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« Congress Proposes Draft Bill to Change 35 U.S.C. § 101 | Main | IPO Webinar on Protection of Trade Secrets »

May 23, 2019


"It is good to recall that the judicial exceptions (occasional effects not to the contrary) are not judicial whims: the Court firmly believes that they are necessary to prevent Congress from exceeding its Constitutional authority to grant patents only on inventions that 'promote progress.'"

Hey Kevin,

With all due respect, I disagree. These so-called "exceptions" are just "whims" by these Justices to "rewrite" Section 101 because they frankly don't like patents. Since when have those Justices ever said that these so-called "exceptions" are Constitutionally required? Enactment of legislation pursuant to the Patent Clause is committed solely to Congress, not SCOTUS. Go read Adam Mossoff's WHO CARES WHAT THOMAS JEFFERSON THOUGHT ABOUT PATENTS? to understand how far SCOTUS has strayed from its proper role as to what the Patent Clause means and to which branch it is committed.

While long overdue, it is promising that Congress has taken steps to attempt to correct the meandering created by a Supreme Court which created uncertainty, rather than clarity, in patent law this decade. Solicited discussion will be helpful to hopefully remove ambiguity for both the USPTO and the federal courts.

Thank you Dr. Noonan.

To that Constitutional power of jurisdiction stripping I would note the nuances that the specific item being stripped is to be outside of what is considered “original jurisdiction,” as well as Congress need abide for having SOME Article III review (to abide by the Marbury case); perhaps by re-crating a CAFC body (the current one has been far too brow-beaten, or simians-in-a-cage-firehosed to be of any use).

I have also advanced of late a different mechanism. This different mechanism is one for the Court itself to apply (and it might apply if only to save face and “preserve” its stature).

That mechanism may be called the Kavanaugh Scissors.

One shear of those scissors comes from the holding of the recent Supreme Court Schein case (providing for the idea that even the Supreme Court does not have authority to add caveats or exceptions to statutory law). The other shear was first generated from the oral arguments in the Supreme Court California Franchise Tax Board v Hyatt case, and is reflected in the holding of that case (providing a multiple step ‘roadmap’ for the Court to sua sponte extract itself from its own past decisions).

Putting these two shears together would provide a tool for the Court to cut through the Gordian Knot that its own legislating from the bench has created (and worth noting: ALL three branches of the government have EXPLICITLY noted this Common Law Gordian Knot).

As I have noted, for the Court to take THIS path, they would have to recognize (and subtlety admit) that THEIR meddling HAS created a very real problem. Opponents of strong patents (and make no mistake, there are some very powerful opponents) will not want either of these two paths. The benefit to the Court of their using the Kavanaugh Scissors is that the Court could “spin” the action as one of their own volition and control, as opposed to having another Branch bringing a very strong (and very legal) smackdown which MAY cause the Court to massively lose face.

... I did forget to note that the Marbury case merely provides judicial review for the Article III Branch, and its holding does NOT require Supreme Court review.

Worth noting as well the contribution of EG on this topic, as EG pointed out that when first formed, the “patent specific**” lower court did NOT provide a path to the Supreme Court.

** - to be more accurate, that formation may be described as “mostly patent specific.”

"Heretofore, it was unlikely that anything this radical could have any real chance of being enacted."

I think that we really need to get over this idea that jurisdiction stripping is at all "radical." The CAFC's predecessor court---the Court of Customs Appeals---was created *without* a mechanism for SCotUS' appellate review. The judiciary act had to be amended to create a path for cert. review of CCA judgments in the SCotUS. United States v. Aetna Explosives Co., 256 U.S. 402, 403 (1921).

In other words, there is nothing exotic or unprecedented about this. To take the CAFC out of the SCotUS' certiorari jurisdiction would be no more than to put the court back into the same situation as its predecessor court.

EG @1,

The attempts to tie the exceptions to be some type of “Constitutionally required” has been thoroughly dismantled over at the IPWatchdog blog.

Presented there (awhile back now), was an extremely detailed multi-prong rebuttal based on Constitutional law principles that eviscerates the notion that the Court has any type of legitimate Constitutional standing to take a prospective, subjective, and shadowy “May,” based on a thin preamble effect, and do so in such a ham-fisted, Separation of Powers violating, Void for vagueness manner.

I think that the more attention that is paid to the infirmities of the Court’s attempted re-writing of statutory patent law and the less nigh-automatic genuflection to the Court simply for being the highest level of the judicial branch (with the concomitant recognition that our checks and balances system places ALL THREE branches beneath the Constitution), the more likely that the Court itself may gravitate to extracting itself from its own Gordian Knot created fiasco over 35 USC 101.

Of course, one manner of this extraction may well be by the way do my coined term of Kavanaugh Scissors.

I think that the Court “may” see the scrivining on the wall, as ALL three branches of the government have caught on to the fact that the Court’s path of Common Law development has created that Gordian Knot of hopelessly self-conflicted and contradictory case law.

The ONLY hurdle that I see is that it would take some serious “spin” or some serious humility (or maybe some combination of the two) for the Court to actually be able to break its addiction to sticking their fingers into this particular nose of wax.

The simean in a cage firehosed comment above should apply to the inventors whose patents were stink bombed by the Federal Circuit over the last decade. In my case...which you've written about a couple of times...claim construction, expert testimony, and specification references were all ignored. The Federal Circuit also reversed themselves 180. The most important thing is the new bill is made to retroactivly apply like the America Invents Act. Kill a generation of patents unconstitutionally for no reason. Why? Is it so the mega companies can stay mega to the detriment of the innovators? The past decade has produced the biggest companies ever. They should pay the innovators instead of hiding behind 101. Kill the patents of the last decade or make the big stinkers pay... that's the question this bill should be addressing.

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