The Supreme Court is More Interested in Being Right Than Shedding Light on 101

By Gene Quinn
January 14, 2020

“Despite everything, the Supreme Court is content because they will not admit they are wrong, nor will they admit that their precedent is completely incongruous and inconsistent. There is no way anyone can apply all Supreme Court precedent on matters of patent eligibility. Some precedent must be ignored in every decision.”

https://depositphotos.com/4033566/stock-photo-lost-in-the-dark.htmlYesterday was a dark day for patent eligibility in America. The United States Supreme Court denied certiorari in five more petitions relating to patent eligibility challenges. Based on our count, this brings the total number of patent eligibility petitions denied by the Supreme Court to at least 48 since the Court issued its controversial, if not catastrophic, decision in Alice Corporation vs. CLS Bank, 134 S.Ct. 2347 (2014).

Obviously, the Supreme Court is perfectly comfortable with the status quo as it pertains to the law of patent eligibility. This reality evokes myriad emotions, ranging from despair to outrage to resentment to cynicism to exasperation and finally to a begrudging acceptance. Even with Justice Gorsuch hiring clerks with an intellectual property background – an extreme rarity at the Supreme Court – there seems to be no willingness or desire to clean up the mess this Court created when it ignored the doctrine of stare decisis, several generations of well-established law, and the 1952 Patent Act itself, which had been interpreted by the Supreme Court based on the explicit language of 35 U.S.C. 101 and the legislative history to make “anything under the sun that is made by man” patent eligible. Diamond v. Chakrabarty, 447 U.S. 303 (1980) (citing S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H. R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952)).

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Still Fumbling in the Dark

There have now been at least four-dozen opportunities to shed much needed light on the meaning of abstract idea, a term that neither Supreme Court nor the Federal Circuit have intentionally left undefined. See Enfish, LLC v. Microsoft, Corp., 822 F.3d 1327, 1334-35 (2016). It is alarming that the term abstract idea has remained undefined although it is central to the so-called Alice/Mayo framework. Indeed, patent examiners and judges must determine if a software patent claim is directed to an abstract idea. How can one know if a claim is direct to an abstract idea if the Supreme Court and Federal Circuit refuse to define the key defining term to the inquiry? Based on any logical interpretation of the law the standard is hopelessly infirm due to ambiguity, yet the Supreme Court is content.

At least four-dozen opportunities to shed much needed light on the meaning of significantly more, a term that neither the Supreme Court nor the Federal Circuit have ever defined although it is central to the so-called Alice/Mayo framework because patent examiners and judges must determine if a claim that is directed to a law of nature, natural phenomenon or abstract idea adds significantly more such that the claim is inventive. To the credit of the United States Patent and Trademark Office they have compiled a list of cases and attempt to define significantly more by examples, but the nature of innovation means each innovation is different. Key terms to the decisional framework not being defined is a gross dereliction of duty, yet the Supreme Court is content.

The refusal to define abstract idea and significantly more is just the tip of the iceberg. The Supreme Court also refuses to define the difference between law of nature and natural phenomenon, saying they don’t need to make a distinction. The Supreme Court has also usurped Congressional authority in the Alice/Mayo framework by pulling both novelty and nonobviousness into the section 101 analysis, which allows patent examiners and judges to determine inventiveness (i.e., both novelty and nonobviousness) without comparing the claimed invention to ANY prior art. Further still, the Supreme Court instructed inferior courts and decision makers not to interpret its 101 decisions in a way that would swallow all of patent law, which is precisely what has happened.

And how can anyone know what a claim is directed to, and whether that claim contains significantly more, such that it demonstrates an inventive concept, without doing a full claim construction? The answer is simple – it is impossible to know what a claim covers in terms of inventive concept or is directed to in terms of subject matter without a thorough analysis of the claims, the specification, the prior art and any offered extrinsic evidence. None of that happens when patent claims are denied or invalided as lacking patent eligible subject matter under 35 U.S.C. 101.

Embracing the Incongruous

Despite everything, the Supreme Court is content because they will not admit they are wrong, nor will they admit that their precedent is completely incongruous and inconsistent. There is no way anyone can apply all Supreme Court precedent on matters of patent eligibility. Some precedent must be ignored in every decision, whether it is directly conflicting eligibility precedent, or precedent that says novelty and nonobvious is not to be conflated with patent eligibility. In fact, both the requirement to conflate novelty and nonobviousness (e.g. Mayo) and the requirement that eligibility exclude matters of novelty and nonobviousness (e.g. Diehr) remain good law according to the Supreme Court. Obviously, statements that are completely inapposite cannot be both followed, but that is the mess the Supreme Court has made of patent eligibility specifically, and patent law more generally.

Clearly, the Supreme Court wants Congress to fix the mess they have created. Meanwhile, software suffers, with artificial intelligence and machine learning going overseas. And now we definitively know that medical diagnostics are not patentable in America. These are dark days for patents on commercially relevant technology of consequence in America.

The Four Horsemen, Not Innovation, Advance

One has to wonder if the Supreme Court is capable of appreciating the chaos that has befallen the industry thanks to the Court’s apocalyptic series of patent eligibility cases. Ironically, as Adam Mossoff has commented, the four cases (Bilski, Myriad, Mayo and Alice), like the four horsemen of the Apocalypse, have brought destruction in their wake, at least for America. Patent filings are down at the USPTO at a time when they are significantly up all across the world, and not just in Europe and China, but in Africa and the Middle East too. This lost decade in America has already and continues to set the stage for innovation dominance outside the United States. Well done, SCOTUS!

While it has become cliché for the Supreme Court to deny further involvement in patent eligibility as if the law is clear, this latest round of denials by the Supreme Court is different. Continuing to allow medical diagnostics to remain patent ineligible in America is not just bad law – it is stupid. You’d expect a bunch of Ivy League educated jurists to be smarter. Apparently not.

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Copyright: justinkendra 

The Author

Gene Quinn

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

Warning & Disclaimer: The pages, articles and comments on 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 86 Comments comments.

  1. angry dude January 14, 2020 3:08 pm

    “Some precedent must be ignored in every decision”

    Let me decipher it for the the rest of us without JD degree:

    There is no Patent Law in this country anymore as any US patent on pretty much anything (except the Bunch-o-Balloons… er.. maybe) can be declared invalid based JUST on 101 patent eligibility – the EASIEST way out of litigation for all kinds of infringers
    Forget about patent validity challenges based on novelty (new “prior art”) or non-obviousness, or actual infringement or non-infringement contentions and claim construction …. NOT PATENT ELIGIBLE. PERIOD.

    Mechanical drive shafts, garage door openers etc. etc. etc. are now “abstract concepts”
    and I’m not so sure about Bunch-o-Balloons anymore…

    BUT what it means for the Patent Board in particular is that there is no such profession as “patent attorney” in this country anymore
    Anyone can be “US patent attorney” and produce better results than any of you
    No legal education, no case law study is needed anymore
    Complete chaos
    Wild Wild West

  2. Pro Say January 14, 2020 3:23 pm

    “Stare decisis only applies . . . when it suits our (unconstitutional) mood.”

    – SCOTUS

  3. MaxDrei January 14, 2020 3:56 pm

    My suspicion is that the Justices declined cert because they think:

    1. that it’s the job of the Federal Circuit, not that of a Supreme Court, to flesh out what is or is not an “abstract idea”; and

    2. on medical diagnostics they are embarrassed by their own failure but loth to re-visit, so soon after their own debacle. The Justices have been assured (I suspect) that the remedy lies with inventors: they should simply draft claims more thoughtfully. Time, the great healer, as it were. “Least Said, Soonest Mended” they tell themselves. Not to mention “When in a hole, stop digging”.

  4. Paul Cole January 14, 2020 4:05 pm

    It is gratifying to find how many things in this post follow comments that I have been making for many years – claim construction in particular.

  5. Curious January 14, 2020 4:06 pm

    “a term that neither Supreme Court nor the Federal Circuit have intentionally left undefined”
    Double negative that is the opposite of your intended meaning? Feel free to delete this post afterwards.

  6. BP January 14, 2020 6:44 pm

    SCOTUS intellectuals prefer questions like: “Whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.”

    Petition Granted, November 2019.

    Prospective holding: As “.com” is an Abstract idea under settled intellectual property law*, it conveys something more than just “booking” though we can’t say exactly what that something is; accordingly, “booking.com” can be registered as a trademark.

    *We have held that anything having to do with software (i.e., “.com”) is an Abstract idea and, while software is ineligible for patenting, a party may find suitable and valuable intellectual property protection for the “brand” of software under trademark law. We also find support in RFC 920 (1984), relating “.com” to the now patent ineligible Abstract idea of the ARPA net:

    While the initial domain name “ARPA” arises from the history of the
    development of this system and environment, in the future most of the
    top level names will be very general categories like “government”,
    “education”, or “commercial”. The motivation is to provide an
    organization name that is free of undesirable semantics.

    Note that our holding today in Booking.com “is free of undesirable semantics” as were our opinions in Mayo and Alice.

    Maybe it is best to leave SCOTUS out of the 101 debate. Perhaps they see no possible way to overcome their gross ignorance as fixed in Mayo and Alice. Let them settle the easy questions like in Booking.com, that’s their speed.

