Amicus Curiae Brief — RPost Communications Limited, et al., Petitioners v. GoDaddy.com, LLC

No. 17-695

IN THE

Supreme Court of the United States

_________

RPOST COMMUNICATIONS LIMITED, RMAIL LIMITED,

RPOST INTERNATIONAL LIMITED AND RPOST HOLDINGS

INCORPORATED,

Petitioners,

v.

GODADDY.COM LLC

Respondent.

_________

On Petition for Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit

_________

BRIEF OF A GROUP OF INVENTORS,

ENTREPRENEURS, AND SMALL BUSINESS

OWNERS AS AMICI CURIAE

IN SUPPORT OF PETITIONER

_________

ANDY TINDEL

Counsel of Record

MANN | TINDEL | THOMPSON

112 E. LINE ST., SUITE 304

Tyler, Texas 75701

(903)596-0900

atindel@andytindel.com

Counsel for Amici curiae

i

TABLE OF CONTENTS

INTEREST OF THE AMICI CURIAE........................ 1

SUMMARY OF THE ARGUMENT ............................ 2

ARGUMENT ................................................................ 4

I. THE U.S. PATENT SYSTEM WAS

DESIGNED TO PROTECT INVENTORS, PARTICULARLY THOSE

WITH FEW RESOURCES ............................... 4

II. INDIVIDUAL INVENTORS, ENTREPRENEURS, AND SMALL BUSINESSES MUST HAVE ASSURANCES THAT ISSUED PATENTS

CANNOT BE SUDDENLY INVALIDATED AS COVERING UNPATENTABLE SUBJECT MATTER ...................... 7

III.THIS IS AN OPPORTUNITY FOR

THIS COURT TO CLARIFY ITS

DECISION IN ALICE CORP. PTY.

LTD. V. CLS BANK INT’L ............................... 9

IV. PATENT INELIGIBILITY UNDER 35

U.S.C. § 101 IS NOT A COGNIZABLE

DEFENSE

IN

A

PATENT

LITIGATION................................................... 15

CONCLUSION .......................................................... 16

APPENDIX: List of Amici .........................................A1

ii

TABLE OF AUTHORITIES

Cases

Page(s)

Alice Corp. v. CLS Bank Int’l,

134 S. Ct. 2347 (2014) ........................................passim

Intellectual Ventures I LLC v. Symantec Corp., et al.,

838 F.3d 1307 (Fed. Cir. 2016) (Sept. 30, 2016) ...... 12

Sophos Inc. v. RPost Holdings, Inc., et al.,

Nos. 13-12856-DJC and 14-13628-DJC, 2016

U.S. Dist. LEXIS 72699 (D. Mass Jun. 3, 2016)......... 7

Statutes

35 U.S.C. § 101 ...................................................passim

35 U.S.C. § 102 ...................................................passim

35 U.S.C. § 103 ...................................................passim

35 U.S.C. § 282 ...................................................passim

Patent Act of 1952 ................................................ 3, 15

United States Constitution, Article I, Section 8 ....... 5

iii

Other Authorities

page(s)

B. Zorina Khan, Trolls and Other Patent

Inventions: Economic History and the Patent

Controversy in the Twenty-First Century,

Department of Economics, Bowdoin College

and National Bureau of Economic Research,

https://sls.gmu.edu/cpip/wp-content/uploads/

sites/31/2013/09/Khan-Zorina-Patent-Controversyin-the-21st-Century.pdf (September 2013)................. 4

B. Zorina Khan, The Democratization of Invention:

Patents and Copyrights in American Economic

Development, NBER and Cambridge University

Press (January 12, 2009) ............................................ 5

Bob Zeidman & Eshan Gupta, Why Libertarians

Should Support a Strong Patent System,

IPWatchdog, http://www.ipwatchdog.com/2016/

01/05/why-libertarians-should-support-a-strongpatent-system/id=64438 (January 5, 2016) ............... 7

