Review by Dennis Crouch
Professor Eisenberg (Michigan) is one of the leading academics focusing on proprietary rights in biomedical research. She has been writing about biotech patents and other forms of protection since the 1980's. Most recently, Professor Eisenberg provided final version of her forthcoming article titled "Wisdom of the Ages or Dead-Hand Control? Patentable Subject Matter for Diagnostic Methods after in re Bilski." The article will soon be published in the Case Western Reserve Journal of Law, Technology & the Internet, but I wanted to highlight the article today because it speaks directly to the pending case of Mayo v. Prometheus. Oral arguments are scheduled in Prometheus for Wednesday, December 7, 2011.
Prior to its 2010 decision in Bilski v. Kappos, the Supreme Court's leading precedent on patentable subject matter was the quartet of cases issued before the formation of the Court of Appeals for the Federal Circuit. See, Benson, Flook, Diehr, and Chakrabarty. In deciding the patentable subject matter question raised in Bilski, the Supreme Court simply pointed back to its old precedent as controlling. Eisenberg writes: "The Supreme Court reaffirmed the authority of these decisions without explanation in Bilski v. Kappos, thereby demanding formal adherence to stare decisis without following the discipline of common law reasoning."
In her article, Professor Eisenberg asks the Supreme Court to use this next opportunity in Mayo v. Prometheus to "not only to clarify the boundaries of patentable subject matter, but to explain what the doctrine of patentable subject matter is all about." She points to three possible uses of the doctrine: (1) PSM could serve as a threshold inquiry that economizes administrative costs by excluding some kinds of subject matter from the front door of the patent system without the need for a full examination. However, Eisenberg recognized that "patentable subject matter doctrine does not and cannot serve that role in its current form." (2) PSM could be useful in "limiting heterogeneity" of the system by narrowing the technological diversity of patentable inventions and excluding technologies for which "less protection is optimal." (3) PSM could serve as a backstop for when other patentability doctrines fail to protect the public domain, properly limit claim scope, or ensure that building blocks of innovation are available for future innovators.
Notes:
- Read the article: /media/docs/2012/03/eisenberg.wisdomordeadhand.patentlyo.pdf.
- Cite: Rebecca Eisenberg, Wisdom of the Ages or Dead-Hand Control? Patentable Subject Matter for Diagnostic Methods after in re Bilski, 3 CASE W. RES. J.L. TECH. & INTERNET 1 (2012)
.
Okay there was one mistyped word here. “NOT” The first paragraph should have said..
“No, that is not what you argue. You implied that Diehr’s claims as a whole approach was limited to 101 and that the claims at 102 could be dissected into patentable and non patentable subject matter for the purpose of rejecting or deny an applicant their patent.”
Now that typo was no excuse because of the substantive nature of my post and the in depth references and extensive pincites any intelligent person clearly could understand what my position was.
Yet Ned “whats a medical method” Heller decided to play dumb and ignore all the facts.
3, 11, 14 – it all adds up.
“One might ask whether the person who did the prior “determining” step needs to carry out the other steps as well in order for there to be a direct infringer.”
All one need do to infringe the claim is make, use (in any fashion) or sell the drug regardless of whether they determined anything or carried out any steps.
Structure MM, structure.
6 ” and finally simply an attempt to patent one single use of an abstract idea that has millions of uses which go unclaimed. ”
6 this is complete and utter non sense. You know there is no way to prove such a thing.
I beat you on this months ago when you failed to produce one hypothetical example.
6 ” and finally simply an attempt to patent one single use of an abstract idea that has millions of uses which go unclaimed. ”
6 this is complete and utter non sense. You know there is no way to prove such a thing.
I beat on this months ago when you failed to product one hypothetical example.
“Every claim “wholly preempts” the subject matter that it covers; the issue is how broadly one may claim a diagnostic inference.”
The answer is simple. As broad as the prior art allows.
If I invent or discover how to make or do anything and no one else has ever done it in the history of the world, guess what?