  7. angry dude January 14, 2020 7:47 pm

    Max Drei@3 and Paul Cole@4

    “the remedy lies with inventors”

    Dudes,

    The remedy lies with the Special Prosecutor appointed to investigate and prosecute HIGH CRIMES of the so-called “justices” and “judges” and congress critters and PTAB APJs etc. against the Constitution of the United States of America

    This is HIGH TREASON AND HIGH CORRUPTION … make no mistake

    The beneficiaries and financiers of this are a handful of SV multinationals AND China

    To blame poor mom-and-pop “garage inventors” for this sorry state of affairs is immoral to put it very mildly…

  8. David Lewis January 14, 2020 11:18 pm

    Although I essentially agree with this article. The one silver lining in these denials is it is, potentially, far better if Congress cleans up the mess than the Supreme Court. Because if the Supreme Court cleans up the mess, then many whom filed, wishfully, under the old case law, might find that they have spent a lot of money for naught ( and it sure would have been good to have clarity earlier), as happened after Alice, for example. However, Congress can grandfather in those whom filed under the old case law, so that their actions do not negatively affect them (of course we have been waiting since at least the Flook decision (many decades) for Congress to step in, but that has not happened, yet (although there are some indications that it may finally happen).

  9. MaxDrei January 15, 2020 3:53 am

    Paul Cole at #4 mentions claim construction. So I went back to Gene’s text and picked out this:

    “.. it is impossible to know what a claim covers in terms of inventive concept or is directed to in terms of subject matter without a thorough analysis of the claims, the specification, the prior art and any offered extrinsic evidence”

    Some might argue that there is nothing that drafters and filers can do, to stave off premature failure of an expensive patent application under 35 USC 101, before any such analysis even starts. I disagree. Just as long as the invention can be presented in the specification as the solution to a technical problem, and the claims are then drafted to fit that “story”, all should be fine. The difficulties for prosecution start when what is claimed is a statement of the problem to be solved, as opposed to the invented solution. Agreed?

  10. Anon January 15, 2020 5:12 am

    all should be fine

    The Alfred E Neuman award of the day goes to…

  11. MaxDrei January 15, 2020 7:36 am

    I had to Google “Alfred E Neuman”. Never heard of him. His face though; that I did know. Thanks, anon, for the tip.

    I see that the famous face was described by its discoverer (Kurtzman) as a face that “didn’t have a care in the world, except mischief”. As you know, in my commenting, I try to provoke. So if I may, I’ll take the Award as a compliment.

    But more seriously, the ongoing debate about eligibility and drafting will throw a spotlight on the extremely unfortunate contradiction between drafting RoW style and drafting US-style (as counselled so exhaustively by David Boundy in his recent Paper on “Maximising Patent Value”). I think that any such spotlight would also add value.

  12. Concerned January 15, 2020 7:41 am

    MaxDrei:

    My claims do fit the story of solving a problem beyond the reach of experts and working professionals for decades, the examiner admits the same in writing. Then the examiner states no practical application.

    Apparently claims and solutions that bring a situation into Federal and State law compliance and minimizes financial hardships/loss are not a practical application.

    Dusclaimer: The examiner did toss or not address 11 of the 14 meaning limitations in the representative claim to arrive at his conclusion and to fit “his” story.

  13. Joachim C Martillo January 15, 2020 8:08 am

    Senator Tillis told me the essay entitled, “Preface: Fixing § 101 Requires Fixing § 100” was helpful.

    At this point it is necessary for Congress to tell SCOTUS what an Abstract Idea is within a Constitutional originalist framework.

    My approach to § 100 may not be correct, but it is a starting point and better than whining about SCOTUS’ unwillingness to clean up its mess.

  14. MaxDrei January 15, 2020 9:44 am

    Concerned, from your own words:

    “…bring a situation into Federal and State law compliance and minimizes financial hardships/loss”

    I conclude that the problem solved by your claimed invention is not “technical” by which I mean, not one to be addressed by a person of ordinary skill in a particular field of technology. The international Agreement (GATT-TRIPS) that the USA has ratified, and to which it subscribes, limits patents to inventions within a “field of technology”.

    The USPTO Examiner is serving the American public, when judging whether or not, in your case, to issue a patent. I’m not surprised that the Examiner remains unconvinced.

  15. Anon January 15, 2020 10:56 am

    As you know, in my commenting, I try to provoke. So if I may, I’ll take the Award as a compliment.

    That would be a mistake. “Provoke” by throwing crap against a wall to see what sticks is NOT a good thing. Much better “provoking” (and much more inte11ectually honest dialogue) comes from some recognizing of the issues within the US Sovereign and our laws under discussion. How long now have you “provoked” with your penchant for saying in effect, “here, my glasses work for me, why don’t you use them?”

    Please do not be inte11ectually lazy (to give you an unreasonable level of the benefit of the doubt) or inte11ectually dishonest. NOT taking the time to discuss the US law and its issues on the terms as employeed within the US Sovereign is simply not helpful and tend to obscure rather than illiuminate. One does NOT see that you even grasp the issues at hand with the manner in which you post.

  16. Mark Nowotarski January 15, 2020 11:01 am

    Building on Anon @10 (and I do remember who Alfred E. Neuman was), it seems to me that the best way to address the situation is to embrace the fact that the U.S Supreme Court wants the 101 inquiry to be inherently subjective. They want it to be based primarily on the views and opinions of whoever is reviewing a case. They don’t want that reviewer to be unduly bound by prior precedent.

    So let’s get with the program. The sooner we accept this new reality, the sooner we will be able to adapt to it, and the better we will be able to serve our clients.

  17. Jam January 15, 2020 12:21 pm

    The courts and congress are not safe institutions with which to trust your rights as a small inventor. The courts are more likely to favor the side with the most amicus briefs, which generally is the side with the most money. Congress favors the side with the most campaign contributions. Altruism is nice, but not nearly as nice as campaign contributions. If Big Tech campaign contributions outweigh those of small inventors, then one may expect that the minority of Big Tech companies to be continued to be protected from the tyranny of the majority of small inventors.

    Since the courts have not defined the limits of abstract ideas and natural laws, two fundamental approaches are available. Treat everything as a judicial exception unless the courts say they are not. Or treat nothing as a judicial exception unless the courts say that they are.

    More action is needed from the executive branch to switch over to the second side (i.e., nothing is abstract unless the courts explicitly hold otherwise on a case by case basis). The USPTO should limit the scope of abstract ideas and natural laws exclusively to the facts of those cases. I.e., if an applicant’s or patentee’s claim passes statutory 101 and is patentably distinct from the claims held to be directed to abstract ideas or natural laws, then the claim should be patent eligible.

  18. Joachim Martillo January 15, 2020 12:37 pm

    Here is my suggestion for basic Title 35 changes:

    Fixing the US Patent System (Part I): Title 35 Changes

  19. MaxDrei January 15, 2020 1:36 pm

    anon, at # 15, asks me:

    “How long now have you “provoked” with your penchant for saying in effect, “here, my glasses work for me, why don’t you use them?””

    to which I would answer:

    Not as long as Svante Arrhenius started provoking with his helpful (and by now famous) empirical equation. Nor as long as Isaac Newton offered others the use of his prism, which worked for others just as much as for him, in illuminating the nature of sunlight.

    It’s a small world, these days. It’s got a lot smaller since the USA signed up to such international normalising patent treaties as the Paris Convention and the PCT. patent judges no longer shrink from borrowing useful insights from other jurisdictions.

  20. Concerned January 15, 2020 1:36 pm

    MaxDrei:

    Actually the solution is very technical. The examiner would be more convincing if his arguments would be more truthful.

    For example, the examiner arguing routine, well understood and conventional when it was proven nobody uses the inventive step in any field to include mine.

    Arguing only automates a manual process when none existed to automate or expedite in the history of commerce.

    Arguing no practical application while admitted it solved a problem of 63 years.

    Of course no facts or evidence was supplied by the examiner to rebut or support his position.

    It seems to me if a person has the law on their side, such a person would not resort to such arguments that on the surface appear not truthful or logical.

    As one contributor to this website, who has been through my entire file wrapper stated publicly on this forum “The only way I lose is if 75% of my claims are tossed and they lie”

    Well so far that appears to be the case.

  21. angry dude January 15, 2020 2:53 pm

    Mark Nowotarski@16

    “They want it to be based primarily on the views and opinions of whoever is reviewing a case. They don’t want that reviewer to be unduly bound by prior precedent”

    Dude, that’s a recipe for high corruption… especially if applied retroactively to already issued patents

    “…we will be able to adapt to it, and the better we will be able to serve our clients”

    Nope: you won’t have any (smaller) clients left as far as US patent prosecution is concerned and pretty soon – this is just NOT a good gamble to waste money on

  22. Anon January 15, 2020 4:08 pm

    MaxDrei, @19,

    Do you really think that the crap that you heave rises to a level of natural law?

    My sir, your ego FAR outstrips your intellect.

  23. angry dude January 15, 2020 5:50 pm

    Jam @17

    Dude,

    You do realize that CAFC already explicitly stated they don’t give a f$%^ about PTO’s guidance ?

    Also, about “small inventors”…

    The definition of “small” (meaning “helpless” – without financial resources to fight patent fights) inventor has gradually shifted over the last 13 years from really small mom-and-pop “garage workshops” to small-sized (e.g. 10-100 people) R&D-and patent-dependent companies to billion dollar corporations (see Sonos vs Google)

    The only large beneficiaries of the current US patent system are a handful of really giant SV multinationals like Apple, Google, Amazon, Facebook etc.

    These bad actors swallowed all of tech and all of 230-year old US Patent system

    With zillions of intended (like me) and unintended (Bunch-o-Balloons could be it ) casualties…

    But the ultimate casualty is US technological competitiveness in this (not so nice lately) global world

    Good job, scotus, cafc, congress, district courts, pto, ptab etc etc !

  24. Cathleen Rocco January 16, 2020 1:26 am

    Sadly the court is little more than the henchmen of whatever political party appointed the majority of justices, since ideology is a prerequisite to nomination.
    As is the case for politics in general, the only question one needs to ask when trying to understand what the court has done is, what political agenda does it serve. That’s the real tragedy, and one that isn’t limited to patent jurisprudence.

  25. Joachim Martillo January 16, 2020 2:19 am

    Angry Dude @23, In the US Constitutional system the CAFC follows the guidance and precedents of SCOTUS in interpreting the law while the CAFC may only defer to the USPTO in matters of fact. It breaks the system if the CAFC does otherwise. The USPTO does not receive Chevron deference.

