Tillis’ Promised Patent Eligibility Bill Would Overrule Myriad, Mayo

“This clearly is intended to overrule Mayo, and because much of Alice is built on Mayo, Alice would at a minimum become questioned.”

REform - https://depositphotos.com/2075803/stock-photo-reform-red-button.htmlToday, Senator Thom Tillis (R-NC), the Ranking Member of the Senate IP Subcommittee, released the first draft of the Patent Eligibility Restoration Act of 2022, which if enacted would, at a minimum, overrule the Supreme Court’s decisions in Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107 (2013) and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012).

“I applaud Senator Tillis for introducing this important legislation to fix our nation’s patent eligibility laws, and to pave the way for America’s continued technological and economic leadership,” Andrei Iancu, former Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office and now a partner with Irell & Manella, told IPWatchdog. “This bill is an important milestone in the effort to modernize our patent laws, and to clear up the confusion caused by recent jurisprudence as to what is patentable and what is not. America’s innovation economy depends on a clear, predictable and well-balanced patent system, which is precisely what Senator Tillis’s legislation would promote in this important area of law.”

Myriad/Mayo Would Be History

To refresh your memory, in Myriad, the Supreme Court held that “a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated…” Ignoring both the U.S. Constitution and the Patent Act itself, the Court would also unanimously state that “[g]roundbreaking, innovative, or even brilliant discovery does not by itself satisfy the 101 inquiry.”

Well, discoveries are identified both in the U.S. Constitution and the Patent Act as constituting patent eligible subject matter, and, if enacted, the Patent Eligibility Restoration Act of 2022 would once again make discoveries patent eligible. Moreover, the explicit language of the draft bill would make patent eligible “a human gene or natural material that is isolated, purified, enriched, or otherwise altered by human activity, or that is otherwise employed in a useful invention or discovery…” Indeed, there is no way to characterize this draft bill as anything other than an attempt to return to the principles of Diamond v. Chakrabarty, 447 U.S. 303 (1980), where human activity was the touchstone to patent eligibility, and explicitly overrule Myriad.

And to refresh your memory on Mayo, the Supreme Court intentionally chose not to apply 35 U.S.C. 102 (novelty), 35 U.S.C. 103 (obviousness) and 35 U.S.C. 112 (description) to evaluate the claims. The Solicitor General of the United States specifically argued that the Supreme Court should look to those other sections of the statute, as the Court itself commanded be done in Diamond v. Diehr, for example. In fact, the Supreme Court acknowledged that the claims in question were not solely directed to a law of nature, but rather that the additional claim “instructions add nothing specific to the laws of nature other than what is well-understood, routine, conventional activity, previously engaged in by those in the field.” It was this well-understood, routine, and conventional activity requirement that overruled the commandment of Diehr not to force all statutory requirements into the patent eligibility requirement found in 35 U.S.C. 101.

Again, focusing on the explicit language of the draft bill, we see that the very heart of the Mayo test, whether what is substantially more is known, conventional, or routine, is prohibited from consideration when determining patent eligibility. The text of the draft says: “In determining whether, under this section, a claimed invention is eligible for a patent, eligibility shall be determined… without regard to… whether a claim element is known, conventional, routine, or naturally occurring.” This clearly is intended to overrule Mayo, and because much of Alice is built on Mayo, Alice would at a minimum become questioned. Regardless, the Alice/Mayo framework would come to an ignominious end.

Retired Federal Circuit judge and of counsel with Irell & Manella, the Hon. Kathleen O’Malley, also reached out to IPWatchdog with her take on the bill. She said:

“I am pleased to see that Congress is offering to provide much-needed clarity regarding 35 U.S.C. § 101. Senator Tillis’s new bill offers welcome guidance to the USPTO, district courts around the country, and the Court of Appeals for the Federal Circuit, as well as our nation’s innovators. By doing so, it would provide all stakeholders with greater predictability about the scope of available patent protections across all technologies.”

Likely Outcome: Uncertain at Best

The draft bill attempts to put an end to judicially created exceptions to patent eligibility by saying that the only exceptions to patent eligibility would now be found within the Patent Act. That seems final, but there have been fears inside the beltway that the Supreme Court could simply in the next case resurrect their line of patent killing precedent by finding that their patent eligibility rulings were mandated by the Constitution. I don’t know that I believe that scenario to be likely, but it must be acknowledged as more than just craziness given those who have expressed such worry over the years. And no one in the patent community has ever lost money betting on the Supreme Court to do the wrong thing with respect to patents—even if because of sheer luck they do occasionally get a decision right.