I get to preempt the entire field for the next 20 years, even if I am inventing the field itself.
After all, the entire function of a patent is legal preemption!
This preemption issue is non sense and has no place in 101 whatsoever.
“The “predetermined” language seems to me to be reciting an additional step, albeit in a strange roundabout way.”
Drugs do not comprise steps.
Yes, I know that, 6. “Pre-determining” something, however, comprises a step, just like “pre-washing”, “pre-cutting”, and “pre-mixing” requires a step. One might ask whether the person who did the prior “determining” step needs to carry out the other steps as well in order for there to be a direct infringer.
But I digress. As I noted above, Paul’s claims are not nearly as awful as Prometheus’ and would almost certainly not raise the 101 flag for most patent attorneys, examiners or judges.
“<>i>Why don’t you just admit you were wrong and move on.”
Not one of his games. Not something the Shillers pay for.
And they will get smacked down since Diehr is still good law and controls. Now if the Supremes overturn it, you will have won your first legitimate victory. But until then remember the words of AI’s Dear Diehrist ( where ever that good fellow may be)
BILSKI 14 Baby!!!
Ned none of this was what we were debating. I proved my point and cited the case law to back it up. Now you suddenly claim you can’t read our understand case and cites and then state some irrelevant issue. Why don’t you just admit you were wrong and move on.
One more Bilski number for you Ned – 9
As in ALL NINE JUSTICES SAID MOT WAS NOT A REQUIREMENT.
No matter how you try to spin it, you cannot make MOT a requirement when all 9 said NO (which is Nein)
Now if you only had the intelligence and decency to address the obvious hole in your theory.
Show ONE example of a patent that successfully prevented someone from thinking.
:: Sound of usual crickets chirping::
Ah yes, the infamous Ned-defines-his-own-world syndrome.
Very nice for little rubber rooms. Not so nice for dealing with actual law.
“but it is entitled to its opinion”
Here’s a clue: everyone’s entitled to their opinion, even after the Supreme Court has ruled to the contrary (hence even Ned is entitled to his continued wrong “opinions” about Bilski.
The Government’s stated piece was in fact opinion – not law. It is law that does not get “entitlement” even after the Supreme Court has ruled to the contrary (hence Ned is WRONG about the law about Bilski).
C’mon guys – THINK!
“The “predetermined” language seems to me to be reciting an additional step, albeit in a strange roundabout way.”
Drugs do not comprise steps.
“AI, I am not sure what you said in this post.”
translation: d_amm, pincites to case law that proves me wrong, well, got to fall back to the “I dont understand wat you are saying” game.
Medical methods,… huh wha?
“ Now I always listen to Malcolm, because he generally gets it right. ”
Sometimes the punch lines just write themselves.
He sits before the Takht upon which the aged and venerable Guru sits and while rocking and nodding he intones in a hushed voice the solemn mantra,
Bilski 3
Bilski 11
Bilski 14
Billllssskiii 3
Billllssskiii 11
Billllssskiiiiiiii 14!
There, is that better oh guru?
“AI, the Bilski claims did not involve machines, articles of manufacture or compositions of matter. I think, in fact, that is why they were declared abstract. ”
Now who cares what you “think” ? The Supreme Court stated exactly why Bilski was declared abstract and I have copied and pasted that exact quote a thousand times. I know its Christmas time but do you really have to act like such a fruit cake?
Now repeat after me.
Bilski 3
Bilski 11
Bilski 14
I just want you to learn your Bilski pages.
AI, you did. But this is when I first realized that you and I were not talking about the same thing when we were talking about the patentability of business methods. You were thinking of things that included making something, while I was thinking of claims like the claims in Bilski.
Of course I have not fully studied the relevant prior art, but neither have most other people at this stage.
I dare say that Mayo has, and so has Prometheus.
