentioned before there are some good journal articles about how to overcome Scotus arguments that include the Constitution to ensure the Scotus won’t continue with the same arguments (here justification for using the exceptions, which is clearly a statement by the Scotus that the exceptions are based on the claims being unconstitutionally granted.)

  41. Anon April 22, 2019 8:32 am

    Laws may or may not be Constitutional.

    Claims are not Constitutional.

    You continue to sound like a piker attempting to advance a position that has been logically and legally decimated, Night Writer.

    The very “article” that you appear to reference here (since you have actually referenced only one article) is the Knowles article, to which I have already pointed out your deficiencies in your comment concerning same.

    Time for you to do more than repeat a bad position.

    Try to do more than merely shoot the messenger that is pointing out how bad your position is.

  42. Anon April 22, 2019 10:17 am

    the reasoning in Alice regarding the Constitution is flawed.

    LOL – maybe they could follow the multi-prong reply that you want to run away from.

    🙂

  43. Night Writer April 22, 2019 10:28 am

    @41 Anon

    As I said I am not going to respond to you further. Why you think that you understand these issues when you clearly have no clue is beyond me. And why you think you can talk down to me when you don’t even do litigation is beyond me as well. I’ve pointed out to you flaws in your arguments that should shame you into silence regarding responding to me. But you continue ad nauseum.

  44. Anon April 22, 2019 1:36 pm

    Night Writer,

    The whole “is beyond me” rhetoric that you spout is part and parcel of your problem on this legal point.

    Why would you now think that the non-sequitur (and one that you make with zero basis of knowledge) of “litigation” has anything whatsoever to do with understanding Constitutional Law?

    You keep on saying “I’ve pointed out to you the flaws” when you have done no such thing (other than you decreeing by your unexplained edicts that my points are flawed). You have actually not provided a single substantive post that is actually on point showing ANY actual flaw.

    I am not the one that is “continuing ad nauseum” with mindless claptrap. That would be you and your continued attempts to pin some “Constitutional” basis to the judicial exceptions of 101 (or the statutory precursor to 101).

    What you perceive as “talking down to you” is my merely giving your legal position its appropriate and earned weight, which is to say, no weight at all. That you choose to act just like Malcolm Mooney in making unfounded statements, inflating strawmen as some type of bulwark of your own “correctness” and avoiding any effort whatsoever to actually take the time and address any of the items of the multi-prong rebuttal in any substantive manner is a shame that YOU should feel. I have no clue why you would ever think such empty tactics would somehow convince me to be quiet when you repeat your worthless stance. Instead of repeating your rhetoric, I suggest that you take the time and energy to understand the positions put to you. Otherwise, you will merely keep on appearing to be the f00l that speaks well beyond their ability on this particular topic.

    As always, your choice.

  45. Night Writer April 22, 2019 2:35 pm

    @41 Anon

    Why do you write offensive things like:
    “Laws may or may not be Constitutional. Claims are not Constitutional.”

    When my post says: “which is clearly a statement by the Scotus that the exceptions are based on the claims being unconstitutionally granted.”

    Did you even read what I wrote or do you just cut and paste comments you have previously prepared?

    It is surreal trying to interact with you Anon. Please stop responding to my posts. You add so many insults and strawmen to your posts that it makes me feel like I have to respond to defend my name. It is harassment Anon. Your posts are offensive. Stop responding to my posts with insults and strawmen.

  46. Anon April 22, 2019 4:14 pm

    Night Writer,

    Stop having your posts BE worthless and I will stop pointing out why they are worthless. If you think this to be some type of “harassment,” may I suggest that you check out the fact that you by posting on a public forum do NOT get to choose which member of the public responds and how that response may be. Secondly, I suggest that you note that ANY “personal” note that I write is objectively true, and that ANY professional note (as to legal arguments) is ALSO objectively true – each of which would be affirmative defenses to ANY type of “harassment” (in your mind) that you are taking umbrage with.

