113 thoughts on “Video Reaction to Mayo v. Prometheus

  1. 110

    It would be more interesting to track back to the last case that discussed the principle regarding things of nature.

    Guess which case that was.

  2. 109

    If only.

    But he cannot stop himself and his Great What-Ev and then he runs amuck and refuses to do the necessary qualifications.

    The reason is evident. He would have to share his backyard.

  3. 108

    Another excessively low bar.

    Malcolm drops the xx at the slightest sign that real law is desired to be discussed.

  4. 107

    Not even close to being accurate.

    And that’s part of the problem with Prometheus.

    IF the court had actually HELD that a 102 question was in play, you would not see the ruckus.

    They did not.

    We see.

    Trying to pretend otherwise is just disingenuous BS.

  5. 106

    Substitute “All I ever wanted to be was a patent attorney” with “All I ever wanted to be was an “Actual Inventor” and AI wins the academy award.

  6. 105

    Rich argued in Bergey that 101 was a threshold issue. That view was adopted in Diehr and followed in Bilski. It has now been totally trashed by Prometheus that clearly holds that determining what is new in the claim is of paramount importance in deciding whether the claimed invention is directed to patentable subject matter.

    Even the Kennedy 5 joined in this view.

    The takeaway is that 102/103 specify to a degree the criteria for novelty. But novelty is now firmly part and parcel of 101 analysis.

  7. 104

    A Canadian, I understand MM’s position, and he has refined it a bit over time. He does believe that adding a mental step to an old process is not enough. But he has not sufficiently qualified his statement to satisfy many of us.

    For example, consider Diehr. In Diehr, the mathematical steps could be mentally performed in the broader claims (if a human were fast enough to compute “ln v=cz+x”). However, a physical step used the calculated “v” to open the mold. Thus a physical step “used” the result of the mental step to do something.

    But the Diehr physical steps were ALL old, including the opening of the mold.

    I hope you see my point that the presence of mental steps in old processes can result in patent eligible processes provided they be applied to produce a new result.

    Now, when Malcolm qualifies his remarks to suggest that the only thing new was the mental step such that thinking about something, without more, is the only thing new, then he is on firmer grounds.

  8. 103

    I’m “not sure” either.

    But I appreciate the candid answer on correlation (personalised medicine) subject matter.

    I appreciate the “fxxx” too, as a sign that both my questions narked you.

  9. 102

    Newbe,
    I take no sides on the argument, and just want to stop people talking past each other.

    I understand MM’s position to be:
    [old step] + [new thought] is not eligible subject matter.
    [old step] + [old step] + [new thought] may be eligible subject matter if the combination of old steps were not in the prior art (or other reasons I am not smart enough to recognize).
    [new step] + [new thought] is eligible subject matter.

    As a result, the mere addition of a mental step does not render a claim ineligible. You have to look at the rest of the claim. If the rest of the claim is merely the prior art, the claim does not cover eligible subject matter.

    I believe MM’s position is (or was) that you can treat this under 101 or 102/103. It is not important to him which is used.

    Since MM assumes you understand this position as he has stated it many times, he is confused when it is continually put to him that he wants to exclude mental thoughts/abstract ideas/other exclusions entirely from subject matter eligibility.

    Again, I take no position on the issue. I hope that helps, please continue.

  10. 101

    Then there’s the Mayo case of lack of personal jurisdiction over you-know-who: United States ex rel. Gerald Mayo v. Satan and His Staff

  11. 100

    MD MM you chastise others for not answering the question. Will you answer mine properly, please?

    I tried responding several times yesterday but I think Dennis was editing the post. Nothing made it up here.

    For starters, MD, chill the fxxx out. I did answer the question you asked. Now you’re asking a different one. I think the claim you posted would likely pass 101 (although it would depend on the claim construction). The reason it would be pass is because it appears to recite novel transformative steps with respect to the dosages administered. I’m not sure if that’s actually the case but it appears to be the case. That was surely not true of the claims at issue in the Prometheus case.

  12. 99

    best handled by avoiding it altogether.

    Michael,

    Please warmly add yourself to the ninny list.

    A review of these conditions and their application to linking to the video versus embedding it in my opinion suggests it is a prudent action to perform the latter

    Please be explicit with your review in order to remove yourself from the “sky is falling” crowd. And don’t forget to not charge a client for the silly waste of time.