As I already noted, your claims are an improvement and perhaps a “good start” but I still see inherency issues, and also some functional/”desired result” claiming that may not pass muster. The “predetermined” language seems to me to be reciting an additional step, albeit in a strange roundabout way.
Cage, as in “coffin making” is an example of a business method and therefore is within the Useful Arts?
Did I say this exactly? But regardless “Coffin Making” a manufacturing process, is within the useful arts. And of course I can absolutely prove it’s a business as well. So never understood why this is the point you would wrap yourself in to feel credible or smug.
Such are the ways of the Shill I imagine.
AI, the Bilski claims did not involve machines, articles of manufacture or compositions of matter. I think, in fact, that is why they were declared abstract.
AI, while you are entitled to your opinion, you are not entitled to your own facts. The facts are a given, as stated by the court.
The Bilski claims did not involve machines, articles of manufacture or compositions of mater. Period.
The government might be wrong, but it is entitled to its opinion until the Supreme Court has ruled to the contrary.
Since the 102 issue is not squarely before the Supreme Court, the 102 issue may not be decided. However, now that the Government has pointed the way, I am sure the Government or Mayo will raise the issue at the District Court level or by filing for a reexamination.
Umm…Ned does not want to go there. Not even Stern himself will come to help him and he knows this.
“The problem occurs when a method has nothing to do with a machine, article manufacture or composition of matter. Are such methods within the Useful Arts?”
Ned, it is impossible to invent a process for making anything, that has “nothing to do with” a machine, article of manufacture or composition of matter. On the other hand that does not require a process be encompassed by or “tied” to a machine, article of manufacture or composition of matter.
Stop trying to find ways to resurrect the your asinine anti business method MOT requirement non sense.
AI, I am not sure what you said in this post. However, I am sure that Diehr had nothing to do with 102. Nothing at all. You cannot import Diehr's 101 analysis into 102 for any purpose.
Section 102 is a search for novelty. If anything is new, the claim is novel. Period. There is not balancing, weighing, deciding or the like. It is simply a question of fact. Is the claim new. And, all this requires is that some element of the claim or some combination of elements be new.
Oh, the GOVT is wrong. Remember if the Goverment had it’s way Diehr ( which had mental steps) would not have been granted his patent.
No, that is not what you argue. You implied that Diehr’s claims as a whole approach was NOT limited to 101 and that the claims at 102 could be dissected into patentable and non patentable subject matter for the purpose of rejecting or deny an applicant their patent.
YOU ARE WRONG!
The is NOT what Diehr says. AND…
There is ZERO case law that says such can be done.
PERIOD!
Yes, each element in a claim at 102 is looked at to see if its new. This is done to find the claims novel so they can pass 102. Not to eliminate the invention for being non statutory, or C rap, or a business method or some other invention you are paid to say is evil.
This is the cr a p pf Mooneys dreams and which you s uck on night and day.
I am sick of it and disgusted by it quite frankly.
And just to further underscore how wrong you are about dissecting claims at 102 to deny an applicant his/her patent consider the following case law cites and examples, ( not my own).
“Cited Elements of a Reference Must be Arranged as Required by the Claim. An Examiner is unable to pick and choose various teachings from a cited reference in furthering an anticipation rejection: “In an anticipation rejection, ‘it is not enough that the prior art reference . . . includes multiple, distinct teachings that [an ordinary] artisan might somehow combine to achieve the claimed invention.’ Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
Rather, the reference must ‘clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.’ Id. (quoting In re Arkley, 455 F.2d 586, 587 (CCPA 1972)). Thus, while ‘[s]uch picking and choosing may be entirely proper in the making of a 103, obviousness rejection, . . . it has no place in the making of a 102, anticipation rejection.’ Arkley, 455 F.2d at 587-88.” (see Ex Parte Zebedee et al. Appeal No. 2010-6014 (BPAI))
The Federal Circuit in Therasense, Inc. and Abbott Laboratories v. Becton, Dickinson and Company, and Nova Biomedical (CAFC 2009) stated:
“The requirement that the prior art elements themselves be ‘arranged as in the claim’ means that claims cannot be ‘treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning.’ Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984). ‘[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.’ Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).”
