Without precedent or authority the Supreme Court is wrecking the U.S. economy

Patent law has always swung like a pendulum. Swinging between more restrictive regimes where patent owners have few meaningful rights and back to a place where patent owners enjoy strong property rights. Unfortunately, throughout history we have spent more time on the end of the spectrum where rights are hard to obtain and easy to ignore.

It is easy to get caught up with the shifting laws and even easier to start looking at the trees instead of the forest. It is easy to understand why innovators and patent owners are focusing in on the trees, so to speak. There has been such upheaval in U.S. patent laws over the last decade. Innovators and patent owners are on their heels playing defense in multiple forums, whether it be on Capitol Hill, at the Supreme Court, at the Federal Circuit or at the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO).

It is sad to say, but Congress has turned decidedly anti-patent over the last few years. There are some signs of hope as patent reform has been slow to move forward in the 114th Congress and the proposed bills have slowly inched in a more pro-innovator direction. There are rumors that the House of Representatives could take up the Innovation Act as soon as the July 4th recess is over, but many close observers continue to believe that patent reform this year remains a 50-50 proposition.

As things have slowed in Congress a bit and innovators have has modest success in conveying their point of view, it is undeniable that the major destructive force in the patent system today is the United States Supreme Court. Indeed, over the last several years, the Supreme Court has become extremely active in the area of patent law. They have made decisions on a number of cases that have significantly altered the patent landscape and negatively affecting patent value. Without any legitimate statutory precedent or authority the Supreme Court is wrecking the U.S. economy just as sure as snow is white and water is wet.

As a lawyer it is hard to watch the Supreme Court. I increasingly wonder how anyone could teach either patent law or constitutional law without simply acknowledging to the students that there is no rhyme or reason in the decisions of our High Court. The truth is the Supreme Court does what they want because they can. Congress is dysfunctional and unlikely to overrule the Supreme Court even when their decisions make no sense.

The United States Supreme Court is in the process of losing whatever credibility the Court once had. This is not to say that the institution has been irreparably compromised, but this particular Supreme Court will almost certainly be looked back at by historians as a largely failed Court that will see many of its decisions overruled by future Courts.

Indeed, over the past few days a 6-3 majority of the Supreme Court ruled that the language of a statute is largely immaterial when interpreting the statute. In King v. Burwell the Supreme Court recently interpreted one particular provision of the Affordable Care Act. Tax credits were authorized by Congress to be given to those who purchased insurance through “an Exchange established by the State…” The meaning of this phrase is undeniably clear to anyone and everyone who prefers intellectual honesty to legal gymnastics that justify a predetermined point of view. The intent of Congress was to provide a carrot to States to set up their own Exchanges. Most States did not set up Exchanges, the Internal Revenue Service still allowed tax credits for individuals who bought insurance on the federal Exchange. Chief Justice Roberts explained that the intent of Congress should be viewed by considering the entirety of the 2,000 plus pages of the bill. Intent of Congress overrides clear, direct and unambiguous statements. Thus, King v. Burwell seems to stand for the proposition that the language of the statute really doesn’t matter.

This is hardly the only example of the Supreme Court reaching an unsupportable decision. This Supreme Court, in Indiana State Police Pension Trust v. Chrysler LLC, allowed secured creditors to take a back seat in bankruptcy to unsecured creditors, which flies in the face of both bankruptcy and commercial law. See High Court Erases Precedent in Chrysler Bankruptcy. In Kelo v. New London, the Supreme Court also ruled that a municipality could seize real estate from one citizen for the express purpose of handing it over to a non-governmental, private entity if it is believed that private entity will make better use of the property.

How can one take a Court seriously if they are going to ignore plain statutory language and allow eminent domain to be expanded to a point where there are no viable remaining boundaries?

The Supreme Court doing whatever they want without repercussions or consequences is not new. Indeed, those who oppose Obamacare and who find the Supreme Court ruling in King v. Burwell impossible to justify are just now having to come to terms with what those in the patent industry have know for many years. The Supreme Court does not let the statute stand in the way of reaching the decision they think is best. Neither does the Supreme Court allow precedent, even their own precedent, influence their decision making process. That is, of course, unless they choose to ignore substantive arguments and claim for some reason that in a particular case their hands are tied because of stare decisis, which they actually recently did in Kimble v. Marvel Entertainment. Given this Court’s track record it is practically comical to see them cite stare decisis.

To call many of the decisions of this Supreme Court arbitrary and capricious would be insulting to any decision that is merely arbitrary and capricious.

In recent years the Supreme Court in AMP v. Myriad held that the patent claims at issue covered a non-naturally occurring DNA segment, but was still nevertheless patent ineligible under the law of nature doctrine. Indeed, Justice Thomas wrote: “we hold that a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated.” Apparently not realizing the logical incongruity Thomas would later explain that Myriads claims could not be saved “by the fact that isolating DNA from the human genome severs chemical bonds and thereby creates a nonnaturally occurring molecule.” Thus, the isolated DNA claims somehow simultaneously cover naturally occurring DNA even though isolating DNA “creates a nonnaturally occurring molecule.”

Further still, in Myriad, Justice Thomas explained that discoveries are not patent eligible. The problem with this sweeping statement is that he is simply wrong. If the Court took the time to actually read the one-sentence statute – 35 U.S.C. 101 – they would have learned that discoveries are patent eligible. Moreover, if the Court understood patent law they would know that pharmaceuticals are patented specifically because of the discovery made. It is a slight exaggeration to say that once the lead compound is determined the drug invents itself, but only a slight exaggeration. As the pharmaceutical industry turns increasingly to computer assisted identification of lead compounds Myriad in conjunction with KSR v. Teleflex means that pharmaceuticals are not patent eligible, and if they are patent eligible they are obvious. But how many actually expect the Supreme Court to rule that way and deliver a deathblow to the pharmaceutical industry? But that is precisely the problem! The Supreme Court has become a Super Legislative body. They ignore the laws they don’t like, re-write the laws they do like, and decide cases on policy rationales. The decisions are then written to explain what they have determined they will do rather than independently analyzing cases under the law and letting the law and facts dictate the outcome.