    Advocates before SCOTUS must make sound Constitutional originalist if they are to obtain any traction.

    We know how the founders understood natural law, natural principle, and natural phenomena. We know how the founders understood praxis. We know how the founders understood what an abstract idea is. There is no mystery in the understanding of late Enlightenment thinkers. SCOTUS has strayed from original intent, meaning, and understanding even as it becomes dominated by Constitutional originalists.

  26. Joachim Martillo January 16, 2020 2:20 am

    Sorry.

    Advocates before SCOTUS must make sound Constitutional originalist arguments if they are to obtain any traction.

  27. concerned January 16, 2020 5:57 am

    Cathleen Rocco:

    Sadly agree. Add in Angry Dude’s suppositions and mix in all the legal arguments of the balance of the posters and there we are.

    And whatever recipe we call the final product, it requires arguments like what I receive in my prosecution that appear unsubstantiated and illogical as an effort to make it look like court driven jurisprudence or the examiner’s personal opinion of jurisprudence.

    I am (naively?) hoping the truth shall set us free.

  28. TFCFM January 16, 2020 11:01 am

    For all the justifiable criticism that the Supreme Court’s section 101 interpretations have drawn, it puzzles me why critics complain that the Supreme Court won’t further stir the pot by wading back into the same waters. Why on earth are we to believe that — if they’ve supposedly muddied the law in their prior decisions — ONE MORE Supreme Court pronouncement on 101 is going to suddenly crystallize and purify eligibility law in a perfect form?

    Even ignoring that fundamental question, I think it hardly advances the ball to grossly misrepresent past precedent, as here:

    GQ: “there seems to be no willingness or desire to clean up the mess this Court created when it ignored the doctrine of stare decisis, several generations of well-established law, and the 1952 Patent Act itself, which had been interpreted by the Supreme Court based on the explicit language of 35 U.S.C. 101 and the legislative history to make “anything under the sun that is made by man” patent eligible. Diamond v. Chakrabarty…

    Chakrabarty was, of course, a mere judicial interpretation (entitled to no greater deference than others, no matter how much one likes citing this line out of context), did not overturn prior 101 precedent, and did not remotely declare “anything goes” patent-eligibility-wise. Properly read, Chakrabarty stands for the (by now unremarkable) proposition that subject matter that is otherwise patentable is not rendered ineligible merely because the subject matter encompasses living matter (other, at least, than a human being… albeit for unrelated reasons developed in unrelated cases).

    That is, the reasons which precipitated the Chakrabarty decision revolved around an informal Patent Office policy had developed, denying eligibility to living things (akin to the non-judicial expansion of the “business methods exception” to eligibility prior to the State Stree Bank decision). In striking down the non-judicial no-patenting-living-things policy, the Federal Circuit’s predecessor stated in its decision, “the fact that micro-organisms are alive is without legal significance for purposes of the patent law,” which is the point that the Supreme Court affirmed — NOT “anything goes.”

    I, for one, have not the slightest confidence that the Supreme Court could — even if granted another swing after its-now-tenth? -twentieth? strike, would knock out of the park a perfectly-enunciated, utterly objective, and impossible-to-misconstrue distillation/integration of whatever incomplete thoughts the legislatures which wrote and amended 101 intended (assuming it intended such a thing at all) as the ‘outer limits’ of patent-eligible subject matter.

    Instead, several technologies (digital processing, biotechnology, human business operations) have advanced to the point where they strain the vague meaning of the mess that previous legislatures left as section 101. It is long past time for the legislature to update section 101 to clearly indicate the criteria it requires for subject matter to be eligible for the grant of a patent.

    I’m guessing that the end result is unlikely to be, “anything goes.”

  29. Model 101 January 16, 2020 11:03 am

    Apple, MicroSoft, BMW ask EU patent office to stop patent trolls article.

    https://www.ft.com/content/26230960-37a7-11ea-a6d3-9a26f8c3cba4

    I wonder how much money this will cost them?

    This leaves small inventors nowhere to run, baby, nowhere to hide!

    China?

  30. MaxDrei January 16, 2020 11:20 am

    Model 101, a few points.

    Your FT article lies behind a Paywall. But without even reading it I can tell you that there is no such thing as any EU Patent Office. The European Patent Office is an artefact of the European Patent Organisation which currently has 38 Member States including such countries as Switzerland and Turkey which are NOT EU Member States. Apple & Co are presumably petitioning the competition office at the EU Commission in Brussels. That Commission is very much interested in furthering the interests of SME’s (small and medium-sized enterprises) and has imposed record fines on global titan firms (including, if I remember right, MS and Google).

    As to greasing palms in Brussels, given that the EU Commission is an organ of 28 Member States, it is not quite so easy as in some other places that come to mind, to do it effectively.

  31. angry dude January 16, 2020 12:52 pm

    TFCFM@28

    “Instead, several technologies (digital processing, biotechnology, human business operations) have advanced to the point where they strain the vague meaning of the mess that previous legislatures left as section 101”

    Dude, have a clue, please

    How could digital (signal or image?) processing advance to strain anything other than your (and scotus) brain ?

    It’s basically the same as 55 years ago when Fast Fourier Transform was (re)-invented by Cooley and Tukey which gave a tremendous rise to all kinds of applications on then very slow CPUs.
    CPUs are a lot faster today, and we also have parallel processing algorithms implemented on GPUs, but fundamentally it’s very same technology:
    just adding and multiplying floats or integers – that’s all to it, nothing else other than human ingenuity making possible all kinds of gadgets for brainless lemmings like you to enjoy

    Model 101 @29
    “This leaves small inventors nowhere to run, baby, nowhere to hide!”

    For software or (silicon) hardware developers – there are places to hide: trade secrets and copyrights

    As for patents … fool me once – shame on you, fool me twice – shame on me

    The rest of us, guys and gals with mechanical/electrical inventions which are easy to reverse-engineer, are royally screwed

  32. Mark Nowotarski January 16, 2020 3:42 pm

    Angry dude @21 “this is just NOT a good gamble to waste money on”
    You are right, this is not a good gamble to waste money on. A patent attorney/agent that is sensitive to the new realities, however, can help increase the odds and lower the waste.

    Concerned @27 “I am (naively?) hoping the truth shall set us free.”
    Not naïve at all. Once you know the truth, the way forward is clear.

  33. angry dude January 16, 2020 7:09 pm

    Mark Nowotarski@32

    “A patent attorney/agent that is sensitive to the new realities”

    Dude,

    We are all sensitive to the new “realities” here..

    The problem is “realities” change every day…
    and BTW what you call “realities” are actually “Laws of the Land” …
    … just pause for a second to fully grasp the meaning of this

  34. concerned January 16, 2020 9:30 pm

    And how does a person that has the creativity to invent something nobody else has ever done suddenly think illogically to adjust to the sensitivity of the new realities? Something just seems inherently wrong about that thought.

    Can you imagine Spock substituting “Live long and prosper” with “Die early and poor?” Only if it was episode where the Starship Enterprise landed at 600 Dulany St, Alexandria, VA and Spock filed his patent that cured cancer, solved world hunger and eliminated war using a generic computer attached to a garage door, of course.

  35. TFCFM January 17, 2020 9:57 am

    AD@#31: “How could digital (signal or image?) processing advance to strain anything other than your (and scotus) brain ?

    Straining to make *something* positive of this, I’ll admit that you highlight that I spoke too loosely: Current controversy surrounding eligibility has not been prompted only by technological advances, but also by advances in how “over the line” patent practitioners are willing to assert eligibility. Twenty or thirty years ago, no competent practitioner would advise a client to pursue a claim directed at an abstract concept and no competent examiner would allow one. With the issuance — and subsequent misunderstanding — of “boundary-type” cases like

    State Street Bank (actual holding: subject matter is not ineligible solely because it can be characterized as a ‘business method’; misread holding: business methods are patentable subject matter) and

    Chakrabarty (actual holding: subject matter not ineligible merely because living; misread holding: EVERYTHING is eligible),

    practitioners (some ‘zealously’ representing clients, others merely fools) have pushed-pushed-pushed to expand the boundaries of what the Patent Office can be fooled into allowing. Those efforts, coupled with a statutory provision that limits eligibility to certain categories, but fails to define what the categories mean) has led to the current collisions.

    Where the legislature left boundaries undefined, the Supreme Court has been willing, on several occasions, to say, effectively, that “the legislature surely meant to exclude at least this ___ type of subject matter” (abstract ideas, natural phenomena, no-‘real’-utility, against-public-policy…). Some (quite credibly) argue that the Supreme Court has drawn these “minimum limits” to the undefined boundary wrong. It seems to me that, absent some clear, unmistakable indication of what the “right” boundary should be, the Court is becoming increasingly unwilling to do the legislative job (defining what the limits of the statutory categories are) that the legislature has neglected, so far, to do.

  36. Anon January 17, 2020 2:26 pm

    Post appears to have been lost…

  37. Curious January 17, 2020 5:10 pm

    Twenty or thirty years ago, no competent practitioner would advise a client to pursue a claim directed at an abstract concept and no competent examiner would allow one.
    Blah, blah, blah. I see you use that undefined term of “abstract concept.”

    have pushed-pushed-pushed to expand the boundaries of what the Patent Office can be fooled into allowing
    You, apparently, do not obtain patents for a living. The Patent Office issues patents only after much kicking and screaming. After about (give or take) a couple thousand issued patents to my name, I can say that the Patent Office is very unlikely to be “fooled” into allowing anything.