Bob Zeidman, The Software IP Detective’s

Handbook: Measurement, Comparison, and

Infringement Detection, Prentice-Hall,

Upper Saddle River, NJ, 80 (May 8, 2011) ..............A1

Brian Headd, Small Business Facts, SBA Office of

Advocacy, https://www.sba.gov/sites/default/files/

Job_Creation_fact_sheet_FINAL_0.pdf

(September 2015) ......................................................... 8

iv

Brian Headd, The Role of Microbusinesses in the

Economy, SBA Office of Advocacy,

https://www.sba.gov/sites/default/files/Microbusines

ses_in_the_Economy.pdf (February 2015) .................. 8

Dorothy Atkins, Federal Judges Slam Alice At

Event Honoring Judge Whyte, Law360,

https://www.law360.com/articles/853103/

federal-judges-slam-alice-at-event-honoringjudge-whyte (October 18, 2016) ............................... 11

Erin Blakemore, Meet Mary Kies, America’s

First Woman to Become a Patent Holder,

Smithsonian.com, https://www.smithsonianmag.com/

smart-news/meet-mary-kies-americas-first-womanbecome-patent-holder-180959008 (May 5, 2016) ...... 6

James Cosgrove, Alice: Three Years On, Juristat,

https://blog.juristat.com/blog/2017/7/19/

alice-three-years-on (July 19, 2017) ......................... 11

Jeff John Roberts, Here's Why Software Patents

Are in Peril After the Intellectual Ventures Ruling,

Fortune magazine, http://fortune.com/2016/10/03

software-patents (October 3, 2016) .......................... 14

Mary Bellis, Thomas Jennings, the First AfricanAmerican Patent Holder, ThoughtCo,

https://www.thoughtco.com/

thomas-jennings-inventor-1991311 (2017) ................ 6

v

Riff, Comments on the U.S. Patent System by Former

CAFC Judge Michel, Patent Riff, http://patentriff.com/

wp/comments-on-the-u-s-patent-system-by-formercafc-judge-michel (July 14, 2017) ............................. 12

Robert Sachs, Two Years After Alice: A Survey of the

Impact of a “Minor Case” (Part 1), Bilski Blog,

http://www.bilskiblog.com/blog/2016/06/two-yearsafter-alice-a-survey-of-the-impact-of-a-minor-case.html

(June 16, 2016) ..................................................... 10-11

Thomas Jefferson, From Thomas Jefferson to

Benjamin Vaughan, Founders Online,

https://founders.archives.gov/documents/

Jefferson/01-16-02-0342 (June 27, 1790) .................. 5

Patents, Thomas Jefferson Encyclopedia,

https://www.monticello.org/site/research-andcollections/patents, (April 1989) ................................ 5

What’s New with Small Business, U.S. Small

Business Administration Office of Advocacy,

https://www.sba.gov/sites/default/files/

Whats-New-w-Small-Business-2017.pdf

(August 2017)............................................................... 8

1

INTEREST OF THE AMICI CURIAE

Amici curiae, who are listed in the attached

appendix, include inventors, entrepreneurs, smallbusiness owners, and individual investors, all of whom

have first-hand experience with America’s patent

system1. We respectfully submit this amici curiae brief

in support of the Petition for a Writ of Certiorari by

Petitioners.

Amici curiae believes that inventor rights have

been seriously weakened by recent legislation and

court decisions that are undermining the innovative

character of America that has made this country great

since its founding. In particular, these laws and court

decisions have had a disproportionately negative effect

on individual inventors, entrepreneurs, and small

businesses. One such court decision is the challenge to

patent eligibility under 35 U.S.C. § 101, which is at

issue in this Case. Thus, amici curiae believes it is

important for this Court to clarify the availability

under 35 U.S.C. § 282 (b)(2) and (3) to raise patenteligibility challenges under 35 U.S.C. § 101 in district

courts.

1

Pursuant to Sup. Ct. R. 37.2, all counsel of record received

timely notice of Amicus Curiae’s intent to file this amicus curiae

brief. Petitioner consented to the filing of this amicus curiae brief

on November 21, 2017 and Respondent consented to the filing of

this amici curiae brief on November 27, 2017. Pursuant to Sup.