    After you grow a pair, then, as I have requested of you, please stop your Malcolm Mooney “Accuse Others” rhetoric. Then stop your other strawman and off-point rhetoric in which you attempt to bolster this separate legal point with such non-sequiturs as you “being a litigator” and other such nonsense, Then, stop having glass feelings about what is “offensive.” If you do not understand something – something as simple and direct as regards what it means for something to be “Constitutional,” I would be more than happy to hold your hand and explain it.

    For example, there is no such thing as a “claim” being “Unconstitutional.” A law -either facially, or as applied, may be Unconstitutional. I pointed this bit of legal understanding out to you in our first exchange on the topic, explaining that YOUR position (almost) reaches a “as applied” argument. That you happen to fail to understand Constitutional Law and what and how arguments are arranged is most obvious. That you attempt to take the high road, even as it is plain that you do NOT understand this area of law, is what earns you disdain. Not just from me at that, mind you. You act as if your “edicts” are all that are necessary. The plain fact of the matter is that you have failed to even BEGIN to form proper arguments on the topic at hand.

    Now, let’s explore your (almost) attempt at an “as applied” argument. You seem to want to say the Supreme Court is stating (holding) that the “as applied” actions of the Patent Office instantiate some type of Unconstitutional state.

    I ALSO addressed this in our first go-around on the matter. See post 20 at https://www.ipwatchdog.com/2019/01/11/new-court-fix-alice-patent-eligibility-judicial-exceptions-101/id=104975/ with an addendum at post 27.

    There, I laid out substantive rebuttals to your assertion.

    Your “attempted” reply (post 22) was a non-supportive “”short answer” that was shredded at post 23. You then proceed to merely whine at post 29 (which was shredded at post 31).

    Somehow, it appears that your reply at post 33 is something that you think is a legal argument. Plainly, the fact of what the Court MAY do has no bearing on an ACTUAL legal argument, and you saying “the Court may do X” is simply NOT a legal argument that properly SUPPORTS WHY the Court may do X.

    Had YOU bothered at all to actually engaged on the substantive counters that I presented (something to which you STILL HAVE NOT DONE), you may have actually gotten out of your own way and seen that my positions have been correct all along.

  47. Night Writer April 22, 2019 9:49 pm

    @46 Anon

    Let go. It is OK that we have different opinions.

  48. Anon April 23, 2019 7:50 am

    Night Writer,

    Let go of what?

    Yes, we have different opinions. I am not taking any exception whatsoever to the fact that we have different opinions.

    You want to express your opinion without taking into consideration the fact that others have shown how your opinion does not hold water.

    THAT is what you want “let go.”

    You want to express your opinion “no matter what.”

    How is that any different than the actions of which you yourself condemn in others?

    You seem to want to elevate your “only an opinion” to some “higher level” than an informed opinion.

    Why?

    Because you have “”predicted things?” Because you and Mr. Heller had agreed to a particular point in a different circumstance? Because you have “done litigation?”

    NONE of these things are material to the point at hand.

    What is material is the multi-prong counterpoints presented to you.

    Why is it so difficult for you to drop the empty rhetoric and (finally) engage on the merits of these presented counterpoints?

    Do more than dismiss them and claim that you have “answered” them. Try actually answering them. Take those answers and integrate those answers into your bleating posts of what the Supreme Court may do and elevate those posts into an informed opinion on what the Supreme Court may PROPERLY do, with a substantive and critically thought through, cogent and legally sound basis (which eliminates your “just because” and “they say so” basis).

    Put HALF the effort into this critical thinking that you have put into defending your worthless position. Turn your opinion into an informed opinion.

    You do not even have to agree with me AFTER you have actually taken on the counterpoints. But at least DO take on the counterpoints.

  49. Night Writer April 23, 2019 8:17 am

    Anon >>For example, there is no such thing as a “claim” being >“Unconstitutional.” A law -either facially, or as applied, may be Unconstitutional.

    How many times do I have to say to you that you are mischaracterizing what I said. I said the holding was that the claims were unconstitutionally granted. I never said a claim was unconstitutional. I have laid out my arguments over and over again. You just go on and on with the same stuff. My arguments are sound.