    Where the legislature left boundaries undefined, the Supreme Court has been willing, on several occasions, to say, effectively, that “the legislature surely meant to exclude at least this ___ type of subject matter”
    So the Supreme Court doesn’t interpret the law — they get to re-write the law. As Anon frequently points out, the power to craft patent law was given to Congress — not the Supreme Court. When garage door openers, propeller shafts, charging stations, and MRI machines are deemed patent ineligible, it is quite evident that whatever dreck the Supreme Court has come up with doesn’t pass the sniff test for most of us. Only the infringer lobby (of which I suspect you are a charter member of) wants those kinds of technologies to be directed to “abstract ideas” or “natural laws.”

    the legislature has neglected, so far, to do
    LOL … there are some politicians who would love to have you as a spokesperson. What a tool … in every sense of the word.

  38. Anon January 18, 2020 9:31 am

    Well stated, Curious.

    My post that has been lost was not as kind (and admittedly, not as eloquent).

  39. Joachim Martillo January 19, 2020 8:57 am

    TFCFM@29, SCOTUS won’t accept a §?101-directed petition for writ of certiorari only to rehash old arguments.

    To attract positive attention from this SCOTUS and to win, a party should make a Constitutional originalist argument. I know such arguments seem rather unusual in patent cases.

    [Unfortunately this SCOTUS dominated by self-avowed originalists seems nevertheless exceptionally clueless with respect to originalist theory. Just read through McDonald v. Chicago, 561 U.S. 742. While I am agnostic with respect to the individual right to bear arms, I can safely assert that the opinions are vicariously embarrassing to read. The current situation may provide an excellent opportunity for an IP lawyer to explain to SCOTUS how Constitutional originalist thinking applies in a patent case.]

    It is worthwhile to look at Diamond v. Chakrabarty, 447 U.S. 303, from an originalist perspective. Brennan’s Charkrabarty dissent was particularly silly.

    We know the understanding of many if not most founders with respect to living things qua machine. Almost all those that read French knew L’homme machine (Machine Man, 1748) by Julien Offray de La Mettrie. Jefferson explicitly agreed.

    The Patent and Copyright Clause of the Constitution is expansive.

    Yet the critical clause of the 1790 patent act leaves out process even though patent X000001 (the first US patent) includes a process in its claims.

    [The founders probably used process to signify a set of mechanical, chemical, biochemical, electrical, or electronic operations.]

    I assume the claim is allowed because G. Washington and the examiners probably considered process to be included in improvement. Because many if not most late enlightenment philosophers considered a living organism to be a machine, the 1790 Patent Act and every succeeding patent act allows a patentable claim to a synthetic living organism, which is a machine in the intent, meaning, and understanding of both the founders and also the writers of the 1790 Patent Act.

    Note that inventions in husbandry are not included in the 1790 Patent Act even though the Patent and Copyright Clause of the Constitution would certainly allow Congress to create a patent to an invention in husbandry.

    And be it further enacted, That if any person or persons shall devise, make, construct, use, employ, or vend within these United States, any art, manufacture, engine, machine or device, or any invention or improvement upon, or in any art, manufacture, engine, machine or device, the sole and exclusive right of which shall be so as aforesaid granted by patent to any person or persons…

    The 1836 Patent Act corrects omission neither of an invention in process nor of an invention in husbandry.

    And be it further enacted, That any person or persons having discovered or invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used by others before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use or on sale, with his consent or allowance, as the inventor or discoverer; …

    The Plant Patent Act of 1930 corrects the omission of an invention in husbandry from the then current patent act. It did not address the issue of patentability of a synthetic organism qua machine. This issue had already been decided during the founders’ generation by the 1790 Patent Act, and despite the complete and utter misunderstanding of the USPTO, patent eligibility of a synthetic organism qua machine properly carried through until the current day without an express decision of Congress to remove a synthetic organism qua machine from patent eligibility.

  40. Joachim Martillo January 19, 2020 1:17 pm

    I have to correct myself. In 1790 “useful art” referred to a process or method. We still use the idiom with regard to a supernatural technology like magic. A witch might innovate magical spells or magical arts, which are magical processes or methods.

  41. Anon January 19, 2020 1:38 pm

    Joachim,

    Not to pick a nit, but you are not quite correct in your historical recollection of “art.”

    The modern notion of method includes BOTH the original notion of “art,” as well as the expended notion of ‘process,’ as the Act of 1952 was meant as an expanse of statutory categories to do more than merely reflect the traditional “hard goods” categories (and the Art of bringing about a hard good item).

    So while ‘process’ certainly speaks to having a result, there is nothing in modern patent law that dictates that such a result must be a ‘hard goods’ item.

  42. Joachim Martillo January 20, 2020 3:42 am

    Anon is probably correct in his comment @41. We probably should check the legislative record. SCOTUS has implicitly assumed that the current wording of § 101 is not intended to restrict a process to a set of mechanical, chemical, biochemical, electrical, or electronic operations.

    The Constitution tasks Congress with legislatively creating the framework for Patent and Copyright Clause to have effect. SCOTUS has decided that the Founders implicitly excluded the granting of temporary exclusive rights to an abstract idea, a natural law (a natural principle), or a natural phenomenon.

    Without a Constitutional Amendment Congress cannot legislate the Three Judicial Exceptions away because with some historical support SCOTUS holds them to be Constitutional, for they were assumed or intended by the Founders.

    For this reason I recommend legislation to define the Three Judicial Exceptions in a way that is inherently Constitutional according to the thinking of SCOTUS. The Three Judicial Exceptions must be pellucidly defined in a way that is completely and incontrovertibly consistent with the late Enlightenment epistemological thinking of the Founders.

    I have put my comment@39 into an essay on Medium. This essay is entitled Arguing a Patent-Eligibility Case from a Constitutional Originalist Perspective.

    I included a pointer to two books that address Constitutional originalism and that I like as well as a pointer to other essays describing a roadmap to fix the US patent system.

  43. Anon January 20, 2020 5:50 am

    Joachim,

    Your statement of: “ Without a Constitutional Amendment Congress cannot legislate the Three Judicial Exceptions away because with some historical support SCOTUS holds them to be Constitutional, for they were assumed or intended by the Founders.

    is flat out wrong.

    That’s not how the judicial power of interpretation works for the strictly appointed power of setting the statutory law in regards to patents — or any other application of Common Law law writing.

    May I suggest that you read a copyright case (same power-allotting clause) of Golan v Holder…?

  44. Anon January 20, 2020 8:45 am

    May I also recommend a careful read of Pennock v Dialouge (and please separate holding from dicta).

    We do not need ‘promotion’ of the fallacy of the Supreme Court’s power to write statutory law (of patent law).

  45. TFCFM January 20, 2020 10:14 am

    Curious @ #37: “The Patent Office issues patents only after much kicking and screaming… the Patent Office is very unlikely to be ‘fooled’ into allowing anything.

    What a patent examiner will allow (unfortunately) depends very heavily on the individual examiner, that examiner’s skill and workload, and the skill, attentiveness, and workload of the examiner’s supervisor, where relevant.

    Curious: “… the power to craft patent law was given to Congress — not the Supreme Court.

    You and I are fully in agreement on this point. However, where Congress has left the statute silent as to important points (e.g., the boundaries of the categories laid out in section 101), the courts can appropriately “interpret” only so far before the commence “crafting” (your word – I’d prefer “legislating”) original. As to section 101, the Congress clearly meant to impose *some* limits (the categories in 101, whatever their boundaries might be) and made no effort to overturn prior case law limiting eligibility (e.g., the two cases I cited as well as others that could have been cited). The result is a statutory section that includes boundaries of unknown “location.” Looking to the statutory language, to non-overturned case law, and other relevant evidence, the courts can make *some* limited predictions about what Congress supposedly “meant” regarding the boundaries. However, drawing set-in-stone boundaries is precisely the sort of judicial legislating to which both you and I object.

    JM@#39: “…a party should make a Constitutional originalist argument… We know the understanding of many if not most founders with respect to living things qua machine.

    Meaning no disrespect, either to you or to them, “the founders’ ” understanding of patent law is utterly irrelevant. The meaning of the Patent Clause is not remotely questionable: It empowers Congress to enact a patent system (and mandates NOTHING about whatever patent system which Congress might choose to enact). Simply put, the Constitution does not mandate that section 101 include or exclude any particular subject matter. Congress could, absolutely in accord with the Patent Clause, choose to enact the current system, to make a patent system limited to advances in ladies’ undergarments, or to enact no patent system whatsoever. This line of argument is simply irrelevant.

    JM@#42: “Without a Constitutional Amendment Congress cannot legislate the Three Judicial Exceptions away because with some historical support SCOTUS holds them to be Constitutional, for they were assumed or intended by the Founders.

    This comment betrays a fundamental misunderstanding of our constitutional system and of the judicial decisions which recognized the exceptions. If you’ll go back and read Morse, Benson, Flook, Diehr, Bilski, Mayo, and Alice, you’ll note that the Supreme Court relies on the Patent Clause to support precisely NONE of these decisions. In each instance, the Court sought to interpret the patent statutes that Congress had enacted (as empowered by the Patent Clause, of course, but otherwise without relevance to that clause).

  46. Curious January 20, 2020 8:20 pm

    What a patent examiner will allow (unfortunately) depends very heavily on the individual examiner, that examiner’s skill and workload, and the skill, attentiveness, and workload of the examiner’s supervisor, where relevant.
    And your point is? From my experience, less experienced examiners are less likely to allow anything.

    the courts can make *some* limited predictions about what Congress supposedly “meant” regarding the boundaries
    Again, if Congress intended some boundaries, they would have been included in the statute. Actually, they did include some boundaries … boundaries that the Supreme Court has trampled over. Specifically, 35 USC 102, 103 are listed as conditions of patentability — 35 USC 101 is not, and conditions of patentability and 112 are the specifically enunciated defenses under 35 USC 282(b)(2)-(3) for invalidity. Somehow, contrary to straight-forward statutory claim construction that a 1L would understand, 35 USC 101 is essentially deemed a condition for patentability when that label is conspicuously absent from 35 USC 101 (yet present in 102 and 103).

