About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Contact the Docs


  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat #8 Overall Rank


« Alice Corp. v. CLS Bank Int'l: Alice's Supreme Court Brief | Main | Utah Judge Denies Myriad's Preliminary Injunction Motion »

March 10, 2014


"However, this point is at odds with the bedrock principle that, in the United States, an inventor is one who conceives of an idea, not one who only reduces that idea to practice."

Sorry. This assertion is just plain incorrect. Why do attorneys get so many things so wrong so often. This kind of nonsense creates is animosity and distrust of lawyers by the public. Patents do not protect "ideas." They protect inventions. There are a number of criteria that must be met. There is nothing in the patent statute that alludes to the protection of "ideas." All you have to do is look it up.


You jump on a quote as not being correct, but your explication of your rage indicates that you do not understand the quote itself.

What you quoted was not a statement of "protection of ideas," but rather was a comment distinguishing the notion of conception by one person from the non-inventive activity of another person who merely acts as the hands of the inventor in a reduction to practice.

Your emphasis seems misplaced on some type of 'use' requirement.

Instead, you seem to ignore the fact that the US Patent system does not have a "use" requirement. The assertion that a patent holder must actually build products or provide services covered is just plain incorrect. Such nonsense is even incompatible with the statute which promotes innovation by providing for improvement patents, improvements on other people's patented inventions that the the improvement innovator would be foreclosed from putting into practice as a product or service.

There is one hyper-morphing individual that insists on repeating this mistake and I wonder - do you post under several sockpuppets related to the Malcolm Mooney persona?

The force you would use to criticize, while your aim is critically off makes me...

When discussing the inventorship of patents, as was the case in the quoted passage, the term "idea" is used to differentiate inventors from non-inventors. The term is used this way by the USPTO and courts:


Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 US 141 - Supreme Court 1989

Kewanee Oil Co. v. Bicron Corp., 416 US 470 - Supreme Court 1974

Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F. 2d 1367 - Court of Appeals, Federal Circuit 1986


"is it appropriate to consider whether a claim element is known when performing a § 101 analysis."


Unless you believe that the principle in Diehr of "claim as a whole" was overruled by Mayo, absolutely not. What we're unfortunately seeing here is the mischief created by the nonsensical logic and reasoning expressed in Mayo that conflates patent-eligibility of 35 USC 101 with patentability under 35 USC 102/103. Again, Our Judicial Mount Olympus created this mess, and it's up to them to clean it up pronto.

If one is a student of history, one can see a certain "peace in our time" appeasement of Breyer that was evidenced in the Prometheus case.

Recall how his dissenting view in a cert denied case was severely lampooned by the Federal Circuit as not dispositive law leading up to the Prometheus case.

If one studies the Justices under small group theory (along the lines of a Prisoner-dilemma scenario), one can readily surmise that Prometheus was a throw-away case. As long as Breyer paid lip service to the cases most on point (which he did) and as long as he said that he was not changing those cases (which he did), it appears that the other Justices simply tried to appease him, and let him run the Prometheus case to the END result that Breyer wanted.

As any student of history will tell you though, appeasement does not work.

Prometheus in its very existence cannot be squared with the jurisprudence that proceeded it. The Supreme Court may not WANT to acknowledge its error (out of hubris or the mistaken notion that to recognize its error will detract from its 'honor,"), but the Court would be wise to recognize that the patent community is well aware of its error.

The en banc fiasco that is Alice is simply a slap in the face, a shot across the bow of the Supremes and the mess they have created in patent law. It needs to be so recognized by the Court for what it is.

I truly hope that this case serves the historical mirror role that Diehr (and to a related extent, Chakrabarty) served.

Nonetheless, that the Supreme Court will recgonize the better path to take, the path that would require courage in the short term to NOT accept 'peace in our time,"... I remain:

The comments to this entry are closed.

July 2024

Sun Mon Tue Wed Thu Fri Sat
  1 2 3 4 5 6
7 8 9 10 11 12 13
14 15 16 17 18 19 20
21 22 23 24 25 26 27
28 29 30 31