Congress’ Section 101 Fix Would Create a 112(f) Problem

“No one is ‘concerned’ about being preempted by ‘overly-broad’ language except those who infringe it. If claim language is truly ‘overly-broad,’ prior art invalidity under Sections 102 and 103 will invalidate.”

https://depositphotos.com/61369901/stock-photo-perspective-word-on-a-puzzle.htmlSenators Coons and Tillis and a group of Representatives recently proposed an admirable piece of legislation to amend the Patent Act to abrogate Supreme Court Section 101 cases on patent eligible subject matter. I like that they propose a fix to Section 101. So far, so good. Alice was an interpretation of Mayo, which was an interpretation of Flook, which was an interpretation of Benson, which was supposed to be an interpretation of what Congress meant by the short and crisp statement of Section 101 of the Patent Act. But just as a photocopy of a photocopy of a photocopy gets more distorted with each generation, so did Supreme Court rulings. The judicially-invented residue left behind not only errs by failing to capture the plain and unambiguous scope of Section 101 and patent-eligible subject matter, but also catastrophically undermines and invalidates important patents that, until then, protected breakthrough inventions. Congress is right to step in. Inventors of breakthroughs need protections to form companies and create new jobs. What the senators propose is not perfect, but at least as far as Section 101 is concerned, will restore fairness to many future outcomes.

A Gratuitous Revision

But there’s an extra bit. To call it alarming would be an understatement. That extra bit would sharply and sweepingly limit the property rights of all technology patents. The proposal (as currently drafted) amends Section 112 to require any patent claim limitation that names any function “without the recital of a structure, material or act in support thereof” to be interpreted as limited to the structural embodiment in the patent specification that practices that function (plus equivalents). Goodbye peripheral claiming. Welcome back to the mid-19th Century. In other words, nearly every claim in every issued patent would become significantly narrowed in scope on the day of enactment to require (as a limitation) narrowing concepts named in the specification but deliberately omitted from the claim by the responsible claim drafter. If one thinks the “without the recital” language saves the day, think again. Creative lawyers always find ways to argue that the claim itself leaves out enough structure to support the function.

First off, that’s not Section 101. What is happening here? Aren’t we just trying to fix Supreme Court activism (and error) under Section 101? And second, “if it ain’t broke, why fix it?” There is nothing wrong with Section 112 as it presently stands.

In particular, the proposed Coons/Tillis language includes a gratuitous revision to Section 112(f). This provision recites what we sometimes call the “means-plus-function statute.” Congress originally passed Section 112(f) in 1952 (originally as 35 U.S.C. § 112 ¶ 6) to correct earlier Supreme Court over-invalidation of patents. In Supreme Court case law from the 1940s, some patents with “functional claiming” were held invalid under then-current notions of proper linkage between claims and disclosures. Congress stepped in in 1952 with the means-plus-function statute to abrogate this line of authority. The statute permitted patents that recited claim limitations in the form of a means (or step) for performing a particular function. Such claims would henceforth be limited to the structure (or act) in the specification that performed this function, and any equivalents thereof.

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A History of Means-Plus-Function

Over nearly a century, the patent community came to embrace the means-plus-function statute, albeit with some discomfort. On the one hand, when it applied, it could severely narrow claim scope—an effect that might surprise less sophisticated patent owners. But on the other hand, the claim drafter had discretion and control to determine when it would apply. It was always possible to use claim language that created presumptions against means-plus-function treatment. Putting aside some edge cases where the Federal Circuit excuses from the statute some claims that use the word “means,” but applies the statute to some claims that do not, the fact remains that the claim drafter is nearly always in control of whether Section 112(f) triggers.

And good thing they are, too. When Section 112(f) applies in litigation, it bogs things down significantly. A common patent infringement fact pattern involves an accused infringer who takes the spirit of what the inventor put into the detailed description of the invention but changes one thing slightly. When they have to, parties litigate endlessly over whether the change was meaningful enough to make the resulting technology “nonequivalent.”