    As such, when the EVIDENCE of what Congress ACTUALLY WROTE is considered, Congress didn’t intend to set any boundaries for patent eligibility. If they did for the boundaries to be relevant, 101 would have been written as a condition for patentability and those boundaries would have been explicitly stated.

    However, where Congress has left the statute silent as to important points (e.g., the boundaries of the categories laid out in section 101), the courts can appropriately “interpret” only so far before the commence “crafting” (your word – I’d prefer “legislating”) original.
    Garage door openers, propeller shafts, charging stations, and MRI machines are all machines — given ANY REASONABLE interpretation. Yet they have been deemed patent ineligible. The scope of the boundaries of the categories were intended to be broad. That is a feature — not a bug.

    As to section 101, the Congress clearly meant to impose *some* limits (the categories in 101, whatever their boundaries might be) and made no effort to overturn prior case law limiting eligibility
    If they clearly meant to impose some limits, why aren’t they in the statute? As to making “no effort” to overturn prior case law, don’t confuse the inability to get a majority of Congress to address an arcane issue (i.e., patent law) with no effort. I suspect the vast majority of Congress doesn’t understand patent law, the Supreme Court’s decisions regarding the same, and the impact of the law/decisions.

    Simply put, the Constitution does not mandate that section 101 include or exclude any particular subject matter
    The Patent Clause explicitly refers to “discoveries,” so I assume that discoveries would be something that is patentable … based upon the plain language of the Constitution. However, discoveries are oftentimes deemed patent ineligible by the Supreme Court.

  47. Anon January 20, 2020 8:52 pm

    Well stated again, Curious.

    However, you are dealing with someone that has refused to be forthright about innovation and the statutory laws and the limits of the judicial branch (no matter the title of “Supreme” when that branch is ALSO considered subject to the checks and balances as being UNDER the Constitution).

  48. TFCFM January 21, 2020 10:21 am

    RE #46

    TFCFM: “What a patent examiner will allow (unfortunately) depends very heavily on the individual examiner, that examiner’s skill and workload, and the skill, attentiveness, and workload of the examiner’s supervisor, where relevant.

    Curious: “And your point is?

    The part you quoted was simply a reply to your prior assertion:

    Curious@ #37: “The Patent Office issues patents only after much kicking and screaming… the Patent Office is very unlikely to be ‘fooled’ into allowing anything.

    That is, some examiners (typically, but not exclusively, the less-experienced ones) are easier to “fool” than others.

    Curious: “…if Congress intended some boundaries, they would have been included in the statute.

    You’d think so, but, of course Congress can (and does) enact statutes that are more-or-less sloppily written. Were that not the case, we wouldn’t need a judicial branch consisting of anything more than one highly-skilled English-language grammarian. The reality, of course, is that Congress is imperfect (even when — if ever — it goes to the trouble of trying to be perfect) at best, and Congress frequently does just enough legislative “work” to keep the country lurching and stumbling along. The problem is, of course, heightened for areas (like how crazily patent agents/attorneys in the future might try to stretch poorly-written statutes).

    Your contention:
    Curious: “Congress didn’t intend to set any boundaries for patent eligibility.
    is ridiculous on its face. If Congress did not intend for there to be any limitations upon patent eligibility, it would not have listed categories of eligible subject matter in section 101 (if it would have written section 101 at all). Even the dumbest legislator is capable of expressing “EVERYTHING is patent-eligible,” had that been Congress’ intention.

    Curious: “If they clearly meant to impose some limits, why aren’t they in the statute?

    Section 101 alone limits eligibility to certain classes of subject matter (processes, machines, manufactures, composition of matter, and improvements of these) and further limits patent eligibility to otherwise-conforming inventions/discoveries that are “useful.”

    None of these limitations is unambiguous or unambiguously-defined. (Which is, of course, why we have a judicial system — to interpret ambiguities when they occur and are relevant to a controversy). Our courts properly “interpret” statutes when such interpretation is possible — and ONLY when interpretation is possible. As we discussed above, where a court reaches the limit of interpretation of a statute, it must stop — it can (indeed, must) decide the controversy before it, but it cannot “make” law to fill the void left by Congress.

    That you or I would prefer to fill the void in section 101 in a certain way neither obligates nor empowers a court to do so. Only the legislature can do this. The Supreme Court appears to me to believe it has reached the limits of its ability to “interpret” section 101 without further guidance from Congress and without judicial legislation of “new” law. If that is accurate, then the Court is appropriately waiting for Congress to fill the gap that Congress left in the statute.

  49. Anon January 21, 2020 1:11 pm

    TFCFM,

    You seem to have an extremely difficult time with not being a Supreme Court apologist.

    Further, you seem unable to grasp that the very nature of innovation precludes the type of legislation that you appear to deign necessary for ‘Congress to do their job.’

  50. TFCFM January 22, 2020 10:28 am

    Anon: “you seem unable to grasp that the very nature of innovation precludes the type of legislation that you appear to deign necessary for ‘Congress to do their job.’

    You keep making meaningless “life is just a dream” statements like this one, and then declining to explain what on earth you even think you mean. How about explaining this one for us?

    What is the “nature of innovation” that “precludes” Congress from writing whatever “type of legislation” to which you’re obliquely trying (apparently) to refer?

    Or is life just a dream?

  51. Anon January 22, 2020 1:19 pm

    There is nothing oblique about the nature of innovation not being able to be constrained a priori as with your calls for Congress to provide ‘more clarity.’

    You act as if the nature of innovation is a foreign topic to you — which is exactly why I have pegged you as not being an actual patent attorney, and instead merely being an attorney that may have litigated some patent cases.

    You show no proclivity to understanding innovation, and act as if the entire foundation of innovation ‘must be explained’ in any post, else the poster is only mouthing some nebulous concept.

    Just because you clearly do not understand the subject matter does NOT make discussion of the subject matter to be ANY type of meaningless ‘just a dream’ state.

  52. Joachim Martillo January 23, 2020 5:08 am

    In response to comments at @43, @44, @45, & @46, I direct readers to the Judge Dyk’s concurrence in the case entitled In Re Bilski, 545 F.3d 943 (Fed. Cir. 2008).

    Judge Dyk explains how the composers of the 1793 Patent Statute understood the structure was to operate that Congress was to create under the Patent and Copyright Clause. The generation of the 1793 Statute was the generation of the 1790 Statute as well as the generation of the framing of the Patent and Copyright Clause.

    The Supreme Court has been true to the original intention, the meaning, and the understanding of the founders ever since. Sans Constitutional amendment SCOTUS will limit any future patent act Constitutionally within the original intent, understanding, and meaning of the Patent and Copyright Clause.

    When I have to argue my case before SCOTUS six to eight years hence, I won’t get anywhere with SCOTUS by arguing that SCOTUS is illegitimately creating law.

    I recommend Government by Judiciary: The Transformation of the Fourteenth Amendment by Raoul Berger to anyone that wishes to learn how one analyzes from a standpoint of Constitutional originalism. Berger specifically uses the Civil Rights Act of 1866 to elucidate the original intent, meaning, and understanding of the 14th Amendment.

  53. Anon January 23, 2020 7:24 am

    Given as the Supreme Court patent cases are not even consistent with themselves, the statement of: “ The Supreme Court has been true to the original intention, the meaning, and the understanding of the founders ever since” is false ab initio.

    You should read the actual decisions and pay attention to which individual Justices are saying what.

    Your viewpoints appear to have become wrapped up in a teleogical dream world not congruent with the one here in which legislating from the Bench has created the Gordian Knot of eligibility jurisprudence.

  54. TFCFM January 23, 2020 10:45 am

    Anon@#51: “There is nothing oblique about the nature of innovation not being able to be constrained a priori as with your calls for Congress to provide ‘more clarity.’

    ???

    Nobody is “constraining” innovators in innovating in any way they feel like doing. Patent laws are utterly irrelevant to what innovators want to do.

    On the other hand, patent laws are highly relevant to the granting of patents by a government and — patents being entirely government-created rights — governments can limit the subject matter for which they deign to award patents in any way they choose (e.g., ladies underwear invented on alternate Thursdays, as previously suggested).

    There is NOTHING about “the nature of innovation” which limits what Congress can write in a patent eligibility statute like section 101. Neither does “the nature of innovation” alter in any way the manner in which the courts must do their best to interpret the statutes that Congress has written.

    Where, as with section 101, specification of categories of eligible subject matter by Congress clearly indicates that Congress intended for their to be limits on what is eligible. Legislative history indicating that the categories were intended to be interpreted ‘expansively’ means just that — NOT that the categories written by Congress and the case law deliberately left in place should be entirely ignored.

  55. Anon January 23, 2020 2:33 pm

    Nice strawman with the “totally ignored,” as that has never been my position, and has no ill-fit with the nature of innovation (which you persist in closing your eyes to).

    As you refuse to understand the context of the law, our discussion cannot progress.

    This, I think, is your desired End at this point (although only you are worse off with such an End).

  56. Joachim Martillo January 24, 2020 5:33 am

    Anon@53,

    My comment is being overread. I am only pointing out that SCOTUS has been completely consistent at least from Le Roy v. Tatham, 55 U.S. 156 (1852) until today in asserting that Founders assumed English common law would be used to identify both inventions and also discoveries eligible for “securing for limited times to … inventors the exclusive right to their … discoveries.”

    Just as the 1866 Civil Rights Act illuminates the intention and meaning of the Framers of the 14th Amendment, the 1790 and 1793 Patent Acts illuminate the original intention and meaning that were expressed by the Founders in the Patent and Copyright Clause.