    The strange thing is that you seem to think that by being abusive that you are going to shut me down. It is just a ridiculous waste of my time to interact with you. I get what you think. I’ve responded to everything you have said multiple times. I evaluate your arguments as unpersuasive and believe my arguments are sound. Move on.

  50. Night Writer April 23, 2019 8:42 am

    Anon–the other thing you keep doing is telling me your opinion of what the justices can and cannot do. Who cares what you think? Not me. The issue is what could the justices do. The same issue where Curious is telling me the Scotus is not a fact finder. Yes, theoretically that is true. Anyway that knows the first thing about the Scotus knows they regularly make findings of fact, in fact.

    Just think the whole issue of the privy counsel discussions with Ned and trying to head off Lemley is summarized by Anon and Curious as the Scotus can’t make findings of fact. And yet such an obvious and ridiculous position was proven absurd in Oil States does not deter you from continuing to telling me what the Scotus can and cannot do. Just absurd Anon. It is like arguing with a first year associate who doesn’t know his place.

    Just think there I am discussing the privy counsel and how this is going to be a big deal in Oil States and there you are saying the Scotus can’t make findings of fact. Just absurd to continue to talk to you. And yet you continue with post after post after post ad nauseum.

    Learn to respect other people’s opinion Anon.

  51. Anon April 23, 2019 10:13 am

    Night Writer @ 49,

    How many times will YOU not read my entire post? As I have noted (several times now), what you seem to want to argue is an “as applied” Constitutional argument.

    My reply at 41 does NOT “misrepresent” what you stated at 40, but segues into the point as then state. You also are not the only one to which the statement pertains to (even though your worthless “pin to the Constitution” view DOES embolden those who WOULD fall to my lead-in statement).

    The matter here is NOT that I have not seen or understood your view. You seem to want to make that the point at issue, but it is not.

    The point at issue is that — having seen and understood your view — I provide a multi-prong counter to which YOU have not bothered to actually engage on the merits (and yes, engaging on the merits means actually engaging the points and not attempting to merely dismiss them).

    To the extent that you have not bothered even attempting to integrate the multi-prong rebuttal, your “protest” that your arguments are sound is utter nonsense.

    As I have entreated you since this point came out – you need to take the time to actually engage on the merits. Then and only then can you move your opinion to being an informed opinion. There is NO “soundness” in your merely repeating a first position and acting as if no one has advanced counterpoints. THAT is the stuff of Malcolm Mooney.

    As to: “The strange thing is that you seem to think that by being abusive that you are going to shut me down.” You are woefully in error if you think my aim is to “shut you down.” It has been more than clear that my aim all along as been to have you ENGAGE on the merits and advance your position in light of the counterpoints presented. The ONLY “shutting down” that I would want is the shutting down of the Malcolm Mooney style of presenting an uninformed viewpoint that ignores counterpoints raised.

    Such serves no one, and thus is worthy of being “shut down.”

    As to “ get what you think. I’ve responded to everything you have said multiple times. I evaluate your arguments as unpersuasive and believe my arguments are sound” – yet again you seek to dismiss and have done no such actual engaging on the merits.

    Let’s see MORE from you than your mere edict that the points are unpersuasive. Let’s see you show that you understand the point and then show WHY the point is unpersuasive.

    YOU are the one that merely repeats ad nauseum that you feel your position is sound – all the while YOU also ignore the plain multi-prong points that SHOW WHY your position is NOT sound.

    I have given you the very thing that I ask of you – and yet, YOU want to take some “high road” and act like Malcolm Mooney? THAT is the absurdity. THAT is the nauseum of ad nauseum.

    As to “summarized by Anon and Curious as the Scotus can’t make findings of fact” – please constrain your strawmen, and do not pull a Malcolm Mooney “one-bucket” and attempt to portray me taking a position that I have never taken. Further — as I have pointed out — you should heed MY conversations with Ned Heller vis a vis Oil States, as they were provided in MORE detail than yours. As I have already stated, we ALIGN on Oil States (even as I provide more), so your attempt here to use that as somehow being a “point” for you in the current dialogue is truly bizarre. That is something that NOT EVEN a first year associate would likely do.

