After Alice: IP Stakeholders Comment on Alice’s Impact Five Years On

By IPWatchdog
June 19, 2019

“By virtue of being deemed to fall within a judicially created exception, whole classes of inventions are now considered patent ineligible regardless of their patentability. As a result, I believe worthy inventions have been denied patent protection, and confidence in the fairness and rationality of the U.S. patent system has taken a hit.” – Scott Elmer

https://depositphotos.com/74528553/stock-illustration-wonderland-bunny-with-design-elements.htmlSince the Supreme Court issued its decision in Alice v. CLS Bank five years ago today, patent eligibility jurisprudence and practice have become increasingly chaotic—at least in the opinion of many IP stakeholders and the members of Congress who are spearheading the effort to rectify the situation. As one of the commenters below—Dan Hanson—pointed out to us recently, it seems that the exchange during oral arguments in one of Alice’s precursors—Bilski v. Kappos—between Deputy Solicitor General Malcom Stewart and Justice Kennedy has proven quite prophetic. During that exchange, Stewart attempted to explain to the Court why his office didn’t originally want the justices deciding the patent eligibility issue:

STEWART: [W]e opposed cert in this case because we recognized that there are difficult problems out there in terms of patentability of software innovations and medical diagnostic –

JUSTICE KENNEDY: You thought we – you thought we’d mess it up.

Five years later, Alice was decided; today, to commemorate Alice’s five-year anniversary/ birthday, IPWatchdog posed the following—admittedly somewhat leading—statement to a cross-section of the IP community, and gave them a chance to agree or disagree with it. Many did not respond—including the Electronic Frontier Foundation and Google—perhaps because of the sensitive political moment in the history of patent eligibility law in which we find ourselves right now. However, the responses below do reflect a range of views on the impact of the case so far.

Let us know your own thoughts in the comments.

Question: Alice has dramatically and negatively impacted my industry/practice over the last five years.”

Do you Strongly Agree, Agree, Disagree, or Strongly Disagree with this statement?

Scott Elmer, St. Jude Children’s Research Hospital

Strongly Agree:  A great strength of U.S. patent law is that the basic rules of patentability (novelty, nonobviousness and utility) can be applied equally to inventions of all types to identify those that are worthy of patent protection.  With Alice, as well as other decisions using similar reasoning (e.g. Mayo v. Prometheus, Myriad), the Supreme Court created an ill-defined set of exceptions that trump these basic rules. By virtue of being deemed to fall within a judicially created exception, whole classes of inventions are now considered patent ineligible regardless of their patentability. As a result, I believe worthy inventions have been denied patent protection, and confidence in the fairness and rationality of the U.S. patent system has taken a hit.

This is my personal view and not that of my employer.

Daniel Hanson

Agree:  But my view tends toward the neutral rather than toward the extreme.

Alice Corp. v. CLS Bank Int’l reached the correct result, in my view. Even so, Alice has had, in my experience and judgment, an undesirable impact, particularly as pertaining to inventions involving computation, signal analysis, and methods of use of devices.

This undesirable effect comes not as much from the Alice decision itself as from how the decision has been applied beyond the scope of its holding.  Alice has been used (or in some cases, mis-used) as a shortcut in place of a careful patentability analysis.  Some examiners (and some courts!) that apply Alice tend to be conclusory rather than analytical.

Current patent eligibility analysis is obsessed with a claim’s “inventive concept” and what a claim is “directed to.” Accordingly, a claim tends to be evaluated piecemeal, with certain parts being deemed conventional, for example, and other parts being deemed abstract.  This sort of approach departs from what ought to be a fundamental principle of patent law: a claim ought to be evaluated as a whole.

Sherry Knowles, Knowles Intellectual Property Strategies

Strongly Agree: Without doubt, Alice has dramatically and negatively impacted the pharma/biotech industry over the last five years. However, I think it is more important to focus on the dramatic and negative impact on the American public itself and medical solutions to serious diseases. Our country and our citizens have been damaged. And the timeclock for the Supreme Court/Federal Circuit frontal assault on the motivations for medical solutions began before Alice, with the 2012 Mayo decision and then the 2013 Myriad decision (seeded by the 2006 dissent by Justice Breyer in Labcore v. Metabolite). Some may even say it started with the Funk Brothers decision in 1948, followed by the Court’s total disregard for the legislative history and amendments to the 1952 Patent Act while it was busy creating patent law to its own liking.  The most recent examples of contorted illogical (and unconstitutional) decisions are the Federal Circuit cases of Ariosa v. Sequenom and Athena Diagnostics.  As I testified in the Senate IP Subcommittee Hearing, the highest public interest is life itself. We should all collectively applaud the excellent work of Chairman Tillis and Ranking Member Coons for being examples of what we want and need from Congress—representatives who are engaged, passionate, listen to all sides and then have the strength and commitment to fix problems to improve our competitiveness and restore the full motivation to fight disease and save lives.

Steve Kunin, Maier & Maier

Strongly Agree: The main problem has been that it has taken too long for the Federal Circuit and the USPTO to issue progressive and meaningful guidance on how to apply the Alice two-part test for patent subject matter eligibility. The problem with the two-part test is the lack of definitions for the key factors in applying the test.  Although the USPTO has sought to define and limit what constitutes an “abstract idea” and explain what “directed to an abstract idea” means, the Federal Circuit has dismissed their analysis as not binding on federal courts.  Moreover, no guidance has been provided as to what constitutes an inventive concept and what is significantly more than excluded subject matter in a claim. Additionally, no definition has been provided as to what constitutes a practical application of excluded subject matter.  We have seen subtests arise from the case law, such as providing a technical solution to a technical problem suffices, but the federal courts have never defined what “technical” means.  Also, improving the operation of a computer suffices, but only recently has this principle been expanded to improvements that arise via software, graphical user interfaces and computer program product claims if written in code plus function format.

Fortunately, we are seeing more cases found patent eligible at the first step in analysis, but this has taken too long.  At least the Bascom and Berkheimer line of cases has taken the pressure off the difficulty in proving patent subject matter eligibility at step two. Since 2014, I have given webinars for Strafford on patent subject matter eligibility multiple times each year.  Practitioners crave guidance on how to prepare and prosecute patent applications with robust specifications and claims tailored to demonstrate how practical applications are achieved through specific technical elements to survive section 101 challenges, but the envelope continues to expand as new Federal Circuit decisions issue.  But even this approach is a struggle because of the unpredictability of further Supreme Court review. Many recent Federal Circuit decisions providing hope for movement of the pendulum back to a more pro-patent perspective have petitions for certiorari filed, which may result in back sliding should the Supreme Court disagree with the Federal Circuit’s enlightened approach. It appears that Congress is now poised to address the adverse impacts of Alice through at least one new bill that seeks to correct section 101 to be more in line with approaches taken by countries and regions that have more relaxed criteria for patent subject matter eligibility.  The time to act is now.

Mark A. Lemley, Stanford Law School/Durie Tangri LLP/ Lex Machina Inc.

Strongly Disagree: Alice has weeded out the worst of the nuisance-value patent troll suits while allowing most real patent litigation to continue apace.  Outside the medical diagnostics field, the people who suffered from Alice are mostly those who were gaming the system.

 

Christopher E. Loh, Venable LLP

Agree:  While the policy considerations animating Alice may have reflected good intentions (e.g., deterring NPE litigation), in practice, Alice and the 101 decisions that have followed in its wake have generated considerable uncertainty over the fundamental question of what subject matter can and cannot be patented in the United States. This uncertainty in turn has fed the perception that the United States is losing ground to other jurisdictions as a reliable champion of patent protections. Moreover, because the issue of what is patentable under Alice has been characterized as a threshold question of law (albeit accompanied by certain factual underpinnings), courts have been forced to address that question under less than optimal circumstances: typically during the early stages of litigation, without the benefit of a complete evidentiary record or a good grasp of the relevant technology.  These circumstances have led to a body of rulings that even their authors have sometimes criticized as inconsistent, confusing and lacking in rigor.