My own first Court of Appeals argument at the beginning of my career was just such a case. In IMS Technology v. Haas Automation, I argued for the patentee after the district court threw out my client’s infringement case on summary judgment because she could not believe that a disk drive holding Computer Numerical Control (CNC) machine tool programs was “equivalent” to a tape drive holding the same CNC machine tool programs. Her reasoning: a cat is not the same as a hippopotamus. I cannot make this up. I remember argument day at the Federal Circuit. At one point, Judge Plager asked me, “Counsel, what is our standard we apply for determining means-plus-function equivalency?” I responded, “I can’t answer that question Judge, because this Court has not yet clearly stated one,” whereupon the gallery (and the judges) erupted in laughter. I went on, of course, to apply the various competing legal standards to my fact pattern to show that my client should win under any of them (and it eventually did). But the fact remains, means-plus-function equivalency was a focal point of activity in that litigation. In that litigation alone, the question probably absorbed more than $1 million in attorney time.

Resolving One Problem, Creating Another

What would motivate the senators to fix one problem, only to introduce another into the Patent Act? Why would they either (1) make some patents impossible to enforce against a clever infringer, or (2) at the very least add a new and expensive battlefield of contention that does not presently exist? Only the senators can answer that question. However, their aids provided informative commentary on the language. The legislative aids justify the edit by stating that “most stakeholders” had “concerns about the preemptive effect of overly-broad software, computer, or internet-related claims.” Supposedly, the edit to Section 112(f) solves this “overly-broad” claim problem. Consider this quoted text carefully. No one is “concerned” about being preempted by “overly-broad” language except those who infringe it. We all should know that if claim language is truly “overly-broad,” prior art invalidity under Sections 102 and 103 will invalidate.

It would be beyond unfortunate if the proposed Section 112(f) language remains as the legislative process moves forward. We should not replace an innovation-destroying judicial catastrophe with an innovation-destroying legislative one. If the horse comes from Achaeans, it may have a nasty surprise in it not worth the gift.

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The Author

Robert P. Greenspoon

Robert P. Greenspoon is a founding member of Flachsbart & Greenspoon, LLC. He is a registered patent attorney who concentrates his practice in the trial and appeal of patent cases involving computer and electronic technologies. He is also a former federal district court law clerk. The opinions presented above are his own, and not necessarily those of his firm or his firm’s clients.

Mr. Greenspoon represents both NPEs and operating companies, and both rights holders and accused infringers. He holds a winning appellate record, having argued numerous cases before the Court of Appeals for the Federal Circuit, as well as cases before the Fourth and Eighth Circuits.

CLICK HERE to visit Mr. Greenspoon's firm page.

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

Discuss this

There are currently 31 Comments comments. Join the discussion.

  1. Matt DelGiorno May 28, 2019 4:43 pm

    To get legislation passed there is going to have to be some give and take. The 101 fix is good (much better than the earlier-released draft outline), but the 112 change may be the necessary compromise. One way to mitigate its impact is to make the 112 revisions prospective only (for newly-filed applications). It would be unfair to hold existing patent holders to a different drafting standard.

  2. Pro Say May 28, 2019 5:18 pm

    Matt @ 1: Agree.

    While the entire loaf would be best for America, if such is not to be had; we need to accept a .95+ loaf. Which is what this reform would mean for our Country.

    We must not let the desire for the perfect be the enemy of the good.

    And in this reform’s case, the very, very, very good indeed.

    E-mails to as many Senators and Representatives as possible is important; though — because it’s so easy to do — they are inundated with such messages (and so likely will never personally read them).

    Calls are better, because you get to speak with a live person (though not likely the Senators and Reps).

    Mail is best, because there’s a much higher chance the Senators and Reps will read them; either directly, or after their staff has done so.

    Which is why I’ve mailed by Priority Mail to each of the five named Senators and Representatives my thanks … and my concerns regarding proposed 100(k) and the 112 changes.

    Join me.

  3. Game Over May 28, 2019 9:37 pm

    Behind the sense is something not many get to see, Sillicon Valley is at the head of the charge to avoid all cost in paying a patent holder, government with guidance from Silicon Vally help draft a smoke screen resolution only to give birth to another can of worms. IP are done in the United Staes and so are the inventors and the middle class. What we are witnessing is how a Corporatocracy shuffles it’s deck to stay in a dominant position.

