Will Dobbs Cure the Plague of Patent Eligibility Nonsense?

“The Dobbs decision demonstrates that, in the absence of any language in the Constitution, the courts have no authority to rewrite statutory language except under extraordinary circumstances.”

https://depositphotos.com/31248541/stock-photo-opinion-business-concept.htmlFor anyone surprised about the Supreme Court refusing certiorari in the America Axle v. Neapco case after the Department of Justice (DOJ) (aided by the Solicitor’s Office of the U.S. Patent and Trademark Office [USPTO]) submitted its brief for the Supreme Court’s review, the question arises: why would anyone be surprised? The brief at issue is garbage, and one wonders what exactly its purpose was.

To save time for concerned readers, the DOJ’s brief may be summarized as follows: (1) a bunch of decisions were made on patent eligibility by the Supreme Court over the last 50 years; (2) the Federal Circuit is divided on the exceptions to patent eligibility; and (3) the Solicitor would like clarification as to what is abstract and what is an inventive concept, but not if it involves evidence. That is, the DOJ and PTO now demand more subjective theory on Alice-Mayo while deliberately eschewing any objective basis for the test despite the fact that the claims in Bilski, Alice, and Mayo were considered abstract based on evidence in the record.

What this self-serving drivel stands for is: “we best and brightest GS-15s in the Executive love our government-authorized capricious vetoes over patents, and we want to pretend as if we’re actually concerned about the capricious nature of Alice-Mayo, but don’t speak about evidence because evidence has an objective quality that interferes with our capricious vetoes.”

‘Gump’-Created Drivel

In sum, the DOJ’s Brief is a prime example of the sort of self-serving nonsense that only a collection of useless government employees, hereinafter referred to as a “gump,” can produce after an entire year of closely reviewing the state of patent eligibility. The term “gump” of useless government employees is used given that John Kennedy Toole had long ago called dibs on “a confederacy of dunces.” Yes, a gump of GS-15s from the prestigious DOJ and the USPTO’s Solicitor’s Office teamed up to produce 20+ pages of nothing more than a totally uninformative outline of the state of patent eligibility with absolutely no helpful analysis and while skillfully avoiding actual issues that might shed light on the confusion caused by the last 50 years of Supreme Court tinkering with patent eligibility. The brief is all show designed to give the false impression that the DOJ and USPTO want to correct a problem that has long needed correction.

What is missing from the brief that might be helpful? How about some discussion of the Supreme Court’s constitutional authority to rewrite the patent law from the bench? How about some request for specific definitions? How about an explanation as to why evidence isn’t relevant to determine what is “well-known, routine, and conventional?” How about a discussion about what level of inventiveness satisfies the “inventive concept” standard or why the whole “significantly more” analysis sounds a lot like an obviousness analysis under 35 U.S.C. § 103.

Rader Called It

The second greatest problem with Alice-Mayo is a complete lack of objective standards. “Abstract” is whatever a government employee declares it is. Further, no limiting principles have ever been applied to “significantly more,” and the term “inventive concept” was garbage the moment Stevens first pulled the term out of thin air in his 1978 Flook decision. Judge Rader’s dissenting opinion in Bilski en banc foreshadowed all the problems in Alice-Mayo with the idiotic list of capricious prerequisites that courts wanted to tack on to patent eligibility. Now the question arises; what could be more problematic than a completely capricious test for patent eligibility? Answer: the constitutional authority of the courts to inflict said completely capricious test for patent eligibility on the public. Judge Rader saw this clearly. That is, the biggest problem with Alice-Mayo, which Judge Rader’s dissenting opinion in Bilski en banc also raised was: where do the courts get the authority to violate statutory law? “The Act has not empowered the courts to impose limitations on patent eligible subject matter beyond the broad and ordinary meaning of the terms process, machine, manufacture, and composition of matter,” Rader wrote.

Dobbs Should End the Debate

The only group of people who still might believe that their policy preferences in the patent law take precedent over Constitutional separation of powers is the Supreme Court. However, in light of the majority decision in Dobbs v. Jackson Women’s Health, one wonders whether the Supreme Court will finally admit to this lack of authority. The Dobbs decision demonstrates that, in the absence of any language in the Constitution, the courts have no authority to rewrite statutory language except under extraordinary circumstances. The two primary considerations the Supreme Court took in Dobbs included: (1) the quality of reasoning of the decision being overturned, and (2) the workability of the decision being overturned.

1) The quality of the reasoning. The Supreme Court declared, “[u]nder our precedents, the quality of the reasoning in a prior case has an important bearing on whether it should be reconsidered.” Slip. Op. at p. 45. This applies to every court decision limiting patent eligibility as the Supreme Court has never asserted constitutional authority to violate legislative prerogative. Benson and it’s progeny are mere policy preferences, not decisions based on constitutional authority. The same applies to Flook, Bilski, Alice, and Mayo. All these cases stand on exceptionally weak constitutional grounds.

There is no language in the Constitution to justify the courts’ judicial tinkering in Section 101. There is nothing under the doctrine of substantial due process to justify the courts’ tinkering; nothing in the first eight Amendments, and no assertion that the Patent Law as written violates some fundamental right that is “objectively, deeply rooted in this Nation’s history and tradition.” See Slip. Op. at p. 75. The holdings of Benson, Flook, Bilski, etc. are not “implicit in the concept of ordered liberty.” Id.

2) Workability. “[A]nother important consideration in deciding whether a precedent should be overruled is whether the rule it imposes is workable—that is, whether it can be understood and applied in a consistent and predictable manner.” Slip Op. at p. 56. This applies to Alice-Mayo. “Abstract” is whatever a judge says it is. “Significantly more” and “inventive concept” have no meaning. Alice-Mayo is unworkable as it is an exercise in capriciousness.

Takeaway

There is no constitutional authority to rewrite Section 101 to exempt computer-based claims or any other claim that passes every statutory requirement under the patent law. Further, Alice-Mayo is unworkable and no fabricated claim of substantive due process can justify the real violations of procedural due process caused by Alice-Mayo.

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Author: tashatuvango
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63 comments so far. Add my comment.

  • [Avatar for concerned]
    concerned
    July 8, 2022 12:03 pm

    Shein was in my blue brief, Dobbs is in my R28j letter.

    Why not the CAFC take a stand and throw out the judical exceptions? What is SCOTUS going to do, reject another cert?

    Or kick that issue down the road and rule the PTO rejections have no evidentiary basis in the record?

  • [Avatar for B]
    B
    July 8, 2022 11:48 am

    From Shein v. Archer

    “And it is not this Court’s proper role to redesign the Act. Third, its argument that it would be a waste of the parties’ time and money to send wholly groundless arbitrability questions to an arbitrator ignores the fact that the Act contains no “wholly groundless” exception. This Court may not engraft its own exceptions onto the statutory text.
    .
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    In light of disagreement in the Courts of Appeals over whether the “wholly groundless” exception is consistent with the Federal Arbitration Act,
    .
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    We must interpret the Act as written
    .
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    The exception would inevitably spark collateral litigation (with briefing, argument, and opinion writing) over whether a seemingly unmeritorious argument for arbitration is “wholly” groundless, as opposed to groundless. We see no reason to create such a time-consuming sideshow.”

  • [Avatar for B]
    B
    July 8, 2022 11:18 am

    @ GGreg “. I will still be shocked if the CAFC does
    not ultimately affirm the PTAB, but B and concerned have earned a sort
    of moral victory in that they evidently moved the panel at least to
    write an opinion on their case.”

    I’m not saying you’re wrong about the outcome of the holding. What I am saying is that, if you’re right about the outcome of the case, you’re wrong about any “moral victory.”

    Forget that moral victories are total b.s. and worthless, what any such outcome stands for is an acceptance that the PTO is free to violate the civil rights of anyone they please

  • [Avatar for concerned]
    concerned
    July 8, 2022 10:37 am

    I do have to give “Benny” credit for inspiring the terms of the 10 person challenge.

