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April 28, 2016


Hey Kevin,

Glad you pointed out the "fantastical" and "Alice in Patentland" views of Breyer. As far as I'm concerned, Breyer is a disingenuous philosophy "wonk" whose virulent anti-patent bias is evident and equivalent to that of William O. Douglas. In particular, Breyer's Mayo opinion is an utter disgrace, wrong on both the law (conflating several patent statutes and essentially paying lip service to Diehr's "claim as a whole" requirement) and on the facts (characterizing a drug dosage calibration method for a man-made drug as a "law of nature" is bizarre). The mess we now have in Sequenom is a direct result of this nonsense in Mayo. He may find his "hypotheticals" about how many patents are improperly issued (as witnessed in Cuozzo Speed) or his "jokes" about certain inventions (for example, his comment in Alice that suggested a computer-implemented business system could be likened to an abacus) humorous, but I and many others don't. If you sense I despise this Justice and his rhetorical nonsense, that would be correct.

What is more dangerous than a brilliant mind, steeped in misinformation and bias, in a position of absolute judicial power?

Justices use their life experiences along with their legal acumen to make decisions. Unfortunately patent law appears to be an area of weakness for just about all of the Justices on both counts ([particularly Justice Breyer). It is too bad they do not recognize this and act more deferentially to the Federal Circuit, which is filled with judges that are strong on both of these counts.

What shocks me about someone like Bryer is that he is so obviously way out of his education and experience areas, and yet he pontificates. There is just so much wrong with Bryer says and does. Just unbelievable that a person with such a low quality to his character is on the SCOTUS.

The "logic" of Breyer vis a vis "natural law" of a man made drug - if consistently and objectively applied - means ALL Pharma is "directed to" laws of nature; and since medicine is geared to returning a body to its natural state, the end result is also a natural state (there is nothing "substantially more" in the result); all that remains are the different afflictions, which of course can ALSO be characterized as "laws of nature."

If one connects these dots (and does not attempt to change the "logic" for convenience's sake), we have the CLASSIC exception swallowing the rule.

That says something about the exception.

Are the Supremes listening?

Sadly, I remain...

This column has a few of its own factual inaccuracies, the worst being the inclusion of universities among the group of abusive litigators. Research, including my own, shows that universities rarely engage in the kind of litigation tactics for which the archetypical patent assertion entities are known.

Dear Professor Allison: let me clarify.

If you have read this blog you will understand that we don't have much use for pejoratives or invective, and the term "patent troll" is precisely that. My point was that big companies have applied the term to universities as well as other entities with just as little justification.

But you would be living in a fantasy land if you thought that the facts as you have recounted them will be dispositive to those politically inclined to besmirch and vilify anyone having the temerity to actually assert a patent, regardless of its merit and particularly if they are in a class that can be categorized as a "troll."

Which was, in some ways, my point.

Thanks for the comment

All: let's be clear. Justice Breyer is not stupid or benighted or evil. He is trying to make the questions before him abstract so as to test the limits of the doctrines he is working to apply.

However, the problem is that when you think in hypotheticals on a subject matter so grounded in science and technology (i.e., reality) the quality of your conclusions becomes bounded by the aptness of your hypotheticals. Bad hypotheticals make bad law - as we saw in Myriad. DNA is not a baseball bat inherently present in a tree, or a chocolate chip cookie or lithium ore or any of the other analogies used by the parties, the government and the Justices in the oral argument. And the result (at least as originally interpreted by the USPTO) posed a threat to natural product patenting (and technology) that extended far beyond the simplistic question presented of whether human DNA should be patent eligible.

Thanks for the comments.

You should do a column on J. Stevens. I think if you read his dissent in Bilski carefully what you get is the following. That human thought occurs outside the brain in a spirit world.

I think that the opening comparison between Justice Breyer and Justice Holmes' Buck opinion is in poor taste. Other than that, however, this post is well constructed and right on target.

I admire and respect Justice Breyer immensely. He has done some excellent work in many areas of law. But his *patent* jurisprudence is atrocious.

Regrettably, he is not unique, in this respect. Justice Kennedy's patent work is just as bad, and Justice Thomas' only slightly better.

Justice Sotomayor has not written enough IP cases for me to have much an opinion of her work one way or the other. Her i4i opinion seemed pretty good to me. While I liked the holding of her Octane opinion, the test she enunciated to reach it was a bit mushy and uninformative for my taste.

In fact, the only two justices still serving whose IP jurisprudence is mostly good (in my humble opinion) are Justices Ginsburg and Kagan.

The SCotUS is clearly in over their heads in most patent cases. As ScottE said above, they would do well to realize this and decline to take cert so often as they are lately wont to do.

"All: let's be clear. Justice Breyer is not stupid or benighted or evil. He is trying to make the questions before him abstract so as to test the limits of the doctrines he is working to apply."

