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July 12, 2018


"But even if the Court's § 101 determination was correct, it's granting of attorney's fees is highly questionable."

Hey Michael,

Never were truer words said. How can attorney fees be justified under 35 USC 285 when the Royal Nine fails (repeatedly) to define a key aspect of its broken and nonsensical Mayo/Alice framework for determining patent-eligibility under 35 USC 101, namely what does the term "abstract idea" mean? Instead, Our Judicial Mount Olympus gives us "mere mortals" nothing better than a legal Ouija board to determine how to apply this framework to any given situation.

"Additionally, to the extent that the Court relied on the concurrence in Ultramercial to conclude that patents are not presumed eligible, that is plain wrong. 35 U.S.C. § 282 clearly sets forth that patents are presumed valid, and no Supreme Court or Federal Circuit case (including Ultramercial) establishes binding precedent otherwise. The fee award may be reversible on this basis alone."

You use validity and eligibility interchangeably, but the courts do not. There are also issues as to questions of fact vs. questions of law, and how presumptions play into (or dont play into) each. It may be wrong, but it is certainly not "plainly wrong."


I will note (again) that the fact that the law cannot be known how it will be applied a priori (and apparently, is very panel dependent, with each panel "making things up" as they go along), the law - as RE-written by the Supreme Court is Void for Vagueness.

And that is on top of the other Constitutional infirmities of misappropriation and violation of the Separation of Powers (Congress did not relinquish nor share any of its Constitutionally allocated authority to write patent law to the branch of the judiciary) as well as the violation of present case or controversy inherent in the manner in which the Court has backed up its "authority" to re-write the statutory law that is patent law (that is, the dependence on a subjective and future - unknowable - assertion of what MAY happen if the law of 101 is not applied as the Court wishes it to be applied.

We have (at least) a trifecta of problems with what the Supreme Court has done.


Interesting: "You use validity and eligibility interchangeably, but the courts do not."

Are you sure? After all, the Court has messed up 101 BY attempting to interchange concepts of validity into the eligibility discussion.

There is an elephant in the room - you want to point to the elephant ear, but not want to see the rest of the elephant.

Eligibility - per the actual chosen words of Congress runs to two (and only two) requirements:

Can the innovation be classified into at least one of the purposefully broad categories?

Does the utility of the innovation belong to the Useful Arts?


All else is muckery.

As to "also issues as to questions of fact vs. questions of law, and how presumptions play into (or dont play into) each."

Validity is a legal concept with factual underpinnings.

Just like eligibility.

It is validity that is presumed (AND presumed at a specific - and high - level).

Notably, the law as written by Congress does not state that it is the factual underpinnings to the legal concept of validity that carries the presumption.

Further - if anything (and as noted in the article) the view of the courts as to those factual underpinnings have STRENGTHENED (and not weakened) the positions of eligibility.

Skeptical, I agree with much of what you wrote. I was just pointing out that it is an open question of whether the presumption of validity extends to questions of eligibility.

I will also refer you to Breyer's very relevant opinion in i4i. And of course, all of ultramercial.

Interesting then that Breyer's "additional thoughts" in i4i was merely a concurrence (without enough Justices joining him to push it into more than a mere concurrence).

As I noted: Congress stated that the presumption applied to the legal concept (and not to the "evidentiary" view of the factual underpinnings of the legal concept).

Note as well that Breyer is (has been) one of the most anti-patent Justices of all time. That means his comment of "By preventing the “clear and convincing” standard from roaming outside its fact-related reservation, courts can increase the likelihood that discoveries or inventions will not receive legal protection where none is due." needs to be taken with the appropriate level of grain of salt.

Note as well that the Court itself has placed 101 into the "zone" that such presumption may apply (given how they have lumped that section of law into the defenses to suit - see Prof. Hricik over at that other blog for his rant/views on THAT.

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