  4. Anon May 28, 2019 10:17 pm

    Ever hear of the Trojan horse? But what harm could it be to wheel that “gift” (or compromise) in?

    Also related: the change in 35 USC 100 that degrades the Useful Arts into the subset of Technical Arts.

  5. Ternary May 28, 2019 10:58 pm

    To believe that this proposal is a re-hash or sharpening of 112(f) is wrong. It is a deliberate effort to place yet another bomb under our patent system. Clearly, somebody convinced somebody to put this nasty piece of text in the proposal.

    The explanation: The legislative aids justify the edit by stating that “most stakeholders” had “concerns about the preemptive effect of overly-broad software, computer, or internet-related claims.” This indicates that somebody is beholden to someone. Who are these “stakeholders”? If a hearing comes up in the Subcommittee, it should be asked who these “stakeholders” are!

    One of the greatest tools against software patents (Alice!) is about to be retired. The unnamed “stakeholders” clearly feel entitled to some compensation for losing this tool. And somebody in the Committee is responding to this demand.

    This has the potential to completely convolute (fold into each other) enablement and description. As I said elsewhere, “storing on a memory” and “retrieving from a memory” in a claim requires a memory. Though a pain in the neck, a review of claims will indicate that a “memory” has to be described. However, retrievably storing data on a memory requires data addresses and address decoders. How easy it is to skip over these aspects as one of ordinary skills knows that in order to enable retrieving data, a memory will use addresses and thus an address decoder. However, under the new proposal, retrieving data requires a structure (the address decoder) that may not be mentioned in the specification.

    The claim is thus potentially invalid under the new statute, because no structure is disclosed related to the “retrieving.”

    I can live with the proposed 112 change if Congress explains what the intent is of this change (limit overly broad claiming) and explicitly NOT invalidating claims by inadvertently dropping sub-structures or supporting structures, because these are inherent and known to be inherent to a “base” structure. That is, for instance, “address decoders” are inherent to memories, which are structures.

    The insertion is fiendishly clever, sold as an innocuous clarification of 112(f) as a reasonable effort to limit “overly broad claiming.” Do not underestimate opponents to patents of computer implemented inventions!

  6. Josh Malone May 28, 2019 11:03 pm

    Rob is correct. They propose to take away our language that we use to communicate to other skilled artisans. Yes, it is easy to describe some embodiments without using functional terms. But it is impossible to describe all embodiments without functional terms. We know we cannot claim a result, that is not the point. But we do need to cover all embodiments that are evident from the principle or essence of our inventions. Describing several embodiments is helpful for illustration and teaching, but it is impossible to convey the entire scope of the invention that way.

    Lawyers love it. Copycats love it. Engineers love it. We teach them the essence of our invention, give them a list of examples, and their task is merely to find one new example. They just don’t understand inventing. For them it is all hindsight and word games. We teach them our discovery, then they use laws like this to utilize with them without permission.

    Instead they should use the prior art, or obtain a license from the investor to use his teaching.

    This proposal is terribly damaging to the patent bargain. My advice to inventors is do not disclose your discoveries to the USPTO. Especially so if this becomes law.

  7. The Time Is Now To Act May 29, 2019 12:55 am

    This is a statutory revision so there is no such thing as 95 percent good. It needs to be100 percent right on.

    How is it possible that we could be taking the ‘Oh, thank you, thank you kind sir’ posture after the last 2 decades and recent, punishing last 6 years?

    The 112 insertion is a weather balloon and the resolve is being measured.

    Quite literally almost 2 years to this month a SV patent discussion panel was discussing throwing in this 112 crap if 101 was fixed and judicial exceptions abrogated.

    The 112 baloney that just showed up in the proposed language is eerily similar! Don’t take the bait! We need to PUsH BACK to have it removed!

  8. Paul Morinville May 29, 2019 2:08 am

    This provision makes a patent of swiss cheese. So many holes that anyone can infringe. It is dangerous. Iancu is on the record saying that 112 is working. There is no credible analysis saying 112 is not working. This provision was thrown in at the last minute, so nobody has dug in to identify the unintended consequences. There are too many unknown unknowns.

    The sole beneficiary is big tech. All others will be harmed. This cannot be passed.