Ct. R. 37.6, no counsel for a party authored this brief in whole or

in part, and no counsel or party made a monetary contribution

intended to fund the preparation or submission of this brief. No

person other than Amicus Curiae made a monetary contribution

to its preparation or submission.

2

SUMMARY OF THE ARGUMENT

The U.S. patent system was designed to protect

inventors, particularly those who have few resources.

At the time of the founding of our country, the English

patent system rewarded only large companies and

wealthy individuals. Our Founding Fathers codified

protection of intellectual property in the body of the

U.S. Constitution and passed the Patent Act of 1790

even before passing the Bill of Rights. This act was

intended to reward inventors of all kinds, without

regard to wealth, status in society, or the age or size of

the business, and to create a level playing field so that

even individual inventors and small businesses could

use their creative energies to compete against large,

established businesses.

Individual inventors, entrepreneurs, and small

businesses must have the assurance that issued

patents cannot be invalidated as covering unpatentable subject matter. Without this assurance, these

small entities will have difficulty bringing innovations

to market, particularly if they are in a competitive

market with large, established competitors.

This is an opportunity for this Court to clarify its

decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l,

which is generally considered by many judges, lawyers, and inventors to be overly broad and confusing,

and it creates too much uncertainty, especially for

individual inventors, entrepreneurs, and small businesses.

Patent ineligibility under 35 U.S.C. § 101 should not

be a cognizable defense in a patent infringement

litigation. The requirement for patent eligibility in

3

section 101 was incorporated into statutory law by the

1952 Patent Act. Congress also set forth a list of

available defenses in section 282(b) of the 1952 Patent

Act that may be asserted in a civil action for patent

infringement action. However, Congress did not

include 35 U.S.C. § 101 as an available enumerated

defense, either in the 1952 Patent Act as originally

enacted, or at any time thereafter.

4

ARGUMENT

I. THE U.S. PATENT SYSTEM WAS DESIGNED

TO PROTECT INVENTORS, PARTICULARLY

THOSE WITH FEW RESOURCES

America is without question the most innovative

country in the world. This has been the case since its

founding over 200 years ago. One of the great

innovations of America’s Founding Fathers is the U.S.

patent system, which has encouraged innovation for

all of these years. To understand this, we need to

review the historical background.

Toward the end of Queen Elizabeth I’s rule in the

16th century, English courts granted monopolies to

businesses that introduced a new industry to the

country. In 1624, the English Parliament passed the

Statute of Monopolies, which limited the power of the

monarch to grant monopolies. Under this statute, the

monarch could grant monopolies for only fourteen

years. See B. Zorina Khan, Trolls and Other Patent

Inventions: Economic History and the Patent

Controversy in the Twenty-First Century, Bowdoin

College and National Bureau of Economic Research,

https://sls.gmu.edu/cpip/wp-content/uploads/sites/31/2

013/09/Khan-Zorina-Patent-Controversy-in-the-21st-Ce

ntury.pdf (September 2013).

In America, prior to independence from England, the

King of England officially owned all the intellectual

property created by the colonists. Furthermore, the

British patent system created significant barriers for

inventors to obtain patents. The application costs

were prohibitively high to all but the most wealthy

individuals and companies. The system was also

5

complicated, requiring significant expertise and

knowledge, and patent searches were difficult, if

not impossible, for inventors outside of London. See

B. Zorina Khan, The Democratization of Invention:

Patents and Copyrights, NBER and Cambridge

University Press (January 12, 2009).

This did not go unnoticed by the Founding Fathers,

who made intellectual property rights one of the key

principles of our new country. The legal basis for U.S.

patent law is found in the Article I, Section 8 of the

United States Constitution: “The Congress shall have

Power To… promote the Progress of Science and useful

Arts, by securing for limited Times to Authors and

Inventors the exclusive Right to their respective

Writings and Discoveries…” By including this clause

in the Constitution, the Founding Fathers intended to

protect individuals and small companies from the

power of large entities.