    And I picked New Hampshire hoping IPWatchdog would host the challenge if asked. Mr. Quinn may welcome something that shows how ridiculous the patent system has become. In other words, just call something mental steps even though no attorney would risks giving out/getting confidential information without proper consent, does no make the characterization true.

    My specs show how I would get around consent, yet I have seen no evidence from anyone how mental steps get around consent. I have seen no evidence that mental steps are codified in s101.

    If an attorney takes my challenge and loses, does the law license come into question for attempting to commit an illegal action?

  • [Avatar for concerned]
    concerned
    July 8, 2022 09:59 am

    CW: I have posted the terms on other threads.

    We go to New Hampshire, I pick 10 random Social Security Offices, then I pick one name at random at each office from the phone book, and the challenger has to get confidential information about that random people by stating there is no written consent, just a mental request by this challenger. That the random person has no idea this request is happening. Of course I will ask the authorities to be on hand in case the info is handed out.

    Are you ready to put your money where your mouth is?

    We both post a $500,000 bond and we ask IPWatchdog to oversee the challenger.

    Ready to dance? I am.

  • [Avatar for concerned]
    concerned
    July 8, 2022 09:43 am

    Greg:

    Thank you! It has been more than 2 months since the oral hearing. And as you know, no Rule 36.

    B has given the CAFC a chance to take a stand against SCOTUS using SCOTUS’ own analysis under Dobbs if the CAFC wants it.

    And why not? What is SCOTUS going to do about it? Perhaps SCOTUS is waiting on the CAFC to grow a set and take matters into their own control.

    We may not go anywhere but I will go there proud. We stand and fight!

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    July 8, 2022 09:24 am

    After listening to the In re Killian oral arguments, I expected a Rule 36 affirmance within a week. I will still be shocked if the CAFC does not ultimately affirm the PTAB, but B and concerned have earned a sort of moral victory in that they evidently moved the panel at least to write an opinion on their case. That is more than I expected.

  • [Avatar for C. W.]
    C. W.
    July 8, 2022 09:08 am

    “Man up. Take my $500,000 cash.

    How about, man up, and put it up in a Bond, and find a reliable Trustee, and publish the terms and conditions. So many inventors spew spewage, “oh, if you get me a patent, I’ll buy you a Rolex” or “I’ll make you rich” blah blah. Soooo many times I hear that joke, over and over.

    Put up your sum as a Bond, make the terms clear, and I bet you get more traction, than repeatedly yammering discontent. I don’t see how it can be a viable strategy, posting the same old same old, over and over again.

    How do you say it in Latin “put your money where your mouth is” ?

  • [Avatar for concerned]
    concerned
    July 8, 2022 08:12 am

    Curious@ “However, even a radical change in 101 jurisprudence (for the better) might not even save Concerned’s claims.”

    The Board did say I met the law as written by Congress. That should be enough for a lawyer who swore to uphold the law.

    You said my process is mental steps. Man up. Take my challenge. Or are you one that hides behind legal B.S. terms that have no basis in reality.

    Man up. Take my $500,000 cash.

    I would love you as the Solicitor in a jury trial explaining to common folks why appointed judges get to add words to the law written by Congress. Why you are allowed to not define those added words. Why my evidence is not even recognized while you offered no evidence. Why your statements do not even resemble logic. And why as an attorney you are even making such statements in a legal setting.

    Common folks will see the patent system as a joke. Mr. Quinn has the guts to speak the truth. It must be difficult to be trapped in this system. I am one and done.

    Just wondering: Have you won the highest award your State Bar Assoc. offers and also your alma mater offers?

  • [Avatar for Curious]
    Curious
    July 7, 2022 08:23 pm

    If you are, indeed, curious you can also read my Hastings article and book chapter in Patents on Life, where I explain where the prohibitions on patenting nature and science come from – religious views (that imposed limits on Lockean theory of property through labor) regarding the origins of nature and of human creativity.
    There is no need to overthink this.

    Natural phenomena/products of natureThis is an easy one. Not patentable because they were invented (i.e., the product of human ingenuity). They existed prior to humans and you cannot get a patent for something that is old (i.e., it isn’t new) and 35 USC 101 does talk about “any new” invention.

    Laws of nature Under 35 USC 101, the categories of patentable subject mater are processes, machines, manufactures, and compositions of matter (and improvements thereto). Where does “laws of nature” fit in there? A law of nature is usually described as some type of relationship (a classic example being E=Mc^2). One does not patent that. It isn’t a process, machine, manufacture, composition of matter or improvement thereto.

    Abstract ideas Processes, machines, manufactures, and compositions of matter are neither ideas, nor abstract ideas. One can argue that all inventions are the manifestation of an “idea” but that doesn’t held distinguish patentable subject matter from non-patentable subject matter. If the invention is a process, machine, manufacture, or composition of matter (or improvement thereto) it isn’t an abstract idea — rather, it is a real-life manifestation of an invention.

    Today, we have, for example, multi lens cameras being declared abstract ideas (Yu v. Apple) because the Federal Circuit has completely gone off the rails.

    And to raise a point that I’m sure both B and Anon agree with, it isn’t up to the Court to decide what is patentable and what is not. That is up to Congress. Congress didn’t put any limits on what is patentable aside from “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Congress used the word “any” with the only reservation being “subject to the conditions and requirements of this title.” Statutorily, there is no wiggle room for the Supreme Court to create exceptions to what is patentable beyond that which was expressed in 35 USC 101 (i.e., “the conditions and requirements of this title”).

    However, because SCOTUS gets to say what the law is, once they crossed the Rubicon and “interpreted” (i.e., legislated from the bench) the statute, we have no recourse but to ask Congress to tell SCOTUS to butt out. Unfortunately, Congress is a political body involving herding a lot of cats that don’t want to get herded and patent law isn’t something that many in Congress care about. As such, getting Congress to do anything is next to impossible. However, because Congress hasn’t done anything, there is where the concept of statutory stare decisis comes into play. It is basically the Supreme Court saying that “if Congress didn’t like what we did, they could have fixed it, and since they didn’t, this means we were correct [even if we weren’t].”

    Again, the easiest way to get real reform (because it involves the fewest number of “cats”) is to get the Federal Circuit to issue an en banc decision that sweeps away the old Federal Circuit precedent and replaces it with something workable. It may not be perfect but it is a whole heck of a lot better than what we have now. Moreover, an en banc decision has a far higher likelihood of getting taken up by the Supreme Court.

  • [Avatar for Curious]
    Curious
    July 7, 2022 07:59 pm

    I couldn’t mock the PTO Solicitor’s Office hard enough in my blue brief, my reply brief, and during oral argument about the complete lack of definitions and limiting principles. Further, none of Clevenger, Taranto, and Chen could offer any such definition.
    You really think mocking them was going to do any good? If lawyering was performance art, then you nailed it. However, I think good lawyering should be result-oriented. With that in mind, I think there were better ways to get the results you wanted. However, even a radical change in 101 jurisprudence (for the better) might not even save Concerned’s claims.

    Take the red pill, Curious, and wake up
    I already know what’s going on. Again, I’m trying to find a way to get positive results. Advocating for Supreme Court precedent going back decades be thrown up the window may be satisfying in the abstract, but it isn’t going to get your (or my) client anywhere.

    Funk Bros – a totally moronic holding
    Agree.

  • [Avatar for B]
    B
    July 7, 2022 03:12 pm

    @ Josh ““Inventive application” is the concept that underlies what you are calling “judicial exceptions,” drawn (as I belief Lefstin correctly traces) from a misunderstanding of the English Neilson cases in the O’Reilly v Morse case.”

    O’Reilly v. Morse isn’t a patent eligibility case. It’s a 112(a) written description case. Claims 1-7 allowed. Claim 8 – there was no disclosure for such breadth

    The Patent Law extends beyond s101

    “Lefstin also traces that history from O’Reilly through to Funk Brothers.”

