Rader’s Ruminations – Patent Eligibility, Part 1: The Judge-Made ‘Exceptions’ are Both Unnecessary and Misconstrued

“The sleight of hand to get from Einstein and Newton to Prometheus deserves a monumental award for prestidigitation but would not get a passing grade on a first-year law school essay.”

exceptionsIn supreme irony, the U.S. Supreme Court lists the three exceptions to statutory patent eligibility in Chakrabarty, Diamond v. Chakrabarty, 447 U.S. 303 (1980) — the case most famous for the observation that Thomas Jefferson’s statutory language from the 1793 Act (still in place today) covers “anything under the sun made by man.” Id. at 309. While construing Jefferson’s “broad” statutory language in 35 U.S.C. 101 with “wide scope,” the Court noted:

“The laws of nature, physical phenomena, and abstract ideas have been held not patentable.”

Id. The Court tries to support this listing with a string citation to several cases — each standing for something different than an exception from statutory language. Still, to ensure clarity, the Court gives examples: “a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter.” Likewise, Einstein could not patent his celebrated law that E=mc2, nor could Newton have patented the law of gravity.”  Id. So far so good, but this classic example of the Court trying to sound informed and competent out of its comfort zone reemerges 30 years later to replace (and effectively overrule) the statutory rule that governed for over 200 years and remains in Title 35.

At the outset, these exceptions are completely unnecessary. No example exists of an inventor trying to claim relativity or gravity. Instead of examining the cases in the Chakrabarty string- cite justifying the “exceptions,” it is perhaps enough to observe that any natural phenomenon (the new mineral or new plant) would be, by definition, in prior existence and thus not available for patenting. And the same applies for natural laws. The earliest of those string-cite cases, Le Roy v. Tatham, 55 U.S. 156 (1853), certainly does not create a category of ineligible subject matter, but instead articulates “a new property discovered in matter, when practically applied, in . . . a useful article . . . is patentable.”   Id. at  174-75 [emphasis supplied]. That case upheld a patent on a lead alloy for use in pipes. Thus, even if the invention in Tatham featured use of natural properties or natural law, the new and useful application of those laws and properties deserved patent protection. This case articulated well the statutory rule: an uninventable property or principle was not eligible, but an application of those properties and laws could be inventive (if new).

And, of course, this Tatham rule makes sense: every invention must employ natural phenomena operating according to natural laws. Stated more directly, no one (beyond the Creator) can invent a natural phenomenon or a natural law. On the other hand, every inventor must use nature to advance technology. Le Roy v. Tatham said directly that natural “principles” cannot be invented but the new and useful application of those laws is the essence of invention. Once again, a listing of natural phenomena or laws as exceptions to the statute was wholly unnecessary.


The term “abstract” in the Court’s listing needs a little more explanation but it goes back to the 1853 Tatham case as well.  Explaining its rule that applications are eligible but natural principles cannot be invented, Tatham opined: “a principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented.” Id. at 175. [emphasis supplied]. In context, this Tatham dicta only excluded a natural principle that was not applied. An unapplied principle remained in the domain of uninventable nature. As you can see from both the earlier quoted dicta and the holding of Tatham, an applied principle of nature would not be abstract.

Later, the concept of abstractness would outgrow a definition. Without a limiting definition, see, Alice v. CLS Bank, 573 U.S. 208 (2014)(“. . .we need not labor to delimit the precise contours of the “abstract ideas” category in this case”) the Court stretched abstractness to tower over the entire statute and cast its chilling shadow over invention as a whole. When abstractness first appeared in judicial dicta, however, it had a definition: it meant simply “unapplied.”

Over a century after Tatham, when the Court first lists the three exceptions together, Parker v. Flook, 437 U.S. 584 (1978), an abstract principle loses the defining context of an unapplied feature of nature and becomes simply “an abstract idea.”  Id. at 598, — again ironically labeled as “long-established” and “not patentable subject matter.” Id.

Because an undefined abstractness exception has grown to obliterate much of the 231-year-old statute (where is stare decisis when it might mean something?), this brief article will briefly examine the basic underpinning of “modern” abstractness. At least with software and computer process inventions, the mathematical exception created by Gottschalk v. Benson, 409 U.S. 63 (1972) underpins most of the ineligibility determinations.  Computer processes, according to the faulty logic, are just mathematics and thus “abstract” (mostly because that modern concept has no legal definition).