  13. 98

    Dennis,

    I know that some may view it as a somehwat silly distinction to embed a video versus link to a video. Nevertheless, 17 USC 512(d) does attempt to address the issue of linking and provides several conditions that must be met in order for linking to raise the spectre that 512’s safe harbors may be lost and ordinary principles of copyright infringement under 106 apply. A review of these conditions and their application to linking to the video versus embedding it in my opinion suggests it is a prudent action to perform the latter.

    Obviously, some may believe this lessens the impact of a post here, but to them all I can say in reply is anything that can potentially cause a headache for you and your excellent site is a situation that is best handled by avoiding it altogether.

    As suggested, you may wish to consider adopting a DMCA policy that mitigates legal risk, even if quite minor, to the greatest extent reasonably possible.

    Warmest regards,

    Mike

  14. 97

    I have to agree with Max that the English subtitles are very funny indeed and encapsulate much that is wrong about the Supreme Court decision. What is unfunny for users of the US patent system is that this decision may be taken seriously and may bring about unnecessarily restrictive examination standards in the USPTO. Since there are already notes indicating how it should be followed, the omens are not good.

  15. 96

    Patents of importation grant patents to those who bring technology regardless that it is old in a literal sense.  It still was not known until the disoverer brought the technology (to England).  The reason such patents were not allowed in the first Congress was because the first Congress thought itself limited to granting patents to inventors. 
     
    I think the same principle is involved.  It would be interesting to track the very first case that discussed the priniciple regarding things of nature.

  16. 95

    That makes fun of Germans in a way.  They are stereotyped as being warlike, i.e., being very pround of themselves as a people and not because they make better wine or can sing better operas.  Stereotypes.
     
    But der Fuhrer is not someone anyone should be proud of.  Der Fuhrer was a house painter and a corporal.  I think his own officer corps thought it quite a joke that the man thought of himself as a general. 

  17. 93

    Who said they won’t like it because it makes fun of Adolf? Ned have you ever seen Bavarian stand-up Michael Mittermaier (MM)? Here’s a sample of his stuff, delivered in English to an audience in Canada, reporting a conversation that he had on a recent visit to NYC, where the people were so friendly to him:

    Blonde(B): Hi Mike. You’re from Europe. Something has always puzzled me. Tell me, why are there so many languages there?

    MM: Yes, sorry about that. You see, it’s because we Germans lost the war.

    B: Oh I see. Oh Mike, I am so sorry for you.

    The Canadians thought it funny. So do I. Do you?

  18. 92

    You really know you have $$$MM$$$ on the run when he starts threatening to ask Dennis to bar you from patentlyo (or he makes vague references to being banned.)

  19. 91

    MM you chastise others for not answering the question. Will you answer mine properly, please?

    Lulz at MaxDrei. Better men than you have attempted to have MM answer questions.

  20. 90

    I’m disappointed, you two. Never mind proving infringement, I want to know about 101. Pass or fail? If a pass, what was it that made the decisive difference?

    It is still all in “the correlation” isn’t it?

    MM you chastise others for not answering the question. Will you answer mine properly, please?

  21. 88

    I think patents of importation have absolutely nothing to do with the present conversation.

    I think the SC not only would respect an act of Congress, but per Golan would be forced to.

    The decision in Golan is critical in defining the level of power of Congress.

    Not unlike 103, Congress must tell the Supreme Court to stop picking the nose of wax.

  22. 87

    Still has problems, but better. Major enforcement problems since administering and measuring are invariably performed by different actors not under common control. See Muniauction and Akamai. In other words, who cares?

  23. 86

    Gives one pause.

    Not really.

    To put it into a context you might understand. Consider the “swagger” of those who are on your side of your little GD War. Amusing you find them.

    Consider the “swagger” of those on the other side. Vexatious and loathsome you find them.

    Yet they are of the same stuff.

    Would you consider your own viewpoint to “give one pause?”

  24. 84

    LOLZ.

    Run MM run. Someone wants you to actually explain yourself in the face of case law. Hard to do that with your little strawman arguments.

  25. 83

    But, in truth, what they did was say this:

    The phrase is the truth, the whole truth and nothing but he truth.

    If the Court had stuck with what you posted Ned, there would not be this outcry.

    They did not.

    There is.

  26. 82

    LOLZ at MM and reminiscent of the NAL days.

    Except here its a “newbe” causing MM to hike up his skirt and run.