    Funk Bros – a totally moronic holding

    “If you are, indeed, curious you can also read my Hastings article and book chapter in Patents on Life, where I explain where the prohibitions on patenting nature and science come from – religious views (that imposed limits on Lockean theory of property through labor) regarding the origins of nature and of human creativity.”

    That actually sounds like an interesting read.

  • [Avatar for concerned]
    concerned
    July 7, 2022 01:01 pm

    It would be nice to get definitions for “inventive concept, significantly more and mental steps.”

    A dictionary type definition, not a statement that those terms are defined in unspecified case law.

    However, statements such as I met the law as written by Congress but not the legal version, and ever elusive “Captain Tuttle” type definitions just lead me to the conclusion there is no legal standard.

    The system wants to pick and chose who gets a patent on a whim.

  • [Avatar for Josh Sarnoff]
    Josh Sarnoff
    July 7, 2022 12:44 pm

    @B and @Curious
    If you are, indeed, curious you can also read my Hastings article and book chapter in Patents on Life, where I explain where the prohibitions on patenting nature and science come from – religious views (that imposed limits on Lockean theory of property through labor) regarding the origins of nature and of human creativity.

  • [Avatar for Josh Sarnoff]
    Josh Sarnoff
    July 7, 2022 12:32 pm

    @B and @Curious:
    “Inventive application” is the concept that underlies what you are calling “judicial exceptions,” drawn (as I belief Lefstin correctly traces) from a misunderstanding of the English Neilson cases in the O’Reilly v Morse case. Lefstin also traces that history from O’Reilly through to Funk Brothers. So it is directly relevant to the question you were addressing.

  • [Avatar for B]
    B
    July 7, 2022 11:23 am

    @ Curious “These “nonexistent terms” are found in the case law, which is the Courts interpretation of the statutes.”

    Respectfully – they are not. I couldn’t mock the PTO Solicitor’s Office hard enough in my blue brief, my reply brief, and during oral argument about the complete lack of definitions and limiting principles. Further, none of Clevenger, Taranto, and Chen could offer any such definition.

    I’ve challenged over a hundred examiners, the PTAB, the CAFC (twice) and the SCOTUS to pony up some definitions. None have done so.

    The fact you offer none now is telling.

    Take the red pill, Curious, and wake up

    “Perhaps you [Prof Sarnoff] and I disagree as to what portion of the Lefstin article is RELEVANT.”

    Personally, I thought you nailed Lefstin’s take.

  • [Avatar for Curious]
    Curious
    July 7, 2022 10:59 am

    Perhaps you might have read the RELEVANT portion of the Lefstin article
    Perhaps you and I disagree as to what portion of the Lefstin article is RELEVANT. The main topic of interest is the judicially-created exceptions to patent eligible subject matter. You make multiple references to an “inventive application test.” However, “inventive application” does not address the judicially-created exceptions to patent eligibility or how they came into being.

  • [Avatar for Curious]
    Curious
    July 7, 2022 10:48 am

    any agency decision based on nonexistent terms is by definition capricious, and capriciousness is a violation of the APA as well as 5A due process
    These “nonexistent terms” are found in the case law, which is the Courts interpretation of the statutes. Not sure if you realize it, but the Courts the extra-statutory terms ALL THE TIME. For example, where is “undue experimentation” found in 112(a)? It isn’t. This line of argument isn’t going anyplace because to succeed you would have to essentially upend two centuries worth of US case law — not just patent law. That’s not happening.

    My point is that there are better arguments to make.

    It was my inventive concept that makes those records available without consent. The process is in my specs., did you read them?
    If your “inventive concept” is to make records available without consent, then it isn’t inventive (or claimed). Now if you application describe a specific technical process by which consent was provided … and it was claimed, then you might have a shot. However, even then, I’ve seen FAR MORE technical applications rejected based upon 101.

    The trick is getting the records in front of you.
    That is not claimed — not by a long shot. BTW, when the USPTO determines whether something is directed to a “mental process,” they ignore generic computer components.

    And why would I modify the provisional application? It solves the problem.
    As I said, trying to teach quantum physics to someone who has never taken a single class in physics. No (patent)-sophisticated client would ever make such a statement. It reflects a fatal lack of understanding of the entire process. BTW, this is why I NEVER take on first-time inventors — it takes twice as long to do anything because I have to teach them everything.

    This demonstrates how stupid judicial exceptions are and that Judge Taranto gets 100% correct.
    Liked concerned, you really did miss what Taranto was saying when he made his comment. He was basically saying that the Federal Circuit’s hands were tied because they have to follow CAFC and SCOTUS case law and that you had to make those arguments to SCOTUS.

    That said, why shouldn’t a person who is first to discover a naturally-occurring molecule entitled to protection under 101?
    The molecule itself? No. Because it isn’t novel. A method of making the molecule? Maybe, so long as the method doesn’t replicate what is being done in nature. A method of using the molecule? Maybe, so long as its use doesn’t replicate what is being done in nature.

    As a layperson, why not the CAFC rule in my favor? What is SCOTUS going to do about it?
    Because to rule in your favor will eviscerate a number of CAFC precedential decisions, which a panel of 3 judges does not have authority to do.

    And yes, the trick is in the specs, both the provisional and non-provisional application. It takes a dedicated computer network, in a highly secure environment, with some other steps, that cannot exist in anybody’s mind.
    Your independent claims make no mention of a dedicated computer network and a highly secure environment. Even if they did, the presence of these would not save your application.

    Go for it CAFC, rule for me and do yourself a favor! Give SCOTUS a taste of their own medicine.
    You really don’t understand why that is not possible, do you?

  • [Avatar for concerned]
    concerned
    July 7, 2022 05:39 am

    B@ “I already have the USPTO on a violation of due process issue. If the PTO and CAFC can’t figure out the basics after 10 years, then the whole Alice-Mayo test is unworkable garbage. I intend to use Dobbs as a roadmap for a second constitutional violation, and given I referenced Shein v Archer in my blue brief and penned a R28j memo to the CAFC last week, the real question is: what will the CAFC do? They presumably want clarity but know the SCOTUS isn’t taking cert. on patent eligibility.”

    As the inventor, I agree 100%. As a layperson, why not the CAFC rule in my favor? What is SCOTUS going to do about it?

    Stare decisis or statutory stare decisis: All I know is I get rejections based on statements that are not logically correct on the surface and get words added to the law which nobody will define. Sure, the USPTO and its Board went through the steps using a protocol that can defeat any patent application (no evidence, no definitions, illogical statements). Is that the due process which a society should accept?

    Plus I get this kind of remark from an attorney on this forum:

    “Regardless, everything recited in claim 1 of your application could be done by a person authorized to access the data with the appropriate records (printed out).” Basically everyone in the nation can drive a car once it was invented. The trick to my patent application, and the trick that alluded all those working professionals and experts for decades, is how to get that pertinent data (or car) in front of them?

    And yes, the trick is in the specs, both the provisional and non-provisional application. It takes a dedicated computer network, in a highly secure environment, with some other steps, that cannot exist in anybody’s mind.

    I can also find every buried treasure in the world if someone would invent a map that precisely points out the location. Would that map be patented (new and useful)? My process points out errors and omissions committed by professionals and other well meaning people who lacked my trick pony.

    Go for it CAFC, rule for me and do yourself a favor! Give SCOTUS a taste of their own medicine.

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    July 7, 2022 01:51 am

    The possibility exists that [not] all naturally occurring molecules are known to man or used by man.

    “Inherency is not necessarily coterminous with the knowledge of those of ordinary skill in the art. Artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art. However, the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999) (internal citations omitted).

  • [Avatar for B]
    B
    July 6, 2022 10:32 pm

    Correction – NOT all naturally occurring

  • [Avatar for B]
    B
    July 6, 2022 10:11 pm

    @ Greg

    The possibility exists that all naturally occurring molecules are known to man or used by man.

    Anyway, new uses for naturally occurring molecules are potentially patentable

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    July 6, 2022 09:47 pm

    Your example runs into a 102 issue, inherently anticipating the claimed subject matter.