The Founding Fathers considered patents to be so

important that they passed the Patent Act of 1790

even before passing the Bill of Rights. Thomas

Jefferson had a changing view of patents. In 1787, he

was opposed to any type of monopoly including

patents, but by 1789, his position had changed. As

Secretary of State, Jefferson became the first acting

head of the U.S. patent office. With regard to this

patent law, Jefferson observed that it had “given a

spring to invention beyond his conception.” See

Thomas Jefferson, From Thomas Jefferson to

Benjamin Vaughan, Founders Online, https://founders.

archives.gov/documents/Jefferson/01-16-02-0342 (June

27, 1790) and Patents, Thomas Jefferson Encyclopedia,

https://www.monticello.org/site/research-and-collectio

ns/patents, (April 1989).

6

The U.S. patent system has been a great equalizer,

even when the other laws and customs of our country

have been discriminatory. Women and African

Americans, for example, have utilized the patent

system to commercialize their inventions and create

wealth when our society otherwise would not allow it.

For example, Mary Dixon Kies obtained a hat weaving

patent in 1809, long before women had the right to

vote or even the ability to own property. Ms. Kies and

her patent helped fuel the growing American hat

industry. See Erin Blakemore, Meet Mary Kies,

America’s First Woman to Become a Patent Holder,

Smithsonian.com, https://www.smithsonianmag.com/

smart-news/meet-mary-kies-americas-first-woman-be

come-patent-holder-180959008 (May 5, 2016).

At a time when African Americans were slaves with

few rights whatsoever, Thomas L. Jennings patented

the dry cleaning method in 1821. He leveraged his

patent to grow his tailoring and dry-cleaning business

and used the profits from that business to support the

abolitionist movement, defend civil rights organizations, fight racial segregation in the courts, and

purchase his wife and children out of slavery. See

Mary Bellis, Thomas Jennings, the First AfricanAmerican Patent Holder, ThoughtCo, https://www.tho

ughtco.com/thomas-jennings-inventor-1991311 (2017).

The U.S. patent system is an agreement between the

U.S. government and inventors. In return for

disclosing the implementation of an invention so that

others can learn from it and build upon it, rather than

keeping it secret, an inventor is promised a limited

time of protection by the government. In this way,

progress is enhanced and innovation is encouraged.

7

Since 1790, the United States has greatly benefited

from its patent system, which resulted in the United

States becoming the most innovative country in the

world. See Bob Zeidman & Eshan Gupta, Why

Libertarians Should Support a Strong Patent System,

IP Watchdog http://www.ipwatchdog.com/2016/01/05/

why-libertarians-should-support-a-strong-patent-syst

em/id=64438 (January 5, 2016).

II. INDIVIDUAL INVENTORS, ENTREPRENEURS,

AND SMALL BUSINESSES MUST HAVE

ASSURANCES THAT ISSUED PATENTS

CANNOT BE SUDDENLY INVALIDATED AS

COVERING

UNPATENTABLE

SUBJECT

MATTER

It is important for inventors and entrepreneurs

to believe that a government-issued contract or

government-approved agreement is legitimate and

will protect their interests absent any new facts that

were unknown at the time of the execution of the

contract or agreement. However, the District Court’s

decision has determined, without any new facts being

introduced, that the subject matter of the patents-insuit are not patentable despite the issuance of these

patents by the U.S. Patent and Trademark Office

(“USPTO”). Furthermore, claims of these same

patents have been upheld in another case in the

District Court of Massachusetts. See Sophos Inc. v.

RPost Holdings, Inc., et al., (2016). Additionally, the

PTAB denied petitions to institute CBM reviews of

each of the ’913, ’389, and ’104 patents, and the PTO

issued an Ex Parte Reexamination Certificate for the

’219 patent confirming the validity of all of the

reexamined claims.

8

While large corporations have the ability, resources,

and deep pockets to deal with such uncertainty

(although it is no doubt inconvenient for them too),

individual inventors, entrepreneurs, and small businesses do not. It is akin to being pulled over by police

during a traffic stop, showing the officer your valid

driver’s license, and being told that the state

implemented new driving requirements and that your

license is no longer valid. Or having the county take

your property, without compensation, that you

purchased, maintained, and developed for years, at

the whim of a court decision that suddenly invalidated

your existing property rights.

