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May 27, 2013

Comments

Kevin,

Well written and thoughtful analysis on CLS Bank International and the whole issue/problem with how SCOTUS, as well as the Federal Circuit are interpreting patent-eligibility under 35 USC 101. As far I'm concerned, this "inventive concept" approach to patent-eligibility is blasphemy in view of Diehr's "claim as a whole" requirement, and especially in view of the second paragraph of 35 USC 112 which says that the claims define the invention. In fact, following the mandate of the second paragraph of 35 USC 112 is even more important now, given the significance the AIA puts on what the "claimed invention" is, including whether you're in (or out of) the AIA's new "first-to-file" regime.

"Specifically, no one with any knowledge of patent law can seriously argue that the Court's recent forays in finding exceptions to patent eligibility in any way "promote[s] the Progress . . . of the useful Arts.""

I have a modicum of knowledge of patent lawl and I can for srs argue that the court's recent (and historic) forays into finding exceptions to patent eligibility in all ways promote the progress of the useful arts.

Indeed, it is very simple to so "argue". So simple in fact that no real argument need be made, as opposed to simple observation.

Here it is easy to make a simple observation that where humans are limited to gaining property rights over inventions where the inventions are only specific applications of knowledge, here broadly called abstract ideas, observed natural phenomena and laws of nature then others are free to investigate other applications of the underlying knowledge and be spurred into making other such inventions for which they can likewise claim their own property rights AND be free to practice such as their leisure without fear of trespassing on others property rights the progress of the useful arts will be promoted relative to a system where the opposite is true and the later part of the statement just made is not the case.

Kind of a mouthful, but it isn't that difficult to wrap your mind around. Indeed, courts have been doing so for over a century.

I also note that while I have pity for your, and other's, position on "the retractable problem" so to speak I find myself coming down with the majority. One cannot have a claim which is getting a presumption of validity and voluntarily contrue it to be invalid on its face (due to 112 1st WD) when a perfectly good construction allows it to be perfectly valid and completely in line with the specification. Just as the office must consider the specification in all claim constructions it makes (BRI ivo the spec) so too must courts consult the spec in every claim construction to see how the words are being used.

To do otherwise is madness. UNADULTERATED MADNESS!!!!!!!!!!!

http://www.google.com/url?sa=t&rct=j&q=&esrc=s&frm=1&source=web&cd=6&cad=rja&ved=0CE4QtwIwBQ&url=http%3A%2F%2Fwww.youtube.com%2Fwatch%3Fv%3Dv7cW2nMf1gk&ei=sRmlUfLaF4zo0wG_3oC4DA&usg=AFQjCNGMfbX8U9aMGqDKsyND5QJK78L8zA&sig2=G7_Va3ttA4csCEIFyadXZQ&bvm=bv.47008514,d.dmQ

In any event, you guys get these wacky ideas about judges and examiners pulling a "gist" into the claim and just can't shake that you're getting a bum deal. Nobody is doing any such thing in a situation like retractable. Nor are they ignoring the express language used. In Retractable they're simply finding out what the express language used means ivo the original disclosure and in CLS they're simply analysing the language for its practical effect. Neither of which are particularly bad things to do.

In the area of patent law, the supreme court has more often than not been in over its head for some time. The CAFC is struggling as well, partly from impossible to decipher supreme court direction and partly from its own divisions. What congress did in creating the CAFC arguably is now significantly or mostly undone by the supreme court. At least for 101 and 103, its back to 1952, the flash of genius and other fun-filled metaphysics.

IMHO, it is fair to lay most (~90%?) of the blame at the feet of congress. It is their job to (i) craft laws that are reasonably clear and implementable and (ii) fix what was broken or sub-optimal when deficiencies become apparent over time. Congress does not have the courage to do any of that because they know, consciously or not, that they do not have the expertise to do a good job.

When it comes to patents (and tax code and probably lots of other things) congress is a failure. It is more than fair to think that the courts are not going to resolve this any time soon, if ever. Congress is AWOL. Of course, that makes sense since the next election is just around the corner (November 2014). Those folks are not stupid when it comes to their own interests. Fear of re-election trumps fear of incompetence. The stench of fear is thick and palpable.