Long before Benson, however, the Supreme Court confronted its first case involving mathematical formulas. The antenna invention in Mackay Radio & Telegraph v. Radio Corp. of America, 306 U.S. 86 (1939), employed a mathematical formula. The Court observed: “While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of scientific truth may be.Id. at 94. [emphasis supplied]. Thus, long before Benson and Alice v. CLS  Bank, 573 U.S. 208 (2014), the Court had stated clearly that application of mathematics may be eligible subject matter. Sadly, the Court in this area picks some precedents and ignores others to achieve a preconceived result.

Misconstrued ‘Exceptions’

The epitome of blind, but deliberate, mischaracterization of the exceptions occurs in the “mother-of-patent-eligibility” mistakes, namely Mayo Collaborative Svc. v. Prometheus Labs. Inc., 566 U.S. 66 (2012). Again, with supreme arrogance, the Court recites again that Einstein and Newton could not patent the natural laws they explicated. The key observation is that “the  ineligible invention” in these examples is the natural law itself — relativity and gravity! No one would contend that an uninventable  principle can acquire a patent.

In the Mayo case, however, Prometheus does not purport to patent a natural law at all. Prometheus is not claiming the law of metabolism or the law of anything. In fact, the whole invention involves regulating a man-made drug to treat dangerous conditions that vary from patient to patient. Where is the claim to preempt an uninventable law of nature? In fact, what law of nature did Prometheus claim at all?

The Court in Mayo does not identify a uninventable law of nature claimed by Prometheus. Instead, it ducks and dodges:

“Prometheus’s patents set forth laws of nature — namely relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove ineffective or cause harm.

Id.  . Wow! Is this legal reasoning? According to the Court, Prometheus does not claim a law of nature, but “sets forth” (what does that mean?) “laws of nature” (an unspecified plural; how many and which laws does it purport to claim as Newton might gravity?). It gets worse. The “laws” are identified as “relationships” in the blood and “likelihoods” of outcomes. A natural law is a relational likelihood?

How does the Court get from bars on Einstein and Newton to Prometheus setting forth likelihoods and relationships? It actually does not even try, but just concludes that Prometheus “sets forth natural laws (with relationships and likelihoods)” and that is enough! Indeed, Prometheus’s claims actually recite administering man-made thiopurine (hardly a danger to universal natural principles), determining levels, and regulating targets within ranges (less than about 230 pmol or greater than about 400 pmol) to ensure the safety and effectiveness of personalized medicine. Where is the claim preempting an entire universal natural law? This claim recites a personalized application of relationships and likelihoods!

The sleight of hand to get from Einstein and Newton to Prometheus deserves a monumental award for prestidigitation but would not get a passing grade on a first-year law school essay.

The Tragic Result of Unnecessary Dicta

The Supreme Court, of course, enjoys the prerogative to interpret and correct all statutory law, including patent law. Thus, the Supreme Court has no obligation to follow its earlier interpretations of statutes if it detects some error or misconstruction in its earlier case law. In the Mayo case, Prometheus followed the statutory rule of more than two centuries by proving that it did not claim any natural laws but applied natural laws to achieve new and transformative results. In theory, the Supreme Court could change that 200-year-old rule if it was an error or misconstruction. But instead, the Court changed the rule to accommodate “exceptions” not found in the statute at all — exceptions that were unnecessary in the first place and contorted beyond recognition from their original innocuous inclusion in the dicta of earlier cases. At a minimum, the Court owes Jefferson, elected legislators, and its own 200-year-old rule a little more respect.

In sum, the Court invokes the unnecessary exceptions, but does not apply them honestly; instead, it deliberately misconstrues and expands them to substitute their preconceived result for Jefferson’s statutory rule. The judge-made exceptions swallow the rule. Tragically, the exceptions are not even the forbidden eligibility categories that earlier judges made in the first place, but unexplained mutations of unnecessary Court dicta.


Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com 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 IPWatchdog.com.

Join the Discussion

28 comments so far. Add my comment.

  • [Avatar for anonymous]
    March 12, 2024 04:08 pm

    I can’t tell when Judge Rader thinks the Supreme Court’s 101 precedent went off the rails. Was it the 70s & 80s with Gottschalk/Parker/Diamond? Or the 2010s with Bilski, Alice, and Mayo? Or something else? I think the answer is both, in different ways, but I’m not sure.

  • [Avatar for B]
    March 11, 2024 03:48 pm

    @ Breeze “Wow. A truly masterful defense of Captain Budweiser’s legal intellect.”

    Not my best, I agree. Even cringy.

    That said, there’s a big range of stupid in the courts that doesn’t favor Sotomayor or Jackson

  • [Avatar for Breeze]
    March 11, 2024 10:27 am

    “At least he knows what a woman is.”