  9. Paul Morinville May 29, 2019 2:15 am

    Another Trojan Horse is the 100(k) definition of useful. It uses the word technological to define inventions and discoveries.

    What exactly is technological? Is a drug technological? What about a business method? Or a software process in middleware? Is a water balloon technological? How about a toy? How technological does an invention need to be to qualify as technological?

    This will throw the patent system into chaos as the courts define the undefinable. And it is also a boon for big tech.

  10. Paul Morinville May 29, 2019 2:25 am

    Matt @1. This bill must be 100% right. If it does not fix 101, it must be killed. But if it fixes 101 and creates other serious problems, it must also be killed.

    There is genuine industry outrage on 101 jurisprudence, which is just enough to pass it. However, if the cost of passing it keeps small inventors in the same disgusting mess under 112, we will work to kill it.

    It takes some time and a lot of commitment, but bad legislation is easy to kill. We are prepared to kill it if we have to.

  11. Easwaran May 29, 2019 6:52 am

    This is simply a codification of Williamson AFAICT, and I wouldn’t at this point ascribe any malicious intent.

    The real issue stems from the fact that all claim language is functional. Each claim element recites a class of items having common functional characteristics (e.g., a chair is a class of items having functions in common, not some mythic “structure”). To be clear, the term “structure” is a layman’s illusion that crumbles under logical scrutiny. As such, the real problem with the proposed language (and with Williamson) is that it could in theory invalidate any claim, but would likely only be used to invalidate those claims that examiners/judges aren’t comfortable with (they are comfortable with the term “chair,” so it won’t apply there, but where is the line?). It is exactly the same type of problem as with Alice, although to a lesser degree.

  12. Night Writer May 29, 2019 8:53 am

    I commented on this on the other thread. All of this is well known. I remember long ago taking a patent law class from a senior partner at one the best patent prosecution firms at the time. We went over this interpretation of “functional” being limited to embodiments disclosed in the specification and their equivalents.

    This has been the thing to avoid for 20 years. You never want this and it is very limiting.

    Frankly—just a criminally ridiculous attempt to burn the patent system down. Anyone that knows anything about patents knows that functional language is a way to express known solutions in view of the specification that includes what any person of ordinary skill in the art would know.

    I am frankly shocked that the commentators (the supposed brain trust of patent law) did not scream from the start that this was a blatant attempt to burn the system down.

    AGAIN–what this would mean is that every known solution to a known problem would have to be put in a patent application. My frustration level of dealing with the lobbying groups’ attempt at burning the patent system down is at a limit. What bothers me so much is that the academics are paid to go along with them and that there are so many supposed experts that are supposedly trying to help the patent system that appear to me to be incompetent.

  13. TFCFM May 29, 2019 9:02 am

    Mr. Greenspoon expresses one of my chief concerns about this legislative proposal, albeit not quite in the words I would use:

    A great many terms which skilled artisans routinely recognize are technically “functional” terms which do not necessarily specify a particular structure, material or act:
    – (chemical) “reactor”
    – “antibody”
    – “complementarity-determining region” (of a binding protein)
    – “C1-C6 branched-chain alkane”
    – (computer) “processor”
    – “fastener” (nail, screw… how specific must one be not to be excluded?)

    Whether or not I’m among them, I’ve known enough pain-in-the-neck patent attorneys that this issue will not go unexplored — with unknown and probably unpredictable consequences. We ought to be wary of throwing out the written-description baby, just to get rid of some of the computer-tech-ineligibility bath water.

    As a separate issue, whether or not the legislative expresses this thought or not, I think there’s a further concern that the proposed change to 112(f) addresses. In addition to the issue identified by Mr. Greenspoon:

    >Supposedly, the edit to Section 112(f) solves this “overly-broad” claim problem. * * * No one is “concerned” about being preempted by “overly-broad” language except those who infringe it. We all should know that if claim language is truly “overly-broad,” prior art invalidity under Sections 102 and 103 will invalidate.

    Surely one objection to the “over-breadth” complained of for many computer-technology-related patents and applications is that broad claims to such technology seek to encompass ALL computer-related means for performing methods that are narrowly-described (i.e., “Here’s one way to do it; I want a claim to ALL OTHER ways of doing it, too.”) In more-nearly-patentese, the scope of the claims sought often exceeds the scope of the written disclosure offered.