However, Justice Breyer is also not as "smart" as he thinks he is either. In my experience, really smart people know when they are in an area in which they are not as competent and are willing to admit it. Justice Breyer has also chosen not to learn more about science and technology, patent law, etc. to make himself more competent in making decisions regarding patent law.

Justice Breyer, as well as the other 7 current justices have also chosen to totally ignore the operation of Sections 102, 103 and 112 in justifying their rewriting of Section 101. Can you imagine the outcry if something like this was done in another area of law? Where is the court's deference to the actually statute?

Weren't those of us who attended law school taught that in interpreting any statute, a judge (or justice) must look at all of the related parts of a statute in combination in interpreting any part of the statute?

Sorry, I cut Breyer and the other seven justices no slack in their willfully choosing to be ignorant and arrogant with respect to patent law.

If Breyer wants a policy change, why does (a) the SCOTUS think it should be the one making policy and (b) should come through a change in the standards for claim construction. Claim construction standards are a VERY blunt instrument.

To use a Breyeresque standard: would he favor a change in the presumption of innocence or probable cause because of a concern that there are too many criminals?

In ILLINOIS v. WARDLOW Breyer dissented from a per se rule regarding probable cause, favoring a case by case analysis "considerations have led us to avoid categorical rules". Yet in patent cases he does not seem to mind categorical rules.

In a death penalty case HUMBERTO LEAL v. TEXAS, Breyer noted that courts should consider international rulings by the ICJ. Yet in patent cases, I am not aware of Breyer considering how the SCOTUS holdings cause US patent law to deviate from international practice.

These are imperfect analogies, but it always amazes me that the SCOTUS seems fine to make broad sweeping pronouncements where they would be more circumspect in other cases.

Whatever could these justices be responding to?

Why, there are no problems. There are just ginned up propaganda arguments made by skillful factions to feather their own nests.

No small business ever suffers disastrous costs due to untoward patent litigation. It. Just. Never. Happens.

Everyone knows that.

Mr. SNyder,

Maybe you missed the point here that the Supreme Court is not the correct branch of the government to be writing patent law.

Your obviously sarcastic "no one is hurt" tone only rings to a claimed end that you want to see rectified.

In law, how one gets to an end - ANY end - is critically important. Elsewise, you may suffer the devil after blowing down all law (see Thomas More).

Will this advice, offered to you many times now, finally sink in?

Sadly, I remain....

The problem with software patents is a byproduct of Supreme Court rulings: when Diamond v. Diehr was decided, all of a sudden the PTO had to examine hundreds upon thousands of software patent applications with a) no patent prior art and b) very little other prior art.

Secondly, quite a bit of the distasteful behavior of "trolls" was fueled by tort reform. Put a bunch of bright, entrepreneurial attorneys out of business in medical malpractice and related fields, they find another fertile field.

It would appear that the courts have basically caught up with this business model, with a minor assist from Congress (venue changes).

The 101 jurisprudence is throwing the baby out with the bathwater.

Looking in from outside, I have what might be a silly question about eligibility.

I think it depends on what is the ambit of "useful arts". As I understand it, to extend the reach of patent exclusivity beyond the "useful arts" would be un-Constitutional.

So it seems to me that it is the job of the Supreme Court to assist the lower courts to decide what new, non-obvious and useful innovation is within the ambit of the useful arts, and which are not.

And it seems to be that, up till now, for whatever reason, SCOTUS has ducked out of doing that.

Which I think is poor form. Could it not at least remind the CAFC that it needs to confine patent exclusivity to the useful arts, and task it with finding a workable test or definition? You don't need a PhD in cell biology or computer science to make that contribution to promoting the orderly progress of patent law, do you?


The definition of the Useful Arts (the non Fine Arts), is not something for the branch of the government that SCOTUS or the lower courts make up. Neither is it for the Patent Office, an administrative agency located within the executive branch.

Our Constitution dictates which branch of the government sets the law for patents.

That being said, I am puzzled as to why you seem mystified about what belongs to the Fine Arts and what belongs to the Useful Arts.

Dear Mr. Snyder:

In the ‘50’s television show "I Love Lucy," in one episode Lucy and her friend Ethel hired a language coach to help them sound more sophisticated. The coach told them there were two words they should avoid; one of them was “swell” and the other one was “lousy.” (Leading predictably to the ladies asking which one of the words was swell and which one was lousy.)

In legal parlance, I think the equivalent two words to be avoided are “always” and “never.” Of course there are instances where a small company will run up against a blocking patent. But usually the small company, being small, is sued by another small company as direct competitors rather than having generating profits by expropriating technology.

So the point of the piece is not that the scenario that concerns Justice Breyer never exists but that he is mistaken in that it is a major problem inhibiting innovation. The fact that it occasionally happens does not mean we should turn patenting in the US upside down to fix it.