But wait, it gets worse. In Mayo v. Prometheus, the Supreme Court substantively ignored the mandates of the Patent Act and expanded the patent eligibility inquiry under 35 U.S.C. 101 to swallow the novelty inquiry set forth in 35 U.S.C. 102, the obviousness inquiry set forth in 35 U.S.C. 103, and the description requirement set forth in 35 U.S.C. 112. The Department of Justice specifically pointed out to the Supreme Court that they shouldn’t make 101 the single inquiry because that violated the statute. To this Justice Breyer responded in his opinion writing that the Supreme Court must “decline the Government’s invitation to substitute §§102, 103, and 112 inquiries for the better established inquiry under §101.” Decline the invitation? It really isn’t an invitation! The statute requires consideration of each of the individual sections and generations of prior Supreme Court precedent specifically prohibited conflating the various sections of the statute. But as is typical, the Supreme Court didn’t overrule those prior precedents that mandated a wholly different analytical framework; they merely ignored them because they could.

In Alice v. CLS Bank, the Supreme Court issued another intellectually challenged decision. In a unanimous decision authored by Justice Thomas the Supreme Court held that because the claims are drawn to a patent-ineligible abstract idea, they are not eligible for a patent under Section 101. The problem, however, is that the Supreme Court has never defined the meaning of the term “abstract idea.” Furthermore, not once in the decision did the Supreme Court even use the word “software,” although the patent in question was undeniably a software patent and the Court’s decision has been used at the USPTO, PTAB, in Federal District Courts and at the Federal Circuit to either deny issuance of software patents or declare previously issued software patent claims invalid because the subject matter is patent ineligible. Everyone in the industry knew this decision, one way or another, would have major impact on software patents and the Supreme Court didn’t even use the term once? Are they that hopelessly out of touch?

Even this term the Court’s decisions in in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. and in Commil USA, LLC v. Cisco Systems, Inc. cause one to raise an eyebrow. In Teva, for example, the Supreme Court explained that the Federal Circuit must give deference to findings of fact made by the district court when interpreting claims, but refused to acknowledge that there are important questions of fact that must be addressed even when making a decision on purely intrinsic evidence. In Commil, the Supreme Court inexplicably raised the issue of patent trolls when they explained they were mindful of the problems with abusive litigation. The problem, however, is that neither party is a patent troll and there was not even a hint of any abusive litigation tactics being employed. Further, the Supreme Court continued to talk about patents being invalid, but it is impossible for an entire patent to be invalid; only a patent claim can be invalidated, not the entire patent. So even when the Supreme Court reaches what most would view as an objectively sound decision they raise serious concerns about whether they really understand patent law enough to be handling cases of such importance.

Against this backdrop, please join me on Monday, June 29, 2015, at 12pm ET, for a free webinar discussion on the Supreme Court. I will moderate a discussion on the ramifications of recent Supreme Court decisions on patent management decisions, particularly focusing on building, monetizing, or leveraging patent portfolios. Joining me will be Teresa Rea, partner at Crowell & Moring, and former Acting Director of the USPTO, and Bob Rauker, current CEO of MedicinusIP, and former Senior Vice-President at Acacia Research. In addition to taking your questions we will address the following:

  • Core concerns patent portfolio managers must consider in this evolving environment
  • Strategies for both identifying and creating better, stronger patent assets
  • How licensing and royalties are being impacted and tactics for coping with the new realities of monetizing patents and portfolio

CLICK HERE to register. Webinar is sponsored by Innography.


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Join the Discussion

53 comments so far.

  • [Avatar for Anon]
    July 7, 2015 07:26 am

    SoftwareForTheWin is obviously celebrating something that he should be mourning.

    The sustainability of business operating at the bleeding edge is just not there. Yes, it is of critical importance to have that bleeding edge, but to think that the little guy can survive on some global basis without protection of that bleeding edge because one can “just innovate something else new” and move to the next step, when the Big Corps take what you just did, is beyond foolish.

    He seems to think that this “game” is all about patent attorneys protecting their turf.

    He could not be more wrong.

    When I read posts like his, there appears to be a consistent lack of critical thinking. It is like there is some anti-patent script floating around out there, providing soundbytes with no actual thinking of the dynamics of the real world. Take the “gist” of his argument and apply that same reasoning to any area of innovation. It is readily apparent that the argument is not just anti-software patent, but it is anti-patent.

  • [Avatar for Gene Quinn]
    Gene Quinn
    July 6, 2015 08:16 pm


    You assume that the correct answer is to advise innovators not to seek patents. The correct answer is to be honest with clients. What we can say with certainty is that if they don’t apply they will never get a patent. We can also say that the law will change, it has changed ever 2-3 years in the software area for the last 35+ years. We can also say that if you want a cheap patent application don’t bother. But it is simply incorrect to say, or suggest, that it is unethical to advise clients to file a software patent application.

    So am I being honest with clients? Absolutely. Are you keeping your head in the sand when you suggest that a one-size fits all no patent solution is the only choice? Absolutely.


  • [Avatar for SoftwareForTheWin]
    July 6, 2015 04:53 pm

    Edward Heller wrote:

    > “prosecution costs have now gone to the 500k-1000k range, at a minimum.”

    Exactly – it’s crazy for any software startup to even THINK about chasing a patent.

    Question for patent lawyers on here – how many of you are being honest and telling any potential customer (individual or small startup) to not bother with any patent filing? Don’t you have an oath like doctors? By taking their business, after AIA with IPR’s, aren’t you putting your career or patent lawyer #number on the line by not refusing their business?

  • [Avatar for SoftwareForTheWin]
    July 6, 2015 04:19 pm

    Night Writer wrote:

    > “It is actually much worse than this. What will happen is that the big corporations will come after you with their patents and will take your software, but the little company will have no recourse.”

    By the time a small software is important/big enough to come after, they too can spend $23k on IPR filings. Good for the goose, good for the gander.

    Best advice to any software startup is not bother with patents, allocate that money elsewhere.

    Implement the software for the win!

  • [Avatar for Jenny]
    July 1, 2015 06:54 pm

    The US patent system is definitely weakened with the IPR and the recent Supreme decisions. Our patent monetization business is being hit enormously. We have already experienced with the threats of using IPR. I think IPR is set up against the patent holder or small business. The interpretation of claims at IPR proceeding goes with MPEP while the court does not. With the freedom of interpreting the claims in the broadest sense (often unreasonable), you would not be surprised to see 80% of the patents are being killed at the stage of IPR.