    Right. This inherent anticipation issue is always and necessarily present in any natural product claim, so that same logic answers your question “why shouldn’t a person who is first to discover a naturally-occurring molecule entitled to protection…?”

  • [Avatar for B]
    B
    July 6, 2022 09:04 pm

    @ Greg “ Because that leaves open the possibility that we could all become unwilling infringers.”

    Your example runs into a 102 issue, inherently anticipating the claimed subject matter.

  • [Avatar for B]
    B
    July 6, 2022 08:59 pm

    @ Greg “I am less than clear, however, what you think that you prove by citing Dobbs when discussing Mayo/Alice. Justice Alito–the author of Dobb–joined the majority opinions of all four of Bilski, Mayo, Myriad, and Alice without reservation or further remark.”

    Yes, and Thomas (who penned Alice) doesn’t even believe the substantive due process doctrine carries water. Ergo, where does the SCOTUS derive its authority to so casually rewrite s101 from the bench?

    Greg, you make a fair point, and my response is: Let the Supreme Court explain their authority.

    I already have the USPTO on a violation of due process issue. If the PTO and CAFC can’t figure out the basics after 10 years, then the whole Alice-Mayo test is unworkable garbage. I intend to use Dobbs as a roadmap for a second constitutional violation, and given I referenced Shein v Archer in my blue brief and penned a R28j memo to the CAFC last week, the real question is: what will the CAFC do? They presumably want clarity but know the SCOTUS isn’t taking cert. on patent eligibility. I’ve just handed the CAFC the answer if they really want it b/c the SCOTUS always takes constitutional violation cases from administrative agencies.

    Again, great question, Greg.

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    July 6, 2022 07:53 pm

    This demonstrates how stupid judicial exceptions are…

    I think that Mayo/Alice are terrible decisions, and the CAFC’s application of them has been terrible as well. I carry no brief for Mayo/Alice.

    I am less than clear, however, what you think that you prove by citing Dobbs when discussing Mayo/Alice. Justice Alito–the author of Dobb–joined the majority opinions of all four of Bilski, Mayo, Myriad, and Alice without reservation or further remark. If you are trying to shame him (and his ilk) by saying “look what you said in Dobbs. How can you say that and still support Mayo/Alice?”, it seems to me that the obvious response from Alito and his ilk is that Dobbs and Alice are distinguishable. Dobbs concerned stare decisis, while Mayo/Alice concern statutory stare decisis, and your two point analysis is not adequate for tackling a statutory stare decisis question. Meanwhile, your assertion that “’statutory stare decisis’ doesn’t apply” runs up against the problem that the Court says in Bilski that statutory stare decisis does apply.

    [W]hy shouldn’t a person who is first to discover a naturally-occurring molecule entitled to protection under 101?

    Because that leaves open the possibility that we could all become unwilling infringers. If all human bodies make a protein–unbeknownst to us–and Dr. X gets a patent for the protein after she discovers its existence, then all humans become infringers for doing no more than they were doing for years before Dr. X’s discovery. The patent laws are not intended to deprive people of the right to make and use that which they were making and using before the patent law even came into effect.

    Besides, all natural products are–by definition–in public use by others than the patentee before the filing date for a patent that covers the natural product. Even if the natural product claim survives 101, it should fail under 102 because of that pre-filing public use.

  • [Avatar for Josh Sarnoff]
    Josh Sarnoff
    July 6, 2022 06:59 pm

    @Curious.
    Perhaps you might have read the RELEVANT portion of the Lefstin article, which says exactly what I said it did: Congress rejected the attempt to explicitly overturn Funk Brothers and courts after the 1952 Act interpreted that Act to preserve (not create) the inventive application standard of eligiblity. I would not have weighed in again, except for the selective reading that you engaged in. Josh
    “Fellner urged the Subcommittee to return to the language of H.R. 9133, expressly extending the patent system to discoveries embodied in one of the statutory classes of subject matter. That language, according to Fellner, would overrule Funk Brothers and restore patentability to practical applications of new discoveries.470 But the Subcommittee’s response was equivocal. On the one hand, members of the Subcommittee told Fellner that including “discoveries” in the definition of invention in § 100 accomplished the same purpose as the language that had appeared in H.R. 9133.471 On the other hand, members told Fellner that the new § 100 and § 101 were not intended to change the *634 law as then written,472 and that if the Supreme Court had interpreted “invented or discovered” in the 1870 Patent Act as it had in Funk Brothers, then they would likely interpret the “discovery as embodied” language of H.R. 9133 in the same way…

    Noting the recent controversy over Funk Brothers,476 Harris denied that “Congress intended that invention must be in a mechanical structure and that a discovery could not be patentable whether or not it was embodied in some useful process or composition.”477 Thus from Harris’s point of view, it would seem that Congress intended to abolish Funk Brothers’ test of inventive application, to the extent that test denied patentability to a discovery embodied in a composition of matter. Yet, while Harris was explicit when he claimed that Congress intended § 103 to overturn Cuno Engineering’s infamous “flash of genius” requirement,478 he never states explicitly that Congress intended §§ 100 and 101 to overrule Funk Brothers. So in the end, the legislative history is largely inconclusive as to whether Congress intended to reject or incorporate a test of inventive application in the 1952 Patent Act.
    *635 C. Funk Brothers’ Progeny
    Regardless of whether the 1952 Patent Act overruled Funk Brothers or not, it is clear that commentators recognized Funk Brothers as an inventive application test at the time it was decided. But why have more recent commentators seldom acknowledged this aspect of the case? In part, this is because most modern readers encounter Funk Brothers through Chakrabarty, which frames Funk Brothers as a product of nature case. Perhaps more significantly, Funk Brothers’ reference to Cuno Engineering, and its talk of “lack of invention,” leads the casual reader to suppose that Funk Brothers’ doctrinal foundation rests on the amorphous law of “invention” that existed before the 1952 Patent Act. If the 1952 Patent Act swept away that doctrinal clutter and supplanted it with the pristine law of nonobviousness,479 then the 1952 Patent Act made Funk Brothers irrelevant a few years after its promulgation.

    1. The Davison Chemical Line
    That, however, was not the case. Notwithstanding the subsequent passage of the 1952 Patent Act, the circuit courts of appeal did not ignore Funk Brothers’ inventive application analysis. In a small but significant line of cases decided between 1950 and 1968, the circuit courts employed Funk Brothers’ inventive application test to invalidate claims based on the discovery of a new law of nature or natural phenomenon. These cases, in part through their contribution to Flook, establish a thread of continuity between Funk Brothers and Mayo. They may also portend the future. The claims that were historically invalidated for lack of an “inventive application” exemplify claims that may be vulnerable to subject-matter challenges in Mayo’s wake.”

  • [Avatar for B]
    B
    July 6, 2022 06:52 pm

    Greg ““The Court’s precedents provide three specific exceptions to § 101’s broad patent-eligibility principles: “laws of nature, physical phenomena, and abstract ideas.”… [T]hese exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years,” (emphasis added). Bilski v. Kappos, 561 U.S. 593, 602 (2010).”

    This demonstrates how stupid judicial exceptions are and that Judge Taranto gets 100% correct. American Axle involves laws of nature, and the claimed solution involves laws of nature. Ergo, American Axle is correct using that approach.

    That said, why shouldn’t a person who is first to discover a naturally-occurring molecule entitled to protection under 101?

  • [Avatar for concerned]
    concerned
    July 6, 2022 06:47 pm

    Curious:

    Those records are not just there for a person to review and do mental steps. It was my inventive concept that makes those records available without consent. The process is in my specs., did you read them?

    A person does not just press a button on an “off the shelf” computer and the records materialize.

    I assume you are going to pass on my challenge BECAUSE those records will not JUST be there for you to do mental steps to win the bet. The trick is getting the records in front of you. Take my challenge, take my money and school me on what I do not know.