The effect of this kind of decision will devastate

small businesses. Microbusinesses, defined as employers with fewer than 10 employees, made up 75.3

percent of all private-sector employers in 2013, and

they provided 10.8 percent of the private-sector jobs in

2015. See Brian Headd, The Role of Microbusinesses in

the Economy, SBA Office of Advocacy, https://www.

sba.gov/sites/default/files/Microbusinesses_in_the_Ec

onomy.pdf (February 2015). Small businesses, defined

as employers with fewer than 500 employees created

two out of three net private-sector jobs since 2012. See

Brian Headd, Small Business Facts, SBA Office of

Advocacy, https://www.sba.gov/sites/default/files/Job_

Creation_fact_sheet_FINAL_0.pdf (September 2015).

The 29.6 million small businesses in the U.S. comprise

99.9% of all firms in the U.S. and account for 62% of

net new jobs. See What’s New with Small Business,

U.S. Small Business Administration Office of

Advocacy, https://www.sba.gov/sites/default/files/Wha

ts-New-w-Small-Business-2017.pdf (August 2017).

9

For over two centuries, patents have enabled

individuals working in garages, dorm rooms, or even

in their cars to create innovative products and compete

with large, cash-rich, politically connected, and recognized companies on a level playing field. Patents have

been the “insurance policy” that gives confidence to

investors to put money into otherwise risky ventures.

Now, even if an inventor or small company goes

through the lengthy, expensive process to protect its

inventions, the resulting patents can be invalidated

easily based on an ill-defined definition of “abstract.”

The fact that patents can be invalidated by a court

without requiring the introduction of prior art, means

that investments in startups will decline. Particularly

in growing, competitive markets, the possibility that a

small business’s intellectual property can be suddenly

invalidated as abstract will make the risk of starting

a company much greater. There will be little incentive

for bold ventures that might otherwise solve today’s

most pressing problems.

III. THIS IS AN OPPORTUNITY FOR THIS COURT

TO CLARIFY ITS DECISION IN ALICE CORP.

PTY. LTD. V. CLS BANK INT’L

The decision in Alice Corp. Pty. Ltd. v. CLS Bank

Int’l (2014) is unclear and has confused the lower

courts, resulting in conflicting and inconsistent

decisions. This uncertainty has created more risk for

patent holders and has emboldened patent infringers.

Essentially, this Court determined a two-step test to

determine whether an invention was patent-eligible

under 35 U.S.C. §101:

10

1. Determine whether the claims at issue are

directed to a patent-ineligible concept; and

2. If so, look for an “inventive step”—an element or

combination of elements sufficient to ensure that

the patent, in practice, amounts to “significantly

more” than the ineligible concept itself.

The problem with this ruling is that it is overly

vague and overlaps with 35 U.S.C. §102 and 35 U.S.C.

§103. First, the ruling does not clearly define what a

“patent-ineligible” concept is, and so this step has been

used to declare most software patents to be patent

ineligible. Second, an “inventive step” is the novelty

of the invention, and should be tested by the

requirements of section 102, not section 101.

Arguments about inventiveness under section 102

allow for the introduction of prior art, expert

testimony, and other facts that can be discussed and

debated by the patent holder and the accused

infringer. Bringing this argument into a section 101

determination restricts the ability of a patent holder

to respond with facts and cuts the process short.

Furthermore, it is unclear how an abstract patentineligible concept can become patent-eligible by

incorporating some poorly defined “inventive step.”

In what patent attorney Robert Sachs calls

“AliceStorm,” the Alice decision has been broadly

interpreted by both the federal courts and the USPTO,

resulting in 70% of patents being invalidated either in

court via section 101 defense motions or at the

USPTO, as of June 2016. See Robert Sachs, Two Years

After Alice: A Survey of the Impact of a “Minor Case”

(Part 1), Bilski Blog, http://www.bilskiblog.com/blog/

11

2016/06/two-years-after-alice-a-survey-of-the-impactof-a-minor-case.html (June 16, 2016).