  • [Avatar for Edward Heller]
    Edward Heller
    July 1, 2015 02:43 pm

    Night, your insights on this occasion are profound. Every patent is going to receive an @nal exam via PGR or IPR, perhaps several, perhaps sequentially, before one can even get to court — for the reason that most courts stay litigation pending the outcome. From the big picture point of view, prosecution costs have now gone to the 500k-1000k range, at a minimum.

    Infringers have been using reexaminations in exactly this way for a long time. They pile it out in the PTO with multiple, sequential reexams, and move to stay in court.

    Whatever the good intentions that congress may have had to strengthen the patent system by bringing us reexaminations, the reexamination/IPR system is being grossly, and systematically abused.

    Reexaminations and IPR must go. PRGs, if filed, must be deemed pre-grant so that patent term is extended by the length of a PGR. But, I suspect, that even PGRs are a bad idea and they too should go.

  • [Avatar for Night Writer]
    Night Writer
    July 1, 2015 01:32 pm

    Note to that the PTO has been trying to shift the burden of search and patentability to the applicant for some time. And, the IPRs really do this. Now if you want to get a good patent for your client, you need to get an outside search so you can figure out what is a good claim. Basically, the PTO has punted all their work. It is a registration system.

  • [Avatar for Night Writer]
    Night Writer
    July 1, 2015 01:30 pm

    Wow, Jenny! I’d image that is about right, though. The biggest problem is IPRs and the SCOTUS decisions. IPRs are: 1) BRI + no amending + preponderance. That is a death sentence for almost any claim. It is like a super duper office action without any chance to amend. Note: the fundamental problem is that the USPTO does a poor job of search, so you get a claim allowed then an IPR spends 100K to do a better search and invalidates your claim.

    This could be fixed with the USPTO doing a better search so at least the attorneys can make sure that the claim is patentable over the cited art.

    But, I think the character of our patent system is now changed. We really have a registration system now. You get the patent for $30K and then if you want to assert it you have to spend $300-$1,000K defending the validity of the patent before the PTO. That is nuts.

  • [Avatar for Jenny]
    June 30, 2015 03:07 pm

    We are in the business of maximizing the value of patents. When selling patents to other business entities, we used to experience that adding a foreign patent to a deal would not increase too much in valuation because the industry has set an unbinding rule: if a US patent is valued at $1, its EU counterpart is valued at $0.10, its Japanese counterpart is valued at $0.03, and its Chinese counterpart is valued at $0.01. With the Supreme decisions, we are seeing a ratio of 0.20 : 0.10 : 0.03 : 0.01 or worse.

  • [Avatar for Anon]
    June 30, 2015 09:38 am

    Mr. Heller,

    Your criticism falls far short of the mark.

    Read please what I have actually written. Wherein what I have actually written do you find fault or error?

    Yes, you do criticize some Supreme Court cases. I have never stated otherwise. The bigger picture and what I have stated remains true: you have a non-objective obsession with the supremacy of the Supreme Court. Do you deny such?

    Your well repeated positions simply come up short when the topic is looked at appropriately in that patent law is not common law, but rather is expressly statutory law.

    Further, I reject the notion implicit in your writings that “quality” is alignment with your viewpoint. The cases you criticize are simply not written better than the cases you elevate above statutory law. The only difference is alignment with your views. The truly sad thing about this is that a conversation with you is just not possible because you are unwilling to recognize the depth of your bias and lack of objectivity. It is this deficit that propels the “Supremes can do no wrong” position. Perhaps I should then merely qualify the worship aspect you display and state instead “Supremes can do no wrong when they agree with Ned Heller’s views.” However, this refinement does not change the core incapacity of yours to be objective, which is the point of my posts. There simply is no such thing as “higher quality” just because the Supreme Court is the top of the food chain in the Article III structure. Even past Supreme Court Justices have remarked in kind that “final” does not mean “right,” or pertinent here, of “higher quality.”

    I trust that you understand that point, without any need to respond off-point.

  • [Avatar for Night Writer]
    Night Writer
    June 30, 2015 09:25 am

    And probably Mr. Heller what set you off was step back’s comment about natural laws. Get that the SCOTUS is operating from a mental model of natural laws and information processing that is from about 1910.

    Stevens (I know it is gone now), but that creature thinks that there is a spirit world where his mind exists without a physical basis. That is at the heart of his nonsense. The royal 9 are a sad joke.

  • [Avatar for Night Writer]
    Night Writer
    June 30, 2015 09:23 am

    Heller >They make mistakes, such as with eBay and with Bilski’s “abstract.” But these mistakes have nothing to do with a lack of a technical education.

    Don’t be ridiculous. Of course it has to do with their lack of technical education. I was taught about the ladders of abstraction as an engineering student. They don’t understand the ladders of abstraction because they have no technical education and apparently have no interest in understanding science or technology.

  • [Avatar for Edward Heller]
    Edward Heller
    June 30, 2015 08:04 am

    anon, I think you failed to note that I have heavily criticized specific Supreme Court cases in this very thread, citing chapter and verse and why they were wrong.

    There is one thing consistent with you anon, it is your consistent inability to read that is coupled with an constant ability to jump to conclusions.

  • [Avatar for Anon]
    June 30, 2015 07:16 am

    Mr Heller and Mr Ross,

    You appear to be laboring under at least one rather serious misperception.

    By no means am I saying that litigation in and of itself is “bad” or an improper viewpoint.

    However, the clear lack of appreciation of the portion of the life cycle of a patent involved in the creation of that right IS “bad” and improper. And the overt and uncontrolled bias from ONLY a litigation viewpoint IS “bad” and improper.

    The overt “Supreme Court can do no wrong” is among the very worst things for a lawyer to embrace. Period. Show me one single State’s oath for attorney that places the judicial branch OVER the Constitution, and I will consider that your view may have some merit. Just one.

    My own training comes from someone I deeply respect. He was both a litigator and a well-versed prosecution specialist. He understood the entire life cycle of the patent and the protection that it provides, and having a litigation understanding is indeed critical in order to craft the legal document that is a patent to the highest level of quality.