What is the likelihood of this legislation passing? Uncertain at best. This legislation would absolutely be a solution to many of the patent eligibility problems that have plagued the industry for the last decade. Of course, if the tech giants in Silicon Valley think this will hurt them the bill will be killed, period. But maybe, just maybe, enough patents have died and the nonsense about a drive shaft not being patentable because it employs Hooke’s law will be enough. Because without a fix, nothing is patent eligible anymore, and the Supreme Court seems perfectly comfortable with that until Congress fixes the problem.

Let’s Hope for a 101 Reset Button

I don’t know whether this legislation will pass, but the damage has been done over the last decade. How many startups haven’t started up because of this foolish journey? What long term impact has it caused to American competitiveness? It is impossible to know what will not be because of this ill-advised sojourn that has led to a dead end.

In comic book culture, when a series is run into a dead end from which there can be no future, a reset button is hit, and the series simply starts over as if the previous misguided journey never happened. We can only hope that will be the case with respect to 101.

Tillis also provided a one-page synopsis and section by section analysis of the bill.

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Join the Discussion

43 comments so far. Add my comment.

  • [Avatar for Anon]
    Anon
    August 9, 2022 01:17 pm

    Night Writer,

    Put away the Malcolm Mooney “you are mentally ill” schtick.

    It only makes you look worse (and yes, we have had THIS conversation before too – and no, this move of yours does not count for engaging on the merits).

  • [Avatar for Night Writer]
    Night Writer
    August 9, 2022 12:58 pm

    This bill could wipe out almost all software patents.

    (B) A process that— (i) is a non-technological economic, financial, business, social, cultural, or artistic process; (ii) is a mental process performed solely in the human mind; or (iii) occurs in nature wholly independent of, and prior to, any human activity.

  • [Avatar for Night Writer]
    Night Writer
    August 9, 2022 11:52 am

    B >>>We will need to respectfully disagree, because you cannot convince me the courts have any idea what of they are doing regarding patent eligibiity and the text of s101.

    Probably a good place to leave it.

  • [Avatar for B]
    B
    August 9, 2022 09:15 am

    @ Night Writer “So in Benson they make clear at least they are doing statutory interpretation based on what they believe can be considered a process.”

    Not at all. The SCOTUS decided that software was just like mental processes b/c the USPTO was too incompetent to examine software patents.

    But, please, tell me what language in s101 involves a 2-part test looking for an “inventive concept,” or what ever happened to interpreting statutes based on plain language?

    We will need to respectfully disagree, because you cannot convince me the courts have any idea what of they are doing regarding patent eligibiity and the text of s101.

  • [Avatar for Night Writer]
    Night Writer
    August 9, 2022 02:19 am

    Anon>>> Why do you think that I put forth that the only lasting remedy must include Congress exercising ITS Constitutional authority of jurisdiction stripping of the non-original jurisdiction of patent cases from that very Supreme Court? Do you even understand that such is a thing?

    I think you are exhibiting your mental problems again. Of course I understand this.

    B>>>My friend, there is no authority for the SCOTUS to rewrite the patent law from the bench, and the SCOTUS has never stated that 101 ever violated ArtI,s8,c8 of the Constitution. The SCOTUS engaged in policy making, not Constitutional review, every time it touched s101 in the last 50 years.

    As I said the proof will be in the pudding. We won’t really know what the Scotus is thinking until Congress tries to change Benson or Alice.

    I think my analysis is correct and I think the paragraph I quoted makes it clear.

    Benson >>The question is whether the method described and claimed is a “process” within the meaning of the Patent Act.[2]

    So in Benson they make clear at least they are doing statutory interpretation based on what they believe can be considered a process.

    Benson>>It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a “different state or thing.”

    Note that since Benson it has become clear beyond doubt that information processed is a “different state or thing.” That it requires time, energy, and space to transform represented information from one state to another. (This line in Benson is one reason I write this all the time.)

    Anyway, as I’ve said for years, I think if Congress just makes sloppy changes to 101 that the Scotus is just going to go back to the language in Alice to strike it down.