By July 2017, 63.9% of all section 101 rejections cited

Alice. Before the Alice decision, section 101 rejections

made up only 30.8% of all rejections issued in the ecommerce art units of the USPTO. Two years after the

decision, in May 2016, section 101 rejections had

jumped to 81.7% of all rejections issued in these same

art units. See James Cosgrove, Alice: Three Years On,

Juristat, https://blog.juristat.com/blog/2017/7/19/alicethree-years-on (July 19, 2017).

There is wide-ranging agreement among Federal

Circuit Court judges that the Alice decision was poorly

worded, too broad, and has had the effect of killing

nearly all software patents despite this Court’s

statement that this was not its intent. Last year, three

federal judges from California and Delaware, in an

unusual occurrence, publicly criticized this Court’s

Alice ruling at a symposium at Stanford University to

honor retiring U.S. District Judge Ronald Whyte. U.S.

District Judges Leonard P. Stark, Andrew J. Guilford

and Cathy Ann Bencivengo said that the Alice decision

spurred hundreds of patent invalidity motions in their

districts and that its two-part test for analyzing patent

validity is too subjective. See Dorothy Atkins, Federal

Judges Slam Alice At Event Honoring Judge Whyte,

Law360, https://www.law360.com/articles/853103/fed

eral-judges-slam-alice-at-event-honoring-judge-whyte

(October 18, 2016).

At a recent hearing before the House Judiciary

Committee called “The Impact of Bad Patents on

American Businesses,” former Federal Circuit Judge

Paul Michel stated that he believes that patent

12

“[e]ligibility law under the Alice/Mayo regime has

become highly uncertain and unpredictable. And

results have been as inconsistent as unpredictable.”

See Riff, Comments on the U.S. Patent System by

Former CAFC Judge Michel, Patent Riff,

http://patentriff.com/wp/comments-on-the-u-s-patentsystem-by-former-cafc-judge-michel (July 14, 2017).

Other federal judges have embraced the Alice

decision for precisely the same reason, that it has

effectively made all software unpatentable, which

clearly was not this Court’s intent. For example, in

Intellectual Ventures I LLC v. Symantec Corp., et al.,

838 F.3d 1307 (Fed. Cir. 2016), each asserted claim of

three software patents was invalidated, but most

concerning was Judge Haldane Mayer’s concurrence

wherein he found a First Amendment conflict with

software patents:

“I agree that all claims on appeal fall outside of 35

U.S.C. § 101. I write separately, however, to make

two points: (1) patents constricting the essential

channels of online communication run afoul of the

First Amendment; and (2) claims directed to

software implemented on a generic computer are

categorically not eligible for patent.”

Id, (Mayer, J., concurring).

Judge Mayer goes on to say that software is a type of

language and that language is protected by copyrights

and not patents. He continues that patenting software

is “[s]upression of free speech” and is “no less

pernicious because it occurs in the digital, rather than

the physical, realm.”

Id, (Mayer, J., concurring).

13

He continues:

“Most of the First Amendment concerns associated

with patent protection could be avoided if this court

were willing to acknowledge that Alice sounded the

death knell for software patents.”

Id, (Mayer, J., concurring).

He concludes:

“Declaring that software implemented on a generic

computer falls outside of section 101 would provide

much-needed clarity and consistency in our

approach to patent eligibility. It would end the

semantic gymnastics of trying to bootstrap

software into the patent system… Software runs

computers and the Internet; improving them up to

the current limits of technology is merely more of

the same… Eliminating generically-implemented

software patents would clear the patent thicket,

ensuring that patent protection promotes, rather

than impedes, ‘the onward march of science…’ and

allowing technological innovation to proceed

apace.”

Id, (Mayer, J., concurring).

This serious misunderstanding of the First

Amendment and our patent system by a Federal

Circuit judge is frightening and must be addressed by

this Court. First, software is an engineering skill that

requires precision beyond that of a spoken or written

language. It consists of precise instructions that must

be created rigorously, according to formal rules, and

with mathematical precision, and that must be tested

and fine-tuned or the results of its operation can be

catastrophic.