In view of the above, it is clear that even if the cited reference describes all of the features of a claim included in the subject patent application, an anticipation rejection is likely deficient if the cited elements are not arranged as required by the claim. More specifically, if the cited elements relied upon are included in disparate disclosures of the cited reference which are “not directly related to each other,” it is likely that the anticipation rejection is deficient because impermissible “picking and choosing” has probably occured (see Arkley).”
Add to this the FACT you completely ducked the the 35 U.S.C 100b Statute. Which statutorily blocks your dream of dissecting the mental steps out of a claim.
“At least arguably there is a different treatment regime based on individualising dosages for particular patients so that they fall within the therapeutic window”
They can feel free to claim that anytime they’d like but it isn’t in the claim yet.
AI, I will give you time on this. I think that eventually you will understand.
But the bottom line is that Section 102, as opposed to 101, is a search for novel subject matter. That is what it is all about.
When the government says (and you might want to read their brief) that a mental step that has nothing to do with the physical steps in the claim, other than using the data that it produces, is not a process step for novelty purposes. Here the government speaks only of 102. How this dovetails into 101 is really a question that the Supreme Court has not yet addressed. But the government position is that it does not and should not be involved in 101 analysis.
Malcolm sharply disagrees, and insists that it does. Now I always listen to Malcolm, because he generally gets it right.
Good day Kant:
Unlike Ned, I am glad to speak with you. Do come in. Some tea? Now if the point of novelty test was carried to its extreme, that would no doubt include 101, 102, and 103. After all having a point of novelty test at just one threshold, be it 101, or 102, would not be as extreme as all three. Tell me old chap, do you see it differently?
Cheers.
Yes.
Actual Inventor, sure. If any element of a claim is new, the claim passes 102. Then one moves on to 103 (or 101, as the case may be) where the question is whether the claim considered as a whole is obvious. But ever that question, by statute and case law, considers the differences between the claimed subject matter and the prior art. A lot of what is in the claim can be old and the claim can have a point of novelty. "Claim as a whole" simply says that one cannot ignore the old elements of a claim in assessing whether the claim as a whole is obvious.
I think if such a case existed Ned and Mooney would have cited it by now. After all its the bedrock thinking of all their anti patent dissectionist wet dreams.
“Therefore, by statute when considering obviousness as opposed to novelty, we do have to consider the old elements in the analysis and therefore we have to consider the claim as a whole. But that is obviousness, not novelty.”
Well, if you want to talk about statutes then you have to include the definition of a process, which is as follows:
35 U.S.C. 100 Definitions.
When used in this title unless the context otherwise indicates –
(b) The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
So Ned, your new theory for dissecting claims at 102 would run afoul of 35 U.S.C. 100 b. And the Supreme Court agrees.
“It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. ( Diehr).
Again, Ned, note the use of the word “patentable” not statutory subject matter. Patentable covers 101, 102, and 103, even “IF” all the steps are old.
Again, our statue allows patents on “new uses” of old processes. U.S.C. 35 100 b.
There is just no way around the law here.
Now if you want to theorize why the law should be different go ahead.
But I a not interested.
Just don’t conflate your personal theory, with the actual statute and case law.
Okay?
Well Paul, the Supreme Court asked that very question. Mayo argued that they would have to actually claim administration of a drug to a patient in response to the test. Prometheus argued that that is not the way doctors practice medicine in that they may not actually adjust the dosage if, in the doctor’s opinion, the dosage is what he wants considering the special needs of the patient.
From the government’s point of view of course, ending a claim with a mental step is not patentable under section 102 if the other physical steps are old. Here they are admittedly old. Thus the government has declared that in their opinion the Prometheus claims are unpatentable under section 102. Because the government has a right to invoke a re-examination of the issued patent based upon prior art, what should the government do in this case having declared that Prometheus patent, or at least these claims, are invalid?