  • [Avatar for B]
    B
    August 8, 2022 10:22 pm

    @ Night Writer “Those are the only two possible holding that I can think of. B, your holding does not tell us where the Scotus gets its authority to make this statement and section 8 of the Constitution is prominently mentioned in the paragraph explaining their authority.”

    My friend, there is no authority for the SCOTUS to rewrite the patent law from the bench, and the SCOTUS has never stated that 101 ever violated ArtI,s8,c8 of the Constitution. The SCOTUS engaged in policy making, not Constitutional review, every time it touched s101 in the last 50 years.

    If you doubt me, ask yourself where the SCOTUS found constitutional authority to hold software processes run by a machine as patent ineligible in Benson.

  • [Avatar for Anon]
    Anon
    August 8, 2022 07:38 pm

    Seeing “what Scotus does” as a rejoinder (yet again) shows that you just do not grasp the situation.

    Why do you think that I put forth that the only lasting remedy must include Congress exercising ITS Constitutional authority of jurisdiction stripping of the non-original jurisdiction of patent cases from that very Supreme Court?

    Do you even understand that such is a thing?

  • [Avatar for Night Writer]
    Night Writer
    August 8, 2022 06:21 pm

    Anon >>>Hey, I have just been trying to do you a favor to have you ground your rantings in an appreciation of Con Law (which is one of my specialities), but you go on and be you on this topic.

    We’ll see. If Congress tries to amended 101 or something that affects Alice, then we will see what the Scotus does.

  • [Avatar for Anon]
    Anon
    August 8, 2022 03:56 pm

    Night Writer,

    I need not try harder, as you STILL as of yet have not (actually) addressed my earlier points.

    As to Tillis efforts, you misconstrue the position.

    Has anyone told Tillis that what he is trying is flat out unconstitutional? THAT is the essence of what you are saying vis a vis the “Court holding is based on the Constitution.”

    You and you alone have advanced this cockamamie nonsense. There is exactly zero view across the Entire legal landscape that takes even a sliver of a shadow of a hint in alignment with you.

    Hey, I have just been trying to do you a favor to have you ground your rantings in an appreciation of Con Law (which is one of my specialities), but you go on and be you on this topic.

  • [Avatar for B]
    B
    August 8, 2022 11:15 am

    @ Night Writer “What is the basis of your holding?”

    The text of Alice Corp.

    “The Scotus has to have some authority for this holding of yours.”

    The world will be pleased when the SCOTUS finally announces where this authority comes from after 50 years of stepping on legislation.

    BTW, we are now officially passed the 3-month mark (after oral hearing) on In re Killian to see if the CAFC is interested in the answer.

  • [Avatar for Night Writer]
    Night Writer
    August 8, 2022 11:03 am

    Anon, please try harder.

    >>>For an immediate example here, I have pointed out to you that IF your “Supreme Court holding is based on Constitutuon” THEN whatever Tillis tries to do through regular legislation is by rule of law deficient, as one would need a Constitutional amendment to change.

    What? So what I said cannot be true because Tillis is trying something and so Tillis must be right and I must be wrong. Ha! That is a laughable argument. Plus, you supposed black letter law is not so. I even linked to an article written in the 50’s about how Congress can overcome Constitutional arguments without amending the Constitution.

    Anon >>You also are confused as to this notion that WHATEVER SCOTUS has done must somehow be legitimate.

    No I have never said this. That is your interpretation. I said that the Scotus does what the Scotus does and there isn’t a lot that can be done about that as they are the highest court. You keep telling us why what the Scouts has done is beyond their powers. I don’t disagree necessarily but there is no higher court to disagree with the Scotus. The only hope is Congress but saying that the Scotus is making a finding of fact or that there reasoning is faulty is not very meaningful unless Congress does something or another lower court case is granted cert and the Scotus is willing to consider their mistake.

    Again, you can’t seem to be able to tell us what you think the holding is in a sentence or two. Yet I have done this for two possible holdings.

    And, the Constitution is mentioned prominently in the paragraph where the Scotus explain why claims granted to abstract ideas are invalid. Specifically, section 8 and an express statement that claims directed to abstract ideas in violation of section 8 tend not to promote innovation. That is a pretty clear statement by the Scotus.

  • [Avatar for Anon]
    Anon
    August 8, 2022 08:04 am

    Actually Night Writer, “all of that” is in black and white on these pages and none of it is in my head.

