Supreme Court says laches is no defense to patent infringement

Justice Alito

Yesterday, the United States Supreme Court issued its decision in SCA Hygiene Products Aktiebolag et al. v. First Quality Baby Products, LLC, et al. The case required the Court to determine whether the defense of laches remained a viable defense to patent infringement actions when the charge of patent infringement is brought during the six-year statute of limitations. As predicted by many, the Supreme Court found that the defense of laches is inappropriate for claims brought within the statute of limitations, the same ruling reached only several years ago with respect to laches as a defense in copyright infringement claims. See Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. ___ (2014).

The decision of the Supreme Court was not unanimous. The majority opinion was delivered by Justice Alito, who was joined by the Chief Justice, as well as Justices Kennedy, Thomas, Ginsburg, Sotomayor, and Kagan. A dissent was filed by Justice Breyer, who would have affirmed the Federal Circuit ruling finding that 35 U.S.C. 282 codified a laches defense without using the term “laches.” It was Justice Breyer’s belief that the codified defense of unenforceability allowed for a laches defense to patent infringement actions, explaining that in very old cases interpreting the common law laches was at times equated to unenforceability.

Still, this case was hardly difficult to predict. Justice Alito explained, in a rather exasperated way, that the Federal Circuit seemed to ignore previous Supreme Court pronouncements that laches could not be used as a defense to a claim brought during the statute of limitations period because those cases did not specifically deal with a claim of patent infringement. This gave Alito the opportunity to again lecture the Federal Circuit, this time by citing to Judge Hughes’ en banc dissent, which explained that patents and patent cases are not special, and that the law applies equally to patents and patent cases.

First Quality did make an interesting argument about the six-year statute of limitations for patent infringement actions not being a true statute of limitations because it counts backwards from the filing of the complaint rather than forward from the date of infringement. The importance of this nuance seemed completely missed on the majority. Only Justice Breyer really seemed to understand the importance of the argument. Of course, without a laches defense possible, a patent owner could lie in wait for infringement to become widespread and then sue for infringement seeking only the previous six-years worth of damages.

Although I doubt the Supreme Court really understands what they have done, the fact that laches cannot be used as a defense to a patent infringement action brought during the statute of limitations is most definitely a pro-patent decision. Presently patents are much weaker than they have been at any time over the last 36 years. But patent law has always swung like a pendulum, and this low point will not last forever. Thus, in the wake of the Supreme Court’s decision in SCA Hygiene, patent owners would do well to consider forgoing patent enforcement. Instead, allow infringement to accrue and then sue for infringement in several years when the law may be quite a bit more favorable. After all, patents can last for 20 years, the statute of limitations is six-years, and without a laches defense available to infringers you will be able to seek damages going back six years from whenever you choose to sue.

Aside from being pro-patent and limiting a defense available to infringers, several other things – or quotes really – caught my attention. First, in the majority opinion Justice Alito wrote: “[A]pplying laches within a limitations period specified by Congress would give judges a “legislation-overriding” role that is beyond the Judiciary’s power.” (Slip op., at 4)

The Supreme Court never seems to be bothered with “legislation-overriding” when they apply their extra-statutory requirements for patent eligibility. Indeed, 35 U.S.C. 101 specifically says that if a claim is directed to a machine, process, manufacture or composition of matter, the claim is patent eligible. But without any statutory support for doing so, or any support in the Constitution, the Supreme Court has added two additional inquiries through what they refer to as the Alice/Mayo framework. It is indeed interesting that the Supreme Court at times can so correctly understand the role of the Judiciary and at other times completely ignore separation of powers, ignore Congress and the statutes they pass and do whatever they want.

Second, in his dissent Justice Breyer wrote: “I would be more “cautious before adopting changes that disrupt the settled expectations of the inventing community.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U. S. 722, 739 (2002).” (Breyer dissent, at 11)

Settled expectations meant absolutely nothing to Justice Breyer, or any of the other Justices of the Supreme Court, when they decided AMP v. Myriad Genetics. While the Supreme Court clings to the fiction that Myriad did not overrule Diamond v. Ckakrabarty, there is simply no way to interpret Myriad in any other way than overruling the settled expectations that had been understood by the industry for over 30 years. The ruling in Chakrabarty was that the touchstone for patent eligibility was human intervention. Even though the Supreme Court admitted in Myriad that the claimed subject matter did not exist in nature it was still, nevertheless, invalidated under the law of nature doctrine.