Stephanie Martz
, National Retail Federation (NRF)/ United for Patent Reform

Strongly Disagree: Speaking on behalf of both NRF and United for Patent Reform, I strongly disagree with this statement. Alice provided clarity around an issue that should have been obvious: That you can’t patent an abstract idea just because you propose doing it “on a computer” or “through a network.” Main Street businesses across the country, representing 2/3 of American jobs, have been subject to vexatious lawsuits on patents indistinguishable from the patent that the Alice court found to be ineligible under Section 101. For our members, the Federal Circuit’s continued refinement of the Alice court’s unanimous interpretation of abstraction has been far from disruptive. More important are the numerous trial court decisions that have invalidated patent claims that never should have been granted in the first place, such as those for transmitting menus from a server to a mobile device (in other words, ordering pizza). Time will provide increased clarity, but Alice was a very positive development for Main Street business.

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Discuss this

There are currently 73 Comments comments.

  1. Anon June 19, 2019 4:00 pm

    Given the (admitted) leading question, and given the known proclivities of those that have answered, I will emphatically state that the ability to project consistency between stakeholder, their constituent, and the views expressed far exceeds any semblance of “predictability” of case law in the Gordian Knot of subject matter eligibility.

  2. B June 19, 2019 4:30 pm

    Dear Ms. Martz,

    You state: “Alice provided clarity around an issue that should have been obvious: That you can’t patent an abstract idea just because you propose doing it ‘on a computer’ or ‘through a network'”

    If this is your take on the current Alice/Mayo doctrine, you’re seriously misinformed. I agree that doing something “on a computer” should not (in the vast majority of instances) lead to patentability.

    However, should new and non-obvious processes run on a computer should be patent eligible?

    If you said “yes” you have no idea what Alice Corp. stands for.

    If you said “no,” then what should be the standard for patent eligibility? Inventive concept?

  3. Ternary June 19, 2019 5:07 pm

    Lemley: “Outside the medical diagnostics field, the people who suffered from Alice are mostly those who were gaming the system.” That characterizes the man: just make things up: no evidence and no arguments. Thus no empirical data and that makes anything that he asserts scientifically suspect.

  4. Pro Say June 19, 2019 5:58 pm

    Lemley’s headstone will read:

    With my patent-hating cronies, I helped Big Tech become billionaire monopolists on the backs of American inventors.

  5. mike June 19, 2019 8:11 pm

    I’m with Knowles 100%. Her paper “Unconstitutional Application of 35 USC 101 by the Supreme Court” sums up the problem SCOTUS created to a “T”. It is not their place to determine what promotes the useful arts and sciences. The Constitution states that power belongs to our elected Congress. And we shan’t codify what SCOTUS wrote from the bench either, especially when it comes to software and computing improvements — those should be patent eligible.

    To Lemley & Martz: The respective comments from B and Ternary above just made you look really uninformed. There really is nothing more that I could add to their comments, except to perhaps re-emphasize their comments.

  6. Concerned June 19, 2019 8:24 pm

    I noticed what Mr. Hanson states regarding Alice. The lower courts have expanded the ruling beyond what was ruled in a negative way.

    Alice says that concrete steps that solve a problem is patentable, We argued as much with the examiner to no avail.

    Who cares if I put a generic computer on a shoe box if it cured cancer? I should get the patent.

  7. B June 19, 2019 8:46 pm

    I noticed what Mr. Hanson states regarding Alice. The lower courts have expanded the ruling beyond what was ruled in a negative way.

    The holding of Alice is actually quite narrow. Mayo is a lot more problematic.

    However, given the Supreme Court’s refusal to provide clarity on the most idiotic point of law spewed by the CAFC, there is tacit agreement.

  8. Paul Morinville June 20, 2019 12:20 am

    Stephanie Martz. You represent Walmart and other huge lawless infringing multinationals well.

    After all someone else figured it out first and not only are business methods the only way to challenge you huge multinational clients with no allegiance to America, but it is much cheaper to steal it than buy it.

  9. Mark Syman June 20, 2019 9:13 am

    Mark Lemley is intellectually dishonest. There is no possible way that any informed comment on the results of IPR supports his position.

  10. TFCFM June 20, 2019 9:51 am

    Anonymous patent attorney TFCFM:

    Agree, but think that this is a good thing.

    Software patenting and medical diagnostic patenting have obviously been seriously impacted in a negative way. I believe that this is a good thing however, because the old (lack of a sensible) rule of patent eligibility permitted too much non-inventive subject matter to be subjected to patent-based monopolization, even though the contributions made by the developers of that subject matter was minimal (sometimes bordering on the trivial).

    In the field of medical diagnostics, for example, monopolization of disease state condition detection had largely devolved into a “sequencing race” that involved virtually no “inventiveness,” The first shotgun-sequencer to race to the patent office with an application disclosing their virtually-raw results and barely asserting a link between one of their disclosed sequences and a postulated disease state was rewarded with the rights to extort payments from all other researchers in the disease field for nearly two decades. No honest, intelligent person can reasonably view developments of that sort as “promot[ing] the progress of science and useful arts” in any meaningful way.

    Similarly with folks who figure our one way to implement an algorithm on a computer-based system and seek to monopolize ALL ways of implementing that (or similar) algorithms on all systems.

    The portion of the patent statute dealing with eligibility is surely not the ONLY way to appropriate limit what can be patented, but it just as surely can be an effective way of achieving this.

    In my view, the interpretation of section 101 existing prior to Alice was being out-stripped by technological developments (like those described above). That the Alice framework attempted to remedy the shortcomings of the prior interpretation is a good thing, even if the Alice framework itself has proven unworkable.

    It is perfectly appropriate for the Congress to draw up new law regarding the limits of patent eligibility (especially keeping in mind technological developments that have forced the reappraisal).

    Congress should take whatever time it needs to tune the statute appropriately. The first draft circulated by the two senators (names forgotten – shame on me) is beneficial as an opening of that statute-tuning process, even if — in my opinion — the draft is not yet nearly ready for prime time.

  11. Night Writer June 20, 2019 9:52 am

    Reality is that no patent attorney worth his salt can say that Alice was correctly decided. There is no sense to Alice in terms of patent law. The Scotus has redefined the word “abstract”.

    It is not even an argument. A broad claim that is enabled and has a WD in the spec is not abstract by any definition of abstract other than the one fabricated by the Scotus. Abstract was meant to take care of claims like “build the machine with fewer parts” without anyway to do this. But an enabled claim cannot be abstract.

    What is so bothersome is how intellectually dishonest so many people are that defend the Scotus’s Alice decision.

  12. Anon June 20, 2019 10:41 am

    TFCFM,

    I find your “Ends justify the Means” to be appalling.

  13. TFCFM June 20, 2019 11:23 am

    >>>Anon>>>I find your “Ends justify the Means” to be appalling.<<<Anon<<<

    If laws are not the means for bringing about the ends that we, as a society, desire, then I don't know what the purpose of laws is.

    Surely, that purpose is not merely to enrich shysters who manage to exploit loopholes and imperfections in our laws. Amending laws to shut off such enrichment is, to my mind, a wholly appropriate use of both laws and the process for amending them.

  14. Anon June 20, 2019 12:39 pm

    TFCFM,

    Way to go from the frying pan into the fire by labeling everyone with your “Ends justifies the Means” thinking.

    Your “argument” here is still-born and more than a bit of a strawman, as no one was saying anything about properly changing the laws to cover whatever Ends you want to insert. Such would be a proper discussion of PROPER means to whatever Ends – and that is simply NOT what your earlier post was about.

  15. TFCFM June 20, 2019 1:47 pm

    >>>Anon>>>Way to go from the frying pan into the fire by labeling everyone with your “Ends justifies the Means” thinking.<<<Anon<<<

    I don't believe I understand what it is you're trying to criticize, beyond mere name-calling.

    I believe that the Alice decision was an (imperfect) attempt to address a just and valid societal end (i.e., limiting the patent monopoly to technologies sufficiently 'deserving' of such an award).

    Modifying the patent laws to achieve that same end is, to my mind, an equally justifiable way of attempting to achieve that end. Moreover, having the ***legislature*** make our laws is both more nearly in keeping with constitutional roles and more likely to achieve a fair, workable standard for patent eligibility.