    But that is most definitely a far cry different than the topic under discussion here – and the most evident bias from Mr. Ross’s view in particular is clearly displayed as a bug and not a feature. The views of Mr. Heller are well known – as are the incredible weaknesses in their foundation in that some rather odd elevation of common law writing by one element of the Article III court system is juxtaposed against a different element of the Article III court system – for what is eminently NOT a common law arena.

    (Mr. Heller, I simply cannot abide the clear error on its face of your statement as to any notion of “higher quality” in Supreme Court writing of patent law. The errors and lack of understanding are legion and are in fact directly responsible for the mess we see today. I do understand that your feelings are different, as I am well aware of your writings, but I think that you simply lack the capability for an objective view of the matter)

  • [Avatar for step back]
    step back
    June 30, 2015 07:04 am


    Of all the embarrassing days in our 200 years of American “jurisprudence”, you had to pick the 29th of June 2015 to wax poetic about the profundity of our black robed Ayatollahs of Mount SCOTUS?


  • [Avatar for Edward Heller]
    Edward Heller
    June 30, 2015 02:28 am

    And, step back, how does a technical degree help one understand law or even patent law? Now it does help when one is discussing the details of a patent, validity and infringement. But the law?

    The Supreme Court is more concerned with policy than with technology. They operate on 200 years of patent jurisprudence, not just what happened since ’82 when the Federal Circuit took over. They make mistakes, such as with eBay and with Bilski’s “abstract.” But these mistakes have nothing to do with a lack of a technical education.

    When I compare most Supreme Court decisions with any by a lower court, there is a marked higher quality in the Supreme Court decision. They really do their homework well. Perhaps it is because they get so many amicus briefs. But the members of the court seem to have read controlling precedents and know them backwards and forwards.

    I don’t know what beef you have with that Court, but they usually get patent law right. Problems occur when the Federal Circuit has a different view and refuses to follow. This only sets of a period of uncertainty. State Street Bank was one such case where the Federal Circuit “reversed” the Supreme Court and in turn had to be reversed back. In the meantime, a lot of damage was done to a lot of people. But the damage was highly predictable. Very much so. And it was predicted, by me, and by many others who knew State Street Bank was in open defiance of the Supreme Court and could not be relied upon.

  • [Avatar for Edward Heller]
    Edward Heller
    June 30, 2015 02:11 am

    step back, I think you have a lot to learn. Judges make decisions on the law, and the lawyer has to brief his case well.

    Winning through BS? Really? I don’t think so.

    It is quite an experience going toe to toe with other litigators who can and will tear you a new one at the first opportunity. You really have to be on your game.

  • [Avatar for step back]
    step back
    June 30, 2015 02:02 am

    Maurice and Ed,

    With due respect, who do you think you are fooling with that nonsense about only litigators “truly” understanding patent law.

    The goal of many a litigator is to isolate a gullible pool of lay jurors and fool them with some form of “persuasive” nonsense and/or to go forum shopping and find a gullible district judge having no science background so as to be equally gullible or to rise to the highest magnitude of technical incompetence by getting to the SCOTUS level so as to convince the Supremes they are hearing the angel voices of “friends” of the court in those amici briefs. Yeah right.

    The Supremes are deep steeped in 18th Century beliefs and language. They wouldn’t know a “law of nature” even if Galileo dropped one on their heads from the Leaning Tower. It’s all becoming a sad and sick joke.

  • [Avatar for Edward Heller]
    Edward Heller
    June 29, 2015 08:15 pm

    Regarding eBay, it hardly restored patent injunctions to a normative test traditionally used in court of equity to determine whether an injunction should issue. Instead, it upset settled law across the board, and in the words of Gergen, Mark P., John M. Golden, and Henry E. Smith. “The Supreme Court’s Accidental Revolution? The Test for Permanent Injunctions.” Columbia Law Review (2012): 203-249,

    “Despite the Court’s disclaimer and the concurrences’ qualifications,
    the eBay opinion has had cataclysmic effect. Within a half decade, the
    four-factor test from eBay has, in many federal courts, become the test for
    whether a permanent injunction should issue, regardless of whether the
    dispute in question centers on patent law, another form of intellectual
    property, more conventional government regulation, constitutional law,
    or state tort or contract law.8 In areas outside of patent law, circuit and
    district courts have now repeatedly declared the eBay test to have swept
    aside long-settled presumptions about when injunctions should issue.9
    U.S. law has, it seems, entered a new world of injunctive relief in which
    the very particular—and decidedly peculiar—language of eBay is king.
    Is this change merely a restoration of traditional equitable principles
    that U.S. courts, from circuit to circuit and from one area of law to the
    next, had somehow forgotten? Remedies scholars have said that, before
    eBay, they were unfamiliar with any traditional four-factor test for permanent
    injunctions.10 If casebook and treatise writers can be trusted to know
    the basic content of their field, the answer to the restoration question
    would appear to be “No.'”

    Id. at 205. http://columbialawreview.org/wp-content/uploads/2012/07/112-2_Gersen_Golden_Smith.pdf

    eBay was and still is a disaster, not only for patent law, but for many other areas of the law. Nice job there Supreme Court.

  • [Avatar for Anon]
    June 29, 2015 07:25 pm

    Mr. Ross, your reaction reminds me of a certain quote from Shakespeare, confirming rather than diminishing my points.

  • [Avatar for Night Writer]
    Night Writer
    June 29, 2015 06:32 pm

    Edward Heller, I know that Carly Fiorina, ex CEO of HP is pro patent. That is not surprising as there are few people that have actually worked in innovation within the patent system that are anti-patent.

    It is actually just absurd the arguments that are put out there. Anyone that actually does this knows that patents motivate companies and inventors.

    (And, Mr. Ross, I hope you will forgive some of the typos. But, if you want to discuss this then how about drilling down to the actual mechanism the SCOTUS just burnt down.)

  • [Avatar for Night Writer]
    Night Writer
    June 29, 2015 06:27 pm

    Mr. Ross, >>Doctrines such as anticipation, obviousness, enablement and written description impose constitutional limitations on the scope of permissible patent rights, and it is vital that these doctrines be developed by an independent judiciary which is unduly impressed by technological development and beholden to the clients who are in the business of acquiring patents.

    What you say sounds OK until specifics are actually analyzed. Take Alice, for example, Alice is based on the SCOTUS creating judicial exceptions to patentability with federal common law. Alice is probably most odd in that it is based on factual findings that these “abstract” claims do not promote innovation, but without any evidence on the part of the SCOTUS (and no evidence cited.)