Furthermore, in Mayo v. Prometheus, the Supreme Court flat out ignored the entire statutory scheme enacted by Congress and relied upon by the industry since 1952. The Court also overruled Diamond v. Diehr, at least to the extent that in Diehr then Associate Justice Rehnquist explained that novelty is inappropriate to consider under 35 U.S.C. 101 despite the fact that the word “new” appears in 101. Again clinging to the fiction that no precedent was overruled, in Mayo the Supreme Court intentionally conflated novelty and obviousness with patent eligibility, requiring that decision makers consider whether conventional items are added to claims and proclaiming that the addition of conventional, known steps cannot render a claim patent eligible. Of course, whether something is conventional is an inquiry under 35 U.S.C. 102 and 103, not 101. Even worse, whether something is conventional is now asked absent the application of prior art, apparently divining that knowledge from some higher authority. See Mayo v. Prometheus: A lawless decision by an omnipotent Court.

Indeed, those two quotes from Justice Alito and Justice Breyer are as frustrating as they are comical. Clearly, the Supreme Court is as out of touch with reality as they are with their own precedent.


Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

Join the Discussion

47 comments so far.

  • [Avatar for step back]
    step back
    March 27, 2017 12:23 pm

    Study guide to Animal Farm for them who haven’t read the book:

  • [Avatar for step back]
    step back
    March 26, 2017 11:04 pm

    @43 “whole point of having the right to speak is to be heard

    All pigs on Animal Farm have an equal right to be heard.
    But it seems those with the moolah are more equal than others -according to your principles.

    Who’s the Marxist now?

  • [Avatar for step back]
    step back
    March 26, 2017 11:00 pm

    @43 “collective voices of their owners

    That’s a two-fer.
    Two mis-truths in just one line.

    Them who own a small but controlling percentage (.e.g. 10%), control the Board and President of the Corp. Most “owners” (.e.g. <1% apiece),do not have large enough a percentage to have any voice.

    The "owners" can speak for themselves as can John Smith.
    Having the corp "speak" for them with its hoarded cash is a double dip.

  • [Avatar for Anon]
    March 26, 2017 10:47 pm

    Mr. Heller,

    You do not have “the principle” correct and you are ignoring what people are telling you as to what the concern really is.

    Your ad hominem then, is doubly off base, as it is you that mirror the ad hominem that you dish out.

    Do not play those games here, please.

  • [Avatar for Edward Heller]
    Edward Heller
    March 26, 2017 07:47 pm

    step, the principle is whether corporations, which have the collective voices of their owners, have a first amendment right to speak. They do.

    Further, the whole point of having the right to speak is to be heard.

    Your thinking is so polluted and backasswards that it would be nigh on impossible for you and I to ever agree on anything. I am for freedom. You are not. You are for rigging outcomes, pure and simple, where the end justifies the means. Pure Marxist or, better, totalitarian, thinking all the way.

  • [Avatar for step back]
    step back
    March 26, 2017 07:11 pm

    @40 Ned= Artful Dodger

    Citizens United (CU) is not about being able to “speak”.
    CU is about being able to spend unlimited amounts of money so that political offices are in effect sold to the highest bidder. The SCt held that the amount of money cannot be restrained because, as they see it, money=speech.

  • [Avatar for Anon]
    March 26, 2017 04:05 pm

    This includes the right to form organizations in order to speak louder through those organizations, and these organizations include political parties.

    Speaking louder…

    Louder than what?

    This is not antipathy to private ownership – this is antipathy to the machinations of Big Corp.

    Once again, Mr. Heller, it is you that does not appear to have a grasp of the issues here.

    Your “protest” is just not what the Citizen’s United concern is about.

  • [Avatar for Edward Heller]
    Edward Heller
    March 26, 2017 03:07 pm

    step, your antipathy to private ownership betrays you. And no, I am not talking about the ownership of the press as we know it. I am talking about anybody being able to speak about any topic, at any time, in any form. This includes the right to form organizations in order to speak louder through those organizations, and these organizations include political parties. It includes the right of organizations that are nominally are only in business to make money but who have an interest in the public dialogue. Obviously, this would include companies like IBM who have major stakes in patent law, and should have a right to express their opinion even though, for the most part, most of us would not agree with it.