    I am hardly claiming that SCOTUS has been consistent or correct in decisions made on the basis of this assertion about the intent, meaning, and understanding of the Founders in framing the Patent and Copyright Clause. Yet we definitely know how the generation of Founders was discussing intellectual property rights. SCOTUS is probably not incorrect in its assertion with respect to original intent, meaning, and understanding of the Patent and Copyright Clause.

    At this date overturning SCOTUS’ assumption about the original intent, meaning, and understanding of the Clause is a near impossibility. Arguing for a patent law correction like the diversity jurisdiction correction of Erie Railroad Co. v. Tompkins, 304 U.S. 64 (1938), is a complete non-starter.

    On the basis of Constitutional originalism, Justices on this SCOTUS are willing correctly IMHO to express skepticism about substantial due process and incorporation doctrines. It only makes sense to argue patent eligibility on the basis of Founders’ original intent and meaning within the context of the assumptions both of early modern English patent case law and also of early modern epistemology, for both of these intellectual frameworks are the anchors of Founders’ original intent and meaning.

    For me such a strategy provides a position of strength because none of the Justices know early modern epistemology better than I do and because the majority of the Justices are likely to respond to a well-formulated Constitutional originalist patent law argument. Because Kant is the deeper more profound thinker, I would prefer to argue Kant in lieu of Locke, but I can certainly use Locke first to elucidate Founders’ assumptions of eligibility in the Patent and Copyright Clause, and then I can employ Kant to provide greater rigor to a Constitutional originalist discussion of early modern English case law and early modern epistemology.

  57. Anon January 24, 2020 7:31 am

    Not a matter of being overread, Joachim, but a matter of you using the word “consistent” when that word is simply not accurate.

    Again, read the litany of cases, paying attention to which Justices are saying what, and see the Gordian Knot that the Justices have created.

    If anything, it is you that is doing the overreading as you attempt to fit the actions of the Justices into your predetermined model. That fit just is not there. SCOTUS simply cannot be as you want them to be (your clever use of the double negative “not incorrect”).

    All that being said, I do appreciate your earnestness and pro-innovation leanings. Even as I disagree with your path, I recognize that you are choosing your path in an effort to protect innovation.

  58. Anon January 24, 2020 9:14 am

    Joachim,

    One reason that I bristle at your presentation is that you paint the Supreme Court as having no complicity in the current fiasco of patent eligibility, when that body has provided the primary fault.

    FAR too many (otherwise solid) attorneys maintain a blind spot to the naked emperors.

    I invite you and add the following to your contemplations:

    https://www.heritage.org/courts/report/against-judicial-supremacy-the-founders-and-the-limits-the-courts

  59. TFCFM January 24, 2020 10:06 am

    Anon@#55: “As you refuse to understand the context of the law, our discussion cannot progress.

    Our “discussion” can, but does not, progress because you make nothing-burger statements like “…the very nature of innovation precludes the type of legislation that you appear to deign necessary” (@#49) and then decline to explain either
    – what your word slaw is intended to mean or
    – any basis for the-assertion-you-decline-to-explain.

    I’d expect as much from a five-year-old who isn’t yet mature enough to bear being wrong or explain his/her reasoning, but not from someone purporting to “discuss” an issue. Get back to me if you’d like to genuinely discuss substance, rather than making meaningless, incomprehensible conclusive assertions.

  60. TFCFM January 24, 2020 10:28 am

    JM@#56: “It only makes sense to argue patent eligibility on the basis of Founders’ original intent and meaning within the context of the assumptions both of early modern English patent case law and also of early modern epistemology

    Pardon me for jumping into the middle of this discussion, but how can you justify this statement? It sounds to me as though you’re asserting that “the Founders’ original intent” trumps patent eligibility statements enacted by Congress. (Am I misunderstanding?)

    It seems to me that the only credible link between “the Founders’ original intent” and patent eligibility is this: “The Founders’ original intent,” as expressed in the Patents Clause of our Constitution authorized (but did not require) Congress to create a patent system to award patents (to be defined by Congress) to “secure to… inventors… the exclusive right to their… discoveries” (again, all to be defined by Congress).

    This seems to me to place an UPPER limit on what Congress is authorized to do (patents must be awarded only to “inventors” for “discoveries,” and not just because non-inventor-patent-applicant-X is a nice guy or the President’s close friend, for example). Beyond that upper limit, the Patents Clause (and, thereby, “the Founders’ original intent“) seems to me to specify NOTHING about the boundaries between eligible and non-eligible subject matter (or about where Congress might fix those boundaries).

    More simply put, how do you see “the Founders’ original intent” trumping statutes that Congress has written pursuant to the authority granted in the Patents Clause? (Feel free to explain otherwise if I’m not understanding your assertion, but please do explain why we should look to “the Founders’ original intent“.)

  61. Anon January 24, 2020 4:27 pm

    TFCFM,

    Your “Accuse Others Of That Which You Do” gambit is every bit as ineffective as that same ploy used by another over at that other blog.

    You label anything you do not like as something you need not respond to, while saying that you are perfectly willing to respond.

    Sorry, but your game is rather transparent. You refuse to engage and merely want to say that you are willing to engage.

    That you then turn around and start throwing shade about acting juvenile is beyond ludicrous. Nothing-burger, decline to explain, word slaw, five-year old, etc — these describe your antics, rather than anything that I have done or said. You clamor for maturity from me while showing none yourself.

    Maybe you should learn a bit more about the subject matter so that what (merely) appears to you be incomprehensible you can understand as basics.

  62. Joachim Martillo January 26, 2020 8:44 am

    TCFM@60, In order to adjudicate what the limits of Congressional legislative power are in defining the US patent system under the Patent and Copyright Clause, the Justices —

    1) according to the Constitutional framework of limited national government and

    2) according to the Constitutional originalist theory, which dominates SCOTUS —

    must determine what the Founders meant by inventor, (implicitly) by invention, which is a paronym of inventor, and by discovery.

    I am trying to follow the same sort of analysis that Raoul Berger used in Government by Judiciary: The Transformation of the Fourteenth Amendment by Raoul Berger when he analyzed the Constitutional meaning both of “due process” and also of “privileges and immunities.”

    If I reach oral arguments before SCOTUS in 6-8 years, it is important to realize that I carry a 22nd century particle beam weapon while SCOTUS and the opposing party (the USPTO) carry pop guns because I can think in the late Enlightenment period and in the Latin of English legal thinkers while the Justices and the solicitor are illiterates by comparison.

    In Arguing a Patent-Eligibility Case from a Constitutional Originalist Perspective I also recommended reading Fidelity and Constraint Fidelity & Constraint: How the Supreme Court Has Read the American Constitution by Harvard Law School professor Lawrence Lessig. By looking at fidelity to text and at fidelity to role, Lessig develops a phenomenological perspective on SCOTUS’ interpretation of the Constitution.

    Constitutional interpretation covers the range from 1-step Constitutional originalism through various theories of pragmatic Constitutional interpretation to living Constitutionalism. With this SCOTUS in 6-8 years, I probably will only need to concern myself with 1- and 2-step originalism. Lessig’s phenomenological analysis has an interesting consequence when one argues the Patent and Copyright Clause with respect to eligibility because fidelity to role is so much less important in the area of patent law than in perhaps any other area of law.

  63. TFCFM January 27, 2020 10:36 am

    JM@#62: “ In order to adjudicate what the limits of Congressional legislative power are…, the Justices … must determine what the Founders meant by inventor, (implicitly) by invention, which is a paronym of inventor, and by discovery.

    I don’t see arguments along these lines getting you where you want to be. Let me explain what I mean:

    As I suggested above in #60, the Patents Clause (the only “piece” of our current patent system that was specified by “the Founders”) empowers the yet-to-be-formed Congress to create a patent system (should it choose to do so), but appears to specify next to nothing about that system.

    Keep in mind that the prior English system (from which our law evolved) permitted award of patents to non-inventors for subject matter other than inventions (i.e., simply awarding a commercial monopoly to a subject, often a patron, favored by the government — usually the monarch), at least until the Statute of Monopolies was adopted in the 1620s.

    The SoM purported to limit award of patent monopolies to (something like) ‘inventors.’ However, in the American colonies, individual colonies continued to award patents to non-inventors right through and even beyond independence. (Until the Patent Act of 1790 federalized the patent process).

    By referring to “inventors” and “discoveries,” the Patents Clause of the Constitution:

    – authorized Congress to set up a patent system to award patents for inventions/discoveries,

    – did not empower Congress to set up a system to award ‘patronage’-type (i.e., not based on invention/discovery) patents (but didn’t necessarily prohibit it either, but that’s a hypothetical discussion we need not pursue, since Congress has not pursued such an end-run around the invention/discovery limitation of the Patents Clause), and

    – specified essentially nothing else about any patent system that the Congress might enact thereby leaving the details to Congress’ discretion.

    That is, eminently reasonable arguments can be made, based on “the Founders’ intent,” as embodied in the Patents Clause, that Congress was authorized to make a patent system, and that that authorization was limited (hypothetical end-run capacity notwithstanding) to an invention/discovery-based patent system. There appears to me to be no credible argument that “the Founders” specified more than this.

    That is why I doubt the efficacy/credibility of arguments relating to what “the Founders” wanted or would-have-wanted regarding the boundaries of patent eligibility (or the definition of prior art or what the deadline for responses should be or what color the patent office exterior should be…). They assigned the enact-an-‘invention’-based-patent-system-if-you-want-to job to Congress and said nothing more. That appears to me to be the limit of their “intent.”

    If you were to pursue the “Founders’ intent” line of argument, it seems certain that *someone* will likely present counter-arguments like those I summarize here. This is why I wonder how you’d reply.

  64. Joachim Martillo January 28, 2020 6:22 am

    The Patent and Copyright Clause refers neither to patents to technological phrônêsis nor to copyrights to intellectual opera (pl. operae).