    Moreover, Alice really overturns Graham without even discussing this. Additionally, Alice is ridiculous because it does not discuss the ladders of abstraction that are used in modern engineering and science. It is absurd to discuss something being abstract without contextualizing the ladders of abstraction. And, Alice is essentially–as anyone who actually practices patent law knows–a case that empowers judges to do anything they want. The Alice two part test is absurd. The judge doesn’t have to do any of the Graham analysis with real evidence, but merely psychotically type in nonsense.

    In fact, Mr. Ross, I’d go so far as to say that Alice is fascist. It is putting all the power in the hands of the judges and we have Google determining which judges are appointed to the federal circuit with Obama appointing more judges that have no science background and don’t understand patent law then those that have some background. It is for this reason fascist.

    So, Mr. Ross as you get into the specifics of what the SCOTUS has done it is abysmal from a legal and scientific point of view. And just listen to the oral arguments. They sound more like a congressional hearing than a legal debate.

    Anyway, if you want to refute any of this please focus on the single issue of a SCOTUS defining “abstract” in science and engineering without even mentioning the ladders of abstraction. Just outrageous. The 9 are not qualified to sit on the SCOTUS.

  • [Avatar for Edward Heller]
    Edward Heller
    June 29, 2015 04:51 pm

    Maurice, I agree with your post. In litigation, one truly begins to understand patent law. Moreover, I have truly come to appreciate the independence and genuine neutrality district court judges have in comparison with what goes on the PTO with reexaminations and IPRs.

    I have often noted that the problem with the Federal Circuit is its insularity — seeing mainly only one body of law, where the lawyers who practice before often share the same specialty. Moreover, they are wined and dined by the likes of the AIPLA and the IPO, who have a view that tends toward expanding patentable subject matter and to reducing the barriers to obtaining patents.

    The Supreme Court is the only and an absolutely necessary supervisory court for such an insular court as the Federal Circuit.

    That said, the Supreme Court doesn’t help at times when it coins the word “abstract,” without any definition, for a placeholder for “we know it when we see it” in determining patentable subject matter. They could do better. Such is not “law.” It is more like “totality of the circumstances” kind of test — balancing — which is pure equity, not law. Scalia points this out often.

    But my main beef is with the AIPLA and the IPO who have been undermining the patent system by bringing us reexamination, PGRs and IPRs. There is a reason that we have an independent judiciary to judge legal rights. A good reason.

    On another point — injunctions. I assume you knew that for more than 100 years, probably a lot more, patent owners only sued for injunctions because legal remedies were inadequate. Damages were non existent.

    Congress then said that a court must award at least a reasonable royalty. But what is that? Even that is subject to proof that may not be available. Look at what happened in the Apple v. Motorola case.

    Only when the patentee has an establish licensing program with a default royalty should an injunction not be available because damages may not exist or not be provable in point of fact.

  • [Avatar for Maurice Ross]
    Maurice Ross
    June 29, 2015 03:37 pm

    Anon: First, I had a double major involving both political science and engineering, but you are most certainly correct that my primary experience involves patent litigation, not patent drafting or prosecution. With due respect, I believe experienced patent litigators are in a better position to assess the impact of Supreme Court decisions on patent law jurisprudence than patent lawyers with technical expertise who spend their days drafting and prosecuting patent applications and whose main mission in life is to procure patent protection for clients.

    Second, with great respect, the rather arrogant assertion that only patent lawyers with technical backgrounds are competent to understand patent law reflects the fundamental problem among members of the patent bar as a whole–they think their technical expertise makes them more qualified than ordinary lawyers and judges to develop patent law doctrine or interpret patent statutes. That is a rather profound misjudgment–to say the very least. It is also in conflict with our core democratic values.

    Based on thirty years of experience, in all candor I have found that most patent prosecution lawyers—while talented in the arcane world of patent drafting and prosecution, are not very good at most other basic legal skills, including litigation, statutory interpretation, and non-partisan legal policy development. Patent lawyers with technical backgrounds usually make ineffective trial lawyers and even worse judges. This is probably because of their bias in favor of a belief system which values technological expertise and technological development over the sometimes conflicting core values underlying our legal system, such as equality, due process, and civil rights. This is precisely why it is critical for the Supreme Court to aggressively exercise its obligation to supervise the Federal Circuit and knock it back to reality when the Federal Circuit develops specialized legal doctrines to protect patent owners that are inconsistent both with the basic structure of the patent statute and the constitutional limitations imposed on the rights conferred to patent owners—patents should substantially advance the art and they should not merely reflect discovery of natural conditions; otherwise, the limited grant of monopoly power provided to patent owners would exceed constitutional and equitable limits. Doctrines such as anticipation, obviousness, enablement and written description impose constitutional limitations on the scope of permissible patent rights, and it is vital that these doctrines be developed by an independent judiciary which is unduly impressed by technological development and beholden to the clients who are in the business of acquiring patents.

  • [Avatar for step back]
    step back
    June 29, 2015 01:22 pm


    Have you seen this one?

    At long last, some people are growing a set of cohones to take SCOTUS to task for legislating from the bench in an area where SCOTUS has no core competence:

    “But this court is not a legislature. Whether patenting isolated DNA is a good idea should be of no concern to us. Under the Constitution, judges have power to say what the law is, not what it should be. The people who ratified the Constitution authorized the courts to exercise ‘neither force nor will but merely judgment.’

    “Although the policy arguments for treating isolated DNA differently than other chemical molecules may be compelling, the legal arguments for requiring such a differentiation are not. The fundamental role that DNA plays in our bodies, even in shaping our identities, does not include a right to change the definition of matter so as to exclude segments of DNA from the universe of discoveries that can be patented. And the broad definition of “composition of matter” provided by our own precedent in Diamond v. Chakrabarty, that in turn has informed the USPTO policies and the decisions made by the lower courts such as In re Deuel can hardly be called irrational.[fn. ‘Similarly composition of matter has been construed consistent with its common usage to include all compositions of two or more substances and … all composite articles, whether they be the result of chemical union, or mechanical mixture, or whether they be gasses, fluids , powders or solids.’ Chakrabarty 447 US 303 (1980)]. Nor does our Constitution contain any definition of “composition of matter.”