    As I pointed out already (you’ve tried this “you just don’t like” line before), you have NOT addressed the points put to you from me on this topic.

    Your supposed answers were mere deflections to your desired points — and those points I have deconstructed.

    For an immediate example here, I have pointed out to you that IF your “Supreme Court holding is based on Constitutuon” THEN whatever Tillis tries to do through regular legislation is by rule of law deficient, as one would need a Constitutional amendment to change.

    You also are confused as to this notion that WHATEVER SCOTUS has done must somehow be legitimate.

    That is just not so. And I have provided you a detailed, three point explication as to why — and it is those very three points that you have NOT addressed (bleating that “you don’t agree” is NOT addressing the points).

    And thus, YOU miss the very core issue at heart here.

  • [Avatar for Night Writer]
    Night Writer
    August 8, 2022 05:43 am

    Anon, all of that is in your head. You “points” I did address. You just didn’t like the answers. And you position is ridiculous as it is based on what the Scotus should is permitted to do rather than what they do.

  • [Avatar for Anon]
    Anon
    August 7, 2022 10:00 pm

    Night Writer,

    The point is that I am correct – whether or not you accept the points provided.

    You were not able to answer those points. You did not even bother to try.

    Maybe HAD you even bothered to try, then you would understand WHY I am correct.

    But this is only an error on your part. You are indeed free to continue making that error, but you are not free to ignore that such is indeed an error.

  • [Avatar for Night Writer]
    Night Writer
    August 7, 2022 06:41 pm

    B:>>The holding is that a business method that use a computer aren’t patent eligible if the business method is really old, and there is no “incentive concept.”

    What is the basis of your holding? The Scotus has to have some authority for this holding of yours.

    Thinking about this more I think the holding could also be:
    Abstract ideas are not eligible for patentability as a matter of statutory interpretation of section 101 because the Congress could not have meant to include abstract ideas when they do not promote innovation and the Congress’s power to write legislation is to promote innovation.

    Those are the only two possible holding that I can think of. B, your holding does not tell us where the Scotus gets its authority to make this statement and section 8 of the Constitution is prominently mentioned in the paragraph explaining their authority.

    If I am correct, then the best legislation by Congress would define what an abstract idea is. That would —by far–be the best end around of Alice.

    Anon, you are being ridiculous. We’ve talked about you behaving like this. This is why so many people won’t talk to you. Stop thinking that just because you made an argument that it is right and that the other person accepted it.

  • [Avatar for B]
    B
    August 7, 2022 05:31 pm

    @ NightWriter “ If the argument isn’t that granting patents to “abstract ideas” is
    unconstitutional because they do not promote innovation, then what do you say the holding of Alice is?”

    The holding is that a business method that use a computer aren’t patent eligible if the business method is really old, and there is no “incentive concept.”

    What the CAFC made of it is quite different, but only because none of those knuckleheads or their shortbus-riding clerks could be bothered to read the whole opinion.

  • [Avatar for Anon]
    Anon
    August 7, 2022 09:55 am

    What is ridiculous is that I have engaged you more than one on this exact point and you refuse to actually recognize what I have told you.

    I don’t play that game of Br’er patch keep repeating your argument.

    Your nonsense remains nonsense — on its face, as if it were indeed a Constitutional holding (as you bleat), then NO mere act of Congress would do (as you would need a Constitutional Amendment to change that “holding”).

    You really should not advance views on the Constitution when you clearly do not understand how it works.

  • [Avatar for Night Writer]
    Night Writer
    August 7, 2022 06:01 am

    Anon >Go back to my previous discussions with you on this matter. I am not going to dredge up answers long ago provided that you simply do not want to accept.

    Anon this is ridiculous. If you can’t write the holding of the case down in a sentence or two, then you don’t understand the case.

  • [Avatar for Night Writer]
    Night Writer
    August 7, 2022 05:58 am

    B> I see your position, but laws of nature, etc. can’t be patented under s102 as people have been using them for quite a while, and “abstract ideas” appear to be motivations, not an invention that satisfies s112(a).

    If the argument isn’t that granting patents to “abstract ideas” is unconstitutional because they do not promote innovation, then what do you say the holding of Alice is?

  • [Avatar for B]
    B
    August 6, 2022 08:35 pm

    @ Night Writer “ So one can see that the argument is based on the Constitution and is based on the argument that granting patents to claims directed to abstract ideas (whatever that means) is unconstitutional.”