    As to “Learn to respect other people’s opinion Anon.” – as I have already mentioned, the disdain shown to you is disdain earned because you want to elevate your mere opinion to be something beyond any critical thinking. CLEARLY, I have taken your point and replied in a substantive multi-prong response – in spades. It is YOU that is showing a lack of respect with your unearned umbrage that someone has questioned your “pet theory.”

    Grow a pair and do not attempt to hide behind such “false respect.”

    IF you want to parade an uniformed opinion — when others have attempted to inform you — do not whine when that uniformed opinion is treated harshly. Instead, do what you should have done in the first instance and actually reply in a substantive manner to the multiple prongs put to you.

    Learn to respect what respect means. Your “arguing” here and elsewhere is NOT the type of arguing that has earned any level of “respect” other than what you have been given.

    You are, of course, free to continue to post your worthless and uniformed opinion. Just do not be surprised or attempt the “false umbrage” when you are reminded that you have not yet taken counterpoints on their merits.

  52. Curious April 23, 2019 10:16 am

    I said the holding was that the claims were unconstitutionally granted.
    What does that even mean? Unconstitutionally granted? Since that statement is not part of the case law you need to define what you mean by that statement.

    Let’s me remind the folks at home what the Supreme Court said in Mayo (which was cited in Alice):
    “Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972). And monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.

    Let’s review what the Constitution actually states:
    [The Congress shall have power] “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

    It is the securing of the exclusive rights that promotes the progress of science and useful arts. Consequently, the Supreme Court has misread what the Constitution actually stated. For the Constitution to support what the Supreme Court’s statement, it would have to be written as such:
    The Congress shall have the power … to secure for limited times to authors and inventors the exclusive right to those respective writings and discoveries that promote the progress of science and useful arts.

    With this rewriting, the promotion of the progress of science and useful arts is a condition precedent for securing of the exclusive rights. However, that is not how this clause is written. We know that isn’t a requirement because while we consider this the Patent clause it is also known as the Patent and Copyright clause and there is no requirement that the writings of authors promote the progress of science and the useful arts. Thus, the “promote the progress of science and useful arts” is not a condition precedent for securing of the exclusive rights. Rather, the “promote the progress of science and useful arts” is the stated justification for the granting of the power to Congress. It is not a requirement.

    Further reviewing what was stated in Mayo, we see the mention of “monopolization”. However, as we all know, patents do not grant monopolies. As such, any mention of “monopolization” indicates that the author does not fully understand the rights actually granted by patents.

    I would say that the phrase “might tend” could be rewritten as “is possible” (I wouldn’t go as far as to say it synonymous with “is probable”). Thus, the (unsupported) finding made by SCOTUS is that a patent on a certain class of subject matter is possible to impede innovation more than it would promote it. The Supreme Court’s wishy-washy finding isn’t that all phenomena of nature, mental processes, and abstract intellectual concept don’t promote the progress of science — only that some might.

    Thus, what the Supreme Court is actually saying is the following: We aren’t going to grant your patent because we believe it doesn’t promote the progress of science and the useful arts. Rather, we believe (based upon a standard we decline to define) that this patent is directed to a class of subject matter we have described as abstract intellectual concepts, and certain subject matter, within this class, has the potential of not promoting the progress of science and the useful arts. Hence, rather than parse those out, we are going to throw out the baby with the bathwater.

    You can argue that the promotion of science and the useful arts is a requirement. I would argue that the Constitution makes no such requirement. However, even assuming that you are correct, the Supreme Court’s analysis fails by being based upon a finding (wholly unsupported by any facts) that some patents involving on entire classes of subject matter do not promote science and the useful arts. Moreover, the Supreme Court further compounds its error by throwing out all patents involving these classes of subject matter rather than just those patents that do not promote science and the useful arts.