  • [Avatar for Anon]
    June 29, 2015 11:15 am

    I do not think it any accident that our Mr. Ross
    a) lacks a technical background,
    b) has a polysci background, and
    c) has as his touchstone to the patent world the litigation angle, and
    d) holds in far too much reverence the Supreme Court.

    With all due respect to Mr. Ross for his years of experience, I think he falls prey to the inability to see a fault due to an ingrained experiential bias. I attribute his rather mixed up view of what was an error and what was not (forming the CAFC as error, and the rampant rewriting of patent law by the Court as somehow “necessary”) as coming from his one-sided (litigation only) view into the patent world. Not understanding the statutory-formation side of generating the patent right in the first place appears to create a rather warped appreciation of what is to be considered “patent law normal.”

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 29, 2015 10:08 am


    At times like this I REALLY wish we had a “like” feature for the comments!


  • [Avatar for step back]
    step back
    June 29, 2015 06:49 am


    It’s time for you to do the obvious.

    Declare SCOTUS to be patent and science outlaws.
    They operate outside the bounds of Article 1, section 8, clause 8.
    They operate outside the bounds of 35 USC 101 and 112.
    They operate outside the bounds of modern science and rational thought process.
    They are no more than a witch hunting and heretic hanging inquisition panel, indistinguishable from those of the 16th and 18th centuries.
    Welcome to the 21st century, same as those earlier ones.

    Jiggery pickery dock.
    The mice run up the clock.
    The clock strikes an abstract one.
    They all defy gravity.
    (None fall down.)
    Jiggery pickery pokery dock.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 28, 2015 07:33 pm


    You could fill an encyclopedia with what you don’t know about patent law.

    You say: “The pro patent federal circuit…”

    That was the entire reason Congress created the Federal Circuit. The whole point was that Congress was tired of Judges on every level in the federal system never finding a single patent valid. You really need to brush up on your history.

    You also say: “No one can deny that too many junk patents are issued.”

    I dispute it, and you would as well if you were at all informed. You and other anti-patent critics want to pretend that the Patent Office continues to issue junk patents, which is a lie. You want to litigate and re-litigate the loose standards from 15+ years ago as if there is a basis in reality for this claim in 2015. Utter and complete nonsense. Only someone who is wholly unfamiliar with the patent system and the patent process could make such a ridiculously false claim.

    Finally, your reverence for the Supreme Court is misplaced. They are wrong in almost all instances when it comes to patents. You seem to cite the fact that the decisions are unanimous as some kind of proof they know what they are doing. Again, utterly ridiculous. How is it surprising that a homogenous group of Ivy League educated judges who don’t know the first thing about science, technology or patent law would reach the same erroneous conclusions? The fact that their decisions are often unanimous just proves that not a single one of they is capable of understanding paten law, let alone achieve a fair and reasonable decision.

    To inform yourself and banish your ignorance I suggest you read this article again, and also see:



    If you continue to hold your beliefs all I can say is you are exceptionally stubborn in your ignorance.


  • [Avatar for Maurice Ross]
    Maurice Ross
    June 28, 2015 03:01 pm

    While I respect your views, your criticism of the Supreme Court is misguided. The King decision was clearly correct given the structure of the ACA. The creation of the Federal Circuit was a grave error by Congress, forcing the Supreme Court to require that patent law be interpreted and applied consistently with other bodies of law. No one can deny that too many junk patents are issued. Further, patents which preempt natural products and natural phenomena inhibit research and science. 90 percent of new products on the market are not protected by patents and they do just fine. Patents hinder investment and research more than they incentivize it. The pro patent federal circuit distorted patent law with ridiculous formulaic standards now reversed by the Supreme Court. KSR is the best example but so too is the court’s elimination of presumptions of irreparable harm and entitlement to injunctive relief. The decisions you criticize are often unanimous uniting conservative and liberal judges. It is the federal circuit and the modern patent bar that has failed to faithfully apply the statute and honor clear precedent established before the creation of the ill-advised federal circuit

  • [Avatar for Joyce]
    June 28, 2015 02:17 pm

    I’m getting out while the getting is good.

    No really. I hadn’t planned to retire from patent law this early, but it seems the time is right.

  • [Avatar for Anon]
    June 28, 2015 09:47 am

    Mr. McCabe,

    One subtle distinction that you seem to overlook: the largest tech companies do not in fact “lose,” as that definition applies to their entrenched-let’s-look-at-next-quarter perspective. Eliminating that next disruptive innovation is very much a “win” in their books.

  • [Avatar for Michael E. McCabe, Jr.]
    Michael E. McCabe, Jr.
    June 28, 2015 08:46 am

    Gene: Very nice overview. And unfortunately it may take years, if not generations, to undo the harm that has already been done by Scotus. They say bad facts make bad law, and this observation certainly holds true with respect to recent 101 jurisprudence. And a dysfunctional Congress only seems to be hell bent on labeling anyone a “troll” and turning US patent litigation into a loser pays system. Now we are seeing the results of the pincer attack as district courts and the Federal Circuit are finding every patent seemingly “abstract” and are blasting losers with fees based on an arbitrary and vague standard of what was reasonable litigation conduct. It is not too much to say that the sky is falling on innovation in the United States.

    Sadly still the very same special interest groups who were behind patent death squads at the PTAB, 101 interpretation, and fee-shifting are some of the largest tech. companies in the world. They too will one day reap the “rewards” of their own attacks on the very system they helped to create.

    Everyone loses.

  • [Avatar for Anon]
    June 28, 2015 08:12 am

    Mr. Heller,

    I could not disagree with you more as to the proper focus of attention (players versus the Supreme Court).

    There will always be players. It is of paramount importance that the Court recognize its proper place and abide by the constitutional restraints. Nothing is higher than the Constitution – certainly not one of the three branches and the writings of our Founding Fathers, from the Federalist Papers to the words of Jefferson are particularly clear as to the insidious and pernicious danger of closing one’s eyes to the absolute corruption that can come from such absolute power.

    step back, you are correct in that this is not a Democrat versus Republican thing. There are anti-patent forces in both camps. As they say, politics makes strange bedfellows, and the property rights incumbent in patents are despised from both ends of the spectrum – from the Far Right and from the Far Left. To let this become a mere Democrat/Republican thing is to fall prey to a smokescreen against who benefits most from a patent system: the American Public who is liberated from entrenched powers with the eternal promise of disruptive innovation.