Perhaps. But Paul, you have to take into consideration that one cannot file broader claims in a reissue if the reissue is filed more than two years after the basic patent issued.
Ditto re-examinations.
Isn’t there a differene between “Novelty” and “Point of Novelty”?
Isn’t there more than one difference?
Ned, can a non dissected claim be anticipated at 102 and still non obvious at 103? If yes, please elaborate and show such an example.
Actual Inventor, you asked whether there is a logical reason for dissecting claims in 102 analysis – set aside for a moment 103. And the answer is yes, because the whole search in 102 is to find what of the claimed subject matter is new. There is an assumption that one can mix into a claim both old elements and new elements and that sometimes the relationship between the old and the new is the invention. It is the examiner’s job in the patent office and the defendant’s job court to demonstrate that there is nothing new in the claim. He is not required in this process to demonstrate that even if some element is new that the claim is obvious considered as a whole. That is a different question entirely. Once we identified something new in the claim, the question moves on to whether the claim nevertheless is obvious.
Therefore, by statute when considering obviousness as opposed to novelty, we do have to consider the old elements in the analysis and therefore we have to consider the claim as a whole. But that is obviousness, not novelty.
Paul, first, more congratulations for your post of 8:52 am, it appears to be a model of coherency.
Now take what happened in oral arguments, and try to accommodate it in your analytical paradigm–where and how does it fit?
The answer is that it doesn’t. So far, everything about Prometheus is akin to fumbling around in the dark. I will be extremely surprised if anything good comes in the ultimate opinion–and if it does, it will be because somebody read a blog, or due to the miraculous work of some clerk.
We need a specialized court. This should never have made it to the USSC.
And on the matter of disrespect–believe it or not, I don’t like to disrespect others either…but sometimes I do, and for good reason. More often I disrespect what they have done. In this case, I have no idea who set out the initial claim form, who directed or authorized the final claim form, what the agreed-upon strategy was if there was any at all, or how and what the attorney communicated to the client and when.
What I DO know is that, as Malcolm would say, the claim at issue is a joke. That it ever made it past the PTO is a bigger joke yet.
When I said it was IMHO below an acceptable minimum threshold, I was referring to a theoretical situation in which the claim was the result of solely the attorney’s efforts and authority. I don’t know exactly what happened, but in my experience with how applications proceed with large clients and how those clients interact with their prosecution counsel, it is likely the case that the claim was the result of only the attorney’s efforts.
This case should have proceeded as an appeal from an examiner rejection and board affirmation of invalidity, not from an allegation of infringement of the claim of an issued patent.
I realise I have given an insufficient answer.
At least arguably there is a different treatment regime based on individualising dosages for particular patients so that they fall within the therapeutic window. if the window or the method of ascertaining it was hitherto unknown, and there was a genuine benefit in terms of improved therapeutic outcome, I would think that the prtospect of such a claim being allowed and of surviving third party opposition would be excellent. Of course I have not fully studied the relevant prior art, but neither have most other people at this stage.
Yes, but what could they have written to avoid all this agro?
I do not like to disrespect others, but tend to agree with the comment in the 5th paragraph.
The US claim, I agree is below an acceptable minimum threshold, and the European claim is similar. But as I do not know who drafted the case and what instructions were received, I do not have evidence to impugn the professional skill of anyone and am reluctant to do so. In Europe we have rules of professional conduct and do not criticise our colleagues without good reason. The claim, though, I can and do criticise.
If they were to reissue they could do worse than use my claimas a starting point.
See above
The novelty is that the level is predetermined for the individual patient so that the dose produces a level within the required threshold. And that in turn depends upon the finding of what the level of 6-TG would be.