    Where’s that link to the Sam Hill discussion?

  27. 81

    How do you stand on a claim along the lines of:

    A method of treating an auto-immune disease comprising administering a thiopurine to a subject, measuring the resulting level of metabolite X, continuing to dose, at a level calculated to bring the measured level into a range of from 230 to 400, continuing to monitor and continuing to further tune the dose based on the results of the monitoring step.

    Better than Prometheus’ claim.

  28. 80

    sockie it seems to me that you are walking away from the issue I put squarely in front of your face.

    The exact opposite is true. Go trxll another blog.

  29. 79

    sockie That’s just it MM, you seem to want to have your example say that the presence of a mental step (as in [new thought] is not permissible based on 101.

    No. You need to learn to read, sockie.

  30. 78

    I like it – but please note that “freedom of speech” is more limited here in Europe than in the U.S., especially in fields like nazism. I am not German – but Germans won’t like this.

    On the other hand, the whole US gets upset if a single nipple is shown during a microsecond on TV. In Europe, this would not be an issue at all.

  31. 77

    The SC seem to suggest that by its heavy duty dissection of the Prometheus claim. That was one of the most surprising things about the case. It seemingly trashed Diehr in this regard by trying to find the essence of what was claimed by comparing old and new.

    But, in truth, what they did was say this:

    1) one cannot claim a law of nature; therefore
    2) the claim must claim an invention beyond the law of nature itself.

  32. 76

    I loved it! If you haven’t watched all the H itl er videos about ever last little thing on You Tube then you should- this one was super funny and well done. I don’t this the “author” was trying to write a treatise on Prometheus. It is in the spirit of the other parody videos of that clip which are also great. I can always use a good laugh… Thanks Robert Sachs!!

  33. 75

    Time, the problem is with the word “discovery.” If one discovers something, traditionally, that something is old and in nature. The SC requires in addition to the disovery, invention.

    Congress essentially made this choice, to limit patents to inventions, when in 1790 when it refused to allow patents of importation. Patents of importation would have allowed, as in England, one to patent things and principles discovered outside the US thing that may have been old there. The original Congress believed this to be a requirement imposed by the Constitution.

    I am not so certain that this constitutional requirement exists. I think the SC would respect an act of Congress to allow one to patent laws of nature and things of nature without more invention if Congress chose to pass such a law.

    But, may I ask you, is that what you favor?

  34. 74

    What pseudonym did I admit to in the past you tard? “Ghost Face Patent App Killah”

    What? I know you’re a bit tarded and all, but seriously? More bs just a spewin’ all the time.

  35. 73

    MM I am trying to reconcile your position on the claim with the EPO decision to issue a patent, and the Paul Cole lament about the SCOTUS decision.

    How do you stand on a claim along the lines of:

    A method of treating an auto-immune disease comprising administering a thiopurine to a subject, measuring the resulting level of metabolite X, continuing to dose, at a level calculated to bring the measured level into a range of from 230 to 400, continuing to monitor and continuing to further tune the dose based on the results of the monitoring step.

  36. 72

    MM,

    This does not seem to make the point that you are thinking it makes.

    Your second claim in the form [new step] + [new thought] does not need any thought at all. If you have a new step you have enough. Your example is the same as excluding thoughts in their entirety, and that is not what the law holds in regards to mental steps.

    The equivalent of your example is that all mental steps are to be ignored. That is known to not be a fact.

    I don’t think you are correct in presenting this as a statement of fact. Your example is flawed. It’s just not a fact to begin with, so how could anyone refute your flawed example?

    I do not know who you have been asking for years, but if you have been asking with these flaws, and if you do not explain the case law and when mental steps are allowed, you will never be satisfied. That’s is not to say that you will be proven correct, though. If you did look at the mental steps doctrines and the case law, you would see that mental steps are allowed in cases where the nonmental steps are not new steps. That would be the direct examples that you seem to have been searching for for years.

    Perhaps you just haven’t been looking in the right places.

  37. 71

    while never addressing the issues put squarely in front of their faces?

    I realize that you are talking with Ned about the Prometheus claim, but it seems to me that you are walking away from the issue I put squarely in front of your face.

    I did not expect so much runaround from you. I thought that with the number of times you post on this subject that you could explain the availability of mental steps in claims, that you could explain Musgrave. Your response is for me to do what I ask of you.

    What kind of response is that?