  • [Avatar for step back]
    step back
    June 27, 2015 06:24 pm

    This is also about promise and breach of promise.

    The US Government promises in 35 USC 101, Whoever invents ANY new and useful … may obtain a patent therefor.

    Then after applicants have spent their treasures, energies and time pursuing a patent, the Government takes it away without due process of law or just compensation.

  • [Avatar for step back]
    step back
    June 27, 2015 06:21 pm

    This is not Democrat versus Republican.
    This is “takers” versus “creators”
    where the takers want to take without giving due compensation to the creators.

  • [Avatar for Edward Heller]
    Edward Heller
    June 27, 2015 06:17 pm

    Just for example, Night, did you know that Carly Fiorina, ex CEO of HP, is with us? Her common sense position on patents and the need for a strong patent system has got my attention.

  • [Avatar for Edward Heller]
    Edward Heller
    June 27, 2015 06:11 pm

    Well, Night, their spokesmen are liars through and through. They pretend to be arguing for the little guy will their whole mission is to rig the patent system so that only the big boys can afford to litigate. They pretend that big business it the only source of new technology, when startups are the only source of new products, new ideas, and new jobs.

    As to Fox News, you diminish your argument saying really bigoted things like that. Republicans are not universally ignorant and stupid. You paint with too broad a brush.

  • [Avatar for step back]
    step back
    June 27, 2015 05:48 pm

    Night Writer,

    Good insight.

    We have Article 1 PTAB death squads that revoke property rights without due process of law. No different than USSR Politic-bureaucratic star chambers.

    We have seen the evil empire (from Palin’s porch) and it is us. 🙁

  • [Avatar for Night Writer]
    Night Writer
    June 27, 2015 03:45 pm

    I’ve come to believe that the SCOTUS is about the Fox news watchers. I think these big corporations are getting their way with the SCOTUS through propaganda.

    I think that Lemley doing the talk show circuit and telling everyone that trolls are killing businesses and that wild functional claiming has destroyed the patent system has been very effective.

    What I have noticed is a complete lack of intellectual integrity with the anti-patent movement. It is a propaganda movement fueled by corporate money. There does appear to be an academic liberal part of the movement that just thinks that patents are bad and has jumped into the fray.

    But, I think that the only way to combat this is to face reality. Reality is that the SCOTUS are a bunch of Fox news watching beer drinkers (in mentality) and they are sucking up the nonsense of the Lemleys, and turning around and legislating.

    That is where we are. A SCOTUS that has turned into the Congress and the SCOTUS and that forms their opinions from the popular media. Note too that they are in general ignorant on almost any subject but law. They don’t understand economics or science.

    I think this is getting a bit like the USSR was with their ruling body. The SCOTUS has become our ruling counsel.

  • [Avatar for Night Writer]
    Night Writer
    June 27, 2015 03:31 pm

    >>Consider this the traditional common law power of writing law.

    You know Anon there are cases where the SCOTUS writes that the 1952 Patent Act “merely” codified their case law. It is really outrageous. But, then listen to the oral arguments of Alice. Kagan sounds like a legislator, and many of the SCOTUS oral arguments sound more like a debate in Congress on what the law should be and not how to apply the law or whether the law implicates the Constitution.

    Seriously. Listen to the oral arguments. It is frightening.

  • [Avatar for Night Writer]
    Night Writer
    June 27, 2015 03:27 pm

    >>that replaces bright-line rules and objective evidence with fact-free opinions

    Really well said David. There is actually SCOTUS case regarding this type of test. This type of test is supposed to be unconstitutional because it does not permit a person to know what the law is.

    But, let’s fact it. The judiciary has usurped massive power in this country in wake of the Congress being weakened.

  • [Avatar for Night Writer]
    Night Writer
    June 27, 2015 03:18 pm

    >Gene, “abstract” began with Rader’s dissent in Bilksi and was adopted by the high court in that case. I too have railed against the test because no one knows what abstract is.

    People forget this. Rader handed the anti-patent movement the means for destruction. But, you know, the key to unraveling this is shaming the SCOTUS for their use of the word abstract. Newman wrote about the ladders of abstraction in her dissent of Bilski. The SCOTUS should be ashamed of themselves for introducing the term abstract without discussing it in terms of the ladders of abstraction.

  • [Avatar for Night Writer]
    Night Writer
    June 27, 2015 03:13 pm


    It is actually much worse than this. What will happen is that the big corporations will come after you with their patents and will take your software, but the little company will have no recourse.

  • [Avatar for Edward Heller]
    Edward Heller
    June 27, 2015 11:10 am

    Gene, “abstract” began with Rader’s dissent in Bilksi and was adopted by the high court in that case. I too have railed against the test because no one knows what abstract is.

    Another problem Rader caused was his divided infringement opinion in BMC Resources. Whole cloth — no authority.

    Then we have is decision negating the 25% default rule for a reasonable royalty.

    Rader personally is part of the problem.

    The problems in infringement law trace to Aro II that put a requirement of knowledge of patent infringement into the law for the first time — opening acknowledging that such was not the intent of congress or of Rich who authored 271(a)-(d).

    eBay was, and is, a disaster.

    Seagate, another Federal Circuit decision, is a bad as it gets when any reasonable defense made in court negates willfulness before. Anyone hear of infringing with impunity after these tow cases?

    Then we have the AIA and IPRs — a work of the AIPLA. Who? Aren’t they supposed to be on our side?

    I am personally targeting IPRs, which may bring down the entire AIA. But the recent decision regarding Obamacare does give one pause. The Supreme Court itself is way out of control — a lawless branch, as you suggest.

    Money talks, and big money is behind what is going on here, from the Supreme Court, to the Federal Circuit to Congress. The patent system is not working the way they like it — they do not like having to respect the rights of others. Solution? Gut remedies, and allow Article I hostile “courts” to gut patents using very low standard of proofs and broadest interpretation possible.

    I think focusing on the Supreme Court is focusing on the wrong problem. We need to focus on the people, the companies, the corrupted institutions that are supposed to be working for a strong patent system but who are undermining it. Big money — and a lot of it coming from Silicon Valley and Seattle.