You would not infringe simply by handing out 125 mg tablets which simply happen to hit the window in an individual patient. That is the prior art, but as we know it is not sufficiently reliable. But you do infringe if you deteremine for that patient what does hit the window and then deliveer that dose. So there is no inherency – the industry and clinics can carry on as before, but if they use they test and prescribe patient-specific dosages they infringe. And it appears for this particular family of drugs that patient-sepcific dosages are needed.
That is why the words “for said subject” appear. When interpreted in context they avoid inherency. A 125 mg dose is not “for said subject” – it is for all patients which is the cause of the problem.
One might refine the language in prosecution but this is at least a starting point.
“What’s the number for using the doctrine as a nose of wax?”
That number would be: (2) PSM could be useful in “limiting heterogeneity” of the system by narrowing the technological diversity of patentable inventions and excluding technologies for which “less protection is optimal.”
Because choosing optimality is twisting the nose of wax. Patent law simply is not about choosing to narrow technoloigcal diversity – that’s the anti-thesis of patent systems.
Yup there’s the blood spots again – everyone is out to get Malcolm, therefore everyone is a single person.
“To accept the analysis proffered by the Government would, if carried to its extreme, make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious.” (emphasis added – no other commentary required)
Ned I can see why you are confused because the outcome in Diehr was finding the claims, statutory, a 101 issue. So on the surface it seems simple to just say that Diehr only applies to 101 and not 102, or 103. However you have to read the entire case closely to understand the full range of it’s implications.
Let’s start here, which may be the source of your confusion. The Court says:
“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 <209 USPQ 9> knowledge of scientific truth may be.” Mackay Radio Corp. & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 94, 40 USPQ 199, 202 (1939).11 We think this statement in Mackay takes us a long way toward the correct answer in this case. Arrhenius’ equation is not patentable in isolation, but when a process for curing rubber is devised which incorporates in it a more efficient solution of the equation, that process is at the very least not barred at the threshold by §101.”
So I know Ned, you read the last line above, “not barred at the threshold by §101” and thought to yourself, “okay this case is only applicable to 101 so I can turn off my brain and go to sleep.”
But if you read the line in it’s entirety you would have realized it said, “that process is at the very least not barred at the threshold by §101.”
Note, Ned the use of ” at the very least” which implies this case has implications beyond 101 subject matter. And the Court makes good on that promise when it said the following:
“In determining the eligibility of respondents’ claimed process for patent protection under §101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.”
Ned, note, the use of the words, “may be patentable ..” The Court did not say may be statutory subject matter, which would have explicitly limited the holding to 101. In order for an invention to be “patentable” it must not only pass 101, but 102, 103, and 112. Further more, the Court could have expressed that the claims could be dissected at 102, or 103, but obviously chose not to do so.
And just in case you are still fuzzy read footnote 12, which is as follows:
12 It is argued that the procedure of dissecting a claim into old and new elements is mandated by our decision in Flook which noted that a mathematical algorithm must be assumed to be within the “prior art.” It is from this language that the Government premises its argument that if everything other than the algorithm is determined to be old in the art, then the claim cannot recite statutory subject matter. The fallacy in this argument is that we did not hold in Flook that the mathematical algorithm could not be considered at all when making the §101 determination. To accept the analysis proffered by the Government would, if carried to its extreme, make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious.
Note, again Ned the Court said “unpatentable”, not non statutory subject matter.
Finally there is no logical reason for the Diehr Court to have created the precedent of taking the claims as a whole, only to allow dissection at 102, or 103. If that was their intent they could have just agreed with Steven’s in Flook and dissected Diehrs claims and denied his patent.
So now if you can cite controlling case law that over rules Diehr and explicitly says claims can be dissected at 102 and 103 then by all means cite it now. Otherwise remain quiet or I promise you WILL end up looking as foolish as you did during your year long Bilski debacle claiming the Supremes banned business methods and upheld the MOT as the sole test.
“Is looking at the effect ”
I think the proper response is: “What-ev”
Shapiro might not know anything either, as on the end of page 56 and the beginning of page 57 he appears to suggest that utility is not a part of 101.