    Gene is an example of a person who has a view and, because of his website, he and his fellow posters are able to speak their minds and perhaps persuade people that they are right. It would be unfortunate if Gene were denied any right to speak at all simply because he formed an LLC, or had other investors.

    On McCain, is he really a Republican?

  • [Avatar for step back]
    step back
    March 26, 2017 10:49 am

    No need to mention that us unpatriotic Marxist sympathizers might dream of conspiracies where foreign governments with untold amounts of oil money might want to buy a piece of our government or main public megaphone and through that means of control do harm to our nation (harm-mah-nation), is there?

  • [Avatar for step back]
    step back
    March 26, 2017 10:42 am

    To protest, one must have a megaphone.” …. “the press is free to speak but corporations are not [can’t be because] all press are in fact corporations or held by corporations … [Y’all a bunch of] Marxists or a Marxist dupes

    @33 Mr. Heller,

    Interesting allegations.
    Lucky for us that you are not a totalitarian McCarthyist.

    But let’s get back to your debate points about the megaphone.
    By that I assume you mean the major network channels on television.

    Yes you are correct that all of them are owned and controlled by corporate subsidiaries of larger holding corps.

    You lie (misspeak the truth?) when you say “all” the press.

    Gene Quinn for example sometimes acts as the “press” (e.g. catching the USPTO as refusing to say who is their official Director during the era of Trumptopia). Many other independent bloggers, tweeters or other form of small time publishers also act as the “press”. And of course they do not have access to unlimited sums of money for holding that public “megaphone”.

    It’s not about merely holding the megaphone though. Is it?

    It’s about being able to buy and privately own one of the limited number of government officials (Congress critters, bureaucrats, judges etc.). Isn’t it?

    It’s about being able to buy and privately own one of the limited number of them who know the dark rhetorical and mind manipulating arts. Isn’t it?

    Have you been bought and paid for? 😉

  • [Avatar for Night Writer]
    Night Writer
    March 26, 2017 10:05 am

    @33 Ed the Ned: anybody who opposes Citizens United is, in the United States,

    How do you feel about dark money and campaign contributions? Even McCain wants campaign finance reform.

  • [Avatar for Anon]
    March 25, 2017 09:03 pm

    Mr. Heller,

    Your opinion is baseless. I understand Marxism full well (from its roots, even) and your views here are simply meaningless.

    Please stop embarrassing yourself.

  • [Avatar for Edward Heller]
    Edward Heller
    March 25, 2017 05:24 pm

    anon, that is just my opinion. One has to understand Marxism from its roots to understand this issue fully. Regardless, on the right, we also have a good example of control of the press. Think 1932-1945.

  • [Avatar for Anon]
    March 25, 2017 04:06 pm

    In the bottom line, anybody who opposes Citizens United is, in the United States, either a Marxist or a Marxist dupe. This is a fact. The protests against citizens United come entirely from the left.

    Unabashedly and unequivocally false, Mr. Heller.

    There is a world of difference between Citizen’s United and freedom of the press, as well as free speech.

    Please do not attempt to speak on another topic (First Amendment) that you know so little about.

    And please, at the very least, do not seek to merely label anyone who does not feel as you feel with the label of “Marxist or a Marxist dupe.”

    You are only embarrassing yourself with such a lowly tactic.

  • [Avatar for Edward Heller]
    Edward Heller
    March 25, 2017 03:37 pm

    The goal of any totalitarian, from the Marxist to the fascist, is to control the press and the speech the powerful. Individuals have no power even though they might have some free speech. Their free speech can only be communicated to their immediate neighbor. To protest, one must have a megaphone.

    The left in the United States has demanded that free speech be regulated. They do this in many different ways, from demanding equal time on broadcast networks that effectively censors any political speech, or by stripping the powerful of of any right to speak at all.

    When one says that the press is free to speak but corporations are not, one observes that all press are in fact corporations or held by corporations. The the principal once established that corporations do not have free speech imperils freedom of the press.

    In the bottom line, anybody who opposes Citizens United is, in the United States, either a Marxist or a Marxist dupe. This is a fact. The protests against citizens United come entirely from the left.

  • [Avatar for step back]
    step back
    March 25, 2017 02:30 pm

    Ned @29

    Now we are finally getting near to the abstraction flame.