  16. B June 20, 2019 3:24 pm

    @ TFCFM “I believe that the Alice decision was an (imperfect) attempt to address a just and valid societal end (i.e., limiting the patent monopoly to technologies sufficiently ‘deserving’ of such an award).

    Respectfully, here’s where you’re mistaken.

    First, it is not the Supreme Court’s say-so as to what technologies are deserving. Congress only has the authority to take such decisions.

    Second, the Supreme Court is using a section of the law not meant to determine patent-worthy inventions. That’s for 102, 103, and 112.

    Third, the test isn’t imperfect, its unworkable and leads to capricious outcomes. This wouldn’t be so bad except that everything we’re seeing now happened in the 1940s, and Congress passed the 1952 Patent Act to correct the Supreme Court’s anti-patent nonsense. Now, the Supreme Court has de facto re-written the statutes to make the same mistakes they made 70+ years ago.

    By way of example, the Supreme Court re-introduced the requirement of “invention” into the patent law, which the 1952 Patent Act wrote out of the patent law in favor of nonobviousness. Why? Because the word has no meaning.

    I keep asking one court after another what is an “inventive concept” and every one of them passes.

    I think people here are attacking you b/c of your vast lack of knowledge as to the mayhem caused by the Supreme Court’s lawless acts. No one here wants a bad patent in the public I assure you. The problem is that Alice/Mayo does not discern between bad patents and good patents. It merely destroys patents using a meaningless test.

  17. Anon June 20, 2019 4:28 pm

    B,

    My attack is not on the person (name-calling) as alleged, but on the clear LACK of critical thinking and application of a mindset that MOST ALL attorneys would immediately recognize as dangerous and — as you put it — capricious. LAW is the last place that the capricious “whatever means is OK, as long as the Ends are good” should be even countenanced.

    (this is not to say that I disagree with your other points – I do agree with what you say here)

  18. Pro Say June 20, 2019 4:39 pm

    B @ 16: Big +1.

    Succinct and to-the-point.

  19. TFCFM June 20, 2019 5:13 pm

    @B

    My views as to your points:

    >>>B>>>First, it is not the Supreme Court’s say-so as to what technologies are deserving. Congress only has the authority to take such decisions.<<<B<<>>B>>>Second, the Supreme Court is using a section of the law not meant to determine patent-worthy inventions. That’s for 102, 103, and 112.<<<B<<>>B>>>Third, the test isn’t imperfect, its unworkable and leads to capricious outcomes. This wouldn’t be so bad except that everything we’re seeing now happened in the 1940s, and Congress passed the 1952 Patent Act to correct the Supreme Court’s anti-patent nonsense.<<<B<<>>B>>>I think people here are attacking you b/c of your vast lack of knowledge as to the mayhem caused by the Supreme Court’s lawless acts.<<<B<<>>B>>>The problem is that Alice/Mayo does not discern between bad patents and good patents. It merely destroys patents using a meaningless test.<<<B<<<

    You and I agree that the Alice and Mayo decisions have not produced a workable test or an intellectually-satisfying distinction between eligible and ineligible subject matter.

    In my view, the fact that patents remove subject matter from the public domain and thereby inhibit others from using that subject matter makes it advisable to take a conservative view towards proposed expansions of patent-eligibility. Where Congress has not plainly intended to grant patent rights, courts should — in my opinion — be loathe to expand what can be patented until and unless the Congress does so.

    Congress has had many years to declare "anything goes!" if it desired to do so, but it has not. Plainly, some members of Congress are reconsidering what should and should not be eligible for patenting. It seems unlikely to me that they'll declare the Alice test to be the final one (or that they'll declare that "anything goes!"). In the mean time, I'll share my opinions and their bases.

  20. TFCFM June 20, 2019 5:23 pm

    >>>Anon>>>LAW is the last place that the capricious “whatever means is OK, as long as the Ends are good” should be even countenanced.<<<Anon<<<

    If "achieving society's desired ends" is not the means to which law should be put, WHAT IS?

    Should law be employed to enrich you? to enrich me? to achieve entirely random ends?

    The reason we have laws to begin with is to organize our society the way that they who have the power to enact and enforce laws ("We the People" in the U.S.) think our society should be organized. Patent law is a part of that, and the statutory definition of patent eligibility a sub-part.

    The appropriate way to draft our patent eligibility statute is to decide (as a society) what subject matter we want to reward with limited monopoly rights, and then write statutes that, as best we can, achieve that end.

    That is why consideration of desired ends is indispensable AT THE FRONT END of writing or amending statutes — including the patent eligibility statute. It is entirely appropriate to consider what we want a law to do before revising it, and foolish not to.

  21. B June 20, 2019 5:34 pm

    FYI, THE SUPREME COURT DECIDES TODAY WHETHER TO GRANT CERT ON INVESTPIC V SAP AMERICA, although the order won’t be released for a few more days. https://www.supremecourt.gov/search.aspx?filename=/docket/docketfiles/html/public/18-1199.html

    The question set forth:

    Does the Federal Circuit’s “physical realm” test
    contravene the Patent Act and this Court’s precedent by categorically excluding otherwise patentable processes from patent eligibility?

  22. Paul Morinville June 20, 2019 5:39 pm

    Mark Lemly “the people who suffered from Alice are mostly those who were gaming the system.”

    I once thought that you were misguided because you have NO experience with inventing, patenting or startups. Your experience is from a lectern and an iBook.

    But you kept coming up with false research and obviously flawed and skewed against small inventors. So I wondered if you were bought off by big tech to produce those fake reports. (https://www.wsj.com/articles/paying-professors-inside-googles-academic-influence-campaign-1499785286)

    But now I know what a low life you truly are. Don’t ever tell me I am gaming the system. It is you who are gaming it for a payout of big tech big bucks.

    You are a shameful little man who has put a big brown skid mark on your profession.

  23. B June 20, 2019 5:59 pm

    @ TFCFN “In my view, the fact that patents remove subject matter from the public domain and thereby inhibit others from using that subject matter makes it advisable to take a conservative view towards proposed expansions of patent-eligibility.”

    A patent doesn’t take away from the public domain. Patents add to the public domain in exchange for a temporary monopoly. Those that add nothing to the public domain fail under 102/103.

    It is EXACTLY this sort of comment from you that led people to attack you.

    “Where Congress has not plainly intended to grant patent rights, courts should — in my opinion — be loathe to expand what can be patented until and unless the Congress does so.”

    You really are intent on making yourself look bad. Congress clearly set forth what subject matter is patent eligible. The text of 101 is short and very clear. It was the courts that ignored the statutory language of 101 to create exceptions by inserting meaningless words and conflating 101 with 102, 103, and 112.

    Personally I don’t think Alice or Mayo were likely valid patents under 35 USC 103, and it is my belief that this fact would have come out in the respective litigation processes. However, instead of following the statutory scheme set forth by Congress, the Supreme Court created an unholy mess.

    “The appropriate way to draft our patent eligibility statute is to decide (as a society) what subject matter we want to reward with limited monopoly rights, and then write statutes that, as best we can, achieve that end.”

    Any possible respect for you in this forum died with this statement, and unfortunately you’ll never figure out why.

  24. B June 20, 2019 6:21 pm

    “The appropriate way to draft our patent eligibility statute is to decide (as a society) what subject matter we want to reward with limited monopoly rights, and then write statutes that, as best we can, achieve that end.”

    Seek professional help

  25. B June 20, 2019 6:43 pm

    @ Anon “My attack is not on the person (name-calling) as alleged, but on the clear LACK of critical thinking . . . . “

    My apologies. You’re 100% correct. Every post from this TFCFM person is more bizarre than the last. He’s completely ignorant of practically every issue and doesn’t realize it. It’s a good thing to participate in the debate, but it’s useless and indeed irritating if a participant doesn’t understand the fundamentals. TFCFM calls himself an “anonymous patent attorney” but he obviously isn’t. I doubt he has a number, ever drafted or prosecuted a patent application, or ever litigated a patent case.

    He’s like a less-greasy version of Malcomb.