    I see your position, but laws of nature, etc. can’t be patented under s102 as people have been using them for quite a while, and “abstract ideas” appear to be motivations, not an invention that satisfies s112(a).

    Anyway, Bilski already declared business methods and software fall within 101

  • [Avatar for Anon]
    Anon
    August 6, 2022 09:19 am

    Further, Night Writer, you are asking questions I have long since answered.

    Go back to my previous discussions with you on this matter. I am not going to dredge up answers long ago provided that you simply do not want to accept.

  • [Avatar for Anon]
    Anon
    August 6, 2022 09:15 am

    Night Writer,

    With all due respect, it is you that is operating here without a clue.

    Your postulations cannot fit – on their face, as even Congress would not be able to advance ANY normal legislation in face of an actual Constitutional holding of the Supreme Court.

    You do not want to hide an elephant in a mousehole, you want to hide every single pachyderm into one.

  • [Avatar for Night Writer]
    Night Writer
    August 6, 2022 07:50 am

    Anon, I don’t think you have a clue.

    The Scotus for some reason stopped short of using the word “unconstitutional” for some reason but that would be the only basis by which they could re-write the patent laws as they have done.

    If this is classified as statutory interpretation, then this must be one of the biggest overreaches in the history of the Scotus.

  • [Avatar for Night Writer]
    Night Writer
    August 6, 2022 07:46 am

    From Alice:
    We have described the concern that drives this exclusionary principle as one of pre-emption. See, e.g., Bilski, supra, at 611-612, 130 S.Ct. 3218 (upholding the patent “would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea”). Laws of nature, natural phenomena, and abstract ideas are “`”the basic tools of scientific and technological work.”‘” Myriad, supra, at ___, 133 S.Ct., at 2116. “[M]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it,” thereby thwarting the primary object of the patent laws. Mayo, supra, at ___, 132 S.Ct., at 1923; see U.S. Const., Art. I, § 8, cl. 8 (Congress “shall have Power … To promote the Progress of Science and useful Arts”). We have “repeatedly emphasized this … concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity. Mayo, supra, at ___, 132 S.Ct., at 1301 (citing Morse, supra, at 113).

    So one can see that the argument is based on the Constitution and is based on the argument that granting patents to claims directed to abstract ideas (whatever that means) is unconstitutional.

    I have a question for the naysayers. What do you think the holding of Alice is? And what other authority would the Scotus have to fabricate these judicial exceptions other than saying that they created them because granting patents to the judicial exceptions would be unconstitutional?

  • [Avatar for Anon]
    Anon
    August 5, 2022 01:42 pm

    B, to your comment to the esteemed Prof. Cole, I agree — and is why I have often advanced the other necessary portion of any permanent fix of eligibility law:

    Congress must use its Constitutional authority of jurisdiction stripping of the non-original jurisdiction of patent cases away from the Supreme Court.

    Way back in 1952, Congress rose up to slap down the Supreme Court (who at that time had christened Itself with the phrase, “The only valid patent is one that has not yet appeared before us.”).

    Of course, to honor Marbury (and to remove the stain of the CAFC being trained like Simians in a cage with a fire hose), Congress should also set out a properly staffed New Article III patent court.

  • [Avatar for Anon]
    Anon
    August 5, 2022 01:28 pm

    Night Writer,

    You make me sad (figuratively).

    Not only have I decimated your view that the past decisions were grounded in a Constitutional basis, but HAD THEY BEEN, this new effort by Tillis would not have been advanced.

    You really do need to recognize when others have a better handle on the law, especially in relation to Constitutional moorings.

  • [Avatar for B]
    B
    August 5, 2022 12:18 pm

    @ Night Writer “I don’t trust Congress for a second.”

    Agreed, and with every iteration in the Senate, the latest language on patent eligibility looks more and more like a gift to SV

    “Probably the best attack on Alice is what is an abstract idea?”

    Abstract idea, inventive concept, and “significantly more” have no meaning. Take your pick. You can’t attack these terms using case law, however. The case law, as everyone knows, is garbage and conflicts one decision to the next.

  • [Avatar for B]
    B
    August 5, 2022 12:10 pm

    At Night Writer “And just to be clear: The holding in Alice is that it is unconstitutional to grant a patent for a claim directed to an abstract idea because it tends to inhibit innovation or does not promote innovation.”