    A “corporation” is an abstraction.
    It does not actually exist in the real world.
    It has no heart, no pulse, no emotions or fears.
    If you prick it, it doth not bleed.
    If you whip it, it feels no pain.
    If you prod it it, it speaks not on its own but is rather a mere puppet whose strings are moved by them who have leveraged control over the fictitious corpus of the corporation.

    Human beings have a need for protection so they can speak freely, think freely and worship as they please. The 1st Amendment was put into place by the originalist Founding Fathers to protect those among human beings that they then considered as citizens (not all pigs were equal back then).

    There is no way that the originalist Founding Fathers added the 1st Amendment so as to protect the heartless, pulseless and fear-free corporations.

  • [Avatar for Anon]
    March 25, 2017 10:20 am

    Mr. Heller,

    Your perceptions are only in your mind, and have no nexus with reality.

    As to Citizen’s United, your view on that as being a “great decision” also paints what is in your mind as lacking nexus with reality, and betrays professed views as to “fighting for the little guy.”

    Basing “voice” on pocketbook (which is the clear takeaway from Citizen’s United) is the bane of the “little guy” and goes hand in hand with the Big Corp attack on the patent system.

  • [Avatar for Edward Heller]
    Edward Heller
    March 25, 2017 09:47 am

    anon, I perceive you doing exactly what I said you we doing. You have been picking out the Dems on the Supreme Court for special treatment.

  • [Avatar for Edward Heller]
    Edward Heller
    March 25, 2017 09:45 am

    Step, Citizen’s United is a f’n great decision. It is clear that you and I will never see eye-to-eye.

  • [Avatar for Anon]
    March 25, 2017 09:13 am

    Further, Mr. Heller, I have NOT demonized ANY political party in my views on the Supreme Court.

    There have been ZERO political party aspersions in my posts.

    You simply present a false fact and attack that false fact.

    Still further, you (once again) seem confused between the thought of software and software. Software is not the thought of software. Software is not the execution of software. Software is a manufacture by the hand of man, and in fact (regardless of what the Court may think), is a machine component.

    You have in the recent past on this blog professed that you have always believed in the patent eligibility of software, but that statement just does not hold up to scrutiny.

    As I stated then, and repeat now: your credibility on these matters is zero.

  • [Avatar for Anon]
    March 25, 2017 09:08 am

    Mr. Heller,

    Please show my your State attorney’s oath.

    I would put to you that “bashing” instead of being wrong, is actually your duty.

    Until you actually decide to fully commit to a reasoned dialogue, including answering the points put to you, your credibility on these matters remains nil.

  • [Avatar for step back]
    step back
    March 25, 2017 07:30 am

    persuade Congress to allow the patenting of abstract ideas once they understand what that means

    Yes it means that an MRI machine is not a “machine” per the plain and ordinary meaning of 35 USC 101 but rather a shadowy illusion on the walls of Plato’s allegorical cave.

  • [Avatar for step back]
    step back
    March 25, 2017 07:19 am

    Bashing the Supreme Court as an institution is completely wrong.

    So instead we should honor them with appellation over:
    Dredd Scott?
    Plessy v. Ferguson ?
    Citizens United?

  • [Avatar for Edward Heller]
    Edward Heller
    March 25, 2017 07:11 am

    Anon, what I see that there was a split between Republicans and Democrats in Bilski and that you want to side with Republicans because you are Republican or a leaning Republican. You perceive Democrats as anti-patent and will not give up your bias against them. But in this 101 fight, the court generally has been united, producing unanimous decision after unanimous decision, including Benson and Alice. Republicans are equally on board with the notion that math in business methods are not patentable subject matter, but because Congress had passed a statute provided prior user rights perspective business method patents, the Republican majority was unwilling to categorically exclude business method patents of patentable subject matter. That is why they came up with “abstract.” That does not mean however that the ever approved of claims like those of Bilski as being patentable subject matter. They just wanted to provide some legal basis for their not being patentable subject matter other than the fact that they were business methods. That is the true divide between the majority and the concurrence in Bilski.

    Thus, if you think that the current status of jurisprudence with respect to 101 is wrong, I would suggest that the problem is with the entire Supreme Court not with one party’s justices. This is not a political issue and never has been.

    Furthermore, I think bashing the Supreme Court as a general matter is completely off base. If the general populace would actually understand that patent attorneys are in revolt against the Supreme Court as an institution, that would be the end of patent law as we know it. The people would react with anger. Political divides they understand – but not complete opposition to the Supreme Court.