  53. Anon April 23, 2019 11:40 am

    As you can plainly see, Night Writer, Curious makes an entirely different argument than the one I make.

    I do happen to like his argument, and I have noted in other discussions (not the immediate one), that the clause that the Court appears to want to hang its hat on has a mirror example in the Second Amendment that indicates the mere hortatory nature of the clause (preachy rather than strictly condition precedent).

    Another point that you should consider of mine (expressed in other discussions and not the present one) is the nature of the word “promote” itself and the fact of the matter that this use is NOT limited to the modern sense of “advancement” or “linear advancement.”

    Rather, the word ALSO carries with it the connotation of advertising sense of “promotion” or “spread the news.”

    That you design yourself more expert on these matters is actually humorous.

  54. Jason Lee April 23, 2019 12:46 pm

    Silicon Valley has its finger prints all over the crime scene everyone knows who killed off patents. One example is how Ms. Lee former head of the USPTO helped her old boss Google with new rules to help weaken the patents through the PTAB, as they stacked judges to favor the infringes. The horrific infringes like Apple, Google, Intel, MS. Amazon have been able to infinitely fight any ruling with out any type of injunctions given to force them to do the right thing and pay for their infringement.

    We all know EBAY, ALICE, MAYO, TC-HEARTLAND AND THE OIL’S CASE have all been patent killers. WHEN ARE THEY GOING TO WAKE UP???? A COMPANY LIKE APPLE IS SITTING ON $500BILLION IN CASH that includes cash from over seas accounts and in the United States. A great % of that money was made off of theft from small patent holders. THIS INJUSTICE NEED TO STOP!!!! COMPANIES LIKE APPLE GOOGLE AMAZON NEED TO START PAYING LICENSING FEES AND BACK PAY FOR NOT PAYING FOR THE PATENTS THEY HAVE USED THROUGH THE LAWS THEY HELPED LOBBY INTO LAW TO AVOID PAYING PATENT HOLDERS.

    If these same laws like Ebay/Alice/Mayo/PTAB/ TC Heartland/ were around when BIll Gates licensed DOS or when Sun Microsystems created the network for the web or when Edison invented the light bulb none of them would of excelled because there would have been other companies like IBM, or Westinghouse stealing their patents, which would of killed of any reason to invent.

    America has created the boogeyman and have killed off patent holders. If a fix in Section 101 regarding Alice/Mayo is not completed Germany and China will be the place for inventors to go, in order to get protection for their IP.

    It will be engraved in American History how America sold it self to Corporatocracy. Every empire has an expiry and America will join Greece and Rome if it does not follow its own Constitution and protect Patent theft and keep patents as a property right. Sen. Tillis and Sen. Coons could be the last hope inventors have before inventors have to pack up and move to another country in order to be ale to find investors and have protection from company like Apple from stealing their patents.

  55. Night Writer April 23, 2019 1:18 pm

    @54 Jason Lee

    There is no doubt that large international corporations have paid a lot of money to burn down the patent system. Their fingers are everywhere.

    One thing they tried but didn’t get was to bifuracate the patent system for pharma. That way they could kill off the remaining patents for those that are not pharma. My guess is that we have a greater chance of new legislation to bifurcate the patent system then we do to get 101 reform.

  56. Night Writer April 23, 2019 1:20 pm

    @52 and 53 Curious and Anon

    I am not going to continue this. I’ve answered your questions. I’ve illustrated why your positions are wrong. No idea why the two you continue with this. I’d think you would be shamed by the contention that the Scotus does not make findings of fact while the adults try to figure out how to head off the Scotus from making a finding of fact about the privy council using Lemley’s paper in Oil States. But apparently neither of you know shame.