    The Patent and Copyright Clause is anachronistically and retrospectively named. Without research into contemporaneous extrinsic sources, its meaning and its intent is obvious only via ex post facto and metaphorical sleight of hand, hand waving, or sophistry. Without understanding the clause as the Founders understood it, we don’t have a clue about the nature of the power that was granted to Congress.

    Systematic intellectual property legal regimes first appear during the Enlightenment. Without getting into the heads of the Founders, it is pure anachronism to think we understand the Patent and Copyright Clause as the Founders did. We even name it in a misleading fashion, and modern legal thinkers don’t even understand late legal Latin well enough to have full access to the legal thought of the Enlightenment. Implicitly my first sentence points out that it is easier to discuss intellectual property rights in classical Latin and in philosophical Greek than in English, which is impoverished relative to these languages both in technological specificity and also in philosophic precision.

    From the 1790 and the 1793 Patent Acts, we can surmise that the Founders analogized intellectual property rights to real estate property rights.

    If one reviews state and commonwealth land law of the time period, we find that there was often certain real estate property that could not be privately owned.

    It is not unreasonable to infer as SCOTUS does that certain intellectual property cannot be privately held just as certain real estate property cannot be privately held.

    When we look at the extrinsic sources describing Founders’ thinking about invention and discovery, we find that the Founders’ generation had a precise definition of an abstract idea.

    Because I will be arguing before SCOTUS dominated by Constitutional originalists, I will introduce the Founders’ definition of abstract idea and will have a good shot at winning against the USPTO and at making eligibility doctrine rational as a secondary effect.

    I have also proposed to Senator Tillis that 35 U.S. Code §?100 (Definitions) be modified to reflect a Constitutional originalist understanding of claimable inventions and discoveries. You can read my proposal here. The modifications are not perfect, for I has not yet worked out how to fit synthetic sapience (a research project) into the Founders’ meaning and intent. Fortunately I have approximately 6-8 years to work out the details and to discuss my proposals with knowledgeable IP professionals.

    While my proposed version of §?100 appears extremely limiting, it is actually quite expansive, and no modern SCOTUS justice would have the guts to override the proposed definition of abstract idea found in (proposed) §?100 (a) (4).

  65. TFCFM January 28, 2020 10:20 am

    JM: “Without research into contemporaneous extrinsic sources, its meaning and its intent is obvious only via ex post facto and metaphorical sleight of hand, hand waving, or sophistry. Without understanding the clause as the Founders understood it, we don’t have a clue about the nature of the power that was granted to Congress.

    I don’t mean to dissuade you from trying to make the arguments, but I wish you luck (on the theory that you’re really going to need it) getting a US court or legislature to move off from the notion that “the Founders” authorized Congress to make nearly whatever patent system they liked.

    I don’t see a court or a legislature attempting to play, “let’s imagine what ‘the Founders’ would do if THEY had created a patent system, instead of assigning the job to Congress.” I’m not 100% certain that I’m right on that prediction, but I’m pretty sure that I am.

    It seems to me that what “the Founders” might have done (irrespective of how and by whom their minds are proposed to be read centuries later) is simply irrelevant to what Congress DID when it enacted our current patent statutes. There seems to me to be no serious argument that Congress acted beyond its constitutionally-enumerated (and “Founder-intended”) powers when it created the Patent system.

    I suspect that you’ll find more support for your line of reasoning if you can better explain (to others, if not to me) why folks should care more (or at all) about what “the Founders” hypothetically-might-have-done than about what Congress validly did.

  66. TFCFM January 28, 2020 10:37 am

    Looking at what I just wrote, it seems more ‘negative’ than I intended. Kudos to you for trying to mold your arguments to what you perceive the Justices to care about (even if I think your perception is, perhaps, off a bit).

  67. Joachim Martillo January 28, 2020 11:41 am

    Has any other approach moved SCOTUS to explain its definition of abstract idea?

    The article below suggests that five Justices (Thomas, Gorsuch, Roberts, Alito, and possibly Kavanaugh) might be inclined toward grant of a petition for writ of certiorari if the petition is couched in originalist language.

    [Trump might even receive an opportunity to appoint another justice before he leaves office.]

    Which Justices are Originalists?

    If five justices respond to the originalist language of the petition, I have my foot in the door. I will be able to make originalist and other arguments that might be effective.

  68. TFCFM January 29, 2020 10:17 am

    JM: “If five justices respond to the originalist language of the petition, I have my foot in the door. I will be able to make originalist and other arguments that might be effective.

    I wish you the best of luck.

    My skepticism, however, is rooted in doubt that any Justice (never mind any lower court) will view “originalism” (relating to “the Founders,” at least) as a proper lens through which to interpret a statute enacted in 1952. Courts might well find interesting the ‘original’ views of the legislature in 1952 — but even then, courts tend to downplay the significance of legislative history, seeing how it often fails to accurately or reliably capture “the sense of the entire legislature” (and how statutes are often enacted without there so much as BEING a unitary “sense of the legislature” as to precisely what the statute was “intended by the legislature as a whole” to mean).

    This, I think is the fundamental problem underlying section 101 and eligibility jurisprudence: Congress didn’t really have a perfectly-clear, fully-formed idea of what they, collectively, intended to be eligible and what ineligible (either in terms of particular technologies or in terms of a well-defined ‘test’ to apply to new/advanced technologies).

    Given the technologies of the day, the 1952 legislature enacted an eligibility standard that was “good enough” for the times — and they did so without clearly disturbing prior judicial holdings, even though they undoubtedly could have limited or overturned any such interpretation they wished. As a result, we’re left, over half a century later, trying to apply to far-more-progressed technologies a poorly-written, not-thought-through legislative standard that is increasingly difficult to apply to technologies which essentially did not exist when the statute was enacted.

    It’s for this reason that I think that it’s irrelevant what sorts of technologies the likes of James Madison, John Adams, Alexander Hamilton — or even Ben Franklin — thought that Congress should or should not make patent-eligible in the event the Congress chose to exercise the power to make a patent system as they authorized it to do in the Constitution. Even if we could read these minds and the minds of other “Founders,” such mind-reading is irrelevant to what the Congress enacted in 1952.

    Simply put, the meaning of the 1952 statute seems to me an issue for which “originalism” (dating to any earlier date, anyway) is simply irrelevant.

  69. Anon January 29, 2020 11:01 am

    TFCFM (once again) pronounces: “Congress didn’t really have a perfectly-clear, fully-formed idea of what they, collectively, intended to be eligible and what ineligible (either in terms of particular technologies or in terms of a well-defined ‘test’ to apply to new/advanced technologies).

    And once again, the answer is that the nature of innovation itself makes ANY such desire as TFCFM professes to have an impossibility.

    This is precisely why the clear and unambiguous “Wide Open” nature of 35 USC 101 is written as it is written.

    Two and only two requirements are meant to be included, and two and only two requirements are CLEARLY included:

    1) The innovation is to be claimed in at least one of the (intentionally broad) categories.

    2) The innovation must provide utility within the Useful Arts.

    Nothing more IS there in 35 USC 101. Nothing more NEED BE there in 35 USC 101.

  70. Anon January 29, 2020 12:29 pm

    Joachim,

    I have finally had a chance to read your linked Originalist article – thank you for that.

    However, you may well be banking TOO much on the tool that you know well, and may not be considering enough either your audience or more important thrusts.

    For example, one of the comments to the article that you linked to had this perceptive view:


    In any event, all talk of “who” is originalist is beside the point. what matters is whether or not the Jurist will do his / her *duty* to interpret the law as written and not infuse that law with their own policy preferences.

    The use of the Kavanaugh Scissors may well be more direct and more fruitful in cutting the Gordian Knot created by the very Court that you aim to address.

  71. Joachim Martillo January 31, 2020 9:57 am

    TCFM@68,

    When SCOTUS attempts to determine what the US Constitution gives Congress power to legislate, original meaning and interpretation is never irrelevant. Please take a look at this passage from HLS Professor Lawrence Lessig’s Fidelity and Constraint, p. 60.

  72. Joachim Martillo February 2, 2020 1:12 pm

    Anon@70,

    I like to argue in the alternative. I might argue both the Kavanaugh Scissors and also Constitutional originalism or a combination thereof. I have ~6 years to work out a strategy. (If you are curious how I argue before an appellate court, you can take a look at this appeals brief that I wrote for the Commonwealth of Massachusetts Appeals Court in the controversy over the ownership of the patent application that I co-wrote in 1991 for my invention of modern cloud computing. It’s a case about a patent application. Yet it involves no substantive patent law. Thus I argue the case in Massachusetts court.

    As I understand, the Kavanaugh scissors consist of the following steps:

    a- the Court finds a decision egregiously wrong
    b- the Court finds that a prior decision has severe practical consequences
    c- the Court finds that there is no real reliance interest at stake

    (a) I consider Mayo to have made US patent law logically and legally inconsistent. That situation seems egregiously wrong to me and probably likewise to many patent law professionals. Yet there are many patent law professions that find Mayo to be an excellent decision. In Harvard or MIT professor mode, I might get some traction from SCOTUS on step (a). Without a major change in the composition, SCOTUS will continue — as it has for over 150 years — to read the three judicial exceptions into § 101 without any definition of abstract idea.

    (b) At this point, I doubt any SCOTUS member can deny that the consequences of § 101-eligibility doctrine are severe, but I suspect that some of the Justices consider these sever consequences to represent a positive development.

    And (3) there are many groups that rely on § 101-eligibility doctrine to remain as is.

  73. Anon February 2, 2020 3:17 pm

    Your (c) is a bit misstated (currently in the negative). Try instead that there ARE real reliance interests at stake WITH the mess created (the still-present “patents are property” AND the presence and level of the presumption of validity.