    So where are we? Bashing the Supreme Court as an institution is completely wrong. Your trying to turn the issue into a political issue by demonizing one party is wrong. In general, anon, you are wrong on this is, and always have been. It handicaps you and so many, many ways from seeing the issue for what it is. The Supreme Court is not on your side on this issue.

    I do not know if there is a legitimate end run around this issue because I do not think anyone will ever persuade Congress to allow the patenting of abstract ideas once they understand what that means, as if it was not clear just by saying so. Patents are for technology, and software certainly involves technology. But patenting ideas is not patenting technology and is not patenting software.

  • [Avatar for Anon]
    March 24, 2017 11:13 pm

    Stevens’s views were technically a concurrence, and no, Mr. Heller, that was a far worse path.

    I am not the one that needs to open their eyes to what the Court has done, and is doing.

    That would be you and your desire to place the Court above the Constitution.

    It is not just one decision of the Court that evidences this most odd and peculiar desire of yours. It is the pattern of decisions. It is not just one Justice (albeit there are a few more consistently anti-patent: Breyer, for example), but it is the very notion that the Justices place themselves above the law, above the Constitution that is reprehensible.

    Perhaps you should try listening, or maybe simply fully commiting to an (inte11ectually honest) dialogue and NOT disappear when the discussion becomes inconvenient to your agenda, as you have done now for several years.

    Wouldn’t that be something?

  • [Avatar for Edward Heller]
    Edward Heller
    March 24, 2017 08:24 pm

    anon, you seem to pretend that Stevens’s dissent, which would have only addressed business method patents, is worse for software patents than the majority that declared the claims in Bilski to be invalid because they were abstract, which now affects not only business method patents but just about everything else. At some point in time, you are going to have to recognize anon, that the so-called victory you think you achieved with the Kennedy majority was hardly a victory at all.

    I have been trying to point this out to you since Bilski came down to no avail. You seem to be blind to what happened in Bilski. You seem to think you won, when you did not win.You seem to think that Bilski preserved business method patents when clearly Bilski did not. You seem to think that software patents were protected by Bilski when clearly they were not. You seem to think that Stevens was not your friend but Kennedy was. You have another think coming.

    Your constant antipathy towards Kennedy and the majority is bewildering given what actually happened.

    The entire court is against your position. It is just that the Kennedy majority is worse than the Stevens dissent.

  • [Avatar for step back]
    step back
    March 24, 2017 08:18 pm

    Gene @19


    Rolling on My on Floor Copy of Constitution Laughing My Assets Off 🙂

    p.s. The President said he is going to get SCOTUS to pay for my Great Wall of Shame

  • [Avatar for Anon]
    March 24, 2017 06:49 pm

    Mr. Heller, the option (and a very clear far worse one) in Bilski was to go with Justice Stevens.

    The blogosphere is already full of your deceptions concerning that option, so let’s leave that well enough alone (unless you want to commit to FULLY discussing the matter and not running away as is your usual tactic)…

  • [Avatar for Gene Quinn]
    Gene Quinn
    March 24, 2017 06:43 pm


    That is going to be one very full wall! I’m not sure even an Internet wall has the kind of room necessary for all the rightful honorees.


  • [Avatar for step back]
    step back
    March 24, 2017 06:26 pm

    @16 Anon

    Good idea …
    Working on it

  • [Avatar for Edward Heller]
    Edward Heller
    March 24, 2017 05:56 pm

    Anon, seriously, with everyone complaining about “abstract,” you would not put Justice Kennedy at the top of your list?

    Justice Scalia probably had a very hard time supporting Kennedy because Scalia was always in favor of clear rules that everybody could follow. The majority opinion in Bilski was anything but that.

  • [Avatar for Anon]
    March 24, 2017 04:16 pm


    Sounds like a nice series for your own site.

    Perhaps you can solicit bios to (and with) certain nominees?

    We can start with the 101 cases (post 1952), and include the Group of 4 from Bilski, whom, it is worth noting have dropped to a Group of 3 with Justice Stevens retirement and – it should shock no one – that very same three were flagged in the President Clinton released presidential papers as being unduly activist on the bench.

    Our Founding Fathers feared a “too-strong” judiciary – and for good reason.

