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February 20, 2019

Comments

The authors of this article show the Supreme Court is guilty of malpractice of patent law and in particular regarding 35 USC Section 101 is very real. Judge empowered to decide patent cases should be required to have been trained in science and thus to have a technical science PhD. Medicine cannot be practiced by doctors who never went to medical school. Judges should not be given the right to play God with patents and patent laws when the judges are cannot function at a high invention science level.

Hey Kevin,

Knowles/Prosser are spot on with this article. Our arrogant Judicial Mount Olympus has grossly exceeded its judicial authority when it comes to interpreting (or more accurately, deliberately misinterpreting) Section 101 and patent-eligibility. The Justices who supported Mayo, Myriad, and Alice get an F as far as I'm concerned.

Perhaps they should read Jeffrey Lefstin's excellent work, Inventive Application: A History, 67 Florida L. Rev. 565 (2015), which largely agrees with the point that the current "inventive application" of discoveries requirement was first adopted in Funk Brothers but also notes that Congress also considered expressly overruling Funk Brothers and declined to adopt that language, and that circuit courts of appeal in the 1950s continued to find the"inventive application" requirement part of Section 101 (as a matter of statutory interpretation). They can also read Joshua Sarnoff's (my) A.M.P. v. Myriad Amicus brief (Supreme Court No. 12-398, for fifteen law professors) and article Patent-Eligible Inventions After Bilski: History and Theory (63 Hastings L.J. 53 (2011), which collectively explain that "inventive application" originated even earlier with O'Reilly, and that P.J. Federico -- the other principal co-author of the 1952 Act, who most likely understood its meaning -- argued successfully in, and the CCPA before Judge Rich joined it contemporaneously held in, Application of Ducci 225 F.2d 683, 1955, that Section 100(b) (which defines "process for 101") did not apply to all new uses, but only to non-analogous uses, reinstating the the Supreme Court's Ansonia Brass standard, 144 U.S. 11(1892) as an interpretation of Section 101's eligibility requirement for an "invention" and "process"(which is the equivalent of today's "inventive concept" requirement in Flook, Bilski, Mayo, and Alice). (Note also -- and see the recent Helsinn decision -- that Section 100(b) and 101 were not revised as to either "invents or discovers" or in regard to the three categories of products recited, which remain subject to the Chakrabarty "markedly different" standard (also applied to iDNA but not to cDNA in Myriad, where the Court inconsistently applied a simple novelty standard), and thus preserved Funk Brothers "inventive application" standard -- as it is a general rule of statutory construction that reenactment of statutory text without clearly demonstrating a change of interpretation preserves -- rather than changes, as Judge Rich later wished -- the prior statutory interpretation. Note further that Ansonia Brass was decided under the same statutory language of "invention or discovery" in regard to "process" (although then the Section 101-predecessor used the term "art," not "useful art"), which is why Application of Ducci had to construe the meaning of Section 100(b) "process" and how it changed the meaning of "process" (earlier art) under prior eligilbity doctrine as previously interpreted (and the rule is the latest in time SCT decision controls) otherwise carried forward in the statute.

Finally, the "unconstitutional" rhetoric is simply wrong and misleading, as the so-called "judicial exceptions" were always statutory interpretations (in OReilly, Funk, Flook, and since) of the same statutory "invents or discovers" language, and thus the argument is simply that the courts have miscontrued the statute. It would be correct to make a constitutional argument (as I have) that Congress lacks the authority to authorize patents currently held excluded as a statutory matter should Congress choose to do so (and in Bilksi there were arguments that the Constitution did not authorize patents on business methods as not "useful arts"), but unless they are stating that Congress MUST authorize the PTO to issue patents that the judges are holding invalid under the statute, this is simply a garden variety statutory interpretation case, with the unconstitutional argument intended to pander to public sentiments for those already (or who might then be) inclined to believe that argument or to make weight for the statutory construction argument. Can anyone seriously believe that the constitutional language of legislative power is also a constitutional command to issue patents (and for "everything under the sun made by man")? No serious constitutional law scholar would ever make that argument, and if it were true think about all the other Article 8 powers granted to Congress that would then have to be exercised by legislation by Congress to the full extent of the power granted in every case?

I would not, therefore pay too much attention to the article, given these glaring failures of basic legal reasoning. That is, unless and until the Supreme Court is willing to reject history and precedent and then return to modern dictionary definitions and pure textualism. But then I will apply for patents for a new star or for a new musical composition on a recording medium (See Judge Archer and Judge Nies' dissent in Alappat). For surely those "inventions" are "discoveries" and are "practical" applications of discoveries (because I can enjoy them through a telescope or make people happy or sad once they listen to my compositions; if we were ever to be able to get there, however, and if the star were then made part of U.S. jurisdiction, I would then have the right to exclude people from that star). They just are not the kinds of "discoveries of inventors" ever contemplated by either the Constitution or the Congress in the Patent Act, from 1790 to the present. Rather, they are "discoveries" of scientists (just like America was the "discovery" of an explorer, not of an inventor) and of artists (for which copyright protection is provided, and which should, but appears not to, suffice for some intellectual property rights maximalists).