  57. Curious April 23, 2019 3:48 pm

    Another point that you should consider of mine (expressed in other discussions and not the present one) is the nature of the word “promote” itself and the fact of the matter that this use is NOT limited to the modern sense of “advancement” or “linear advancement.”
    Good point, and one that I have touched upon from time to time in the past. An anecdote I once shared in the past involved visiting a client who had a very sophisticated patent procurement policy. I was told by inside counsel that while one of the particular disclosures didn’t involve an important technology, it was important because they (the client) needed to get the people in that technology center more familiar with patents. As such, inside counsel was willing to get a patent (on inconsequential technology) for the sole purpose of encouraging their people to use the patent system with the hope that these people will be more likely to use the patent system in the future.

    I’ve also made a similar point when discussing why I don’t have a problem with “silly” patents — patents that have little to no economic value and might be deemed “vanity” patents. My point is that these types of patents get the inventors to take a first step in using the patent system. Any prolific inventor can explain that patenting becomes more easy the more you do it. As such, while the first or second or …. or tenth idea may be sub-par, the next idea might be great. However, if the inventor gets discouraged (because an overly critical patent system), the inventor may give up on the patent system and never progress to that great idea. Thus, the mere grant of a patent (no matter how inconsequential the patent) can “promote” the progress of science and the useful arts because it encourages more innovation/invention.

  58. Anon April 23, 2019 3:52 pm

    I’ve answered your questions. I’ve illustrated why your positions are wrong.

    No. You have not. If you have, then please link to it.

    I am not going to continue this

    Shall I correct that to more accurately stat that you are not going to start this, given that you have not yet provided any substantive, on point, reply to the multi-prong counterpoints provided to you?

    After all, Night Writer, MY position is backed up in black and white, while all that you have is your assertions that you have done anything at all.

    I’d think you would be shamed by the contention that the Scotus does not make findings of fact

    YET AGAIN – that was never my position. Why is this so difficult for you?

  59. Curious April 23, 2019 3:56 pm

    But apparently neither of you know shame.
    What is with the continual insults? Address the substance of our positions — not that we have taken different positions than you.

    No idea why the two you continue with this.
    Because no one else (that I’ve read) takes your position (where are your supporters?), and I want to make sure that the readers understand that your position is not one that the majority of people believe in.

    Moreover, your position essentially is that nothing Congress can do can change things because SCOTUS can bring these exceptions into the mix anytime because they are constitutionally-based. If your position is to believed, it is essentially a waving of a white flag acknowledging that anti-patent crowd has won the war. I’m not giving in, and I want to make sure that the people reading this blog understand, again, this is not a widely held position, and there are a number of other people who believe that Congress does have the power to reign in the Supreme Court.

  60. Anon April 23, 2019 5:05 pm

    Well stated Curious.

    I do find it odd that apparently Night Writer is so compelled or invested in his position that he stoops to such Malcolm Mooney tactics.

  61. Night Writer April 23, 2019 6:30 pm

    @58, 59 Anon and Curious

    You two are mental.

  62. Anon April 23, 2019 7:27 pm

    Night Writer,

    I do not think that YOU are thinking – or realizing – just how much you hurt your credibility by insisting on ad hominem in the repeated calls for you to address matters on their merits.

    The more you react in such an emotional manner, the less your attempted view becomes. You have been nothing but dismissive, petulant, and plainly ineffective in your attempts to establish your opinion as anything remotely tied to a cogent legal position (even after I “spotted” you the chance to make an “as applied” argument).

    You really do need to try to control yourself and address the merits of counterpoints presented to you. It’s getting to the point that I am embarrassed FOR you (but please don’t take that as my not panning you if you continue to attempt to think that not having an informed opinion is better because you like your uninformed opinion).

  63. Night Writer April 24, 2019 7:02 am

    Anon,

    I get all your arguments. They are all egocentric and not based on what the Scotus could do but your prescriptive diatribe about what you think the Scotus should be allowed to do. That is why it is mental.

    Here let’s look at one of your statements:

    “the mere grant of a patent (no matter how inconsequential the patent) can ‘promote’ the progress of science and the useful arts because it encourages more innovation/invention.”