So, we will continue to snorkel in hog pen mud for a while at least, maybe forever. If one believes that patents and associated coherence are good for the economy and the general welfare, we will suffer the consequences. But, if incoherence and an irrational patent process are better, then we reap the benefits. It all depends on one's point of view and personal interests.

"When it comes to patents (and tax code and probably lots of other things) congress is a failure. It is more than fair to think that the courts are not going to resolve this any time soon, if ever. Congress is AWOL."

Indeed, agreed.

In a way, you might even say that the problems with 101 atm (if there really are any) are quite literally part of the price we pay to live in our democracy.

"What congress did in creating the CAFC arguably is now significantly or mostly undone by the supreme court. At least for 101 and 103, its back to 1952, the flash of genius and other fun-filled metaphysics."

Going to have to disagree there professor. Congress did more by creating the CAFC than the CAFC accomplished by trying to do an end run around the 101 law, and changing us to a TSM. A lot more. For instance, how MPF claims with algorithms are handled is still an area where the USSC must put the law back right. Likewise, functional language could use a bit of reigning in. But even once those few things that the CAFC slide in edgewise with a wink and a smile are undone, most of what they've accomplished, the lion's share in fact, still stands to their credit and as testament to what the congress accomplished.

Mind you, I think the courts are doing a haphazard job dealing with things like abstracta, and that mathematics and software pose a real, philosophical reason to argue about their bases. Godel, for instance, is a mathematical realist like myself, and views the abstract entities of mathematics to be "real" entities existing independently of human knowledge, making them either abstract (under a Platonic view) or natural phenomena (under a more modern, Godelian view) or both. Others like Mill and Sidgwart attribute all of mathematics to psychological phenomena, and modern post-modernism sees it as socially-constructed, which may be your view, Kevin.

There's plenty of rational argument to be made about the nature of algorithms in software, many of which can be reduced to mathematical functions, and so some of good will and intelligence argue they too ought to be excepted from monopoly.

In sum, there are reasonable, important philosophical bases for each of the positions now being argued about, and patent lawyers may even disagree as might others, given the tricky nature of the objects involved, the ongoing nature of the debates about the ontology of those objects, and the ethical and practical concerns that courts must address when extending a monopoly privilege over those objects.

Kevin,

Your comments about what the Supreme Court has done to Section 101 are quite astute. I find it particularly interesting that justices that with respect to the constitutional law say they are interested in the "framer's intent" and the "plain meaning" of words, seem quite willing to create judicial exceptions to Section 101 that could effectively eviscerate parts of this statute. For example, following the line of reasoning in Lourie's opinion in CLS, Supreme Court precedent could be used to invalidate nearly any chemical process. A more clear case of the Supreme Court legislating from the bench is hard to imagine.

I really wish the judges on the Federal Circuit would call out the Supreme Court on this in a manner similar to Montana Supreme Justice Nelson in his dissent in the Western Tradition case. Basically, Justice Nelson stated that the Citizens United case was a horrible decision on many levels and illustrated why it was a horrible decision, but found the Montana campaign finance statute unconstitutional based on the terrible holding of Citizens United.

In an ideal world, in CLS, I would have liked to see the entire en banc Federal Circuit demonstrate why the Supreme Court's decisions with respect to Section 101 has resulted in a situation where based on Supreme Court reasoning, virtually no claimed process qualifies as a patent eligible "process" under Section 101, i.e., that effectively, with respect to Section 101, the Supreme court has interpreted the term "any new and useful process" to only mean "only a select few new and useful processes."

"There's plenty of rational argument to be made about the nature of algorithms in software, many of which can be reduced to mathematical functions, and so some of good will and intelligence argue they too ought to be excepted from monopoly."

In sum, there are reasonable, important philosophical bases for each of the positions now being argued about, and patent lawyers may even disagree as might others, given the tricky nature of the objects involved, the ongoing nature of the debates about the ontology of those objects, and the ethical and practical concerns that courts must address when extending a monopoly privilege over those objects."