    And why would I modify the provisional application? It solves the problem. You may have done applications far in excess of 100, my solution was not realized by working professionals and experts IN MY FIELD in excess of one million. Many are attorneys just like you with a law degree. The expert who did “THE” Ohio State University study asked me personally how I get the pertinent records before my application published. I guess he does not know anything either.

    Here is a novel thought: If the USPTO and Board said I met the law as written by Congress and I solved a problem, give me the patent.

  • [Avatar for B]
    B
    July 6, 2022 06:39 pm

    @ Curious “I would wager that Bud and I would be in firm agreement with what Lefstin writes here — essentially bankrupt. I might have to borrow that phrase.”

    Thank you for doing that bit of research, but I still prefer “capricious garbage” to describe Alice-Mayo.

    Also from Prof. Lefstin: “The Court’s framework may short-circuit these inquires in favor of an “I-know-it-when-I-see-it” test for patentability under the guise of subject matter eligibility. But that vague and subjective approach to patentability was exactly what the 1952 Act aimed to replace. ”

    Exactly why Alice-Mayo needs to burn to the ground. I make no excuses for bringing the matches and gasoline.

    That said, you stated to concerned, “You got to appeal the Examiner’s decision to the Board, and you got to appeal the Board’s decision to the CAFC. You got your due process. The fact that you disliked the answer they gave you is not a due process issue.”

    The CAFC hasn’t issued a decision yet, and any agency decision based on nonexistent terms is by definition capricious, and capriciousness is a violation of the APA as well as 5A due process.

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    July 6, 2022 06:06 pm

    “[S]tatutory stare decisis” doesn’t apply. BTW, [the Court] has never claimed the exceptions from Alice Corp. were based on an “interpretation[.]”

    “The Court’s precedents provide three specific exceptions to § 101’s broad patent-eligibility principles: “laws of nature, physical phenomena, and abstract ideas.”… [T]hese exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years,” (emphasis added). Bilski v. Kappos, 561 U.S. 593, 602 (2010).

  • [Avatar for B]
    B
    July 6, 2022 05:37 pm

    @ Curious “You can lead a horse to water …. Dobbs wasn’t about interpreting a Federal Statute.”

    I NEVER said it was – or ever made any such inference.

    Dobbs is exactly about when the courts have the constitutional authority to override the statutory language in situations where the instrument at issue (i.e., the Constitution or a statute) doesn’t provide such authority.

    @ Greg “This sort of misses the point. Dobbs did not involve statutory stare decisis, but attempts to cabin Mayo/Alice necessarily do implicate statutory stare decisis. ”

    Respectfully, “statutory stare decisis” is a doctrine that involves the lasting judicial strength of a judicial interpretation of a statute – not the wholesale rewrite of a statute to embed additional requirements or remove express requirements.

    Go find me the language allowing for judicially-created exceptions in s101 or the Constitution. If such language doesn’t exist, then “statutory stare decisis” doesn’t apply.

    BTW, you know which judicial body has never claimed the exceptions from Alice Corp. were based on an “interpretation?” Ans: the same body that never claimed it had constitutional authority to rewrite s101 from the bench and the same body that held that the courts didn’t have the authority to rewrite the Federal Arbitration Act in Shein v. Archer to include an “exception.”

    That said, I appreciate your comment even if I think it is not applicable. It goes to the idea that Benson and its progeny are merely statutory interpretations (based on language that doesn’t exist) as opposed to flagrant violations of separations of powers.

  • [Avatar for Curious]
    Curious
    July 6, 2022 05:36 pm

    If you would bother to read those cases or Jeff Lefstin’s work, you might stop making hostile grunting noises and could actually engage in a meaningful discussion.
    Hmmm. This is from about 2 minutes of searching. After finding Jeffrey Lefstin’s profile at UC Hastings, click on the link entitled “Associate Dean Lefstin & Other Leading Experts Conclude Current State of Patent Eligibility Jurisprudence ‘Indefensible.'”
    Here is a quote from that article:
    The Supreme Court has interpolated or added its own limitations on patent eligible subject matter into the text of the statute. Although the Court claims that it’s just interpreting the patent laws the way they’ve been interpreted for the last 150 years, that’s very far from the truth. When you go back and actually look at those 150 years of patent history, instead of just skimming a few quotes from the 19th-century cases, you find that the whole course of patent jurisprudence flowed opposite from the way the Court thinks it flowed. The Court’s basis for imposing these limitations on the statute are essentially bankrupt.
    I would wager that Bud and I would be in firm agreement with what Lefstin writes here — essentially bankrupt. I might have to borrow that phrase.

  • [Avatar for Curious]
    Curious
    July 6, 2022 05:31 pm

    Curious: My provisional application was filed in February 2014 prior to Alice.
    Absolute NOTHING prevents a provisional application from being modified in the non-provisional. It is done in the vast majority of instances.

    You and me each put up $500,000 and you prove you can do my process with mental steps. I say you cannot. You cannot even get past consent using mental steps.
    You don’t understand what “mental steps” means in the context of patent law, and I’m not getting paid to educate you. That should be the job of your attorney. Regardless, everything recited in claim 1 of your application could be done by a person authorized to access the data with the appropriate records (printed out). You’ve experienced 1 application being examined under the 2019 Patent Eligibility Guidelines. My experience numbers well into the triple digits.

    We go to 10 random Social Security Offices in New Hampshire, I pick one random name from phone book at each location, and you go up to Social Security representative and get them to release confidential information on that random person from a request from your mind, without the random person’s knowledge.
    Does your claim address that? Oh wait, it doesn’t. It just PRESUMES that access is provided to a Federal Social Security database. That isn’t going to help your claim.

    Talking patent law with you is like trying to teach quantum mechanics to someone who has never taken physics. You don’t know what you don’t know, and what you think you know is frequently wrong.

    Art I, Section 8, Clause 8, of the Constitution grants Congress and only Congress the power “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”
    Are you saying that the Courts have no say in how the statutes are interpreted? That’s an interesting take.

    Garbage isn’t diplomacy. Alice-Mayo is capricious garbage, and the DOJ and USPTO are not only fine with it, but proponents of it.
    Again, you make it out like the Solicitor didn’t recommend the Supreme Court take up American Axle. They did recommend the Supreme Court take up American Axle.

  • [Avatar for Curious]
    Curious
    July 6, 2022 05:05 pm

    But they are still interpretations of the statutory language, not an effort to create common law based on delegated authority to judges to create law.
    Anything can be deemed an “interpretation” if you want to mangle the logic of it bad enough. 35 USC 101 is not a condition for patentability. It isn’t a defense under 35 USC 282. The commentaries/legislative history associated with the 1952 act contain no mention of these exceptions.

    Unless you think that the Justices were deliberately lying about what they were doing when “interpreting” the statutory language and stating in their opinions that they were interpreting. If so, just say so.
    Deliberately lying? Justices doing that? Come on, that’s highly unlikely [just don’t read Alito’s opinion in Dobbs]. One person’s lying is another person’s alternative facts.

  • [Avatar for Josh Sarnoff]
    Josh Sarnoff
    July 6, 2022 05:03 pm

    @B:
    Since you are resorting to ad hominem attacks (“spew this nonsense”), perhaps you can do the 10 minutes of research yourself. The Federal Circuit wasn’t created until 1981, and the CCPA only had jurisdiction from patent appeals from the PTO. There were many other appellate courts issuing decisions about patent eligibility. Jeffrey Lefstin reviewed their post-1952 Act decisions. He did not like the results, but concluded that the appellate courts continued to find “inventive application” to be a requirement _of Section 101_ for decades before Benson (about 1971). If you would bother to read those cases or Jeff Lefstin’s work, you might stop making hostile grunting noises and could actually engage in a meaningful discussion. Until that happens, I’m done with this discussion.

  • [Avatar for concerned]
    concerned
    July 6, 2022 04:58 pm

    Professor Sarnoff: Thank you for your info.

    Does substantial evidence standard mean outright insanity? The USPTO offered zero evidence.