    This you are saying because in Alice the Scotus said that all claims that don’t meet the test in Alice “may” tend not to “promote.” So you are telling us the Scotus is acting improperly. So what? No kidding? Do you think when I read this I didn’t realize that too? What is your point? My arguments go to what the Scotus could do and what does Alice signal. That is my approach.

    You have some idea that if I make arguments about what the Scotus might do that don’t conform to your interpretation of the Constitution that somehow I am wrong or not listening to you. No Anon that isn’t how it works.

    It is just like with Oil States lisenting to you and Curious tell me that the Scotus is not a fact finder. Gee. No duh. But what I focus on is what the Scotus actually does and what they may do and what they are likely to do. So I knew they would make a finding of fact in Oil States and knew exactly what the issue was and I was right. (You had this same endless problem with the seed case. What was that one? I remember you prattling on and on. I predicted the outcome EXACTLY. You prattled on and on about how it was wrong and not Constitutional blah blah blah.)

    Try to get it is not about what is right or wrong. It is about what the Scotus could do and likely will do.

    Don’t endlessly write the quote above. I get it. Everyone gets it. So what?! It only has to do with the Scotus in the sense that the Scotus tends not to get too outrageous so the only reason it would become interesting is if it defined a boundary that the Scotus was unlikely to cross.

    Anyway, enough with this. I am not going to sit hear and continue to educate Anon and Curious about how to think about the Scotus as they insult and mock me. The two of you have no idea what you are talking about which I have shown over and over again by my predictions. (Go back and look at what you said Anon about Bowman v. Monsanto Co.) Same endless nonsense from you while I predicted the outcome exactly. Curious tell us again how the Scotus isn’t a finder of fact. Geez you two.

  64. Anon April 24, 2019 8:44 am

    You have YET AGAIN ascribed to me things that I have not said (please stop confusing what Curious argues with what I argue).

    If you think this type of slipshod response is a cogent response on the merits, you are simply wrong. You are in WAY too much of a hurry, even as you have spent a prodigious amount of effort defending your “pet” view.

    Try again (or, for the first time in a meaningful manner).

  65. Anon April 24, 2019 10:04 am

    Try to get it is not about what is right or wrong. It is about what the Scotus could do and likely will do.

    Precisely wrong.

    Yet again you confuse the present issue. You drag in tangents and think that the legal reasoning (which is the actual issue) does not matter because of “Supreme Court says.”

    Go back to the first exchange and see that I have already corrected you on that error.

    Stop making the same errors.

  66. Anon April 24, 2019 10:09 am

    To the extent, Night Writer, that you are unwilling to challenge a Supreme Court decision (because “just because they said so”), YOU are very much part of the problem.

    Let me point out again that you LIKELY** have an ethical obligation under your state attorney oath TO challenge the Supreme Court. ALL three branches of the government are BELOW the Constitution, and your fealty and ethical obligations run FIRST to the Constitution.

    **The only state oath that has been provided that even comes close to providing a different ethical obligation is from the Commonwealth of Massachusetts.

  67. Chris Evans April 24, 2019 10:18 am

    The only way to fix it is to limit 101 review to the USPTO. Remove it as a defense in litigation. My suggestion:

    (1) Section 101 of title 35 is amended to read as follows:
    “(a) ELIGIBLE SUBJECT MATTER – Whoever invents or discovers any useful process, machine, manufacture, natural phenomena, law of nature, or composition of matter, or any useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
    (b) SOLE EXCEPTION TO SUBJECT MATTER ELIGIBILITY – A claimed invention is ineligible under this section only if the claimed invention as a whole, as understood by a person having ordinary skill in the art to which the claimed invention pertains, exists in nature independently of and prior to any human activity, or exists solely in the human mind and is incapable of any physical embodiment. All prior judicial exceptions to patentable subject matter are expressly overruled. This section should be interpreted broadly in favor of patentability.”
    (c) PRIVATE PROPERTY – A patent granted under this title is private property.