  • [Avatar for Anon]
    June 27, 2015 11:04 am

    step back,

    They may very well be reading in Mandarin…

  • [Avatar for step back]
    step back
    June 27, 2015 10:19 am


    Well said.

    If only it were true that the US Constitution was the true and final source of law in the Divided States of America and its territories.

    But how many people actually read the Constitution and comprehend its many ramifications? No. Most believe in the slippery myth of the Floundering and Philandering Fathers and their infallibility. Basically, such is an unintelligent bow to authority and to the notion that the King and his minions can do no wrong.

    We have slipped back to the medieval meme of anointing royalty and minions thereof and letting them do the thinking and final decision making for us even though we know they are big hairdo puffs with no brains underneath.

    By referring to the Supremes as supreme, we cede to them powers they were never meant to have. Even on those occasions when we hear them mumble about “gobbledygook” and “abstract ideas” and “jiggery pokery” applesauce we continue to genuflect and pay homage.

    The true Founding Rebels would be disgusted.
    We have become England and we too are on our way down and out.

    That is what History, if any of it is left behind, will reveal to those who might still know how to read.

  • [Avatar for Anon]
    June 27, 2015 08:09 am

    Mr Stein et al,

    As a student of law and of history, I see a distinct battle in play over the “interpretation” and writing of patent law.

    I see two stands to this battle: 1) which branch has the say as to what law means (and here both the meaning of patent law and its development over time, verily a mechanism of writing law), and 2) the deeper ramifications and the role of the attorney in the legal system in which that written law is applied.

    When the litany of cases offered by Mr. Stein is read in their historical contexts, it appears as no accident that the Supreme Court has taken an obvious and deliberate set of actions to undo the intent of Congress in establishing the Court of Appeals Federal Circuit in the first place. There are several in the blogosphere that rail against the CAFC (mostly in that body’s past actions) without realizing that the body had been merely following the stated direction of Congress. Up until recently, the CAFC could be thought of as the proxy of Congress.

    No longer.

    It is abundantly clear – and captured well in the massive amount of nothingness that is the CAFC Alice write-up – that the Court has been intent on curbing and bending the CAFC to its will. The battle has been over who holds the leash of that proxy.

    Congress losing that proxy has as its direct consequence the return to the judicial branch (and the overseers of that branch) the power to shape the law as desired. Consider this the traditional common law power of writing law.

    The deeper and far more fundamental question remains though: Is it the judiciary that has been granted the authority to write patent law? And make no mistake, writing patent law is exactly what is being done in this “modern era.” A fundamental appreciation of what “common law” means and the difference between common law and statutory law cannot be emphasized enough.

    A far more pernicious dysfunction abounds here. Those who have deeply studied law will note that the dysfunction may be showing itself first, and subtly at that, in the realm of patent law, but the delicate balance of a triumvirate has been upset. And while the “sky may not be falling,” much like Rome, when the triumvirate fell, real change took place.

    We as stewards of the law are sworn to uphold the law. But what does that mean? Some will claim that the law is whatever the Supreme Court says that it is, but this is not – and perhaps more importantly cannot be true. The Supreme Court cannot be “absolute” as being absolute necessarily means being unchecked, and out of balance. Even the Court cannot be above the Constitution. Even the Court must recognize that it is a body of limited powers and limited times to act and of limited actions to take.

    As to our role as attorneys, I have found not one state’s bar oath that place’s that stewardship of the attorney to the law directly in the Supreme Court as opposed to the Constitution. Quality and administration of justice requires a view not to the ascendancy of the Supreme Court, but to the constitution itself and to the very real limitations of the Court’s authority. We have a duty to the law to challenge the court when the court (even the Court) missteps. But as even Justices of the Court themselves have noted (I am paraphrasing here), The Court is not right because it is “final,” but merely that it is final. And even that finality is but the finality of the judicial role in the law, being itself subject to other changes by law, and of course subject to the limitations as set forth in the Constitution, our true source of law.

    The collision of these strands may, as David alludes, may happen eventually under the weight of logic playing out over time, or may happen sooner, if we as attorneys – on both sides of any issue appearing before the court – take the opportunity to remind the court, and yes even the Court, of its limited power to reshape and to rewrite law that is expressly statutory law.

  • [Avatar for David Stein]
    David Stein
    June 26, 2015 11:49 pm

    So many of the Court’s recent decisions – Nautilus, Alice, Mayo, Bilski, KSR – all have this “smell test” quality, one that replaces bright-line rules and objective evidence with fact-free opinions.

    I do not blame the Court for wanting to address what it perceives as dysfunction (although I do disagree with *why* it perceives dysfunction – i.e., based on rewriting of history by people like Lemley, and specious evidence by people like Bessen and Meurer).

    I *do* blame the Court for the manner in which it has sought that change. Frankly, I believe that the Court is embarrassingly unfamiliar with the ground-truth realities of patent law, such as the historic background and the mechanics of examination. Accordingly, when it seeks to make a process change… it has absolutely no idea what to put in its place. Hence, objective rules are not replaced with better objective rules, but with the type of flowery rhetoric that is much more familiar territory. (Case in point: Together, the nine justices have *ten* A.B./B.A. degrees… and zero technical degrees.)

    All of these decisions will face the same fate as Freeman / Walter / Abele: they will be tried for about a decade, found to be inherently meaningless and illogical, and discarded as unworkable junk.

  • [Avatar for Anon]
    June 26, 2015 10:11 pm

    Software for the win,

    Sadly, I get the distinct feeling that you do not recognize what the word “win” means, nor which type of entity “wins” under these conditions.

  • [Avatar for step back]
    step back
    June 26, 2015 07:32 pm

    p.s. Gene, it looks like you are finally starting to understand.
    SCOTUS cares.
    … about inventors and their plights?
    Yeah, right. 😉

  • [Avatar for step back]
    step back
    June 26, 2015 07:28 pm

    Hickory Dickery Jiggery Pokery Dock,
    The mice ran up the clock …


  • [Avatar for SoftwareForTheWin]
    June 26, 2015 05:16 pm

    Given the realities of patents in 2015, the message to any individual with an idea for new software – don’t bother with a patent, just focus on implementing it. Whatever competitive hurdles and uncertainties you run into will be nowhere close to as bad as what comes from going down the patent road.