14

Second, the argument that software is speech and

must not be protected is often used as an excuse by

those who want to dismantle the U.S. patent system

altogether. If written code is free speech only

protectable by copyrights, the same can be said of any

recipes, instructions, and drawings including blueprints and electrical or mechanical schematics. There

is no invention that cannot be written into a patent

specification, and thus, a simple extension of Judge

Mayer’s strange logic is that once an invention is

written as a patent specification, it is not protectable

by a patent. In other words, nothing is patentable.

Finally, when Judge Mayer dismisses software

because it “runs computers and the Internet; improving them up to the current limits of technology is

merely more of the same,” his argument can easily be

applied to improvements to all modern inventions

including computers themselves, smartphones, automobiles, trains, airplanes, elevators, and all other

technologies that are ubiquitous in modern life. Id,

(Mayer, J., concurring).

The public reads these decisions and wrongly

believes that software should not be patentable. See

Jeff John Roberts, Here’s Why Software Patents Are in

Peril After the Intellectual Ventures Ruling, Fortune

magazine, http://fortune.com/2016/10/03 softwarepatents (October 3, 2016). Such a belief, enforced

through some future legislation, would allow giant

corporations to freely copy innovative software inventions, unfairly crushing small businesses, individual

inventors, and entrepreneurs. Many inventors have

had large companies purchase copies of their patented

software only to see those companies reverse engineer

15

their software over time and then terminate agreements with the inventor after those companies have

created their own version of the product. As difficult

as it for individual inventors and small businesses to

fight this, the patent system gives them the leverage

to obtain compensation for this type of willful infringement. Given the system as it is adjudicated today,

after the Alice decision, an inventor in these circumstances would have no recourse.

A decision in this case can be used to clarify what

subject matter is 35 U.S.C. §101 patent eligible and to

define such eligibility more precisely so that it does not

conflict with or overlap with the novelty requirements

of 35 U.S.C. §102 and the obviousness requirements of

35 U.S.C. §103. For the reasons previously stated,

clarification and simplification as to what constitutes

patentable subject matter under 35 U.S.C. §101 is

desperately needed.

IV. PATENT INELIGIBILITY UNDER 35 U.S.C.

§ 101 IS NOT A COGNIZABLE DEFENSE IN A

PATENT LITIGATION

The arguments made by the Petitioners in their

Petition for a Writ of Certiorari by Petitioners that

patent ineligibility under 35 U.S.C. § 101 is not a

cognizable defense in a patent litigation are correct.

The requirement for patent eligibility contained in

section 101 was incorporated into law by the 1952

Patent Act. At the same time, Congress set forth in

section 282(b) a list of available defenses that may be

asserted in a patent infringement action brought in

court, which did not include patent eligibility, and

Congress has never thereafter added 35 U.S.C. § 101

as an available enumerated defense.

16

CONCLUSION

For the reasons set forth herein, amici curiae

respectfully urge the Court to grant the Petition to

determine whether patent-eligibility challenges under

Section 101 are available under Section 282(b)(2) and

(3) of the Patent Act.

Respectfully submitted,

ANDY TINDEL

Counsel of Record

MANN | TINDEL | THOMPSON

112 E. Line St., Suite 304

Tyler, Texas 75702

Phone: (903)596-0900

Counsel for Amici curiae

December 1, 2017

A1

APPENDIX

Robert Zeidman is an engineer, inventor, and

entrepreneur, and is the inventor named on 22 issued

patents, with several applications pending. His

company, Zeidman Consulting, is one of the premier

companies providing hardware and software

consulting and expert witnesses for all kinds of

intellectual property litigation. Mr. Zeidman has

written numerous articles on patents, trade secrets,

and copyrights as well as The Software IP Detective’s

Handbook, Prentice-Hall (May 8, 2011) a textbook on

software intellectual property for lawyers and

engineers.

Thomas J. Quilty has had more than 40 years of

experience in active and reserve military and in

federal and state law enforcement. Mr. Quilty is the

CEO of BD Consulting and Investigations Inc.