  68. Night Writer April 24, 2019 4:54 pm

    Anon:Try to get it is not about what is right or wrong. It is about what the Scotus could do and likely will do. ”Precisely wrong.Yet again you confuse the present issue. You drag in tangents and think that the legal reasoning (which is the actual issue) does not matter because of “Supreme Court says.”Go back to the first exchange and see that I have already corrected you on that error.Stop making the same errors.

    Anon: No. No. No. What I said is what real litigators do. “Corrected you on that error”? That sounds really mental Anon. You need to learn your place. You are not above me nor someone to tell me what to do or think. Learn some respect for other people’s opinions. Your posts are just abusive is ridiculous attempts at bullying. Just absurd.

  69. Anon April 24, 2019 6:49 pm

    Fake respect?

    Respect is not a given – especially for purposefully ignorant opinions that refuse to address counter points presented and want to dismiss the legal discussion with a wave of the hand a “Supreme Court says so.” You need to learn why “respect” for purposefully uninformed opinions is especially dangerous for opinions concerned with law. Maybe you should visit the link I provided on a more recent thread that shows your immediate outrage with the Court. Somehow, you have moved from that outrage to a position that “whatever the Court does suffices for a legal discussion.”

    As noted, you as an attorney most likely have an ethical obligation NOT to do as you ask of me, and that I put you to task for attempting.

    I have learned my place, thank you very much and will continue to advocate accordingly. Let’s see you stop the Malcolm Mooney impersonations and have you learn yours.

  70. B April 24, 2019 7:33 pm

    @Chris Evans

    I don’t know how one invents or discovers a useful improvement of a natural phenomena.

    Otherwise, you’re on the right trail

  71. Night Writer April 25, 2019 8:22 am

    Anon, you just don’t get it.
    My discussion on Alice are not prescriptive, but descriptive.
    I have written many posts that say that Alice is total trash and that their reasoning that ties the exceptions to the Constitution is legislation. You go off on my posts where I am trying to predict what the Scotus will do in response to 101 legislation.

    I predicted Bowman v. Monsanto correctly. You did not. You went off on prescriptive discussions about what the Scotus should do. I analyzed it according to what the Scotus would likely do.

    You predicted that Kagen might hold IPRs unconstitutional. I said no way because I understand her administrative law positions.

    Etc. Etc. Etc.

    Take a step back Anon and figure out the difference between being prescriptive and descriptive.

  72. Anon April 25, 2019 9:48 am

    Night Writer,

    You continue to blunder. It is not I that needs to “figure out the difference” as you yet again attempt to inject some off-topic “but I predict” thing into the present legal point discussion.

    Stay on topic.

    And please, stop wasting your energy trying so desperately to take a high ground that will not be going to you. Spend that energy actually engaging in a substantive manner on the counterpoints presented to you.

    You STILL have not done so, even as you attempt to inject your “descriptive/predictive-but nor prescriptive” nonsense into yet another thread (but without – again – accounting for what people have informed you about).

    There is no “high ground” for wanting a mere opinion to somehow ‘be better’ than an informed opinion.

  73. Night Writer April 25, 2019 2:44 pm

    @72 Anon

    What it comes down to is you don’t like me saying that the holding in Alice is that the claims were unconstitutionally granted. Too bad. That is what I think the holding in Alice is.

  74. Anon April 25, 2019 5:38 pm

    Night Writer,

    No. That is expressly NOT what it comes down to. What it comes down to is that YOU want to keep saying something regardless of how inane that something is and without regard to cogent and substantive counter points presented to you.

    You keep on wanting to find SOME way to justify your lack of attention to having your opinion evolve into being an informed opinion, and wanting to be able say whatever you want with no consequence or rebuttal.

    That is NOT having a dialogue, That is having a monologue.

    IF you are going to continue to want to press your uninformed opinion in a public forum, I suggest that you get used to the fact that others more well informed than you will continue to press you to become better informed (and challenge your mere opinion).

    I have shown you a responsible path forward. I cannot make you take that responsible path. But I can show you disdain when you refuse to engage and persist with your uninformed opinion (as would — and as does — Malcolm Mooney and many of those that you take issue with).

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