    This written-description question is one of the issues that was “fixed” by 112(f) means-plus-function claiming. In my opinion, a similar fix is the way to address the “problem” of computer-related-technology applications that seek to claim more than they disclose: Congress ought to set up a mechanism akin to means-plus-function claiming (“computational-module-plus-function”?), define that mechanism as a sufficient description of the technology claimed, but limited to the technology described.

    That, to me, seems a far better “fix” than surprising practitioners with a retroactive imposition of 112(f) limitations to all claim terms which can be characterized by crafty litigators as “functionally” defining a class of items (see examples above), not all of which are explicitly listed in the specification.

  14. Russ Slifer May 29, 2019 1:57 pm

    Robert,

    Thank you for the article. Any statutory changes need to be carefully evaluated for unintended results. Where you lose me, however, is stating that “We all should know that if claim language is truly “overly-broad,” prior art invalidity under Sections 102 and 103 will invalidate.”

    The proposed change to 112 does not to create a new tool to invalidate a claim. It seems to say a pure functional claim will be interpreted based on the specification. Narrowing for some claims, but not invalidating. In fact, it may save patent infringement suits that would otherwise be invalidated under current 112, 102 or 103.

  15. Barrett Haynes May 29, 2019 2:36 pm

    As I said before, 2 can play this game; go to market as or just before you file in the PTO. Then refile numerous tweaked (altered claims) but incur no legal expense. Utility are now tantamount to design claims, so file numerous slightly different claims. When Corporate Trolls sue, drop the product & market your alternative, sequencelly. Let the Trolls pay the lawyers, not you.
    Invent prolifically so you have products on market making $$.
    Barrett Haynes, inventor of the first Eyebuds, filed Leap-Day1988, US4871247A J.B.Haynes

  16. Barrett Haynes May 29, 2019 3:43 pm

    Attn. Night Writer,
    As Holy Scripture teaches us; We struggle not against flesh and blood but against Pricipalities & Spiritual Forces of wickednesd in High places.
    Go to Quantum Effect Computers have SUPERNATURAL CORRUPTED OUR BIBLES. Please everyone go to these videos, in the name of Jesus Christ our Savior !

  17. Barrett Haynes May 29, 2019 4:09 pm

    Adendum-
    Copyright your PTO filings & claim infringements.
    Apply an anecdotal on your Product Labels that YOU ARE ORIGINAL INVENTOR with FILE DATE # for proof, & state that other products are pirates.
    (Also copyright your DNA sequence & your loved one’s.)

  18. ClauseEight May 29, 2019 5:35 pm

    Quick note on one line, “We all should know that if claim language is truly “overly-broad,” prior art invalidity under Sections 102 and 103 will invalidate.”

    See this article from PatentlyO, where Prof. Sarnoff states:

    “But Section 103 cannot do that job as current written, even though both provisions derived from the same statutory section under the pre-1952 Act. And that is because such ineligible discoveries are not normally among the categories of Section 102 prior art as applied to an applicant who is also the discoverer of that ineligible subject matter.”

    https://patentlyo. com/patent/2019/04/response-exception-sarnoff.html

    Essentially, there are discoveries that most would argue is non-patentable, but there is no prior art to invalidate. For example, what about the discovery of fetal DNA in mothers’ blood (see Ariosa v. Sequenom)? No prior art; not something created by human ingenuity; but patentable in and of itself? Probably not.

  19. Anon May 29, 2019 6:16 pm

    Russ @ 14,

    Not a new tool? apply only to “pure” functional claims?

    An emphatic “NO” to both of these presumptions to your views.

  20. Anon May 29, 2019 6:30 pm

    ClauseEight – I recommend caution in using the Sarnoff premise (see recent challenges to how the Court has eviscerated the difference between “invention” and “discovery” by the likes of Sherry Knowles https://www.ipwatchdog.com/2019/01/16/sherry-knowles-scrutinizes-activist-supreme-court-unconstitutional-patent-eligibility/id=105228/

  21. Robert Greenspoon May 29, 2019 6:54 pm

    Thanks to all for thoughtful commenting on the thread.