    Alice never mentioned the Constitution, and the SCOTUS announced in Deere that the Patent Law complied with the Constitution. Plus, “abstract” is now includes anything made by man under the sun.

    Alice is just nine idiots in black robes with even more idiotic clerks too lazy to read a bit of case law and statutory language beyond 101.

    Section 103 could have easily killed Alice and Bilski under KSR v Teleflex.

  • [Avatar for Night Writer]
    Night Writer
    August 5, 2022 11:28 am

    And just to be clear: The holding in Alice is that it is unconstitutional to grant a patent for a claim directed to an abstract idea because it tends to inhibit innovation or does not promote innovation.

    That, in my opinion, is the holding of Alice. And if you want to challenge that please tell me what you think the holding in Alice is.

    One wonders why Congress couldn’t grant patents under the commerce clause so that it does not have to adhere to clause 8. Also, one wonders why Congress can’t grant patents and to have some not promote or inhibit innovation but for the patents as a whole to promote innovation.

    Anyway…Alice is total BS.

  • [Avatar for Night Writer]
    Night Writer
    August 5, 2022 11:23 am

    Frankly, I think we need to look through this very closely. I don’t trust Congress for a second. You know there are literally 10’s of millions of dollars being spent lobbying to get the pharma patents separated from the rest of patent law. I worked on this lobbying during the drafting of the AIA. It is real. I don’t trust for a second that some language won’t be slipped in at the last moment that will hamstring software patents.

  • [Avatar for Night Writer]
    Night Writer
    August 5, 2022 11:12 am

    >>>That seems final, but there have been fears inside the beltway that the Supreme Court could simply in the next case resurrect their line of patent killing precedent by finding that their patent eligibility rulings were mandated by the Constitution.

    I have said for years on here that Alice was based on the Constitution as follows. That an abstract idea tended not to promote innovation so patenting abstract ideas was not authorized by section 8. That is the reasoning in Alice where the Scotus makes a finding of fact that permitting patent abstract ideas restricts innovation and does not promote innovation. And I have said that is why legislation is iffy on whether it can overrule Alice.

    I would not that this bill I do not believe is meant to help software but the pharmaceutical industry and that people like Lemley have had their thinking caps on for years trying to figure out how to overrule Mayo and not Alice.

    Probably the best attack on Alice is what is an abstract idea? An abstract idea by ever definition in the Webster’s and the OED is something that is not enabled (a rule like build the machine to operate faster with fewer parts). So Alice must define Abstract Idea in the opinion. And the definition in Alice very, very narrow. Something basically that is notoriously well-known (for like centuries) that has been implemented on a computer without any further innovation.
    (What is absurd is that by the definition of abstract idea in Alice, the claims are per se invalid under 103.)

    Anyway….the shxt just keeps coming.

  • [Avatar for B]
    B
    August 5, 2022 08:25 am

    @ Paul Cole “Anyone who thinks that this complex piece of legislation . . . will simplify matters and overcome the Mayo/Alice problems is indeed an optimist.”

    We find ourselves in complete agreement.

    It’s not good legislation, and even if it were good the courts don’t seem to understand they have no constitutional authority to rewrite statutes from the bench and are not smart enough.

    This bill does little but re-arrange the garbage on the floor of a crack house.

  • [Avatar for mike]
    mike
    August 3, 2022 06:39 pm

    @anon. Yep. I only cite the justices oral arguments because it readily points out that claiming “how to use a computer” was seen by the high court as being patent eligible. But this bill would strip that away. It limits how one can say the how. Per the certain processes listed as a condition under the eligibility exclusions in paragraph (b)(2)(A), if you store and execute (which is what software does — store and execute), but you don’t do anything beyond that, then no patent. Nevermind what the store and execute does to or for the computer. Computer/machine improvements are out. Bye-bye software patents.

    I understand that everyone is desperate for a patent eligibility fix, but that doesn’t mean we should be lazy on interpreting the bill text.

    Antitrust isn’t working, and patents are all we have left against big tech. This bill would mean no one can challenge big tech’s software dominance, so this bill leaves nothing left.

  • [Avatar for Anon]
    Anon
    August 3, 2022 06:10 pm

    That being said, mike, Thank You – as Tillis is NOT ABOVE attempting to sneak in a Trojan Horse (recall how willing he was to throw in absolutely abysmal language in a “112 ‘fix’…)

    In addition to your note, process claims NEED NOT even recite the componentry that enacts the process, so immediately, you have a disconnect.