  26. TFCFM June 20, 2019 7:03 pm

    >>>B>>>Any possible respect for you in this forum died with this statement, and unfortunately you’ll never figure out why.<<<B<<<

    Be still my tear ducts.

    My mistake, I suppose, for trying to have an open-minded conversation with a petty, name-calling zealot.

  27. Anon June 20, 2019 8:01 pm

    B,

    He is less profane, but MUCH more greasy.

    He has triggered you with his strawman-inserted proper Means (even has he does not directly relate that the “society choosing” IS done by our elected representatives in the Legislative Branch.

    But as I pointed out, that was entirely absent in the first post that I took exception to, and I also pointed out that no one was actually arguing against setting law in the proper manner.

    Again, I am not disagreeing with MANY of the points that you present — but you missed one that did catch my eye (emphasis added):

    Modifying the patent laws to achieve that same end is, to my mind, an equally justifiable way of attempting to achieve that end.

    Well, you didn’t really miss that, as you justifiably do rip into him for not recognizing that patent law is statutory law, explicitly designated by the Constitution as having one particular branch of the government sanctioned to write law.

    On a somewhat different, but still related note, my guess is that our mutual friend TFCFM is a litigator (but only a litigator).

    The very worst attorney views that I have seen in regards to patent law come from attorneys who are litigators but who are not PROPER patent attorneys.

    By the way, under most State Attorney Ethics codes, it is unethical to hold yourself out AS a patent attorney unless you are a bona fide proper patent attorney.

    Typically covered under the section of advertising and/or speciality function, the term “patent” IS reserved as a speciality — NOT in litigation (which may include litigating patent cases), but ONLY for those who have passed the USPTO “Bar” exam and obtained a registration number.

    You need both to be an attorney AND to be registered to be a proper patent attorney.

    Heck, even Patent Agents (non-attorneys) are better versed to discuss patent law matters than mere attorneys whose litigation experience may include litigating patent cases.

    In addition to this, I would add that even proper patent attorneys vary in aptitude and appreciation of innovation protection based on various experiences. For example, my career has spanned multiple aspects of innovation and innovation protection, including aspects of being the innovator/engineer, managing innovators/engineers/full business units and then turning to law and becoming a proper patent attorney so that I can develop and protect the life-blood of those who innovate.

  28. B June 20, 2019 9:31 pm

    @ TFCFM “My mistake, I suppose, for trying to have an open-minded conversation with a petty, name-calling zealot“

    Your mistake was to make multiple statements based in a rather stunning level of ignorance. Seriously, everything you’ve said to date is bizarrely ignorant. You don’t know the issues, the law, the Constitutional bases, or anything else.

    I’m fine with the idea of an open-minded discussion. My problem with you is that you don’t know the language.

    No one believes that you’re a patent attorney.

  29. TFCFM June 20, 2019 10:41 pm

    >>>B>>>No one believes that you’re a patent attorney.<<<B<<<

    Believe whatever you like. Once you demonstrate an ability to offer a remotely cogent counter-argument, I may begin to believe that you might also be a patent attorney. Until then, keep ducking issues and hurling insult.

  30. anonymous June 20, 2019 11:14 pm

    Congress can’t abrogate Alice soon enough. It seems to me at the very least that any patent with a pre-Alice priority date should never be found invalid based on an abstract idea. How does congress intend to address that situation in its proposed legislation?

  31. B June 20, 2019 11:40 pm

    @TFCFM “Believe whatever you like. Once you demonstrate an ability to offer a remotely cogent counter-argument”

    You have yet to offer a remotely cogent argument or an awareness of basic patent issues. For example, your assertion that patents take from the public domain is so incredibly stupid I cannot possibly state anything else than you’re ignorant to the point of being laughable.

    However, I invite you to enlighten me what law school professor told you such tripe.

  32. Night Writer June 21, 2019 5:24 am

    @22 Paul >>but now I know what a low life you truly are. Don’t ever tell me I am gaming the system. It is you who are gaming it for a payout of big tech big bucks.

    I’ve known this for 10+ years. The way I figured this out is by reading his papers and seeing that Lemley acted unethically in almost every paper I read. In fact it was shocking that someone could write a paper that was published with so many misrepresentations of cites and so many times not citing to counter authority.

    What shocks me is that the Scotus continues to cite to Mark Lemley. Disgraceful.

    I actually wrote the outline of a complaint against Lemley to file with Stanford Law School, but then did some research and found out that Stanford would ignore it.

  33. Anon June 21, 2019 7:48 am

    B,

    TFCFM is continuing to attempt to tr011 you and trigger you.

    If you note his responses to me, he has engaged in nothing more than rhetorical slippery tactics of strawmen, misdirection, mischaracterization, and avoidance of the points that I have actually presented.

    He has triggered you to only then “feast” on the emotion that you display, hoping that if you get emotional enough, you just may say something that is not in line with a strawman he has inserted (for example, he keeps on trying to insert legitimate Congressional action in changing the law on a basis that such is perfectly equivalent to the Court changing the law, when anyone with any sense of being an attorney (and not even an actual patent attorney) would know that such is simply not true in the context of statutory law.

    Note how he is so quick to jump to accuse others of name-calling, at the same time that he employs that very same rhetorical mechanism.

    Note as well, that he simply avoids the actual points that I do present. He does NOT reply to whether or not he has an actual registration number. He does NOT reply as to whether or not he helps innovators protect their innovations (and by this, I mean directly with obtaining patent protection, and specifically NOT the game-playing twisted version of the anti-patent view that “knocking out patents protects innovators”).

  34. Anon June 21, 2019 8:20 am

    … I forget to add TFCFM’s own quote:

    Until then, keep ducking issues and hurling insult.” and note the Malcolm Mooney-like fact that TFCFM is actually doing both of these things.

    He has written in a slippery manner to appear to be the “victim” of the very things that he is doing. But as I have noted, his “ducked issue” is nothing but a strawman, and he has turned the critical comment about his tactic into a bland “personal attack,” all the while goading you.

    Anyone that has been following along knows that you have recently been involved (deeply involved, emotionally involved), and he is merely baiting you.

    Let’s see him do more than merely deflect, inject strawmen, and antagonize. Let’s see him actually address the distinguishing points that both of us have put on the table.

  35. Paul Morinville June 21, 2019 9:25 am

    Night, I think I can get a few hundred signatures and that might make a difference to Stanford. If they don’t accept it, we can publish it somewhere as a form of public notice. That will make it available on the Internet so that others can find it when they seek information about the credibility of Lemley or Stanford.

  36. TFCFM June 21, 2019 9:56 am

    >>>Anon>>> He does NOT reply to whether or not he has an actual registration number. He does NOT reply as to whether or not he helps innovators protect their innovations (and by this, I mean directly with obtaining patent protection…<<<Anon<<<

    The validity of the issues I raise are identical, regardless of identity.

    Nonetheless, to satisfy your burning curiosity, I have indeed earned both a law degree from a respected school and a registration number. I have assisted inventors (ones who have made real inventions, less so they who have merely frittered around the edges) to obtain, defend, license, sell, avoid, invalidate, and enforce patents for more than two decades.

    I'm willing to bet that satisfying your curiosity in this way will not alter your view that every patent attorney who disagrees with you is stoopid, evil, and a blinkered drone toiling in the paid service of parties you dislike.

  37. TFCFM June 21, 2019 10:00 am

    Once again (at #19 in this thread), my way of quoting others (using ‘>’ and ‘<' signs to delimit quoted text have caused the responses I typed in my message to fail to appear on this page.

    Can anyone suggest an appropriate way of quoting the text of others that will not cause this difficulty.

    The bold text option used by some above seems appropriate — how does one format text as bold text on this comment engine?

  38. Anon June 21, 2019 11:05 am

    TFCFM,

    With all due respect, the statement of “The validity of the issues I raise are identical, regardless of identity. is circular nonsense and does NOT address my direct counterpoint to you.

    That being said, I do thank you for confirming that you are not just a litigator.

    However, you then trip over yourself in your own hurry to engage in baseless name-calling with your incorrect assertion of “will not alter your view that every patent attorney who disagrees with you is stoopid, evil, and a blinkered drone toiling in the paid service of parties you dislike.