    Wow. A truly masterful defense of Captain Budweiser’s legal intellect.

  • [Avatar for B]
    March 8, 2024 09:10 am

    @ Anon “You seem to be confusing an overall budget level with a cap on “speaking” to Congress.”

    No – CU wasn’t about speaking to congress. Not one iota. It was about advertising. McCain-Feingold (the statute at issue) was about FEC rules, not lobbying.

    But with that said being a lobbyist doesn’t cost a lot

  • [Avatar for Anon]
    March 8, 2024 08:48 am


    You seem to be confusing an overall budget level with a cap on “speaking” to Congress.

    I have no problems whatsoever with speaking – I have a huge problem with the fact that those on the receiving end are being bought with those “voices.”

    This should be an easy and clear point.

    I am open to amending Citizen’s United rather than abolishing it if this defect is taken care of.

    Can we agree on that?

  • [Avatar for B]
    March 7, 2024 07:53 pm

    @ Anon

    Hey, I’m no longer a “publisher,” but a “news organization” that publishes “news.”

    Should MSNBC and FOX be shut down because their budgets exceed your cap on information — or merely one because an administration gets to decide what is “fake news”?


  • [Avatar for B]
    March 7, 2024 06:42 pm

    @ Anom


    So if a book is too successful and the 10th printing exceeds an arbitrary cap the book becomes subject to a ban?

    Can movies that employ men in rags clapping coconut shells together compete with Hollywood?

  • [Avatar for Anon]
    March 7, 2024 06:30 pm

    B – I would be happy with a compromise of caps – as is, the open-ended spigot drowns out ANY good that you see.

    Cost money to publish a book? OK – cap is set. This way that book can compete to the Massive Gargantuan that does not publish merely one book, but a whole bookstore “in competition” to that small fry reaching one book.

    The law as is is fatally flawed.
    It is FAR FAR more harmful than good.

  • [Avatar for B]
    March 7, 2024 03:12 pm

    A Anon “Engaging in speech – true speech – and MONEY in view of lobbying are two VERY different things.”

    Yeah, and without money you’re limited to yelling out the window. Can’t publish a book. Can’t make a commercial. Heck, you can’t buy a marker to make a sign. BTW, without CU, billionaires can make all the free speech in the world whereas common folk cannot compete.

    Look, I understand your point – I merely disagree.

  • [Avatar for Anon]
    March 7, 2024 02:25 pm

    Engaging in speech – true speech – and MONEY in view of lobbying are two VERY different things.

  • [Avatar for Anon]
    March 7, 2024 02:23 pm

    Citizen’s United at application of people of modest means getting together to express their voice is NOT the issue.

    The issue is the rampant LARGE CORPS basically turning “voice” into outright purchase of representatives.

    I have nothing against legal fiction of corporations (or non-profits), but the actual application has made it so that the legal fictions are more powerful than actual citizens.

  • [Avatar for B]
    March 7, 2024 12:22 pm

    @ Anon

    I keep asking, “What’s wrong with C.U.?”

    It allows a bunch of people of modest income to come together to engage in political speech to the consternation of government.

    During the C.U. oral argument, the feds declared that it had the Constitutional power to ban the publication of books and movies if said media were made or sold by corporations. Go listen to it.

    Between people engaging in speech and government opposing it, I know where my sympathies are.

  • [Avatar for Anon]
    March 7, 2024 08:30 am


    I hear your sentiments, but fear that cleaning up Congress is going to take far more than that.

    Repealing Citizen’s United,” resetting the Smith-Mundt Act, controlling dark money, lobbying, insider trading, are each items that are long overdue.

  • [Avatar for BWL]
    March 6, 2024 04:48 pm

    Another well-reasoned article from the former Chief Judge. Maybe he can get elected to Congress and help the others write a Section 101 that can withstand judicial exceptions?!

  • [Avatar for Anon]
    March 6, 2024 12:40 pm


    I hear you.

    I provided the legal construct, but it is not within my power to deploy it.

    This though is not the only construct I have provided (alas, also not within my power to deploy). I have provided the dual construct of Congress acting within their Constitutional authority to employ jurisdiction stripping from the Supreme Court of the non-original jurisdiction of patent cases coupled with a resetting of an Article III Patent Court (to preserve Marbury) and to eliminate the stain of the CAFC having been so severely brow-beaten by the Supremes to be useless (this is invoked by my psychological thought experiment of simians in a cage having been trained with a fire hose).

    I have covered two of the three branches. As I have too much respect for separation of powers, I will not tempt the Executive Branch.

  • [Avatar for B]
    March 6, 2024 10:50 am

    @ Anon “I am merely presenting that it was I that fashioned the legal construct.”