Indeed MM. The government has its opinion that the mental step claims at bar are not novel over the admitted prior art. The Director has the duty to protect the public NOW by ordering a reexamination based on the admitted prior art and the lack of novelty in adding a mental step to an old process.
In the meantime, the SC could remand the case for future proceedings under 102, thereby mooting the 101 issue.
A hole, the kibitzer opined that the novelty of a claim over the prior art did not involve a “point of novelty” analysis.
Obviously the kibitzer has no clue. You really are not defending the proposition, are you?
The simplest way to defeat an examiner’s rejection under 102 is to show that the prior art does not have an element of the claim.
Now think about that for a moment.
What the kibitzer seem to suggest is that this argument would be unavailing. I find that whole notion bizarre.
Richard (“Dick”) P. Bress is a perfect example of how the quality of a senior attorney is determined by the perceived desirability of his or her clients.
Dick P. doesn’t seem to know the first thing about patent law, but that’s OK in the appellate stratosphere, where Justice Roberts knows even less.
The problem is that neither of them cares.
Ooh, I can’t wait to read it.
What does the panel care? I don’t think anybody briefed on the utility issue, and if not briefed, the panel wouldn’t know it from a hole in the ground.
WAHHHHHH.
Thanks for the transcript, Ned. My first impression after reading it is that our court system is a complete joke. The oral arguments were a complete waste of time. For the most part the judges seemed completely clueless about the facts.
Most disappointing to me is that, in a case where the presented claims were admittedly patentable only because of a recited mental step, the issue of the ineligibility of claims that prevent otherwise non-infringing actors from thinking about certain facts was only danced around. The term “mental” was used only three times during the oral arguments.
I think Mr. Shapiro (counsel for Mayo) did an absolutely terrible job of explaining the issues to the court.
And then of course there was Mr. Verilli from the USPTO who was also not helpful but who at least made a couple interesting statements. This one in particular:
Mayo is correct that you can’t get a patent by tacking a mental step onto an utterly conventional process for administering drugs and testing their effects.
So how was it, Mr. Verilli, that Prometheus got its patent? A patent that it’s been using to deplete a hospital of millions of dollars in attorney fees?
CHIEF JUSTICE ROBERTS: I was just going to say, what is the great advantage you see of putting this critical question off until the 102, 103 analysis, rather than cutting it off at the beginning, 101, which I understand your friend to say is very important because you don’t want people to have to pause terribly long to see if this is something they can do?
GENERAL VERRILLI: As a practical matter, at the PTO, Mr. Chief Justice, it doesn’t make any difference, because the PTO examiner gets a patent application and answers every question, 101, 102, 103, 112, and makes a decision about all of them. So it’s not going to lead to any benefit at the PTO.
So how was it, Mr. Verilli, that Prometheus got its patent? A patent that it’s been using to deplete a hospital of millions of dollars in attorney fees?
You’ll love the parts in the transcript, IBP, where the lawyers and the judges manage to confuse utility with enablement. Prometheus’ counsel actually discusses the utility prong of 101 and then, in practically the same breath, argues that utility is not a 101 issue.
Is it proving a negative if you say a doctrine is alive and people want you to show that it is alive?
More like it, is that you are just full of shtt.
Not A Sockpuppet
That’s funny.
what’s wth calling everyone sockie?
What’s with the stxpxd pseudonym that you change all the time, sockie?
Good posting, Paul.
A hole, asking your opponent to prove a negative, are we?
That’s correct, and it’s why they fail to satisfy the utility requirement of 101.
Occasional feature…?
MM, you are obsessed with it.
And what’s wth calling everyone sockie?
Is there a case that can be pointed to that shows that “Point of Novelty” is alive?
Transcript of Mayo v. Prometheus at the Supreme Court today, Dec. 7, 2011
/media/docs/2011/12/10-1150.pdf
AI, you really do not have a clue. Diehr was a case about 101, not 102.