    You clearly overstep and ignore the fact that I was NOT “name-calling” as you first asserted. You continue to merely assume a conclusion not in evidence, as my posts were directed to HOW you were “approaching” the discussion, and thus were NOT ad hominem (much less the baseless ad hominem that you yourself engage in). You merely confirm the very tactics that I take issue with.

    As to editorial controls, the greater than and lesser than items are indeed the mechanisms, but there is a difference between the opening tag and the closing tag (and the tags DO need to match up). The opening tag is for italics is “I” and for bold is “b” – set entirely on its own between a single less than followed by a greater than symbol. To close the tag, a slash “/” is used immediately after the lead-in less than symbal (of course, after the material to be set in format).

  39. TFCFM June 21, 2019 11:19 am

    @Anon: The opening tag is for italics is “I” and for bold is “b” – set entirely on its own between a single less than followed by a greater than symbol. To close the tag, a slash “/” is used immediately after the lead-in less than symbal (of course, after the material to be set in format).

    Thank you for this. It is much like the Washington Post’s former commenting system. I will experiment below to see if the underline function works as well.
    bold
    italics
    underline

    I look forward to discussing substantive issues in the future and hope that you’ll appreciate that my replies to some issues you may have raised may have disappeared within my misuse of the control signals for this comment engine. If there are any that remain grossly outstanding in your mind, please ask again.

    One that I see has been mentioned a few times (and to which my reply appears to have disappeared) relates to how patents remove subject matter from the public domain. This occurs, of course, when two different people make the same development, but only one is awarded a patent. The patent prevents all other people from using the same development, even if made entirely independently. More trivially, awarding a patent to a development publicized by its original developer also removes that development from the public domain, where it was following publicization of the development.

  40. Anon June 21, 2019 1:07 pm

    TFCFM,

    You appear to not understand that “independent invention” never has been a defense in patent law, and appear to want to elevate it inappropriately.

    You also still do not grasp B’s rejoinder that it is the 102/103 function that protects against the calamity that you seek to “enforce” with 101.

    These are rather simple mistakes in your posts that may have acerbated B’s emotional stance.

    Further, these reflect the larger issues of the fact that the Supreme Court is legislating from the Bench and that the ensuing Gordian Knot of Common Law law writing IS the most critical problem at hand – a problem as I note that ALL THREE branches of the government have commented upon.

    As to editing modes, there are others that some have used (but I never seem to remember myself) such as indenting and strikethough, in addition to your not-successful test of underlining. I invite others who have successfully used these formatting tactics to post any helpful tidbits.

  41. B June 21, 2019 1:54 pm

    @ Anon “These are rather simple mistakes in your posts that may have acerbated B’s emotional stance”

    If contempt of extreme ignorance from a person claiming professional knowledge is an emotion, then yes

  42. TFCFM June 21, 2019 2:25 pm

    @Anon: You appear to not understand that “independent invention” never has been a defense in patent law, and appear to want to elevate it inappropriately.

    You appear to misunderstand (perhaps misread) what I said. I nowhere mentioned independent invention as a defense to a charge of patent infringement. What I said (#19 above) was:
    …patents remove subject matter from the public domain and thereby inhibit others from using that subject matter

    This is assuredly true. It is why people seek patents to begin with — to obtain the “exclusive rights” to prevent others from using the claimed subject matter and thereby remove that subject matter from the public domain.

    In the context of this discussion which concerns (or, at least, originally concerned) patent eligibility, we are discussing the types of subject which we should permit patent applicants to remove from the public domain (whether they, others, or both developed it). That is among the issues explicitly addressed by section 101 and why I suggest that We The People ought to carefully consider where we want to draw that line (including the “ends” obtained thereby) before instructing our representatives where to legislatively re-draw that line — as Congress is considering doing now.

    We have currently drawn the line at “inventions” relating to certain types of subject matter (not, for example, minor, routine tweaks — the purpose of at least section 103). With relatively few exceptions (Morse, Flook, Benson, Diehr), those crudely-drawn lines have sufficed for a long time. As technologies have advanced (and as clever patent attorneys have increasingly pushed against the crudely-drawn line), the courts have had to call balls and strikes using the crude line (Bilski, Mayo, Alice, and progeny), and many of us are finding those calls increasingly unprincipled and unacceptable.

    It’s time to draw a new line, rather than fuss with interpretation of the old, crude one.

    Courts shouldn’t draw new lines (laws), Congress should, and Congress should take a reasoned approach, informed by Americans who understand these issues. Reasoned discussions among knowledgeable Americans ought to yield a better new line/law.

    (By contrast, knowledgeable Americans insulting everyone who disagrees with them ought not to be expected to advance that goal.)

  43. B June 21, 2019 2:55 pm

    @ TFCFM ” I have indeed earned both a law degree from a respected school and a registration number. I have assisted inventors (ones who have made real inventions, less so they who have merely frittered around the edges) to obtain, defend, license, sell, avoid, invalidate, and enforce patents for more than two decades.”

    No, you’re not a patent attorney. You make greasy attacks, you have a condescending attitude (“ones who have made real inventions”), and constantly make ignorant statements.

    Give me an example of a “real invention.”

    “More trivially, awarding a patent to a development publicized by its original developer also removes that development from the public domain”

    If the original inventor publicized the development, it is still his to patent, and the inventor would not likely have published had he not had the option of patent protection. Nothing is taken from the public domain. If someone else (not the inventor) attempts to get a patent over the publication, then he is barred under 102 and even 101 as the patentee is not one “whoever invents or discovers.” Had you once ever written a validity opinion, you’d know this. Had you once ever defended in a patent suit you’d know this. Had you once ever read 101 and 102 you’d know this. Had you passed the patent bar you’d know this.

    2 Anon “You continue to merely assume a conclusion not in evidence, as my posts were directed to HOW you were “approaching” the discussion, and thus were NOT ad hominem “

    So much like someone we know, eh, Anon? Even the same “I patent ‘real inventions'” nonsense.

  44. Anon June 21, 2019 3:11 pm

    This is assuredly true. It is why people seek patents to begin with — to obtain the “exclusive rights” to prevent others from using the claimed subject matter and thereby remove that subject matter from the public domain.

    This is assuredly false.

    One does NOT include “in the public domain” ANY inventor’s work as some type of default.

    I struggle with some of your basic views as you express them, as they do not sound like anything the any patent attorney that I have personally know would express.

  45. TFCFM June 21, 2019 3:21 pm

    @ Anon: One does NOT include “in the public domain” ANY inventor’s work as some type of default.

    Patent applications are normally published (and, of course, the public is permitted to look at published applications). Also a patent is not guaranteed merely by filing an application. The basic deal is that you disclose your subject matter, and IF IT SATISFIES requirements, you get awarded a patent. If not, your disclosure enters the public domain, regardless. If a patent is awarded, the claimed invention is removed from the public domain for the term of the patent (even if not previously published).

    ANON: I struggle with some of your basic views as you express them, as they do not sound like anything the any patent attorney that I have personally know would express.

    You should open both your mind and your circle of acquaintances. 🙂

  46. Anon June 21, 2019 3:56 pm

    TFCFM,

    To flesh that out a little more: the notion of inchoate right and the original Quid Pro Quo set the exchange such that NOTHING of the original inventor was considered “in the public domain” such that anything could be stated to BE being taken from the public domain. The exchange ONLY happened at the point of Grant. And it is IN the exchange that what became “public domain” was ONLY what expired at the expiration of the now fully made legal (prior inchoate) legal right.

    Your phrasing to the contrary is simply not correct in a patent law context.

  47. TFCFM June 21, 2019 5:28 pm

    @Anon: … the notion of inchoate right and the original Quid Pro Quo set the exchange such that NOTHING of the original inventor was considered “in the public domain” such that anything could be stated to BE being taken from the public domain. The exchange ONLY happened at the point of Grant. And it is IN the exchange that what became “public domain” was ONLY what expired at the expiration of the now fully made legal (prior inchoate) legal right.

    You gloss over the process.