  • [Avatar for step back]
    step back
    March 24, 2017 03:27 pm

    … it breaks the foundation of our society.

    @14 Night Writer,

    I fear that you are quite correct on these points.
    Unfortunately it may take many years (decades or more or never) before people wake up and realize what damage has been done and who are the sources of that damage.

    We need to establish a Judicial Hall of Shame.

    We need to post the portraits of the judicial actors who belong there on the walls with plaques explaining exactly what they did and how it harmed us and our posterity in contradiction the goals of the Preamble to our US Constitution.

  • [Avatar for Night Writer]
    Night Writer
    March 24, 2017 07:16 am

    @10 >American jurisprudence has indeed deteriorated; and not solely, in the area of patent law.

    This is the understatement of the day. What I find so offensive is that the justices somehow put this high value on themselves and think they are such great boys and girls, and they write stuff like Alice as if we don’t know what they are doing. It offends the intellect and dignity of any honest, ethical attorney in the USA.

    It sounds radical, but I really think if this keeps swinging to no law we are going to end up in a very bad place. The reality is when Justices behave like this is breaks the foundation of our society.

  • [Avatar for Edward Heller]
    Edward Heller
    March 23, 2017 08:47 pm

    Joerg, “ongoing every year for the last 10 years…” Infringements are normally not “ongoing.” They occur discretely, as when a product is made or sold. Now, use can be longer, but typically damages do not involve such use.

    Statute of limitations generally apply to breaches of contract, or the date the damage from a tort occurs. The limitations period gives one a short number of years to file suit.

    But with patent damages, the statute gives one the right to file and collect for any infringements that have occurred within the last six years. Typically, infringements are continuing after suit is filed, and, unless enjoined, will continue after judgment is rendered and collected.

    Laches best applies to the equitable remedy, leaving the patent owner only his legal remedy. For ongoing infringements, the court can and does award an ongoing royalty.

    One has to be aware that past damages are vested may be assigned separately from an assignment of a patent. In fact, unless an assignment specifically includes an assignment of past damages, the law presumes the past damages were not assigned. Only the owner of the right to collect past damages has the right to bring suit.

    Looking at it this way as well, the Federal Circuit’s prior rule made no sense because person delaying bringing suit on past damages may be a party different from the person who owns the patent.

  • [Avatar for Gene Quinn]
    Gene Quinn
    March 23, 2017 05:53 pm


    I love the Seven Dwarfs line!

    Thanks for the comment @11. I wrote the first draft of this on a plane to CA, was there for an event yesterday. I wrote my article about Star Athletica (copyright separability) on the way back. Although it is a copyright case I think you and other patent folks will find it interesting. More revisionist history going on at SCOTUS about how they defer to Congress when interpreting statutes. See:


  • [Avatar for Eric Berend]
    Eric Berend
    March 23, 2017 05:45 pm

    BTW, Gene, I must also second ‘step’ ‘s opinion of this article. Thank you for explicating the essential principles involved, in such a forthright and accurate analysis.

  • [Avatar for Eric Berend]
    Eric Berend
    March 23, 2017 05:37 pm

    Chief Justice Rehnquist was a relative giant, as compared to these Seven Dwarfs.

    American jurisprudence has indeed deteriorated; and not solely, in the area of patent law.

  • [Avatar for Night Writer]
    Night Writer
    March 23, 2017 03:10 pm

    Ed the Ned’s attempt to add a new witch word to 101. Oy vey.

  • [Avatar for Joerg Haider]
    Joerg Haider
    March 23, 2017 09:21 am

    Can somebody answer a dumb question here…

    After this no-more-laches decision, if somebody sues for infringement that has been ongoing every year for the last 10 years, does the SoL operate to just cut off damages from conduct that is more than 6 years prior to suit or would it bar the suit altogether? Would the outcome be different under laches (other than the time period being fuzzy rather than exactly 6 years)?


    A dumb guy who doesn’t know

  • [Avatar for Anon]
    March 23, 2017 07:39 am

    step back,

    Mr. Heller should know better, but what he is doing is nothing more than “soundbyte” “lawyering.”

    Unfortunately, what this tends to promote is a type of “well, I read the case and this is what it means to me” “legal” analysis from people who do not understand the terrain of law and who merely seek out confirmation of pre-existing beliefs and feelings.

    Such easily leads to a reduction in critical thinking and a mere unreasonable stance on the law based on emotions.