This everyone here just how fundamentally uneducated you really are.
From the tradingcharts article:
The Supreme Court at times appeared to struggle with how to distinguish patents on laws of nature, which are prohibited, from patents that apply the laws of nature, which are allowable.
Well, there’s a very, very easy way to distinguish those two types of patents.
and adjusting the dose accordingly.
I almost forgot: Prometheus’ broadest methods do not even include this step.
First news from the front:
link to news.tradingcharts.com
Prometheus lawyer Richard Bress said the Supreme Court has never suggested that there are extra legal limitations that prevent patents on developing new information. He argued that the company’s patents don’t claim laws of nature, but instead protect new methods that allow doctors to analyze a patient’s blood to determine if a drug dose is too low and ineffective, or too high and potentially toxic.
“We are simply claiming the fact that we found,” Bress said.
Justice Samuel Alito immediately jumped in with an objection. “And that’s a natural phenomenon,” he said.
Justice Elena Kagan, noting the concerns of Prometheus’s critics, said, “All you have done is pointed out a set of facts that exist in the world.”
Mayo lawyer Stephen Shapiro said the court should invalidate the patents to “protect the storehouse of information that doctors really need. They have to be able to look at the body’s reaction to injections, pills, chemotherapy, radiation; and different hospitals have to have different opinions to safeguard the health of our people.”
Wow, Bress kicks up some dust and then, thinking that nobody will notice, he puts his foot in his mouth. “He argued that the company’s patents … protect new methods that allow doctors to analyze a patient’s blood to determine if a drug dose is too low and ineffective
None of the actual steps (alone, or combined in their recited order) in the claimed method are new. The only “new” part of the claim is the part where the infringer thinks about the result of the old data-obtaining method and compares the result to a “new number” that Prometheus published in their specification. Even if one includes the “thinking” step, the claimed method includes within its absurd scope the old/obvious method of administering the drug, discovering that the dosage was extremely high and/or extremely low based on metabolites in the blood (and other symptoms) and adjusting the dose accordingly.
I’m sure Bress will sleep well regardless. Belly full of koo-aid and all that.
Did I say either of those would pass? No? Ok then
Then I simply do not understand what it means to “include an inference” in a claim. Bear in mind, we are surely talking about claims in which the only novel limitation in the claim is the inference. Otherwise: who cares? So, what does it mean to “include an infererence” in an “otherwise patent eligible” claim?
sockie Why does MM see “Quinnie Poo” spots everywhere?
Why is only sockpuppets who care so deeply about this occasional feature of my comments?
But it’s not their theory, or proposition as you have called it.
It’s yours.
You are the author.
You thought it up.
Thank you for acknowledging this. If someone articulated my “effective patenting of a mental step” test for 101 eligibility before I did, I’d appreciate knowing where and when that happened.
Diehr
:: Case Closed ::
I was going to go but ended up writing an OA into the wee hours of the night so I didn’t make it 🙁 Also it was really raining outside at 5:30 so I didn’t want to stand in the rain. On the other hand I might could have just shown up and there may have been no line at 9.
Interesting:
link to scotusblog.com
UPDATED: A recusal in Mayo case?
Update 10:06 a.m. December 7: Justice Breyer is participating in the case. The stock in question was owned by Mrs. Breyer and she arranged to sell it after learning of the conflict last night. Confirmation of the sale was received before oral argument began this morning.
Whew!
conflate patent-eligibility under 35 USC 101 with patentability under 35 USC 102/103.
Is looking at the effect of a claim on the ability of practitioners of the prior art to think about what they are doing equivalent to “conflation” in your opinion, EG?
Just noticed this:
Nov 22 2011 Motion of the Solicitor General for leave to participate in oral argument as amicus curiae and for divided argument GRANTED.
That’s cool.
Also, the arguments were at 10 EST. So they are over now. What’s the word on the street? When do the transcripts/recordings get posted?
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Another sockie failure.