  38. 70

    Namely, merely having mental steps, any mental steps, let alone new mental steps, in claims is entirely permissible

    I’ve never said otherwise.

    That’s just it MM, you seem to want to have your example say that the presence of a mental step (as in [new thought] is not permissible based on 101.

    You say this every time you post your example.

    Are you treating [new thought] and “mental step” differently? Can you please clarify?

  39. 69

    MM,

    I’m sorry if I’m not clear. You seem to be of the opinion that a [newthought] in a claim must fail under 101. If that is not your point, your premise, your view (or whatever you waht to call it), please clarify.

    I do not see any case law that supports that point. Do you have case law that directly supports your example?

    I bring up Musgrave because it seems to destroy that point, as Musgrave appears to hold that their can be only thoughts in a claim and still pass 101.

    I do not understand why you want me to explain Musgrave. The case is there and you can read it for yourself. Besides which, what I am interested in is your opinion, not mine. I want to know how you take the understanding from the case and fit it into your examples.

    You seem to want to offer to explain your examples to everyone. I am just asking you to explain your example in view of the case law I have found.

    Please explain yourself.

  40. 68

    sockie This seems to eliminate your premise.

    I have no idea what “premise” you are referring to, much less how the quoted statement “eliminates” it. If you have a point, please articulate it.

    Please explain Musgrave.

    I have a better idea: you brief the facts in Musgrave for everyone. Please do so accurately, and include the claims. Then state the holding in Musgrave and how the holding was reached. Then let us know exactly what you don’t understand about the Musgrave decision. Thanks.

  41. 67

    Your “explanation” as it were, is hornswaggle.

    No, it’s not, sockie. Here it is again:

    [P]ractitioners of the prior art are turned into infringers when they think new thoughts if claims in the form [oldstep]+[newthought] are granted. That is not true of claims in the form [newstep]+[newthought].

    That’s not hornswaggle. Those are statements of fact. They are not refutable. Go ahead and try to refute the statements, sockie. Nobody has succeeded doing so over the course of several years. Why do you think you’re different?

  42. 66

    MM,

    Please explain Musgrave.

    Specifically, the amended quote of

    “In Musgrave, the court reversed a rejection under 35 U.S.C. § 101 that the claims under review therein were non-statutory because it disagreed with the Board that “these claims . . . are directed to non-statutory processes

    merely because all of the steps therein can be carried out in the human mind”

    Musgrave 431 F.2d at 893, 167 USPQ 289.”

    This seems to eliminate your premise.

  43. 65

    On your planet, sockie

    A better question for you MM,

    Are there any parts of the decision by Breyer that you disagree with?

    Are there any parts you find offensive to your sense of the law?

    Do you truly not care what was actually said?

    As for my statements, they are correct. Once again, your mere proclamation that they are not is not persuasive. I told you why.

    Your “explanation” as it were, is hornswaggle. I do not need any understanding from you. I do not need any clarificaiton from you.

  44. 64

    sockie The claims deserved to die.

    But not for the rationale given.

    On your planet, sockie, why did the claims “deserve to die”?

    As to my statements, they are true, and your mere proclamation that they are not is not persuasive.

    Your statement about the irrelevance of the non-mental stepts is false, sockie. I did not “merely proclaim” this. I explained why in very clear terms. Let me know exactly which part of my explanation you did not understand and I will clarify for you.

  45. 63

    All this talk of “mental steps” has given me a migrane. I think now is the time to head to my medicine cabinet and take an Excedrin so that a “law of nature” will produce the “physical phenoma” I now so desperately need.

  46. 62

    The original commenter makes a fair observation.

    I believe that most persons hosting a website such as this would, have they not already done so, be acting prudently by giving consideration to adopting a DMCA policy. It would mitigate headaches of the type you appear inclined to impose.

  47. 61

    The level of denial exhibited by the sockpuppets with respect to this decision is fxxxing hilarious. NINE-ZERO!

    What is fxxxing hilarious is watching you carry on, and automatically think that anyone critical of the decision is in favor of the claims.

    The claims deserved to die.

    But not for the rationale given. Anyone who respects law should be saddened when our greatest court puts out a decision of such unbeleivable c_rap, no matter what the end result.

    As to my statements, they are true, and your mere proclamation that they are not is not persuasive. I told you why.

    I would offer help in understanding but I think that you are beyond help.