Kevin: "All: let's be clear. Justice Breyer is not stupid or benighted or evil"

Just a billion times smarter than Kevin Noonan.

But we knew that already.

Getting close to "Jane, you ignorant slut" territory, MM. Try to keep it substantive, OK?

Getting close....?

Squint my eyes as tight as I may, I cannot see how that post was not clearly in that territory, Dr. Noonan.

"Getting close to "Jane, you ignorant slut" territory, MM. Try to keep it substantive, OK?"


"[I]t seems to me that it is the job of the Supreme Court to assist the lower courts to decide what... is within the ambit of the useful arts, and which are not... [U]p till now, for whatever reason, SCOTUS has ducked out of doing that."

I would submit that the reason that the SCotUS has not spent a lot of time on that issue is that it really is not in need of further refinement. The "printed matter" doctrine is not a creation of the SCotUS, but it is a fixture of the law nonetheless, and it does a fine job of preventing the patent laws from bleeding over onto the fine arts.

Please note that the constitution says "useful arts," not "technological arts." I would be hard pressed to think of an actual example that has arisen of someone applying for a patent on an idea that cannot be plausibly considered to be part of the "useful arts," which was not excluded either by the plain text of 35 USC 101 or else by the printed matter doctrine. How much further guidance is necessary for the lower courts to apply these rather staid and basic principles of patent law?

Thanks for answering my question Grz..... I had in mind that there is some as yet undistributed ground in the gap between the fine arts and the useful arts. The arts of the deal, for example, negotiation skills, those sorts of processes. Auctioning off telecoms bandwidth, perhaps in the process zone where game theorists hold sway. Useful yes. Useful arts, I'm not sure about that and would like SCOTUS to tell me.

Or the arts of selling. Always room for better processes, cleverer, to sell dodgy stuff (like some GS financial products) to muppets (like the Landesbanken of Germany).

And should there not be a choice between patent and trade secret protection for such valuable process innovation?

How about that?

To my mind, if it is concededly useful, then there is no good reason to exclude it from the category "useful arts." That said, I will freely concede that this is my opinion, and not a settled matter of constitutional law.

If the SCotUS were to try to decide a case on the basis that (1) the constitution only permits patents on technologies that "promote the Progress of.. useful Arts" and (2) this patent involves something that is not, properly speaking, part of the "useful Arts" would be to decide it on constitutional grounds. Under the doctrine of constitutional avoidance, the SCotUS should only do so if it cannot settle the case on other grounds.

It would be difficult to imagine an actual claim making it up to the SCotUS where the *only* possible defect is a section 101 "useful Arts" defect. Think, for example, of In re Merat, 519 F.2d 1390, 1394 (C.C.P.A. 1975). As such, I think that one is going to be waiting a long time for a case to be decided on this basis.

Incidentally, I am not sure *how* they would arrive at such a decision. The only *law*, as such, to apply would be the plain words of the constitutional text. Statutory considerations cannot really come into it (that is to say, the Congress does not get to write statutes to tell the SCotUS what the Constitution means), and there is *no* jurisprudence on this point (at least none of which I am aware). So the whole case would come down to the issue of "what did 'useful Arts' mean to the ordinary English speaker in 1798?" Is there *any* scholarship on this point?

Arthur Seidel contends (who knows if this is correct, because much more historical study has surely been done since 1966) that it "may be surprising... to find that there is no historical basis for a definition of... "useful arts", as appearing in Art. I, Sec. 8, Clause 8... The subject is one for Congress to deliberate."

Arthur Seidel "The Constitution and a Standard of Patentability," 48 JPTOS 5, 32 (1966).

Thanks for the article. It's good to be reminded why the Court needs to refrain from making law.

These quotes confirm what leaps off the page when I read the opinion in Mayo, which is which is that Justice Breyer is rewriting the law on eligibility without considering a lick of evidence or testimony on the issue, using his own biases and information he has gleaned from only God knows where or who. In comparison the legislative process looks transparent and open.

Please read the brilliantly written amicus brief filed by Professors Lefstin and Menell in support of Sequenom's petition for certiorari. You can find a summary of it here: http://patentlyo.com/patent/2016/04/protection-scientific-discoveries.html.

They argue that the Court has "shoehorned" into the law, through the "implicit exceptions," an additional requirement that contradicts the Patent Act's carefully constructed regime reflecting Congress' judgment on the requirements for receiving patents on discoveries. This additional requirement, which is inventiveness in the application of the underlying judicial exception, is ironically based on a profound misreading of case law.

I find the argument compelling. I hope that at least the conservatives on the Court do as well.

Perhaps they will look to originalists remaining on the court, and only grant patents to threshing machines and horse bridals.

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