  • [Avatar for Anon]
    Anon
    August 3, 2022 06:04 pm

    mike,

    The words from the oral arguments have NO real legal effect.

    Sorry, but if you are pinning some positive view on those, you are out of luck regardless of what Tillis is attempting to do here.

  • [Avatar for mike]
    mike
    August 3, 2022 04:58 pm

    I see a MAJOR FLAW and undoing of patent law with the exclusion conditions, even something SCOTUS allowed under Alice and the CAFC as a result.

    Per the Mayo/Alice framework, you cannot get a patent on a process embodied in a machine unless you do something “significantly more”, but the Courts did not create a conflict between that significantly more and useful improvements, as this bill draft would do.

    Recall Justice Scalia, who in the Alice oral argument at 17:06 said: By the way, we have said that you can’t take an abstract idea and then say use a computer to implement it. But we haven’t said that you can’t take an abstract idea and then say “here is how you use a computer to implement it”.

    Recall Justice Kagan, who in the Alice oral argument at 17:29 said: Well, how are you saying the how? Because I thought that your patents really did just say do this on a computer, as opposed to saying anything substantive about how to do it on a computer.

    So, if you say how to use a computer, you’re good, right? Not anymore.

    This bill draft limits how one can say the how. Per the certain processes listed as a condition under the eligibility exclusions in paragraph (b)(2)(A), if you store and execute and don’t do anything beyond that, no patent. Nevermind what the store and execute does to or for the computer. Computer/machine improvements are out. Bye-bye software patents.

    Link to Alice oral argument: https://www.oyez.org/cases/2013/13-298

  • [Avatar for Anon]
    Anon
    August 3, 2022 04:22 pm

    Congress still needs to realize that the Supreme Court will still attempt to rewrite patent law and needs to exercise its Constitutional power of jurisdiction stripping of the non-original jurisdiction of patent cases from the Supreme Court.

  • [Avatar for Anon]
    Anon
    August 3, 2022 04:05 pm

    Litig8or,

    I am not finding any mention of the “offending” us of “over-rule in any of the actual Tillis materials.

    I am just not seeing that “command of the courts” that you have a cite for.

  • [Avatar for Litig8or]
    Litig8or
    August 3, 2022 03:09 pm

    Legislation cannot “overrule” a final Article III court decision. It can, however, “abrogate” a court’s decision — but only as to future cases and controversies. “By retroactively commanding the federal courts to reopen final judgments, Congress has violated this fundamental principle.” Plaut v. Spendthrift Farms, Inc., 514 U.S. 211 , 219 (1995).

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    August 3, 2022 03:00 pm

    As I read this bill, it looks like it would also do away with ODP (see pg. 2, ll. 17–19). That probably does not matter so much, because the logic behind ODP–while not altogether eliminated–was greatly diminished by the change from measuring patent term from grant to measuring it from filing. I wonder if this is an intentional change, or if the drafters simply failed to consider ODP?

  • [Avatar for Paul Cole]
    Paul Cole
    August 3, 2022 01:43 pm

    Anyone who thinks that this complex piece of legislation, once it has been passsed and comes before the courts, will simplify matters and overcome the Mayo/Alice problems is indeed an optimist.

  • [Avatar for Anon]
    Anon
    August 3, 2022 11:04 am

    For those that may have forgotten,

    Indeed, there is no way to characterize this draft bill as anything other than an attempt to return to the principles of Diamond v. Chakrabarty, 447 U.S. 303 (1980), where human activity was the touchstone to patent eligibility, and explicitly overrule Myriad.

    AND

    that overruled the commandment of Diehr

    The Supreme Court (in its addiction to thrusting its fingers into the wax nose of patent law), expressly said that NO PRIOR CASE was overruled (beaming more on Diehr than Chakrabarty), but that this type of wax-molding IS the progeny of the Gordian Knot that currently exists.

    To assert that Diehr was in anyway overruled is simply in error, based directly on the (messed up) words that the Supreme Court actually provided.

    Does this mean that the Supreme Court has in essence contradicted itself?

    Yes.

    That is the important point to remember.

  • [Avatar for John White Sr.]
    John White Sr.
    August 3, 2022 10:28 am

    Yay! Hopefully it can find its way through the lobbyists and become law.

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