    One files a patent application, not knowing whether one will be granted a patent or not. Most folks do not request non-publication (and we’ll see that it doesn’t matter either way).

    18 Months later, the application is published — regardless of whether a patent has been or ever will be granted. The information is now in the public domain (if it wasn’t previously, such as through prior art, by post-filing use or disclosure by the applicant, or by pre- or post-filing development by another) unless a patent issued prior to publication (and only then in the geographical locations corresponding to the issued patent(s)). The sole exception is non-published applications.

    Entirely apart from the applicant’s efforts, the same information can be placed in the public domain by another (prior to, simultaneous with, or after the applicant’s filing). If this happens, the information remains in the public domain unless someone (e.g., the applicant) is granted a patent.

    If a patent is granted to the applicant, the information is made public (whether previously published or not), but it is withheld from the public domain (even if previously published) by virtue of the applicant’s now-patent-rights in the respective geographic region. The information remains withheld from the public there so long as the patent endures.

    If a patent is not granted to the applicant, the public domain status of the information is unchanged (i.e., still not in the public domain if developed only by the applicant and described only in a non-published application; in the public domain otherwise).

    The information fails to enter the public domain ONLY if the developer is the only one to develop it and either A) never files a patent application or B) files a non-published application that is not granted. In either situation, the public is no worse off because the public would not have developed the info, but for the applicant.

    Setting a standard for patent eligibility, a legislature is deciding the scope of subject matter for which we, as a society, will permit this withholding from the public domain. I trust there’s no argument that such monopolization should not be permitted for “trivial” improvements (wherever one wishes to draw the “trivial” line), and that it should be permitted for “significant” improvements (same caveat).

    For technologies that are straining older boundaries on eligibility, it makes perfect sense to first decide what kinds of developments in those technological areas we wish to reward with patent-based monopolization, and to revise our statute accordingly. That is why my original comment (#10) referred to details of two particular types of technology and suggested a rule that seemed to me sensible in light of developments in those technological fields.

  48. Anon June 21, 2019 6:29 pm

    I do not gloss over the process and it is you that has glossed over the fundamentals of the Quid Pro Quo.

    Patent publication was not meant to change that deal – and part of the move to publication was due to reflecting international practices that would have had the material into public view at that 18 month. But you neglect the full weight of the process of non-publication request as well as the Guarantee sold in the form of a substantive first action prior to that publication point such that the applicant retained a semblance of being able to expressly abandon and maintain their submitted information as if never made public.

    Further, you continue to err in thinking that ANY of this was ever covered under 101. All of this is covered instead under 102/103.

    I get the distinct impression that you really do not understand 101 – or why the Supreme Court’s muckery has caused such a problem.

    The scope of subject matter was clearly made by Congress and the (necessarily) low bar only had two items to meet:

    1) the innovation could be placed in at least one statutory category; and

    2) the utility was such as belonging to the Useful Arts.

    There is nothing else substantively determines by 35 USC 101 as written by Congress.

    By the way, the statement of “The information remains withheld from the public there so long as the patent endures.” is also in error.

    There is no withholding of information. The information is there and is quite available to be designed around by others, or even designed WITH (as long as the negative rights are respected).

  49. Liberty June 21, 2019 7:26 pm

    Silicon Valley has saved billion in stealing people’s patent and being able to avoid paying for patent licences thaks to the AIA Act PTAB ,Alice, Mayo, Ebay all helped companies like Google and Apple rob patent holders of their inventions. The rich get richer while inventors get left out from getting paid.

  50. TFCFM June 22, 2019 12:17 am

    @Anon: The scope of subject matter was clearly made by Congress and the (necessarily) low bar only had two items to meet:
    1) the innovation could be placed in at least one statutory category; and
    2) the utility was such as belonging to the Useful Arts.

    If that were truly all there were to it, then you’d be saying that the entire line of case law from Morse, through Benson, Diehr, Flook, Bilsk, Mayo, Alice… is a nullity, and that “anything goes,” so long as a patent attorney can formulate a claim that facially mimics a statutory category. I doubt any sane practitioner is prepared to go that far.

    You presume that the 1952 Congress perfectly described in section 101 ALL of the subject matter which, regardless of technological developments unforeseeable in 1952, could ever be patented. The law, however, is not (and should not be) so petrified. We are recognizing (pre-Alice consensus that utter-nonsense was getting patented) that the current statute is faulty. Trying to overcome the faults through clever judicial interpretation (e.g., Alice) isn”t working. There couldn’t be a clearer sign that a revision to the statute is needed.

    Alternatively, we could pretend that Congressional representatives in 1952 were the sole perfect legislators in human history. I tend to be skeptical of that view.

    Anon: There is no withholding of information…

    I think any fair reading of my text in #47 recognizes that “information” refers to subject matter in the context of the comment. Applications are published, and the subject matter disclosed in them thereby enters the public domain whether a patent is ever issued or not. Grant of a patent yanks the subject matter back from the public, removing it from the public domain. I cannot decide whether you genuinely are unable to understand the context or merely feign uber-literalness for comments written in small boxes on the Internet. I don’t believe the concept is nearly so difficult to understand as you profess.

  51. B June 22, 2019 1:26 am

    @ TFCFM “You presume that the 1952 Congress perfectly described in section 101 ALL of the subject matter which, regardless of technological developments unforeseeable in 1952, could ever be patented. The law, however, is not (and should not be) so petrified. We are recognizing (pre-Alice consensus that utter-nonsense was getting patented) that the current statute is faulty. Trying to overcome the faults through clever judicial interpretation (e.g., Alice) isn”t working. There couldn’t be a clearer sign that a revision to the statute is needed.”

    Seriously, you’re without a clue.

    First, the patent community (that’s not you of course) has no problem with 101 as it was written in 1952. It was so well drafted that the AIA (look it up, Chucky) didn’t change a word.

    Second, the Supreme Court isn’t interpreting s101, it completely re-wrote it through judicial activism – and they didn’t do it to add new categories.

    Third, Congress isn’t attempting to change 101 to change the nature of 101 as written in the 1952 Patent Act but to revert the patent law back to the 1952 Patent Act as intended and clearly written.

    You’re not a patent attorney, you’re not an attorney and you’re clearly ignorant of patent law. Now your ego is all bruised b/c you’ve been called out, but every one of your posts proves my point.

    However, let me repeat a question I posed earlier to you (which you won’t answer b/c you’re a fake): What sort of “real inventions” have you patented?

  52. Anon June 22, 2019 8:55 am

    TFCFM,

    You continue to gloss over the mess already created by the Court.

    You insert (which is of course, a reasonable view) that the Legislature is the body that should make any changes to the statutory law of 35 USC 101, but you do so while continuing to deny the fact that the Court has inserted itself. You merely proclaim that what the Court has done “must be” OK because that is what they have done.

    It is exactly THIS type of LACK of critical thinking that I impugn.

    You gloss over the actual points I have presented with the conclusory phrasing of “if that were truly” and thus, you are NOT treating the counterpoint properly. Secondly, you misstate the conclusion with an OVER-statement that the Court cases would only be a “nullity.” This is an extremist view, and does NOT account for the fact that the Judicial Branch not only CAN be wrong, but — and this is evidenced across MANY areas of law — HAVE been wrong. Instead of a critical mind, you have a glossed mind. And it is glossed at a critical point of distinction FOR patent law.

    You then turn and come to another wrong conclusion with: “and that ‘anything goes,’ so long as a patent attorney can formulate a claim that facially mimics a statutory category. I doubt any sane practitioner is prepared to go that far.

    Your second sentence in this group is nothing more than ad hominem fallacy. Your first sentence in this group (again) ignores what I directly stated as to there being TWO parts to 101. You play this “that would be crazy if anything goes if [scrivined].’ game which is nothing more than the BAD scrivining of the Court itself. You have omitted the first part of 101 that prevents the “well anything,” and you have basically nullified the existence of the statutory categories, because now, with your view, the statutory categories really don’t mean a thing. As you ignore the first part of 101 in what I have stated, you have a version of law that something that NOW (in your version) DOES admit to meeting all (of what’s left) of 101 — and thus passes 101 — is somehow “not worthy” of “actually” passing 101. You have employed faulty logic to arrive in a circular “support” for the action of the Court – the very action that shows the Court to be acting beyond its authority in writing its desire to control “worthiness” into the statute.