PS - bad legal history and bad legal arguments are not the answer to the confused jurisprudence of the Supreme Court interpreting Sections 100(b) and 101, and consequent highly undesirable state of affairs. Rather, new legislation that clarifies both the meaning and the limits of eligiblity doctrine is to be hoped for -- but may not be possible given disparate beliefs regarding what patents any legislation should authorize and should exclude from eligibility. But if it is possible to get such legislation, that revised eligibility provision will be constitutional unless (as it appears was the case in Bilski for Justice Steven's concurrence before it may have lost a single vote) there is in fact a constitutional restriction to "useful arts" that there would now be five Justices to agree to or on the scope of "discoveries" of "inventors" for which the Constitution authorizes Congress to provide the authority to the PTO to grant. And the latter argument may still apply currently (under the "inventors for their .... discoveries" part of the Authors and Inventors Clause) to some patents that continue to be issued (notwithstanding the inventive application statutory test, when properly applied; if the statute as interpreted is improperly interpreted or applied, it is similarly only a statutory -- ultra vires -- argument and not a constitutional one, which should remind people of the current debate over "the Wall"). But there is no meaningful or appropriate constitutional argument that Congress is _required_ to enact any legislation to overrule the Court's current (and confused) jurisprudence interpreting Congress' earlier enactments. Not even Marbury v. Madison goes anywhere near that proposition.

Quick fundamental question: How can the Supreme Court act unconstitutionally when it is the entity that decides what is constitutional? More after I read the article.

Thank you, Kevin, for the excellent article that clearly presents Sherry and Anthony's well researched and cogently expressed arguments. I well remember the BIO conference a few years back when I was covering it as an attorney-journalist, with Nancy urging the PTO to push back at the Supreme Court on its recent patent decisions, as she had pushed back against Funk Bros, Benson, and Flook as solicitor of patents and trademarks in the 1990s. and to stop relying on its dicta.

Can you say: "Kavanaugh Scissors?"

...for those that have not been following along, the coined term comes from the combination of the provided HOLDING of Justice Kavanaugh, as mentioned in Schein, coupled with the explication provided by the SAME Justice Kavanaugh in the oral arguments of California Franchise Tax Board v. Hyatt.

To paraphrase my 12 Feb 2019 comment regarding Athena Diagnostics v. Mayo (Fed. Cir.):

Who bells the cat?

I don't expect Congress to impeach self-styled "conservative," "strict constructionist" or "originalist" Supreme Court Justices for hypocrisy over mere patent law. Are they any worse than J. Douglas was for patents?

Further in this forum deponent saith not.

Sorry Josh, I could not parse through that veritable WALL of text. Can you repeat your message in more "bite-size" thoughts?

Professor Sarnoff,

Fair enough that the "argument is simply that the courts have misconstrued the statute." Indeed, SCOTUS has literally read "or discovers" out of 101, as well as 100(a). It's not SCOTUS' call to determine what patent policy should be when interpreting (not rewriting) the patent statutes-that was committed to Congress by the Patent Clause. And SCOTUS still gets an F in my book for such deliberate misinterpretation in Mayo, Myriad, and Alice.

Professor Sarnoff,

I would be more interested in what you are saying, if the hyperbole was removed and reality considered. Perhaps you do not understand that the PTO has been failing to issue patents that are clearly eligible under 35 USC 101. Dir. Iancu recognizes that failure and, hence, the new 101 guidance (84 Fed. Reg. 50). The damage done to the economy is real. Special interests are largely to blame, the myth of the "patent troll" was a canard to shift litigation risks/costs of some companies onto the patent office with the benefit of easing district court litigation dockets. Taxpayers subsidize the IP of companies like Nike through CBP, why not subsidize others too? That's what's happening.

Please review and consider re-writing below in the context of reality, like "imagining" forcing the PTO to issue patents that are clearly eligible! How about that right?

Excerpt:

but unless they are stating that Congress MUST authorize the PTO to issue patents that the judges are holding invalid under the statute, this is simply a garden variety statutory interpretation case, with the unconstitutional argument intended to pander to public sentiments for those already (or who might then be) inclined to believe that argument or to make weight for the statutory construction argument.

Can anyone seriously believe that the constitutional language of legislative power is also a constitutional command to issue patents (and for "everything under the sun made by man")? No serious constitutional law scholar would ever make that argument, and if it were true think about all the other Article 8 powers granted to Congress that would then have to be exercised by legislation by Congress to the full extent of the power granted in every case?

Another Lefstin work:

http://www.ipwatchdog.com/2017/06/11/lefstin-mossoff-critique-scotus-todays-patent-system/id=83830/

Kavanaugh Scissors element: there is an egregious mistake...

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