    Also consider that the Kavanaugh Scissors have TWO shears: one shear was that the Court writing exceptions to statutory law was wrong in and of itself, and the other was WHEN it makes sense for the Court to correct itself (sua sponte and in essence, to disregard its own bankrupt state decisis). Past entries of mine on this blog spell out the exact details of the Kavanaugh Scissors (so named, because BOTH shears have come from at least in major part from Justice Kavanaugh).

  74. Joachim Martillo February 2, 2020 6:03 pm

    Doesn’t Justice Holmes state an opinion related to the Kavanaugh scissors in his concurrence to BLACK & WHITE TAXICAB & TRANSFER CO. v. BROWN & YELLOW TAXICAB & TRANSFER CO., 276 U.S. 518 (48 S.Ct. 404, 72 L.Ed. 681)?

    The Circuit Court of Appeals had so considerable a tradition behind it in deciding as it did that if I did not regard the case as exceptional I should not feel warranted in presenting my own convictions again after having stated them in Kuhn v. Fairmont Coal Co., 215 U. S. 349, 30 S. Ct. 140, 54 L. Ed. 228. But the question is important and in my opinion the prevailing doctrine has been accepted upon a subtle fallacy that never has been analyzed. If I am right the fallacy has resulted in an unconstitutional assumption of powers by the Courts of the United States which no lapse of time or respectable array of opinion should make us hesitate to correct. Therefore I think it proper to state what I think the fallacy is.-The often repeated proposition of this and the lower Courts is that the parties are entitled to an independent judgment on matters of general law. By that phrase is meant matters that are not governed by any law of the United States or by any statute of the State-matters that in States other than Louisiana are governed in most respects by what is called the common law. It is through this phrase that what I think the fallacy comes in.

  75. Anon February 3, 2020 7:20 am

    Joachim,

    That was in a dissent, not a concurrence.

    Such, it is even less than dicta.

  76. Anon February 3, 2020 8:51 am

    … even as that may be, some value may be generated from the statements in dissent.

    The notion of Common Law law writing was very much a concern of a TOO powerful judicial system, and as such (given that we desired a system of limited government), the proper use (and limitations thereof) of that tool is always fair game.

    Such may be a nice ‘back-up’ just in case the more direct shears of the Kavanaugh Scissors are explored by the Justices (but I would caution about going into the weeds with the 1920’s case that really is about a different fact situation).

  77. Joachim Martillo February 3, 2020 11:16 am

    Perhaps this citation from Erie Railroad Co. v. Tompkins, 304 U.S. 64 (1938) is more helpful.

    The fallacy underlying the rule declared in Swift v. Tyson is made clear by Mr. Justice Holmes. [Footnote 23] The doctrine rests upon the assumption that there is “a transcendental body of law outside of any particular State but obligatory within it unless and until changed by statute,” that federal courts have the power to use their judgment as to what the rules of common law are, and that, in the federal courts, “the parties are entitled to an independent judgment on matters of general law”:

    “but law in the sense in which courts speak of it today does not exist without some definite authority behind it. The common law so far as it is enforced in a State, whether called common law or not, is not the common law generally, but the law of that State existing by the authority of that State without regard to what it may have been in England or anywhere else. . . .”

    “the authority and only authority is the State, and, if that be so, the voice adopted by the State as its own [whether it be of its Legislature or of its Supreme Court] should utter the last word.”

    Thus, the doctrine of Swift v. Tyson is, as Mr. Justice Holmes said,

    “an unconstitutional assumption of powers by courts of the United States which no lapse of time or respectable array of opinion should make us hesitate to correct.”

  78. Anon February 3, 2020 5:53 pm

    I think that you are drifting into the weeds. The Erie Doctrine is not really the doctrine that you want to call out to buttress your point. You will be MORE lost trying to explain the connection, with little to gain.

    I would stick with the Shears provided. Clean. Precise. On Point.

  79. Joachim Martillo February 5, 2020 9:03 am

    The issue of fidelity to the limitations of Constitutional or statutory text is general.

    In SCOTUS’s view SCOTUS is not making common law but is following the intentions of the framers of the Patent and Copyright Clause and the authors of the 1790 or of the 1793 patent statute. As Dyk summarizes in Bilski, the original intention included importation of the relevant common law into the understanding of Constitution’s clause and of the patent statutes from 1790 til today. Such importation is hardly unique. Title 47 imports common law understanding of common carriage.

    I am willing to argue a continuity from the Kavanaugh Scissors through original Constitutional and statutory intent. I am targeting a holding that neutralizes the three judicial excepts by elimination or by definitions, which are enfeebling and correct by originalist analysis.

    There is only one real difference between the importation of common law understanding into Title 35 and the importation of common law understanding into Title 47. Abstract idea is left undefined even though there was agreement on meaning among the late Enlightenment thinkers (including the Constitutional framers and the statutory authors — these two groups are the same) while the definition of common carriage is well-defined.

    While it would be excellent if the judicial exceptions were banished, it works if they can be neutralized by an explicit holding that neutralizes the exceptions by defining them as the framers and authors defined them. The correct late enlightenment definitions are not horrible as I explain in my essay “Preface: Fixing § 101 Requires Fixing § 100” which I sent to Senator Tillis and discussed with one judge on the CAFC.

  80. Anon February 5, 2020 9:46 am

    Sorry Joachim, but you miss by a mile with a statement of: “In SCOTUS’s view SCOTUS is not making common law but is following the intentions of the framers of the Patent and Copyright Clause and the authors of the 1790 or of the 1793 patent statute.

    The Court is very much aware that they are indulging in Common Law law writing with their eligibility jurisprudence.

    Further, as TFCFM has reminded you, even when Congress acts later in time (specifically, the Act of 1952), such has every bit of binding authority as the earlier Acts of Congress.

    Overall, I do “get” what you are attempting, and (also like TFCFM) generally do not want to dissuade you from pursuing another line of attack on the illegitimacy of the Court’s broken score board, so please take my comments with those understandings.

  81. Joachim Martillo February 7, 2020 10:15 pm

    Bilski’s concurrence in In Re Bilski, 545 F.3d 943 (Fed. Cir. 2008) states the following.

    While I fully join the majority opinion, I write separately to respond to the claim in the two dissents that the majority’s opinion is not grounded in the statute, but rather “usurps the legislative role.”[1] In fact, the unpatentability of processes not involving manufactures, machines, or compositions of matter has been firmly embedded in the statute since the time of the Patent Act of 1793, ch. 11, 1 Stat. 318 (1793). It is our dissenting colleagues who would legislate by expanding patentable subject matter far beyond what is allowed by the statute.

    I

    Section 101 now provides:

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    35 U.S.C. 101 (emphases added).

    The current version of 101 can be traced back to the Patent Act of 1793. In relevant part, the 1793 Act stated that a patent may be granted to any person or persons who:

    shall allege that he or they have invented any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement on any art, machine, manufacture or composition of matter. . . .

    1 Stat. 318, 319 (1793) (emphases added). The criteria for patentability established by the 1793 Act remained essentially unchanged until 1952, when Congress amended § 101 by replacing the word “art” with “process” and providing in § 100(b) a definition of the term “process.” The Supreme Court has made clear that this change did not alter the substantive understanding of the statute; it did not broaden the scope of patentable subject matter.[2] Thus, our interpretation of § 101 *967 must begin with a consideration of what the drafters of the early patent statutes understood the patentability standard to require in 1793. See Diehr, 450 U.S. at 182-83, 101 S. Ct. 1048 (looking to the 1793 Act).

    Unless Congress drafts a new § 101 version that clearly rejects the judicial exceptions (one proposed modified version), most of the CAFC judges and of SCOTUS justices will assume the three judicial exceptions are still settled law.

    If a new version does reject the judicial exceptions, those judges and justices will simply use the same analysis that Raoul Berger used to extract the intent of the 14th Amendment framers from the 1866 Civil Rights Act in order to find the three judicial exceptions in the Patent and Copyright Clause itself.

    As far as I can tell, Berger won the argument about the meaning of the 14th Amendment to its framers.

  82. Anon February 7, 2020 10:38 pm

    In re Bilski (by the CAFC) is meaningless and cannot support any position that you may want to advance (also, as it is not from the Supremes, simply cannot support your larger position).

  83. Joachim Martillo February 8, 2020 10:00 am

    When I plan a trial or appeal strategy, I try to anticipate an argument or a question that might arise and then try to develop a compelling response to traverse and to overcome the associated issue. All of the SCOTUS Justices will have read Dyk’s CAFC Bilski concurrence. Thomas at least will go beyond the basic points of the concurrence and extend them to the original intention of the framers of the Patent and Copyright Clause as Raoul Berger did in parsing the original intent of the framers of the XIVth Amendment.

    Because of Thomas’ judicial ideology, it is impossible to believe that he has never read Berger. Thomas seems opposed to patents by inclination and may not even say anything during the oral hearing. Thus I must try to anticipate his thoughts and his musing on eligibility. He is 71. Ruth Bader Ginsburg is 86. I expect that he could well still be sitting on SCOTUS when I make my arguments.

  84. Anon February 8, 2020 11:51 am

    Dyk’s view has zero force of law.

    You would do well to not only understand that, but to use that to your advantage (for example, explaining that Dyk could but garner one other ‘vote’ to join him and his wayward view).

  85. Anon February 8, 2020 12:44 pm

    Joachim,

    If you want to wield case law outside of any one case’s direct holding, and venture into a majority’s dicta and the lower levels of concurrences and dissents, then you will want to understand exactly who is saying what, and how those views do NOT carry the day in the immediate decision, as well as how WHO says WHAT tracks over time and across other decisions.

    While cherry picking pincites is something often done, such more often than not indicates game playing and subterfuge, rather than illuminating any notion of proper interpretation of the law.

  86. Anon April 3, 2020 2:27 pm

    The whole idea of invalidating patent claims simply because they are implemented by generic computer components slays me. The courts have made software difficult to patent BECAUSE they are performed by some of the most impactful inventions of all time… The definition of ironic.