(BDCON), an intellectual property consulting and

investigations company that helps clients respond to

issues associated with trade secret theft protection

and investigation as well as trademark and patent

infringement analysis. Mr. Quilty has presented

training regarding intellectual property investigations, nationally and internationally, including at

the FBI Academy, National District Attorney’s

Association, California Department of Justice, and the

High Technology Crime Investigation Association.

Daniel Clark is a private investor and website

developer involved in leading-edge technologies and

speculative investments. He has worked for several

software companies including a company that developed a cross-platform email application to unite access

to various diverse email protocols present in the

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market at the time (e.g., AOL, YahooMail,

Compuserve, and AT&T). At present he is developing

a website to encourage and facilitate the development

of radically transformative energy technologies.

Carole Edwards Steele is a communications

professional who, in four decades as a writer, editor or

PR person, witnessed a wide range of examples of how

much small business contributes not only to a

community’s economy but to the richness of its civic

life. As Carole Edwards, she worked on the Business

desks of The New York Times and The Washington

Post, and covered business and all other local news in

specific geographic areas for The Chicago Tribune and

The Akron Beacon-Journal. As a freelance writer, she

served trade associations for mostly small companies

in the food distribution, trucking and addiction

treatment industries.

Barbara J. Rapp-Geerlings has owned and run

Barbara Rapp Insurance since 1970. The business

specializes in employee benefits, and the primary

clients are small business owners and entrepreneurs

with innovative ideas they patented and went on to

manufacture. She saw her clients struggle with

competition from huge corporations as their patented

ideas were infringed. She also knows this firsthand.

Her father-in-law invented and patented a fork lift

jack and together they formed a corporation that

manufactured and sold the product for many years. A

much larger company eventually started producing

and selling an infringing product, and the company

was forced to abandon the product as their sales

dropped steeply.

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Pete J. Geerlings runs Crystal Cave, a retail store,

along with his wife Barbara (see above). Their

merchandise consists of items like jewelry, minerals,

candles, books, and gift items. Most of their vendors

are small, innovative companies that have created an

unusual one-of-a-kind item. They have seen some

promising vendors go under due to cheap clones from

manufacturers that did not have to develop the

product in the first place, which is why they support

strong patent protection.

Kimberly A. Buttler recently left her employment at

a San Antonio law firm after 10 years, to explore new

opportunities. While she was in the legal field, she saw

how the law can work against the small innovator.

There were occasions that resulted in an individual

inventor who was taken advantage of by a larger

business, especially when the creator had a patent but

not the resources to enforce it. When patent law does

not protect inventors and their unique creations, we

all lose.

Glenn Baumann, ME, is Principal Consultant and

Managing Member of GGC Medical Device Consulting

Group that provides consultation on medical device

design control, risk management, process validation,

corrective and preventive action (“CAPA”), and supplier quality assurance. Mr. Baumann has over 40

years of experience in the medical device field, often as

part of new product development teams. Software is so

important to the function of some medical devices that

the FDA requires that it be validated before approval.

Because software requires significate development,

Mr. Baumann believes it should be afforded patent

protection.

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Michael S. Wills is Assistant Professor, Applied

Information Technologies, at Embry-Riddle Aeronautical

University's College of Business, Worldwide Campus,

headquartered in Daytona Beach, Florida. He has

over 40 years of experience in information technologies

and secure systems design, development and operation, spanning small business, government, weapons

systems and command, control and intelligence

systems for multinational peacekeeping operations.

He is an innovator, intrapreneur and entrepreneur,

serves on his college's Innovation Incubator panel, is a

reviewer for proposals to the university's MICAPLEX

Innovation Center, and is a reviewer for the Online

Learning Consortium's Digital Learning Innovation

Conference.

Andrew Katcher is a senior executive, entrepreneur,

consultant, thought leader, and board member with 25

years of success across the manufacturing, information technology and services, consumer electronics,

and computer networking industries. Throughout his

executive career, Mr. Katcher has held leadership

positions at technology-driven companies such as

3Com, FreeFlow, and Rapid Results, which he founded

and where he currently serves as President and CEO.

His consulting clients have included industry leaders

such as Amazon, Oculus VR (a Facebook company),

SanDisk, Logitech, Core-Mark, and Cisco.