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« Conference & CLE Calendar | Main | Happy Thanksgiving from Patent Docs »

November 20, 2022


There is a simpler (and not tied to 'biology') way of looking at this:

Is the Court ITSELF acting beyond its authority?

In answering this question, it is highly illuminating to note the individual Justices (and their Personal Views) along the spectrum of the eligibility cases.

There is a solid and consistent Pre-Determined mindset (along with a willingness to simply say things that cannot square with objective jurisprudence) in the writings (be those majority decisions, dissent, or even dissents dressed as concurrences).

If one stops genuflecting long enough before the Throne of the Nine Black Robes, one can easily see where -- and how -- the law or eligibility has been re-written in such a garbled and self-conflicting manner.

Our friend Josh Sarnoff writes:

Ansonia Brass & Copper v. Electric Supply Co., 144 US 11 (1892), held (long before Funk) that something more than the "self-evident" application (thanks for the Revise & Caeser cite!) of a new discovery (or existing thing with a newly discovered property) was required for "invention." The 1952 Act was understood to restore Ansonia Brass (in Section 100(b)'s defintion of "process") as held in Application of Ducci, 225 F.2d 683 (CCPA 1955) (adopting the position argued by the PTO as indicated by PJ Federico, the other 1952 Act co-author; see also the article by Reisenfeld cited by the Ducci panel). So the history is actually significantly more complex.

Morton v. NY Eye Infirmary, 17 Fed. Cas. 56 (CC SDNY 1862) (admitting not SCOTUS), [has] a clear statement that putting an existing process to a new use based on a natural discovery is insufficient to constitute an eligible "invention" [with a quote of the relevant language that is too long to reproduce here].

Thanks, Josh. There are two questions: the first, whether Mr. Matal was correct in the dichotomy he drew between pre- and post-Funk Bros. decisions from the Supreme Court, and my question of whether any inconsistencies are not as important as considering the Court's role in making these decisions. As you know I think they are wrongly decided even in the context of "promoting progress" as they ignore the effects on inhibiting progress that have been established by David Kappos, Judge Michel, and others (see Gene Quinn's recent series of posts from these authorities).

But it does suggest that we might be wasting time in addressing the issue on a consistency basis, and perhaps it would be more productive for Congress to take away the Court's jurisdiction over patent matters (although in the great scheme of things this might just shift the source of the problem to the Federal Circuit or another judicial body; see my post The Tyranny of the Judiciary).

Thanks for the comment, and Happy Thanksgiving!

Dear Skept:

The same could be said about the 12 Federal Circuit judges, and so long as people and not algorithms are making these determinations we will have this effect. Admittedly, the Court has its own limitations with regard to understanding the technology and (to some extent) patent law; becoming a Supreme Court Justice does not automatically make you erudite in all areas of the law (and we are perhaps better for it that the Justices do not appreciate the arcane minutiae of patent law, if only not to clutter their minds with information they don't need; Sherlock Holmes admitted he didn't know the earth revolved around the sun because that information was of no practical use to him).

But a better understanding of the Court's motives, prejudices, and proclivities may make making effective arguments more likely.

Thanks for the comment, and Happy Thanksgiving.

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