    I understand a difference of opinion. I just do not like feeling cheated by an authority who maintains the law is on their side.

    No reasonable mind can conclude a process that has never been used in commerce as routine, well understood and conventional or a person’s consent can be waived by a third party using the Vulcan mind melt. Could you please explain how the preceding statements are reasonable conclusions?

    Thank you.

  • [Avatar for B]
    B
    July 6, 2022 04:54 pm

    “So Federico, who co-wrote the 1952 Act, didn’t know what he was doing three years later in Application of Ducci . . . ”

    Ducci? Ducci didn’t involve s101, and Federico was a functionary at the USPTO whose job it was to reject everything. Seriously? Ducci is what you’re throwing at me?

    “Nor did any of the appellate court judges who for almost three decades applied the 1952 Act to preserve the inventive application approach to 101 know what they were doing?”

    Josh – b/f you continue to spew this nonsense, do 10 minutes of research. The CCPA reversed the USPTO in Benson b/f the SCOTUS took cert.

    Correct me if I’m wrong, but the people on the CCPA were appellate judges were they not?

    Also, there’s this little-known case from 1966 called GRAHAM v. JOHN DEERE, where the SCOTUS expressly denied “invention” as a prerequisite to patentability while declaring, “”[t]he truth is, the word [‘invention’] cannot be defined in such manner as to afford any substantial aid in determining whether a particular device involves an exercise of the inventive faculty.”

    BTW, you know how many times the SCOTUS referenced the Constitution in Benson?

    ZERO

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    July 6, 2022 04:48 pm

    The two primary considerations the Supreme Court took in Dobbs included: (1) the quality of reasoning of the decision being overturned, and (2) the workability of the decision being overturned.

    This sort of misses the point. Dobbs did not involve statutory stare decisis, but attempts to cabin Mayo/Alice necessarily do implicate statutory stare decisis. There are many more relevant considerations to the analysis in a statutory stare decisis case than those two.

  • [Avatar for C.W.]
    C.W.
    July 6, 2022 04:47 pm

    Possibly inadvertently omitted one or more forms of the word “paltroon” in the previous message. I have to check if anybody’s altered the meaning of it prior to use, b/c I’m sensitized. (Not to be confused with “sensitive”) lol

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    July 6, 2022 04:42 pm

    Thanks for the clarification.

  • [Avatar for Josh Sarnoff]
    Josh Sarnoff
    July 6, 2022 04:37 pm

    @Greg.
    Apologies – I meant WV v EPA (another precedent-destroying decision last week).
    “The limits the majority now puts on EPA’s authority flyin the face of the statute Congress wrote. The majority saysit is simply “not plausible” that Congress enabled EPA toregulate power plants’ emissions through generation shifting. Ante, at 31. But that is just what Congress did whenit broadly authorized EPA in Section 111 to select the “best system of emission reduction” for power plants. §7411(a)(1). The “best system” full stop—no ifs, ands, or buts of any kind relevant here…..

    Some years ago, I remarked that “[w]e’re all textualistsnow.” Harvard Law School, The Antonin Scalia Lecture Series: A Dialogue with Justice Elena Kagan on the Reading of Statutes (Nov. 25, 2015). It seems I was wrong. The current Court is textualist only when being so suits it. When that method would frustrate broader goals, special canonslike the “major questions doctrine” magically appear as getout-of-text-free cards.”

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    July 6, 2022 04:32 pm

    Justice Kagan did not like the Court’s statutory interpretation in Dobbs…

    What “statutory interpretation”? Dobbs was not a dispute about how to construe a statute.

  • [Avatar for Josh Sarnoff]
    Josh Sarnoff
    July 6, 2022 04:32 pm

    @concerned, sorry my earlier response apparently didn’t post.

    Of course the PTO has to apply law to facts in the record (or take official notice of facts). But they may not always do so explicitly, and their fact finding is subject to the deferential substantial evidence standard of review. So you may disagree with their conclusions – what else is new?

  • [Avatar for C. W.]
    C. W.
    July 6, 2022 04:15 pm

    Recall Mark Twain’s quip about the patent systems of Loser countries, as being those which move sideways and backwards, but never forward ?

    I absolutely do not stand for the Judiciary twistingly providing absurd interpretations over 101. I don’t honor any bstdrdzation of the fundamental patent statute of this country. And just b/c some judge dissents on a matter involving an obviously improper and void ab initio alteration of 101, matters not. Their dissent is frivolous b/c the issue is repugnant to the Constitution, inasmuch as no “promotion of the useful arts” is occuring as a result of these bstrdeszations. The opposite is the result. I get a sense they’re a bunch of unclean mudbug (crawfish, crustaceans) suckers. Oh well.

    But what does the rest of the world think, about the american judicary actors ? You and I and the next person…… everybody knows a Sham proceeding when they see one.

  • [Avatar for Silicon Valley Sanguinite]
    Silicon Valley Sanguinite
    July 6, 2022 03:14 pm

    Gotta wonder if the author here had any legitimate belief that there is any causal connection between these two issues, or if they just wanted to say two things at once.

    When the SCOTUS justices apply their newfound judicial “discretion” to 35 U.S.C. 101, I will politely high-five the pigs flying outside the window of my time machine.

  • [Avatar for Joshua Sarnoff]
    Joshua Sarnoff
    July 6, 2022 02:56 pm

    @ concerned. Of course. Their decisions apply law to facts. Absent taking official notice, the facts have to be found in the record. But the examiners may not always do a great job documenting their fact finding and the deferential substantial evidence standard applies to their fact-finding and you may not agree that they are properly assessing the evidence before then. What’s new?

  • [Avatar for concerned]
    concerned
    July 6, 2022 02:39 pm

    Professor Sarnoff: You responded to me on another article.

    Do the USPTO and its Board at least have the responsibility to write factual statements in their rejections? And preferably statements consistent with the record and its evidence?

    Thank you for your thoughts.

  • [Avatar for Josh Sarnoff]
    Josh Sarnoff
    July 6, 2022 02:08 pm

    @B
    “I’m pretty sure he knew what he was doing at the time, and Federico, Cunningham, et al. never once contradicted Rich. ” So Federico, who co-wrote the 1952 Act, didn’t know what he was doing three years later in Application of Ducci, which Rich never contradicted until his “why not the statute” article about two decades later and when he could secure a majority in Alappat about three decades later? Nor did any of the appellate court judges who for almost three decades applied the 1952 Act to preserve the inventive application approach to 101 know what they were doing? I’m fine with people arguing that they don’t like the history. Just don’t try to assert it is what it is not. And yes, Judge Rich fabricated (which is a polite term) his revisionist history. I’m done with this “discussion.”

  • [Avatar for Josh Sarnoff]
    Josh Sarnoff
    July 6, 2022 02:01 pm

    @B:
    “Rich wrote the 1952 Patent Act. I’m pretty sure he knew what he was doing at the time, and Federico, Cunningham, et al. never once contradicted Rich.”
    Federico co-wrote the act, “I’m pretty sure he know what he was doing at the time,” and Rich never contradicted him (including the position in Application of Ducci) until Alappat. Nor did Rich contradict the rest of the Circuit Court judges who upheld the inventive application approach, until Alappat (over strong dissents by CJ Archer and J Nies). Did all of these judges not “know what [they] w[ere] doing,” for almost three decades — before Judge Rich could change the law by adopting a novel and different interpretation of the 1952 Act?

    Josh

  • [Avatar for B]
    B
    July 6, 2022 01:53 pm

    @ Josh “This accepts the revisionist history of Judge Giles
    Rich.”

    Are you serious? Rich wrote the 1952 Patent Act. I’m pretty sure he knew what he was doing at the time, and Federico, Cunningham, et al. never once contradicted Rich. What is “revisionist” is the courts rewriting statutory language from the bench and pretending they have authority to do so because the courts are incapable of discerning their home-brewed idiotic policies from constitutional authority

    @ Curious ” They relied upon Supreme Court case law — not the Constitution”

    Dude, I’m still 100% sure past case holdings on long dead statutes – even by the Supreme Court – doesn’t trump the Constitution.