    Russ@14: I take no position whether proposed 112(f) is usable to invalidate. The article merely points out that an interest group with influence in Congress uses the label “over-broad” to justify its legislative ends. I submit that such justification is not on point, since the only “over-broad” claims are ones that would become invalidated by prior art anyway. No true problem requiring a legislative fix exists. The solution to a nonexistent problem should at least not be to narrow claim scope of nearly every patent.

    ClauseEight@18: Professor Sarnoff and I talk from time to time and share a desire for a correctly calibrated patent system, and he will be one of the testifying witnesses at the hearings. He and I part ways on the present topic. There’s a fallacy where one uses a conclusion to justify the premise. If he is right that “section 103 cannot do that job” of weeding out an “over-broad” patent, to me that signifies a valid patent. If the claim scope of that valid patent is broad, to me that signifies importance to an industry, not ineligibility for patenting.

    About that fetal DNA discovery that the current Section 101 law never lets into the front door, let’s not forget that Art. 1 Sec. 8 Cl. 8 requires Congress to protect “discoveries.” Only in an upside down world is something ineligible because it fits within the Constitutional language. Proof positive that a Section 101 legislative fix is needed.

  22. Peter Kramer May 29, 2019 8:34 pm

    Doctor: We will fix your foot problem but as a compromise, we’ll remove your hand.

  23. Night Writer May 29, 2019 8:46 pm

    18. ClauseEight
    Essentially, there are discoveries that most would argue is non-patentable, but there is no prior art to invalidate. For example, what about the discovery of fetal DNA in mothers’ blood (see Ariosa v. Sequenom)? No prior art; not something created by human ingenuity; but patentable in and of itself? Probably not.

    One game played constantly by the anti-patent movement is all these vague claims of things being patented as if they will forever been gone from the public and that some broad concept will be patented.

    Again and again–discussing something like the above absent a claim is meaningless. What would be claimed? Testing the blood of a mother for DNA of an infant? And why would that be a terrible thing to allow to be patentable?

    Most rational people that understand the patent system and innovation will say that if someone figured out you could test the mother’s blood to figure out what the baby’s DNA was and that wasn’t know before, then it should be patentable.

    The arguments against this are irrational.

  24. mike May 29, 2019 9:31 pm

    @Paul

    In addition to your concerns on ‘useful’ in Section 100(k), please also relay this to Congress:
    ====

    The current May 22 draft on Section 101 reform could easily be construed to mean that the resulting UTILITY or the field of technology must involve human intervention, which would negate much, if not all, software and hardware inventions — much software and hardware are designed to run without human intervention.

    The current May 22 draft states:
    “Section 100(k): The term ‘useful’ means any invention or discovery that provides specific and practical utility in any field of technology THROUGH HUMAN INTERVENTION.”

    So, if the term “useful” is going to be defined via Section 100(k), the “through human intervention” modifier needs to be closer to thing it is intended to modify: the invention/discovery. It is the invention/discovery that Congress intends to be done through human intervention. It should not be necessary for an inventor’s resulting utility to require human intervention.

    Accordingly, Section 100(k) SHOULD BE MODIFIED AS FOLLOWS:
    “Section 100(k): The term ‘useful’ means any invention or discovery THROUGH HUMAN INTERVENTION that provides specific and practical utility in any field of technology.”

    Moving the clause “through human intervention” to describe the invention or discovery as shown in the above modified version would shift the focus from human intervention describing the utility/technology to describing the inventor’s invention/discovery. So, the invention or discovery itself is done through human intervention, for example, say a programmer or a lab technician, which I believe is Congress’ actual intent.

    The placement of that clause is critical, if the clause is even considered necessary.

  25. Deacon Yarmouth May 30, 2019 2:04 am

    Minor nit to pick with the reference to the Trojan horse: although it’s called a “Trojan Horse” in common parlance, the horse of myth was built by the Greeks and given as a “gift” to King Priam and the people of Troy as part of a ruse to smuggle Greek soldiers into the city. It was not a “horse [ ] from Troy” as implied by the reference at the end of the article any more than the soldiers hidden inside the horse could be called warriors from Troy. In fact, Vergil’s famous line from the Aeneid warns us to “fear Greeks even bearing gifts,” not horses from Troy.