    Your admonition of doubting “any sane practitioner” SHOULD be tripped by the logic you are attempting. The problem you have is that you have merely identified a desired Ends, you denigrate the mere highlighting of the weakness of the path that the Court has taken to those Ends, and you have NOT admitted that THAT path does not stand up to scrutiny in any DIRECT manner.

    Instead, while maintaining some type of “correctness” of the Ends desired, you reflect that the current Legislative action would be a correct Means.

    This is where your “slipperiness” comes in, because, of course, Legislative Action IS the proper Means.

    But you are NOT providing a clear or accurate conversation of the rest of the story.

    You are NOT even admitting that what the Court has done IS not correct.

    You are labelling something as “petrified” at the same time that you are rejecting the actual openness (NON-petrified) state of what Congress DID actually write. Your sentences of “You presume that the 1952 Congress perfectly described in section 101 ALL of the subject matter which, regardless of technological developments unforeseeable in 1952, could ever be patented. The law, however, is not (and should not be) so petrified.” IS a logical fallacy. The very openness in the DIRECT reading that I provide is the opposite of the label that you attach. And yes, AS WRITTEN, the words of Congress DO “perfectly” describe BECAUSE they are SO open (and yet, are still constrained by the utility within the Useful Arts that you have ignored in your response.

    To stress one of my counter points, you admit “Trying to overcome the faults through clever judicial interpretation (e.g., Alice) isn”t working.” while NOT admitting that such “clever judicial interpretation” is NOT allowed under the Separation of Powers doctrine. This is in part because YOU label something as “faults” when that labelling is simply NOT correct and that labelling actually shows that YOUR other labelling of “petrified” is ALSO not correct.

    Your logical fallacy continues with yet another incorrect overstatement of: “Alternatively, we could pretend that Congressional representatives in 1952 were the sole perfect legislators in human history

    This is slippery because you want to impugn the actual words of Congress AS BEING not controlling because of a truism that humans are not perfect. But that truism is a non-sequitur to THIS conversation. It simply does NOT matter one whit whether or not those legislators that enacted the Act of 1952 were “the sole perfect legislators” or not. To go down that path is merely kicking up an obfuscating dust cloud over what DID happen.

    Add this to how you have NOT given full and accurate credit to what the law of 35 USC 101 actually entails, and you foundation for the views that you express (those views comprising a mix of accurate and plainly inaccurate) is what I have “attacked” (along with the manner in which YOU have presented your views).

    In other words, I have NOT attacked YOU at any personal level – ALL of my attacks are directly related to the law as you have presented and how you have made your presentation.

    To continue then, you want some “fair” reading of a FALSE premise in the “withholding of information comment” and you now try to support that with yet another plainly incorrect “characterization.”

    You state: “Applications are published, and the subject matter disclosed in them thereby enters the public domain whether a patent is ever issued or not. Grant of a patent yanks the subject matter back from the public, removing it from the public domain.

    Look at your own words here: “yanks… from…” This evidences a clear LACK of critical understanding of the foundation of Quid Pro Quo. You have NOT addressed — on the foundational level — the counterpoints that I have presented as to the very nature of the US Sovereign choice of the Quid Pro Quo. Instead, you are looking at this as if a grant of a patent is somehow a “dirty” thing, a repulsive but unfortunate thing now that the government and ‘the people’ have already had their end of the bargain WITH the publication.”

    You have a critical flaw here in your understanding of patent law. Until (and perhaps IF) you can understand this LACK of yours, you will remain outside of an ability to properly construe the rest of patent law.

  53. Anon June 22, 2019 9:13 am

    whoops – hit ‘enter’ too soon…

    and then to top it off, YOU have the audacity to accuse me of a lack of understanding or some other intent with your FALSE characterization of:

    I cannot decide whether you genuinely are unable to understand the context or merely feign uber-literalness for comments written in small boxes on the Internet. I don’t believe the concept is nearly so difficult to understand as you profess.

    There is NO “unable to understand” on my part as you assert.
    There is NO “feigning” of anything on my part as you assert.
    There is NOTHING WRONG with “written in small boxes on the internet” as this phase is nothing more than a slippery “put-down” of the very medium under which WE (the both of us) are having this conversation. This “small boxes” comment carries with it the connotation that “nothing really important could ever come from such ‘small boxes’ anyway, now can it.” This is nothing more than an attempted inoculation against YOUR desired view not prevailing in our exchange. But whether or not THIS exchange comes out showing YOUR lack of understanding, the NATURE of these self-same “tiny little boxes on the internet” ARE having a MAJOR impact with the patent law world. Your attempted inoculation is not only noted, but rejected.

    Lastly, I am NOT the one attempting to make ANYTHING “so difficult to understand [as I profess].”

    This statement is pure B$.

    Quite in fact, MY views provide penetrating CLARITY.
    Quite in fact, MY views cut through the “difficulty” that YOU are infusing into the conversation.

    And THIS is a tactic that I WILL attack, as it is a fallacious, unethical, and utterly inte11ectually DIShonest tactic.

    I will not fall to any “emotional bating” that you may want to employ.
    I will not fall to any of your insertions of strawmen, of partial truths while maintaining fallacious foundations.
    I WILL continue to cut through those fallacies.
    I WILL continue to entreat you to full and proper understanding of the foundations of US patent law.

    The choice is yours (as it always is) to FULLY grasp the counterpoints I present and to start your understanding from a proper foundation.

  54. Night Writer June 22, 2019 11:50 am

    @51 B

    I agree with everything B said in this post about 101. B is exactly right.

  55. Concerned June 22, 2019 2:11 pm

    Night Writer @51: Ditto.

    I have trouble with judges adding words to s101 and so should attorneys who love Alice.

    NW: Loved your explanation of abstract: Bulid a machine with few parts. It is easily understood by a lay person like me.

  56. TFCFM June 24, 2019 3:10 pm

    I decline to try to out-type folks who clearly have a *lot* of free time on their hands.

    My basic message has been clear and essentially undeniable from my original comment through the present, and all the words and insult shed to the contrary don’t change that. To wit:

    Technology (and patent attorney word-smithing) has out-stripped the version of section 101 written in 1952 for the simple reason that certain technologies (e.g., software and molecular genetics) have developed in ways not clearly foreseen in 1952.

    No one appears to be satisfied that judicial glosses to date (including Alice and its progeny) cause 1952-era section 101 to apply well to modern technology.

    A new/revised section 101 seems to be in order.

    Our legislature – and not our courts – should write the new/revised section 101.

    New/revised section 101 should achieve what we, as a society, wish it to achieve.

    Hand-waving, misdirection, and insult change none of these points.

  57. Anon June 24, 2019 6:13 pm

    TFCFM,

    Your insult is noted (to my taking time to thoroughly walk you through the particular points that I have taken issue with) — as is your unwillingness to actually reply on point, and only repeat your half-truth tells me that you are indeed not serious about talking on the merits.

    As I said, this is your choice, and while I can lead you to the well of wisdom, I cannot make you drink.

    But you should note that ALL of my points are accurate – in law, in fact, and in capturing the rhetorical tricks that you have engaged in.

    You might want to address the issues that I have presented, as you can be certain that if you employ the same tactics in the future, you will see me calling you out in the same manner.

    If you don’t take the time to get things right at the present time, how will you find the time after you invest in your erroneous views?

  58. B June 24, 2019 7:35 pm

    @ TFCFM “I decline to try to out-type folks who clearly have a *lot* of free time . . . “

    , Please, you are such a phony. Twice I have asked you what kind of “real” patent applications you have ever prosecuted. Twice you have avoided the question. Now you dare condescend to avoid explaining your constant blunders. Pathetic and greasy

  59. Anon June 25, 2019 6:10 am

    B,

    Worth noting what is possibly TFCFM’s parting shot for what it is:

    Hand-waving, misdirection, and insult change none of these points.