  • [Avatar for step back]
    step back
    March 23, 2017 01:43 am

    Mr. Heller, do you believe is selective originalism?
    (Going back to ancient manuscripts only when it suites you?)

    p.s I think there are some really good ancient manuscripts on curing medical ills by means of leeches and generous blood letting. A true believer applies his beliefs to himself as well as to others.

  • [Avatar for Anon]
    March 22, 2017 06:55 pm

    Mr. Heller,

    As has been abundantly pointed out it you, Congress has already spoken as to process. See 35 U.S.C. 100(b).

    Process is simply NOT your desired state of merely a handmaiden of the hard goods statutory categories.

    An article by Judge Rich prior to the Act of 1952 will not suffice to explain what Congress did in that Act.

  • [Avatar for Edward Heller]
    Edward Heller
    March 22, 2017 06:29 pm

    Gene, on 101, I think “new” was added in ’93 when “compositions” were also added to make clear that discovered compositions were not eligible. Beyond that, 101’s “new” would seem to generally apply only to laws of nature and then only in the abstract, but not in any application.

    On “abstract,” if we were to limit “Art” to industrial processes as “useful Arts” were understood to mean at the time that “useful Art” was first enacted into the patent statutes in 1790, then the Supreme Court’s effective assertion that math and business methods are not industrial processes is completely consistent with the statutes. On this point, even Rich understood Art not to extend to abstractions in an article he published in 1942. Giles S. Rich, “The Relationship between Patent Practices and the Anti-Monopoly Laws,” originally published in The Journal of the Patent Office Society, February 1942, XXIV, No. 2., pp. 85-106.

    Before examining the patent right itself, let us see what inventions the law allows to be patented. The field of patentable inventions is comparatively narrow. By far the greater portion of human inventions and discoveries lie ouside the domain prescribed by the patent statutes, which limit the grant of patents, generally speaking, to the industrial arts. For example no protection is affored to the novel, useful, and clearly inventive schemes of conducting business such as systems of banking, sales promotion plans, or methods of merchandising; to the discovery of laws of nature or scientific truths; or to pedagogical methods and other sociological improvements of the highest value.
    “The law specifies that only these things shall lie the subject matter of patents (R. S. 4886, 35, U. S. C. 31):

    “Arts (meaning industrial methods and processes)
    Compositions of Matter
    Asexually reproduced planes, not tuber-propagated.

    “These terms are not entirely self-explanatory but we shall not stop to examine into their interpretation.

    “Implicit in the words “invention” and “discovery” is the idea of novelty, which, as we saw in the discussion of monopolies, was a characteristic which set apart the patent grant from other kinds of monopoly.

    On Diehr, I believe the point the Supreme Court was making is that one could not view the eligibility of the novel parts of the claim without considering the old parts as well. One had to consider the claim as a whole.

  • [Avatar for step back]
    step back
    March 22, 2017 12:50 pm

    There is nothing wrong with saying that one cannot claim a totally nonphysical thing that is not a machine, physical process, manufacture or composition of matter but rather an abstract theory of man (e.g. E=mc^2).

    However, to create a hocus pocus circus act that converts a physical MRI machine into an ethereal ghost, that is a whole other set of theatrics. And that is exactly what out hypocritical SCOTeti have and continue to do. Shame.

  • [Avatar for Curious]
    March 22, 2017 11:47 am

    Indeed, those two quotes from Justice Alito and Justice Breyer are as frustrating as they are comical. Clearly, the Supreme Court is as out of touch with reality as they are with their own precedent.
    Do as I say — not as I do.

    There is, of course, this gem from Bilski:
    In holding to the contrary, the Federal Circuit violated two principles of statutory interpretation: Courts “ ‘should not read into the patent laws limitations and conditions which the legislature has not expressed,’ ” Diamond v. Diehr, 450 U.S. 175, 182, 101 S.Ct. 1048, 67 L.Ed.2d 155, and, “[u]nless otherwise defined, ‘words will be interpreted as taking their ordinary, contemporary, common meaning,’ ”

    SCOTUS then proceeded to do exactly that by continuing to read an “abstract idea” exception into 35 USC 101.

  • [Avatar for step back]
    step back
    March 22, 2017 10:51 am

    Bravo Gene.

    You finally take down them who are above reproach no matter how clownish their antics.