    Otherwise, very insightful discussion of the proposed changes.

  26. Eileen McDermott May 30, 2019 9:36 am

    Thanks Deacon – we have updated the article as per this comment.

  27. ClauseEight May 30, 2019 10:16 am

    @ 20. Anon —
    Thanks for the link. I’ll have to do more research into this. I would consider myself a textualist, and I want to make sure that I’m understanding the original intent of “discovery” in the Constitution. It was my initial impression that “discovery” was meant to be interpreted in the sense of “I discovered that applying a handle to a chair allows easy reclining” and not things like “I discovered electromagnetism itself.” Though I am open to challenges in this regard.

    @ 23 Night Writer —
    I think you are too quick to put me in the “anti-patent” camp… I’m actually pretty strongly pro-patent. One of the ways I think we can eliminate uncertainty and ambiguity that’s harming patent owners (largely due to many SC decisions) is to define exactly what IS a patentable invention and what ISN’T. That’s why I think the old “practical application” standard is pretty decent if we were to apply a definition to it (i.e., something that only exists because of human intervention) instead of playing the claim-similarity game.

    I agree with you that a claim to a test for such a technology is highly patentable, and I don’t support the decision in Sequenom as a whole–I was just using the concept from it. In a different consideration, though, what’s to keep someone from claiming fetal DNA in mothers’ bloodstreams itself? There’s no prior art to invalidate this, but it is a novel discovery, non-obvious, and has utility in and of itself. I think most would say DNA itself should not be patentable, correct? Just some sort of method of using it, a test to isolate it, etc., etc.

    I used to think that eliminating 101 as a whole would be beneficial, but I’ve come to believe that in practice, the elimination of the statute could pose a fair amount more ambiguity, at least due to future judicial interpretation.

  28. Anon May 30, 2019 4:20 pm

    ClauseEight,

    You profess to be a textualist, and yet somehow come up with “was my initial impression that “discovery” was meant to be interpreted in the sense of “I discovered that applying a handle to a chair allows easy reclining” “…?

    What do you mean by “textualist?”

  29. Night Writer May 31, 2019 8:50 am

    ClauseEight,>>what’s to keep someone from claiming fetal DNA in mothers’ bloodstreams itself?

    What does that mean? What would a claim to that look like and how would the claim be enforced?

    Probably there would be a giant monetary gain from being the first to figure out that there is fetal DNA in the mother’s blood and that many things can be done with it. That is actually great for our innovation engine. It means that if you figure out something fundamental that you can make a lot of money from it and it encourages people to invest in trying to figure these types of things out.

  30. Anon May 31, 2019 12:24 pm

    Night Writer @ 29 alights upon a simple mechanism that — if it were to be treated on an inte11ectually honest basis — would remove a lot of the dust kicking and hysteria concerning patenting items that people want to keep out of the innovation protection legal system.

    Enforcement.

    Items to which there is no real mechanism of enforcement are easily separable from those that do have enforcement mechanisms.

    For example, this easily flows over to the “Abstract Ideas” scenario. Someone should take an electric cattle prod to Judge Breyer and ask him of the difference between the Abstract Idea of someone jolting him and him actually being jolted.

    The Person Having Ordinary Skill In The Art (that legendary legal construct) can easily tell the difference between a computing system employing a claim (especially a claim taken as a whole, as need be) and some “Gisted” abstraction of a claim that may exist completely in the mind.

    One aspect of the current Legislative restructuring of 101 that may be slightly altered to touch on this is the “The provisions of section 101 shall be construed in favor of eligibility” provision. One could add: “Claims granted under this title shall be viewed from the perspective of a Person Having Ordinary Skill In The Art, and be presumed to be enforceable claims.” This way, any attempt to twist a meaning of a claim to be something completely in the mind would be – de facto – an unreasonable interpretation.

  31. Yu Liu July 29, 2019 6:57 pm

    “We all should know that if claim language is truly “overly-broad,” prior art invalidity under Sections 102 and 103 will invalidate.”
    A layman question here. Is it possible for the claim language to be broad enough to cover something that was not even available when the patent was issued? Prior art cannot invalidate the claim in this case.

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