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« Federal Trade Commission "Meets the Press" | Main | Court Report -- Part III »

September 10, 2014


"[o]ne of the difficulties we have when trying to draft or amend claims so that they withstand scrutiny is that there are very few examples of claims that are patent-eligible under CLS Bank."


It's not "one of the difficulties," it's major difficulty with Alice which remains, in my opinion, a travesty. How the Royal Nine can say in footnote 3 of Alice that they are compliant with Diehr's requirement that the claim be judged "as a whole" defies all logic. (I said the same thing about Mayo.) In addition, not only will the Royal Nine not define for us "mere mortals" what they mean by an "abstract idea," but how, pray tell, do you tell a client what "something more" means, given that the Royal Nine won't even define that?

I'll at least give the PTAB credit for being brave enough to at least tell us "mere mortals" what isn't an "abstract idea," but I wouldn't hold my breath that this decision will survive an appeal to the Federal Circuit; so far since Alice , they're just as bad as the Royal Nine on this issue as shown by Planet Bingo and Buysafe. Only Congress can straighten out this mess, and tell the Royal Nine that they've overreached their constitutional authority to interpret, not make, law, including telling them to "cease and desist" from engrafting onto the patent statutes "exceptions" and "requirements" that are not explicitly there, 35 USC 101 being a prime example of this overreach.


Note that Dr. Noonan and I have discussed this and while we both agree that we must continue to represent our clients, we have not arrived at the same page as to the IMMEDIATE effect - and visceral need for a more permanent solution - related to the inadequate direction provided by a Court that insists on writing (implicitly and/or explicitly) patent law and changing the rules of the game years after applications are submitted and incapable of responding to the changing rules.

I think the first order of business for the Court is to clarify whether or not its changes are statutory or constitutional in nature.

If statutory, then Congress can act to solidly clarify.

If constitutional, then the Court should act appropriately to notify Congress of the explicit constitutional shortcoming so that the appropriate clarity can be obtained.

EITHER WAY, we have a serious separation of powers issue that should not be ignored. The Court is acting so as to keep its fingers in the pie of setting patent policy instead of providing decisive and helpful (to the party participants, the patent community at large, and to the entire nation) guidance.

I have seen calls on other blogs to NOT discuss the seriousness of the constitutional question on the Court actions, and find it rather unbelievable that some do not want to question the seriousness of the situation. Have these people not studied US jurisprudence and do they not realize that the pinnacle case on separation of powers dealt with a far more trivial case of a simple appointment of an undelivered commission? (See Marbury v. Madison) While that case dealt with a power struggle between the Judiciary and the Executive, we have here a much more important (and much longer fought) battle between the Judiciary and the Legislature.

Appellate jurisdiction limitation is one of the powers of the Legislature, and patent review - especially when that review is based on policy - is NOT a matter of original jurisdiction of the Supreme Court.

There are some very real and very powerful options not yet explored in detail.

However, these options do require a Congress willing not only to hear and recognize the power struggle for what it is, but to care enough to act in a unified manner above the art-specific divide-and-conquer rhetoric that has flooded the political stage.

Will that happen? Sadly, I remain...

Michael, would it be possible for Patentdocs to invite counsel for US Bancorp to comment in reply to your comments?


Such comments would be informative, but usually counsel will refrain from discussing ongoing cases, for purposes of maintaining privilege, as well as other concerns.


"I have seen calls on other blogs to NOT discuss the seriousness of the constitutional question on the Court actions, and find it rather unbelievable that some do not want to question the seriousness of the situation."


I've seen those comments as well, and like you, find it astounding that the Royal Nine cannot be criticized for constitutional overreach. No one is above the law, and that includes the Royal Nine. And as you noted, the appellate review by the Royal Nine (other than that specified in the Constitution) can be limited by Congress, something even earlier Royal Nines (see Ex parte McCardle) recognized Congress can rightfully do.


Thanks for the case cite. A quick synopsis can be found at: http://www.casebriefs.com/blog/law/constitutional-law/constitutional-law-keyed-to-chemerinsky/the-federal-judicial-power/ex-parte-mccardle/

An interesting read - especially in relation to the clarification I noted above (statutory or constitutional OR OTHER basis):


So, the could-do-it-manually-but-doing-it-on-a-computer claims in Diamond v. Diehr are patentable (even according to Alice v. CLS Bank) because their operations are performed with respect to rubber, and the could-do-it-manually-but-doing-it-on-a-computer claims in U.S. Bancorp v. Solutran are patentable because their operations are performed with respect to paper. Thus, perhaps SCOTUS and the PTAB are saying that a claim is not directed to an abstract idea if it requires interaction with an object having physical properties. Conversely, a claim IS directed to an abstract idea if does not require interaction with an object having physical properties, such as where it operates on information only. Perhaps data compression methods would also be patentable as they inherently affect objects having physical properties (i.e., data storage devices), whereas cryptography methods would not be patentable, however useful they may be.


I think you are on to it - if there is some sort of analog-to-digital (or vice versa) interaction in a claim, that may be a saving grace.


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