    “Your second statement is irrelevant since the Constitution does not address patentable subject matter and the exceptions thereto.”

    Art I, Section 8, Clause 8, of the Constitution grants Congress and only Congress the power “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

    Correct me if I’m wrong, but I’m pretty sure s100 and s101 are part of that whole “useful arts” thing.

    ” Perhaps you didn’t like the diplomatic language they used.”

    Garbage isn’t diplomacy. Alice-Mayo is capricious garbage, and the DOJ and USPTO are not only fine with it, but proponents of it.

    “Maybe you didn’t like they didn’t advocate for burning down Alice/Mayo completely — but they were never going to do that.”

    Why not? Garbage is for burning

  • [Avatar for concerned]
    concerned
    July 6, 2022 01:08 pm

    I honestly do not know which observation is more disturbing:

    Judges who add words to the statutory text then refuse to define said words, or

    A government official who writes statements that are not support by the record and appear to be not accurate or logically on the surface?

    I was told my process was routine, well understood and convention. The evidence on record from every Medicaid authority in the nation reveals nobody does my process, individual claims or in combination. No evidence given by USPTO.

    Then the Board tells me my process can be done with mental steps. See challenge below. Really, consent waived by a mental request from a third party without the subject person’s knowledge?

    Yet, I am told I received due process because my application went through the motions.

    Here is a challenge: What patent application could I not defeat if no evidence is needed, I can write any statement I desire to defeat said application, and I can add words to the law and I do not have to define those words? Please name one. Thank you.

  • [Avatar for concerned]
    concerned
    July 6, 2022 12:23 pm

    Curious: My provisional application was filed in February 2014 prior to Alice.

    The USPTO and its Board went through the steps. Of course I do not like their decisions as they are not supported by the record or reality. The outcome was predetermined.

    You and me each put up $500,000 and you prove you can do my process with mental steps. I say you cannot. You cannot even get past consent using mental steps.

    Come on. Let’s prove it. Take my money. We can ask IPWatchdog to cover the event in New Hampshire.

    We go to 10 random Social Security Offices in New Hampshire, I pick one random name from phone book at each location, and you go up to Social Security representative and get them to release confidential information on that random person from a request from your mind, without the random person’s knowledge.

    Come on. Let’s do it. Show me your due process. Let our money do the talking. You can even have the USPTO and its Board assist you in the challenge.

  • [Avatar for Josh Sarnoff]
    Josh Sarnoff
    July 6, 2022 11:49 am

    @ Curious. Yes, there is “invent or discover,” as well as “process, [etc.].” As I expressly stated, SCOTUS in Flook said it was interpreting “process,” based on the (largely pre-1952 Act) history of what was considered eligible. SCOTUS in Chakrabarty was interpreting “manufacture” (citing Brogdex and its limits on what could be considered manufacture as requiring something “markedly different”). You just don’t like those interpretations. But they are still interpretations of the statutory language, not an effort to create common law based on delegated authority to judges to create law. Unless you think that the Justices were deliberately lying about what they were doing when “interpreting” the statutory language and stating in their opinions that they were interpreting. If so, just say so.

  • [Avatar for Curious]
    Curious
    July 6, 2022 11:39 am

    As “B” argues in my blue brief “Where is my due process?”
    You got to appeal the Examiner’s decision to the Board, and you got to appeal the Board’s decision to the CAFC. You got your due process. The fact that you disliked the answer they gave you is not a due process issue.

    Then I better hope for that 1%. It certainly seems that I cannot rely on the constitution (Article 1, Clause 8) or s101 as written by Congress.
    The Constitution says nothing about patentable subject matter.

    My application was before Alice.
    Your application was filed August 1, 2014. Alice issued June 19, 2014. Why do you (continue to) misstate facts?

    I will not go back and amend the claims just to please appointed people who cannot follow the constitution, cannot follow the law as written and who cannot write statements supported by the record. My integrity is more important than the patent.
    SMH

    Josh Sarnoff writes:
    Can you just acknowledge that you don’t like the Court’s statutory interpretation – like Justice Kagan did not like the Court’s statutory interpretation in Dobbs – rather than saying the Court “rewrote” the statute?
    Bud is correct in many things (his problem is that some of his arguments aren’t particularly well-grounded). In this instance, the Court didn’t “interpret” 35 USC 101 to create the exceptions. There is nothing to interpret in 101 to get those exceptions. Rather, SCOTUS created the exceptions out of whole cloth.

  • [Avatar for Josh Sarnoff]
    Josh Sarnoff
    July 6, 2022 11:33 am

    @B: “given that congress wrote out the requirement of “invention” in 1952, I’m really sure the SCOTUS can’t interpret that nonsense back in the Patent Law.” This accepts the revisionist history of Judge Giles Rich. Compare the position of the PTO, based on the views of the commissioner – PJ Federico, the other principal coauthor of the 1952 Act – in Application of Ducci 1955, where it held that Section 100(b)’s process definition (which then provides the meaning of Section 101’s use of the term “process”) is limited to non-analogous new uses and thus includes an “inventive concept” approach within the definition of “process.” Same with “markedly different” for natural product discoveries as “compositions of matter” or “manufactures.” More basically, the courts after the 1952 Act did not interpret it to overturn the “inventive application” approach of the pre-1952 Act, notwithstanding separating out Section 102 and 103 from 101. See Jeff Leftstin’s Inventive Application: A History, where he not only describes the failed effort to explicitly overturn Funk Brothers in the legislative history of the 1952 Act, but also the subsequent (contemporaneous) appellate cases interpreting the 1952 Act precisely not to do what you say it did – remove any consideration of invention from Section 101.

    You may like your revisionist history, but it is just bad history. You may dislike the interpretive approach of the past courts and the current Court (but prefer that in Diehr), but there is nothing historical or accurate about that view of what the 1952 Act accomplished. Just argue for a change in the law, and you are on better ground (although we will then have to decide if there are constitutional limits to the meaning of “inventors … for their discoveries.” Just like that language should not be interpreted to authorize patents for geographic or musical discoveries. But then again, the Commerce Clause was not thought to provide such broad powers at the time of its adoption as it does now….

  • [Avatar for Curious]
    Curious
    July 6, 2022 11:22 am

    Well, it is the whole purpose of the Supreme Court asking the DOJ for help
    They asked whether they should take up the case. There is a difference between briefs involving whether to grant cert and briefs on the merit (after cert has been granted). You almost make it out like the Solicitor didn’t asked the Supreme Court to take up American Axle. They did. Perhaps you didn’t like the diplomatic language they used. Maybe you didn’t like they didn’t advocate for burning down Alice/Mayo completely — but they were never going to do that.

    First, O’Reilly isn’t a s101 case despite the idiots who write to the contrary. It’s a 112(a) issue. That said, old case law does not trump the Constitution.
    I don’t disagree with your characterization of O’Reilly but the point I was addressing is what the court relied upon. They relied upon Supreme Court case law — not the Constitution. Your second statement is irrelevant since the Constitution does not address patentable subject matter and the exceptions thereto.

    Enter Dobbs
    You can lead a horse to water …. Dobbs wasn’t about interpreting a Federal Statute. What do you not get about that? Also, Dobbs was essentially already decided prior to the Supreme Court refusing to grant cert on American Axle. Dobbs changes nothing (as it pertains to patent law).

  • [Avatar for B]
    B
    July 6, 2022 11:19 am

    @ Josh “Bud – in addition to what Curious said, please recognize that the “judicial exceptions” have always been imposed as a matter of statutory interpretation of the Section 101 terms “invents or discovers” and “process, machine, manufacture, or composition of matter.”

