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« Conference & CLE Calendar | Main | Court Report »

November 16, 2014


And the risk of being redundant, let me repeat this statement here:

Paul Cole, I told you so.


This 3rd Ultramercial decision is just further proof that the Alice test is broken. Besides the Royal Nine, we now have a Federal Circuit that is growing virulently more anti-patent with each decision. frankly, Lourie and especially Mayer should be retired.

Ultramerical could ask for an en banc ruling, but other than Newman, Moore, and perhaps Chen, who will even do anything but meekly follow this Alice test? What we have here is a complete disaster in terms of a judiciary unhinged from the statutes, as written.

If this case is heard en banc, I think that an argument could be made that the invention is not abstract - when read as a whole, the claim involves a physical, tangible, computer-mediated transaction that was not fundamental or long standing, passes the machine or transformation test, and cannot be performed only by humans.

Of course, the failure of the Alice test is that it could be read either way for many claims.

Regarding the presumption of validity in the context of section 101--and the clear and convincing evidence standard:

What do we mean by a presumption of validity? Does it mean that the challenger of validity is obliged to come forward with evidence (clear and convincing evidence?) of invalidity? Probably.

That can readily be understood if the issue is section 102 or 103--for example, being obliged to come forward with prior art that seems to destroy the patent utterly, or evidence that the patentee stole the invention from another. That would constitute overcoming the presumption with clear and convincing evidence.

But how does that principle apply to an issue of law? It could be evidence of underlying facts, if the 101 issue turns on disputable underlying facts. But what happens, as often is the case, if no disputable facts are relevant? In most (or maybe all) of the cases about which PatentDocs readers complain, the patentee did not dispute the facts on which the court relied.

Suppose the PTO allowed the patent in suit on the basis of the State Street Bank legal standard, as is often the case? For example, if the patent on use of ANDing in the ATT v. Excell case came up tomorrow, what fact issue is there? And how could such a patent require clear and convincing evidence to overturn it? It would seem that there would be a pure issue of law and no disputed facts. So, what room is there for demanding that clear and convincing evidence be adduced to overcome the presumption of validity in regard to such a patent issued under an erroneous legal standard?

That would seem to be the kind of patent case to which Judge Mayer was speaking. That is the kind of patent case Judge Bryson spoke of in the Loyalty case -- "aspirational" patents. Hundreds of them issued in the years between State Street Bank and Alice. Those patents deserve what they are getting--a swift kick in the caboose.

If you are going to shed tears, save them for a meritorious patent that is made to bite the dust under the legal doctrines about which the present complaints are made. Has that happened yet?


Before arguing about the "presumption of validity," let's first talk about whether a challenge to validity based on 35 USC 101 is even proper in view of 35 USC 282. Note that 35 USC 202 refers to "conditions for patentability" which 35 USC 101 is not identified as. The Royal Nine, as well as others, have completely blipped over that issue.

Prof. Stern,

I'm not sure exactly what you are getting at. But you seem to be indicating that there are "good" patents and "bad" patents, and that we should have different rules for each - notably, bad patents should be easier to invalidate.

I don't think this is what the patent law was intended to do. Instead, we need a clear, consistent set of rules that can be used to protect inventions that meet the statutory requirements, and that do not provide the same level of protection to inventions that fail to meet these requirements.

But Mayo and Alice take Section 101 in a direction that goes far beyond the statutory text, and have created an unclear environment. See the recent 101 opinions by Judge Wu and Judge Pfaelzer in the C.D. of California for examples of how the lower courts have struggled with 101 post-Alice.

Countering bad patents with bad law is not a good idea.

And I don't see Ultramercial's claims as being abstract or without merit. And certainly not aspirational, because the invention was commercially successful. They appear to have been innovators who were later copied, and now have no recourse. This is exactly what the patent law was supposed to prevent.


"Those patents deserve what they are getting--a swift kick in the caboose.

If you are going to shed tears, save them for a meritorious patent that is made to bite the dust under the legal doctrines about which the present complaints are made. Has that happened yet?"

Prof. Stern,

Any patent, even bad ones, should have the right to have the laws properly applied to them.

To quote from A Man from All Seasons:

William Roper: So, now you give the Devil the benefit of the law?

Sir Thomas More: Yes! What would you do? Cut a great road through the law to get after the Devil?

William Roper: Yes, I’d cut down ever law in England to do that!

Sir Thomas More: Oh? And when the last law was down, and the Devil turned ‘round on you, where would you hide, Roper, the laws all being flat? This country is planted thick with laws, from coast to coast, Man’s laws, not God’s! And if you cut them down and you’re just the man to do it, do you really think you could stand upright in the winds that would blow then? Yes, I’d give the Devil benefit of law, for my own safety’s sake!

As someone said in a comment on another blog, so now, under Alice, an old-tech item like a hairbrush or a donkey cart is considered patent-eligible, but not a high tech invention like an algorithm to improve the functioning of a router or modem? Is that what patent law is supposed to do?

@The Big Lebowski

Conversely, under Myriad and Mayo, at least one significant old-tech invention, gunpowder, would be patent ineligible today.

Myriad, Mayo and Alice could be used as case studies of why the Supreme Court should not legislate from the bench.

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