    Yeah, but the “Kananaugh scissors” have cut exactly nothing after Schein. Granted, it’s nice for a S.Ct. justice to occasionally read the Constitution.

  • [Avatar for B]
    March 6, 2024 10:18 am

    @ Breeze

    Not bright?

    At least he knows what a woman is.

  • [Avatar for Anon]
    March 5, 2024 06:07 pm

    It is not a matter of Kavanaugh being bright enough.

    I am merely presenting that it was I that fashioned the legal construct.

  • [Avatar for Breeze]
    March 5, 2024 01:50 pm

    “He’s not bright”

    Truer words were never spoken.

  • [Avatar for B]
    March 5, 2024 09:38 am

    @ Anon “Gents – not to pat myself on the back, but who was the first to advance Schein (as part of my Kavanaugh Scissors?”

    Kavanaugh has no intention of axing Alice/Mayo. ZERO. He’s not bright enough or honest enough to see the underlying issue. Kavanaugh merely thinks he has the answer to clarify all problems associated with this judicial monstro-sity.

  • [Avatar for Pro Say]
    Pro Say
    March 4, 2024 04:34 pm

    Thank you Judge Rader for another IP masterpiece.

    In Mayo / Alice, SCOTUS did their best Muhammad Ali:

    Floated like a butterfly (away from the facts, the law, and the truth) and stung like a bee (enabling the denying and revoking of nation-critical innovation protection).

    In effect, SCOTUS has handed our former technological leadership baton to China, a rogue nation intent on World hegemony; including the destruction of the U.S., the Western World, and indeed democracy itself.

    And as if that isn’t bad enough, Congress doesn’t care enough to merely utilize their Constitutional authority to take the baton back by removing the unnecessary Section 101 from the patent statute.

  • [Avatar for Anon]
    March 4, 2024 01:49 pm

    Gents – not to pat myself on the back, but who was the first to advance Schein (as part of my Kavanaugh Scissors?

    I get that giving credit in a court briefing may be a little awkward, but here – of all places that first gave birth to the legal construct, well, please indulge me.


  • [Avatar for B]
    March 4, 2024 01:25 pm

    @ Kirk “In the 2023 Amgen decision on Section 112, the Court stated, “Judges may no more subtract from the requirements for obtaining a patent that Congress has prescribed than they may add to them,” citing Bilski.”

    FYI, I cited that exact passage to the S.Ct. in Killian v. Vidal

    “In the 2019 Henry Schein decision on the federal arbitration statute, . . . ”

    I cited Shein too.

    The S.Ct. speaks to these basic constitutional rules, then ignores them.

  • [Avatar for Stan Sansone]
    Stan Sansone
    March 4, 2024 01:14 pm

    WOW. Courts do not make law, they interpret.

  • [Avatar for concerned]
    March 4, 2024 11:21 am

    Kirk H. We argued the same thing you mentioned in your comments. However, the courts only use cases that suit their preferred outcome. Judge Rader points this fact out in this article.

    As B points out, I would not want Newman’s fellow judges to hear any case of mine just like Judge Newman hoped for herself, but her fellow judges did hear my case unfortunately.

  • [Avatar for B]
    March 4, 2024 10:34 am

    Judge Radar, Tatham was an idiotically stupid decision that should be in hornbooks for the purpose of illustrating bad decisions oof technically ignorant judges in a section titled: “Dunning-Kreuger Jurisprudence.”

    But, hey, the S.Ct. can’t follow the Constitution much less understand the laws of physics.

    That said, the problem with Alice/Mayo isn’t a lack of understanding of law or physics, but a complete lack of integrity by the courts.

    There’s a reason Judge Newman didn’t want her case heard by her fellow judges.

  • [Avatar for Kirk Hartung]
    Kirk Hartung
    March 4, 2024 09:48 am

    In the 2023 Amgen decision on Section 112, the Court stated, “Judges may no more subtract from the requirements for obtaining a patent that Congress has prescribed than they may add to them,” citing Bilski.
    In the 2019 Henry Schein decision on the federal arbitration statute, the Court reasoned that they cannot craft their own exceptions onto the statutory text.
    The Court’s judicial exceptions for 101 eligibility are inconsistent with Amgen and Schein.

  • [Avatar for concerned]
    March 4, 2024 05:08 am

    Where were you on my case? Your explanations make sense. The explanations I received look less than honest, a term more polite than my attorney’s view of the court. But that is life and courts who write the law.

    The court did say I met the law penned by Congress; I just did not meet the court’s failing first year law student’s version.

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