Then lobby Congress to change the language of Section 101.

If you are okay with justices or judges adding numerous additional tests for patentability to a statute that does not indicate such tests are necessary, what is to limit a judge or justice from interpreting a law anyway the justice or judges wants?

On its face, Section 101 to make the patent eligibility test an easy test to pass and for decades the courts have treated Section 101 as an easy test to pass.

The recent Supreme Court decisions are a major departure from the historic way that Section 101 has been interpted.

101 - a wide open gate.

This meaning should be evident in any philosophy.

The Supreme Court has recognized such exceptions for a long-long time (see Le Roy v. Tatham to begin with and all its progeny), and in the US, courts DO make law in how they interpret statutes. At this point, I'd say the onus is on you and others who wish to open up laws of nature, abstract ideas, and natural phenomena to patent-eligibility to lobby Congress. The court's existing exceptions are well-settled, the tricky part is determining what fits into them.

"The court's existing exceptions are well-settled."

David K.

Only because those "courts" choose to ignore the statutory language of 35 USC 101 which contains no such exceptions; that's not principled decision making, only unprincipled "judicial activism." Remember also that Le Roy v. Tatham (and its progeny) came before current 35 USC 101, not after, so if Congress wanted there to be such "exceptions," they could have included them but didn't. So contrary to what you suggest, the "onus" is on you, David K., not us who say such "exceptions" no longer exist in view of the "plain language" 35 USC 101.

"At this point, I'd say the onus is on you and others who wish to open up laws of nature, abstract ideas, and natural phenomena to patent-eligibility to lobby Congress."

Please point to a post by me or someone else who has argued that Section 101 should be interpreted broadly that states laws of nature, abstract ideas or natural phenonmena should be patent eligible under Section 101.

That's is not what we are arguing. What many of us are arguing is that virtually any conceivable patent claim must involve the laws of nature, an abstract idea or natural phenomena.

Also, by your logic that the Supreme Court can interpet a statute any way it wants to, a later Supreme Court could theoretically decide that laws of nature, abstract ideas and natural phenomena are patent eligible. Would you be okay if that were the result of a future Supreme Court decision? As you say "the courts DO make law" . . . .

"At this point, I'd say the onus is on you and others who wish to open up laws of nature, abstract ideas, and natural phenomena to patent-eligibility to lobby Congress. The court's existing exceptions are well-settled, the tricky part is determining what fits into them."

I don't see anyone on this blog arguing that laws of nature, abstract ideas or natural phenomena should be patentable.

What many of us are arguing on this and other patent-related blogs is that it is nearly impossible to write a claim that does not involve a law of nature, an abstract idea or a natural phenomena. Therefore, the Supreme Court's and Lourie's CLS opinion could be used to significantly limit the scope of Section 101, which is supposed to have a broad scope.

Also, based on your reasoning, you would appear to be okay if a future Supreme Court decides to find that under certain circumstances laws of nature, abstract ideas, and natural phenomena are patent eligible due to finding an exception to the current judicial exception to Section 101.

You appear to be okay with the Supreme Court trashing Section 101, because they are trashing it in a way that you favor. But would you feel the same way if ta future Supreme Court chose to broaden the scope of Section 101 in a way you do not favor?

One of Kevin's key points is that it is very dangerous to allow a court to virtually ignore a statute it doesn't liek and replace it with what they think is a "better statute."

For example, when the Supreme Court in Prometheus and the CAFC judges in CLS came up with their own new versions of Section 101, do you think it took any time to consider how their intepretations of Section 101 could be used by an Examiner, an attorney, etc. to find nearly any type of process claim to be patent ineligible?

Actually, I'm saying we probably all generally agree that the three recognized exceptions are valid, but I disagree that it is activist of the court to make decisions about what falls into those exceptions as philosophically and logically there are certain tricky areas (e.g. math and algorithms) about which people of good will and intelligence may disagree. Like the question of what exactly constitutes "due process" the questions about what fits rightly into these 101 exceptions are hard, and patent attorneys don't have a monopoly on the true answers to these questions.