    Most respectfully, this is b.s., but I would like to hear your theory as to why the Supreme court should be allowed to “interpret” s100 and s101 to make whole portions of such statutory language void,

    Further, given that congress wrote out the requirement of “invention” in 1952, I’m really sure the SCOTUS can’t interpret that nonsense back in the Patent Law. However – please – your theory on why the Supreme Court can impose the requirement of an “inventive concept” in the Patent Law would be illuminating

  • [Avatar for Josh Sarnoff]
    Josh Sarnoff
    July 6, 2022 09:07 am

    Bud – in addition to what Curious said, please recognize that the “judicial exceptions” have always been imposed as a matter of statutory interpretation of the Section 101 terms “invents or discovers” and “process, machine, manufacture, or composition of matter.” Where does Section 101 preclude discoveries of geographers or musicians? Only by textual interpretation of the meaning of “invents or discovers.” Flook was explicit that it was interpreting “process” as having a patent-specific meaning rather than a general meaning. The only relevance of Dobbs is that the Court is no longer textualist – as Justice Kagan’s dissent made clear – but bases its decisions on policy that departs from text. Finally, as Curious noted, you have described (citing Dobbs) the reasons for departing from prior precedents, not the reasons why courts should adopt a (textualist) meaning that does not depart from a particular meaning of statutory language (e.g., a textualist meaning having ordinary understandings at the time of enactment rather than doctrine-specific meanings at that time) so that any other meaning is a “rewrit[ing]” of the statutory language. Can you just acknowledge that you don’t like the Court’s statutory interpretation – like Justice Kagan did not like the Court’s statutory interpretation in Dobbs – rather than saying the Court “rewrote” the statute?

  • [Avatar for concerned]
    concerned
    July 6, 2022 07:03 am

    “Looking to the CAFC for help is a wasted effort. They are following Supreme Court precedent and their own precedent — period … full stop. Looking to the Supreme Court is 99% a wasted effort as well.”

    Then I better hope for that 1%. It certainly seems that I cannot rely on the constitution (Article 1, Clause 8) or s101 as written by Congress.

    Appointed people doing as they please and subverting the framers of the constitution and our elected representatives. These appointed people do not even write statements supported by the record unless they can prove that my process is mental steps (my $500,000 challenge is open to anyone who thinks they can prove mental steps. I am sure I could raise $25 million for said challenge.) Nor do these appointed people want to see the truth as my evidence was completed ignored.

    As “B” argues in my blue brief “Where is my due process?”

    My application was before Alice. I will not go back and amend the claims just to please appointed people who cannot follow the constitution, cannot follow the law as written and who cannot write statements supported by the record. My integrity is more important than the patent.

    Recently a workaround outside the patent arena is being considered to meet the objective of the patent: To correct Social Security application errors and omissions by well meaning third parties that have prevented people with disabilities from getting their Congressionally approved benefits. To achieve that objective with integrity intact will be a great result despite the patent appointees and their brand of due process.

  • [Avatar for B]
    B
    July 6, 2022 01:42 am

    @ Curious “Did you think the DOJ’s Brief was going to be some guiding light for the Supreme Court?”

    Well, it is the whole purpose of the Supreme Court asking the DOJ for help

    “They weren’t decided on constitutional grounds. They were based upon a long line of cases going back at least to O’Reilly v. Morse”

    First, O’Reilly isn’t a s101 case despite the idiots who write to the contrary. It’s a 112(a) issue. That said, old case law does not trump the Constitution.

    “There are probably only a small basketful of people in this country who understand patent eligibility well enough to write about it.”

    None in the DOJ or in the USPTO or in the Supreme Court

    “The expression is statutory stare decisis. You can find this phrase in the opening of Bilski”

    Enter Dobbs

  • [Avatar for C. W.]
    C. W.
    July 5, 2022 10:36 pm

    101 is merely a statement. It imposes no limitations whatsoever. It refers to the “conditions and requirements of this title”, and by doing that it is clear that 101 in and of itself, does not impose any condition or requirement. 101 tells you directly that the conditions and requirements are found elsewhere in Title 35. Whoever thought that 101 imposes a limitation on patentable subject matter was off their rocker, by its plain language !

  • [Avatar for Curious]
    Curious
    July 5, 2022 09:53 pm

    In sum, the DOJ’s Brief is a prime example of the sort of self-serving nonsense that only a collection of useless government employees, hereinafter referred to as a “gump,” can produce after an entire year of closely reviewing the state of patent eligibility.
    Did you think the DOJ’s Brief was going to be some guiding light for the Supreme Court? There are probably only a small basketful of people in this country who understand patent eligibility well enough to write about it. I very much doubt any of them work in the Solicitor’s office.

    You also have to realize that the Solicitor’s office was asked on their views as to whether the Supreme Court should grant cert — not for an exposition of the current law and what it should look like.

    That is, the biggest problem with Alice-Mayo, which Judge Rader’s dissenting opinion in Bilski en banc also raised was: where do the courts get the authority to violate statutory law?
    The expression is statutory stare decisis. You can find this phrase in the opening of Bilski. I just found a law article from the Notre Dame Law School entitled “Statutory Stare Decisis in the Courts of Appeals.” This is from the Abstract:
    The Supreme Court has long given its cases interpreting statutes special protection from overruling. Two rationales exist for this practice. One line of thought interprets congressional silence following the Supreme Court’s interpretation of a statute as approval of that interpretation. According to this way of thinking, a refusal to overrule statutory precedent is a refusal to veer from an interpretation that Congress has effectively approved. Another line of thought emphasizes that statutory interpretation inevitably involves policymaking, and that policymaking is an aspect of legislative, rather than judicial, power. According to this second way of thinking, the Supreme Court should refuse to revisit its statutory interpretations as a means of encouraging Congress (and other interested parties) to use the democratic rather than the judicial process to resolve the policy questions that lie at the heart of interpretive disputes.

    Who was the author of that article dated 2005? Interestingly enough, that author would be Amy Coney Barrett. From the title, she focused her discussion more on the inferior court’s use of the doctrine. However, her description of statutory stare decisis (and rationales supporting it) are very accurate.

    While most of us (myself included) think that SCOTUS screwed up in interpreting 35 USC 101 (for many reasons — most importantly, IMHO, is that it was never intended to be a condition of patentability), this is the regime we live in because of statutory stare decisis.

    The Dobbs decision demonstrates that, in the absence of any language in the Constitution, the courts have no authority to rewrite statutory language except under extraordinary circumstances.
    That’s not the holding — not even close. Dobbs has nothing to do with “rewrit[ing] statutory language.” Regardless, if SCOTUS was interested in taking up an eligibility case, they could have easily done so in American Axle. They didn’t.

    The same applies to Flook, Bilski, Alice, and Mayo. All these cases stand on exceptionally weak constitutional grounds.
    They weren’t decided on constitutional grounds. They were based upon a long line of cases going back at least to O’Reilly v. Morse. Mostly, they were based upon Benson, which was an exceptional flawed case. However, this has little to do with Dobbs other than that you are trying to argue that SCOTUS should overturn one of its past precedents.

    There is nothing under the doctrine of substantial due process to justify the courts’ tinkering
    Patent law has little to do with substantive due process.

    Looking to the CAFC for help is a wasted effort. They are following Supreme Court precedent and their own precedent — period … full stop. Looking to the Supreme Court is 99% a wasted effort as well. They’ve had more than enough opportunities since Alice came out 8 long years ago. They have little interest in fixing it. As an aside, I suspect that the vast majority of patent applications sitting in the Patent Office were filed post-Alice. As such, these applications should have been drafted and claimed with Alice in mind.

    If you want something changed, you are going to need to go to Congress. The Supreme Court has long embraced their own precedent, and they aren’t about to change it. Remember, Thomas, Alito, Roberts, Sotomayor, and Kagan sat on the Alice Court and it was a UNANIMOUS decision.

    Dobbs changed the law because there was change in the composition of the court and it involved an issue that many of the justices were specifically nominated (by Bush and Trump) to address. There are still 5 judges who decided Alice that are on the current Court — there is no change in composition. Moreover, none of others were placed on the Court with a mandate to fix Alice. Dobbs is not the key to fixing Alice/Mayo.

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