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October 16, 2018

Comments

As noted in my IP 360 article, it's time for a legislative fix. The PTO's and courts' inconsistent application of section 101 will continue as long as the Supreme Court's present interpretation lasts.

"[I]t's time for a legislative fix. The PTO's and courts' inconsistent application of section 101 will continue as long as the Supreme Court's present interpretation lasts."


Hey Nancy,

Agree completely, but we may need more than just a legislative fix to section 101. Congress really needs legislatively "scream" at SCOTUS to stay out of Congress' domain to articulate what patent policy should be and to reaffirm that the Federal Circuit should be the primary arbiter of patent law jurisprudence. Indeed, if SCOTUS refuses to "take the hint" on this, Congress may need to consider the "nuclear option," namely stripping SCOTUS of any appellate review of patent law matters. For those who think that is beyond Congress' power to do, I would suggest checking Section 2 of Article III of the Constitution which clearly says that Congress regulates appellate jurisdiction other than that expressly given to SCOTUS. Please note that when the CCPA, the predecessor of the Federal Circuit, was created, there was no provision for appeal to SCOTUS; the right to appeal was added later by Congress

That being said, the current make up of the Federal Circuit and the current Chief Judge gives me and likely others great pause for concern as to how even those legislative fixes will be applied as the current make up of the Federal Circuit is the most hostile I've seen in terms of how they treat patent rights. In other words, the make up of the Federal Circuit needs to change as well, especially adding more judges with technical/science backgrounds and whose view of patent law is far less hostile and biased against patent rights.

"Please note that when the CCPA, the predecessor of the Federal Circuit, was created, there was no provision for appeal to SCOTUS; the right to appeal was added later by Congress"

A million times - YES !

@ EG

Have you thought that if subject matter falls as a matter of substance and not mere outward appearance within one of the four eligible categories of Section 101, it cannot at the same time fall into one of the judicial exceptions without inadmissible judicial amendment of the statute or issues of separation of powers? The late Justice Scalia was well aware of the point and there is a section on it in the Scalia and Garner book on the interpretation of legal texts.

It follows that a congressional fix is NOT needed - merely care on the part of patent professionals to ensure that the claims that are put forward DO fall POSITIVELY into one of the four eligible categories accompanied by proper explanation of relevant precedential decisions and the technical facts of the case in question.

"Indeed, if SCOTUS refuses to 'take the hint' on this, Congress may need to consider the 'nuclear option,' namely stripping SCOTUS of any appellate review of patent law matters."

Why is this a "nuclear" option? This is not an *extreme* proposal. I think that this jurisdiction stripping should be a part of any legislative fix. Leave the CAFC as the last word on patents.

Mr. Cole,

Sorry, but what you state is not so, as even claims within the Alice case were NOT AT ISSUE before the Court (both sides having stipulated that the "statutory category" portion was positively met.

I do not enjoy saying this, but it appears to be needed to be said: I told you so.

Hey Greg,

The reason I characterize jurisdiction stripping of SCOTUS as the "nuclear option" is that it is drastic, even if it is a necessary legislation fix. Even suggesting such an option will garner "howls" from the anti-patent crowd. Also, with the current make up of the Federal Circuit which tends towards the anti-patent, including its currently weak Chief Judge, additional Federal Circuit judges that are more like Newman will need to be added to rectify this current anti-patent imbalance.

Careful there EG, as Greg is noted to be of a group that does not believe that the label of "anti-patent" carries any discernible meaning.

And you are further correct in that the CAFC has been far too brow beaten by the Supreme Court to act as a decent type of "last word" on patent law matters and (thus) further action from Congress may well be necessary in order to create a meaningful Article III body of review.

"[J]urisdiction stripping of SCOTUS... is drastic..."

Hm, I think that you are letting yourself be fooled by the propaganda. As you have already noted, the CAFC's predecessor court had no route of appeal to the SCotUS. In other words, to take the CAFC out of the SCotUS' appellate jurisdiction would not be any sort of major development. It would merely be a return to the status quo ante. We should not pre-emptively concede the ill-informed talking points of those on the other side of the legislative reform debate. Jurisdiction stripping is a sane but minor reform. Neither drastic nor "nuclear."

@ Anon

A quick re-scan of the Alice opinion does not seem to deal with eligible categories. As you probably know the case better than me, can you quote the relevant passages?

Mr. Cole,

One would need to look at the case proceedings to see what each side had stipulated to (that the statutory category portion of 101 was NOT at issue, having been agreed to by both sides).

Also: See page 1: "merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention." - which admits that certain claims REQUIRED computer implementation.

See page 3: "All of the claims are implemented using a computer; the system and media claims expressly recite a computer, and the parties have stipulated that the method claims require a computer as well."

See as well pages 3 and4 for a general discussion of the highly fractured CAFC version of Alice.

See page 11: "The introduction of a computer into the claims does not alter the analysis at Mayo step two."

Read that carefully: a computer, admitted to be REQUIRED as part of the claim as a whole, and which would satisfy your view of "does the claim fall squarely into a statutory category" is excised by the Court as "not counting." (and then step back to paragraph one on that page:

"A claim that recites an abstract idea must include “additional features” to ensure “that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].”

See also page 13:
"Given the ubiquity of computers, see 717 F. 3d, at 1286(Lourie, J., concurring), wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.”

YOUR view here (squarely meet a statutory category) is dismissed as "drafting effort," as if a claim -- properly drafted to meet the actual words of Congress -- may still be "tricky" enough to violate the feelings of the Supreme Court.

Note then the own "scrivining" of the Court in how they turned the 101 question into some "150 years" view, and thus "drafted out" what actually happened in 1952 when Congress removed the power of common law setting from the judiciary, removed "inventive concept" (also known as gist of the invention) and REPLACED that view of the law with 35 USC 103 (carved out of the former single paragraph).

See also page 12:
"In holding that the process was patent ineligible, we rejected the argument that “implement[ing] a principle in some specific fashion” will “automatically fal[l] within the patentable subject matter of §101.”

End of 13 and beginning of 14 flatly reject your view. "Depending on the draftsman's art" is a death knell for your view.

Not sure how you missed all of this in your quick re-scan...

Where does the Court get the authority to require "more than a drafting effort," if -- in fact -- that type of "drafting effort" is what Congress set out as being needed under the law?

There is NO sense of "interpretation" that suffices to realize exactly what the Supreme Court is doing here: the Supreme Court is re-writing the law to have "something more" than what is written by Congress.

NOT ONLY is this re-writing itself Void for Vagueness (take your pick of a number of undefined terms); NOT ONLY is this re-writing itself a violation of separation of powers; BUT ALSO this re-writing is based on a purely conjectural "MAY" and "might" that shows a lack of PRESENT case or controversy at the very heart of what the Court pins its supposed authority upon.

Maybe Mr. Cole should up his game. His penchant for wanting to merely apply "care" to the writings of the Supreme Court severely miss just how bad those writings - in and of themselves - really are in view of the Rule of Law.

(and please, let's not here the excuse that Mr. Cole is not a US citizen - his advocacy already places himself beyond that "excuse")

This "three strikes" seems impervious to any academic analysis. So why has one not been forthcoming? It's not like these types of Constitutional infirmities will simply go away with time.

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