...and yes, obviously if the Supreme Court decided tomorrow to throw away its past ruling about these exceptions, and discard them completely, then that would be the law of the land. That's how our system works.

David Koepsell states "That's how our system works."

David, I invite you to read carefully each of the Supreme Court decisions dealing with 35 USC 101 that were written after 1952.

The Court does NOT sua sponte decide to write patent law - no matter how much you may think so. Yes, courts and even the Supreme Court can and do write law. But that does not always mean that such writing has the proper authority, and is thus, actual good law.

Critical to each and every decision on 101 post 1952 by hte Supreme Court is a very careful exposition of what authority the Court is using - and that authority, per the US Constitution resides not in the judiciary for this explicit set of law, but rather in - and solely in - Congress.

There is indeed a fine line between interpretation and writing of law. Patent law, in particular, does in fact hold a special place as to exactly whom has the authority to write that law.

Even the Supreme Court is not a law-making body unto itself.

"Actually, I'm saying we probably all generally agree that the three recognized exceptions are valid."

David K.

Actually we (including MarkG) don't agree with your statement, and likely will never agree with it. Also, it is an "activist court" that decides to make "exceptions" to 35 USC 101 that the plain language of this statute doesn't include. We're talking law here, not philosophy or any other rhetorical nonsense. As far as "logic" goes, I've already expressed to you my view that there is no universal logic, only that which is tied to a specific set of rules; that's certainly true when we're talking law (not philosophy).

I think that philosphers will not recognize law on purpose, albeit perhaps without a formal recognition that they are doing so.

For example, law does require a certain demarcation between 'right' and 'wrong.' This demarcation is required for proper notice and due process. This does tend to leave out the philosopher's 'wiggle room,' and their innate tendency to not want to see in black and white. This can be seen in David K.'s comment about "people of good will and intelligence may disagree", which I take as a bit of sophistry (especially in regards to discussions of 101 and the interplay of that law with what software is).

"Critical to each and every decision on 101 post 1952 by [the] Supreme Court is a very careful exposition of what authority the Court is using - and that authority, per the US Constitution resides not in the judiciary for this explicit set of law, but rather in - and solely in - Congress."

Here, here, Skeptical.

Just wondering why you would want to discount the pre-1952 cases carving the exceptions when the language of sec 101 almost precisely echoes that of the 1793 Patent Act? Has the Supreme Court only suddenly become "activist"?

"Patent Act of 1793, Ch. 11, 1 Stat. 318-323 (February 21, 1793) Ch. 11 SEC. 1. Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That when any person or persons, being a citizen or citizens of the United States, shall allege that he or they have invented any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement on any art, machine, manufacture or composition of matter, not known or used before costs, and the patent shall be declared void. SEC. 7."

Statutes often fail to demarcate bright lines, especially when the lines are inherently fuzzy. Its not sophistry to point out that even the brightest thinkers are still debating the nature of math and logic. postmodernists like Eric Gut tag are an excellent example, they diverge greatly from people like Husserl or Gödel.

David,

The 1952 Act removed the common law power granted to the judiciary to evolve the understanding of 'invention.'

That is why the Supreme Court became so careful in its wording choices for 101 cases after that change in law.

I would welcome you to understand this as you review the post-1952 cases. Words do have meaning - and you must accept that meaning even if you don't like what that meaning entails. For this point here, that means that you must accept (as even the Supreme Court does) where that body draws its authority from. I recommend that you pay special attention to the words about not adding words that Congress did not use (even as the Court did that very thing with its addition of implicit meanings).