    As I painstakingly mapped out, TFCFM’s “points” are a mixture of valid points that no one disagrees with (the Legislature is the proper branch of the government to write the statutory law that is patent law) with his plainly invalid points (pretty much everything else that TFCFM states).

    Note that it is he that so thoroughly employs that which he accuses everyone else of.

    I clearly explained that I provide no personal insult whatsoever, and any insult I do provide is to the “law” and the manner of presentation of the “law” that TFCFM engages in — items eminently open to critical thinking and thus criticism.

    Likewise, i painstakingly dispense with the handwaving and misdirection that TFCFM nigh constantly engaged in. His “answer” to the detailed calling out? A “well, I can’t be bothered.” Notice that this follows his earlier accusation (equally misplaced) that I was the one “glossing over” something. Without actually addressing anything on point, TFCFM attempts to dodge first with an inaccurate accusation of “glossing over” and then with an inaccurate mischaracterization of “detail is just too much time to type.”

    We have here a much more polite but equally non-effective “Malcolm Mooney.”

  60. B June 25, 2019 10:16 am

    @ Anon “We have here a much more polite but equally non-effective “Malcolm Mooney.”

    Totally uninformed, fake patent attorney, and even the same “I patent only real inventions.”

    Likely, its Mooney

  61. TFCFM June 25, 2019 11:34 am

    As I suggested, believe whatever you like (whatever gets you through your life).

    I’m happy to discuss the points I actually raised with anyone who’s interested. I’m not interested in discussing unrelated “issues” raised by hand-wavers.

  62. B June 25, 2019 12:26 pm

    @ TFCFM “I’m happy to discuss the points I actually raised”

    Okay, what sort of “real” inventions do you patent?

    You did raise the issue.

  63. TFCFM June 25, 2019 12:34 pm

    That’s plainly a peripheral issue. Whether the issues highlighted in #10 and #59 were written by me, by a patent attorney much smarter/dumber than I am, or accidentally by one of an infinite number of monkeys attempting to write Hamlet, the issues stand on their own. Peripheral issues do not bear on those issues.

  64. B June 25, 2019 12:59 pm

    @ TFCPHONY “That’s plainly a peripheral issue”

    No, it goes to the heart of your credibility. I’m calling you out for what you are.

    Please teach all of us poor schmucks who are just too ignorant to appreciate your brilliance what a “real” patent is.

  65. TFCFM June 25, 2019 1:03 pm

    I decline to participate in your sneering and regret having started down that path earlier. You should, if you like, continue assuming that I am one of the teeming multitude of folks who “pretend” to be patent attorneys (to impress gurlz? for the vast financial rewards? just cuz?).

    If you’d like to discuss substance, as I mentioned, I’ll be pleased to do so.

  66. B June 26, 2019 2:04 am

    @ TFCFM “I decline to participate in your sneering . . . ”

    I’m not sneering, I’m mocking you. That should be obvious. As to discussing substance, you’re completely ignorant. I’m sure that there’s a Dungeons and Dragons forum somewhere where you can play make-believe.

  67. Anon June 26, 2019 8:27 pm

    If you’d like to discuss substance, as I mentioned, I’ll be pleased to do so.

    Unless of course, that discussion is too painstakingly accurate, and then you will dismiss it as either “gloss” or “too detailed” but in any regards, to be merely “peripheral” (without actually explaining what is and what is not peripheral, as you mangle the foundations of patent law to suit your own feelings and projections of what “any sane practitioner would view.”

    TFCFM, there is no “there” in your views. You want this type of “candyland” vision completely dissociated with reality, and then lay into a vast hand waving and insult campaign when YOUR views are explicitly called into question.

    Substance? The only item of substance that you have offered that IS on track is that Congress is the appropriate body for writing the statutory law that is patent law. Nothing else that you have said holds water. Please do not pretend that you want to discuss substantive points when you clearly do not.

  68. Art Gardner June 27, 2019 10:42 am

    I have only been an IP lawyer for 31 years, so my views are limited by my brief experience. But it seems to me that our IP law is struggling with how (or even whether) to protect certain types of technology — types of technology that were inconceivable when the Constitution was drafted or even when the Patent Act of ’52 was enacted. For example, when I was a pup, software “inventions” were largely not patentable, but copyright seemed like it provided good protection. The copyright protections then waned and patent protections waxed (albeit with much back and forth). Alice is just the latest in a long line of wandering efforts by the courts to figure this out (and does so in ways that are inconsistent and unhelpful).

    My father-in-law seems to have been involved in in the 1950s or 1960s in the development of run-length encoding, which is now widely used as the fundamental basis of most data compression. At various times since, he would have been entitled to no IP protection, limited IP protection, or substantial IP protection. So he could have been rewarded slightly, greatly, or not at all for a very significant advance in the art, depending on the state of the law at the time of the “invention”.

    As a society, we should decide whether we want to reward such advancements with patent protection and, if so, let’s modify our statutes to make more clear that software and computer implemented inventions can, under appropriate circumstances, be entitled to a patent.

    The courts’ swinging back and forth over the last few decades leads to much frustration and uncertainty (some of that frustration can be seen manifested in many comments to this article).

    In short, we should modernize our statutes to reflect the modern world in which we now live.

  69. B June 27, 2019 12:40 pm

    @ Art Gardner “I have only been an IP lawyer for 31 years, so my views are limited by my brief experience. . . . For example, when I was a pup, software “inventions” were largely not patentable, but copyright seemed like it provided good protection. . . . Alice is just the latest in a long line of wandering efforts by the courts to figure this out (and does so in ways that are inconsistent and unhelpful).”

    Hello Mr. Gardner. When I was in law school I had some brilliant teachers. None of them could make sense of the Benson case, and upon reading Benson it was apparent to every 3L night student that the opinion is total vacuous garbage.

    I get your view and why. By the mid 1980s the Supreme Court had issued hopelessly tangled and conflicting 101 decisions no one could make sense of, but by virtue of Diehr at least there was some sanity. With all this in mind, I’ve written and prosecuted near endless software and communications patents. I don’t see what exactly needs updating in the statutes other that embedding language to tell the courts they’re not entitled to rewrite the statutes from the bench.

    All that said, I’m filing a petition for rehearing with the question: “Are claims covering computer-based processes that do naught but receive and process data to produce useful information patent eligible?” Because the Federal Circuit has answered the question both yes and no this question is actually going to the Supreme Court.

    I would appreciate your view on the question.

  70. Art Gardner June 27, 2019 3:22 pm

    B, in my view much of software should be patentable in some manner. Take the old-time bubble sort we learned in programming classes. It was just a way to manipulate data and get a result. Yet, how could one argue that the bubble sort wasn’t useful? At the time it was developed, it probably was not patentable, despite the fact that it was a tool that countless programmers used. But the person who developed it should have been eligible for patent protection, in my view.

    But what do I know? I’ve forgotten more about programming than I ever knew! LOL!

  71. B June 27, 2019 3:32 pm

    Bubble-sort is the kind of software of Enfish and Berkheimer where a machine is arguably improved.

    I would like your learned opinion on, for example, Electric Power Group where the claims were directed to processing power grid data to produce a single visual indicator.

  72. Art Gardner June 27, 2019 4:33 pm

    B,
    The Electric Power Group claim should be patentable, in my view. Sure, under prevailing jurisprudence it might not be. But ideally it should be patentable. I note that at its core, what the claimed invention is doing is taking a disparate collection of data and turning that into a composite measurement that a human operator can relate to and use. Whereas the raw data is fairly useless to a human operator in real time because of its complexity, volume, and granularity, the composite measurement acts as a sort of score that a human operator can relate to. It seems quite useful to me and I see no reason that a society should not allow one to patent such. Calling it an “abstract idea” is mere labeling so as to render it unpatentable. If a court wanted to call the bubble sort an abstract idea, the court could deny the bubble sort patent coverage too.

  73. B June 27, 2019 5:10 pm

    @Art Gardner “Calling it an ‘abstract idea’ is mere labeling so as to render it unpatentable”

    And in those fourteen words you’ve perfectly described the Federal Circuit’s 101 jurisprudence.