I do hope you can recognize sophistry in its naked form. Even if you do recognize it, you have shown yourself to be already driven by a desired end result, so whether your view will, or even can, change leaves me..., well:

Skeptical: ...and yet they have retained their self-created exceptions post-1952, and jealously guard them citing their pre-1952 decisions. Why? could it be there is continuity in their reasoning and aims, and that bright line rules will always be challenged by things in the world that defy such bright lines, like the distinctions between math, algorithms, laws of nature, abstracta, etc.? Sometimes the law is insufficient to define tricky things, because there is a world out there, and it is more complicated than lawyers might prefer. And even in the law, lawyers aren't the last word on the nature of all things, that's why in many disputes, experts are called. Sophists tried to discard all distinctions with words, Socrates, Plato, and Aristotle tried to rescue philosophy by showing that there are categories of being, and modern ontology tries to apply their methods to the world, but still runs up against difficult objects. One such category includes the objects of math, and there is still general disagreement about their nature. No declaration of law will solve that.

"In addition, Sophists had great impact on the early development of law, as the sophists were the first lawyers in the world. Their status as lawyers was a result of their extremely developed argumentation skills.[13]" http://en.wikipedia.org/wiki/Sophism

David,

You are quite missing the point about the legal change that happened in 1952.

I answered your question as to why I provide that focus, and your response is an underwhelming attempt at fortifying your view.

Go and do as I ask and re-read the decisions with the understanding of what I have given you. Note the authority - and note the sophistry of the Court.

There is a much simpler reason why they jealously guard their self-created exceptions, and it has nothing to do with rightful, CONSTITUTIONAL, authority.


Further, whether or not the world 'out there' is complicated is quite frankly meaningless drivel. Congress wrote the law under the proper authority. The problems we are seeing are precisely because the Court has jealously retained their self-created exceptions. That, quite in fact, IS the sophistry of out of one side of the mouth warning against adding words to what Congress has written and out of the other side of the mouth finding 'implicit' words to add.

It is with no small irony that I note the attempt to return the meaning of the term sophistry to its ancient roots, instead of applying its current meaning (which is obvious in context) is but a confirmation of my 11:40 and 7:19 posts.

David, I cannot force you to learn if you are steadfast in being unwilling to learn. That is why I remain:

Skeptical, I am a skeptic in the truest sense too, and so I will re-read the decisions. But I do think the law ought to take heed of the world too, and in the world outside the law, the nature and definitions of things like abstracta is anything but certain. Thanks for your commentary and criticism.

"Its not sophistry to point out that even the brightest thinkers are still debating the nature of math and logic. Postmodernists like Eric Guttag are an excellent example, they diverge greatly from people like Husserl or Gödel."

David K.,

There you go again, putting labels on how I think. Actually, I'm probably more of a traditionalist/textualist in interpreting both statutory and Constitutional law, but trying to define how I think on all legal issues won't work. Also, I went to a well-respected small liberal arts school, Carleton College, so while I'm chemistry major, I did get a well-rounded education in many other non-science subjects (philosophy wasn't one them, thank goodness, but I got enough of that in other classes and from fellow classmates).

As for the "law tak[ing] heed of the world," that's a very slippery slope, as it's been used by tyrants in the past to justify the "means to the end." The reliability of U.S. legal jurisprudence is built on the doctrine of stare decisis, and when the courts choose to ignore that doctrine (as the Supreme Court and other courts have done recently), chaos is the result, as we're currently experiencing establishing an objective and reliable standard for determining patent-eligibility under 35 USC 101. And as Skeptical correctly points out, it's Congress' call, not the courts, as to what's in the patent statutes, including 35 USC 101.

"You are quite missing the point about the legal change that happened in 1952."

Skeptical bro, I think everyone understands the "point" you're making. But it was determined a long time ago by the USSC that the new language included the exceptions just the same as the old language did. The congress has had 60 years to correct this. Are they really that slow or do you suppose that perhaps, just perhaps, the USSC got that part right?

"And as Skeptical correctly points out, it's Congress' call, not the courts, as to what's in the patent statutes, including 35 USC 101. "

And here all along I had been thinking that it was the courts that determined what was in the law, aka interpret it.

Eric, I wasn't talking about your interpretation of the law, but about your interpretation of the natures of math and logic: your views are quintessentially postmodern. Nothing wrong with that, I just disagree.

6,

Do you understand the distinction between interpretation and writing?

Do you understand the sophistry that I point out?

Of this, I remain...:

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