  48. 60

    sockie 101 has been treated like a tennis ball and the Court has radically and viciously rent the meaning asunder

    sockie’s mixed metaphors are fxxxing hilarious. Cracks my shxt up every time.

  49. 59

    Ned There has to be something inventive beyond the law of nature itself to justify the patent.

    Of course. Otherwise the patent is effectively a claim to the law of nature, exactly as the Supreme Court stated in Prometheus.

    How many times were the sockpuppets walked through the analysis? How many times did they run away and spout ridiculous gxrbage while never addressing the issues put squarely in front of their faces?

    In the bizarro world of the sockpuppets, where Prometheus comes out the other way, there is nothing preventing the following claim from being granted:

    “A method of improved analysis of subject X, comprising drinking a cup of coffee and thinking [newthought] about subject X.”

    There is transformation step (drinking coffee) and its related to the subsequent step (caffeine stimulates the brain). And of course the sockpuppets would never, ever explain what happened at the 102/103 analysis. That was a black box, never to be discussed. And my favorite bit of dissembling was the assertion that nobody would ever be sued for infringing such a claim. LOL!

  50. 58

    Since Diehr was not overruled, we have conflicting directions from the Supreme Court.

    Diehr was not “overruled” because it didn’t need to be overruled. Diehr stood for the proposition that the mere presence in a claim of ineligible subject matter did not render the claim per se ineligible. That’s all. Diehr never said that courts were not permitted to analyze a claim to determine if the claim was effectively a claim to the recited ineligible subject matter. That issue was not even raised in Diehr.

    t is irrelevant if the other elements on their own are unpatentable or not (in contrast to not patent elegible, for which a distinction is made).

    This is false because practitioners of the prior art are turned into infringers when they think new thoughts if claims in the form [oldstep]+[newthought] are granted. That is not true of claims in the form [newstep]+[newthought]. Let me know if you disagree and why.

    The level of denial exhibited by the sockpuppets with respect to this decision is fxxxing hilarious. NINE-ZERO!

  51. 57

    Namely, merely having mental steps, any mental steps, let alone new mental steps, in claims is entirely permissible

    I’ve never said otherwise.

    But it doesn’t change the fact that any claim in the form [oldstep]+[newthought] is ineligible under 101, for very logical reasons. Are you confused about the reasons? Let me know and I’ll walk you through it.

    Suffice it to say that the Supreme Court in Prometheus understands the problem. It’s one of the reasons why they use the same language I’ve always used when discussing the problem, i.e., the effective claiming of an abstraction/law of nature/mental process (these three categories are indistinct for the purposes of the analysis).

  52. 56

    NWPA,

    Naked criticism of “scholarship” catches the spam filter.

    This observation was made back when there was heavy criticism of “scholarly” work of the nature that interpretative results were given with the actual date withheld for “confidentiality” reasons and the general public was asked to accept what the scholars said the data meant sight unseen.

  53. 55

    there is a difference between adding a mental step to an otherwise patentable claim and adding a novel mental step to an otherwise unpatentable claim.

    No.

    Not as you have phrased it.

    Any difference lay in the mental step itself and the relation of that mental step to the other elements of the claim, as a whole. The status of those other steps (old or not) is irrelevant.

    It is irrelevant if the other elements on their own are unpatentable or not (in contrast to not patent elegible, for which a distinction is made).

    At least this was the understanding under the law pre-Prometheus. Since Diehr was not overruled, we have conflicting directions from the Supreme Court.

    The interaction with the other elements is a requirement no matter what.

  54. 54

    A post on another thread referred to the Ex Parte Lundgrin case (concerning the absence of a technological arts test in the 101 context).

    That case lead me to In re Musgrave.

    In Musgrave, the court reversed a rejection under 35 U.S.C. § 101 that the claims under review therein were non-statutory because it disagreed with the Board that “these claims . . . are directed to non-statutory processes merely because some or all of the steps therein can also be carried out in or with the aid of the human mind or because it may be necessary for one performing the processes to think.” Musgrave 431 F.2d at 893, 167 USPQ 289.

    Doesn’t this address the ongoing comments by MM?

  55. 53

    That’s quite a smokescreen Ned.

    But completely off point. No one is saying anything about the “all the words of 101.”

    The point being proferred is that the Supreme Court has abused its interpretation of 101. Whether or not all the word have been used is not related to the abuse.

  56. 51

    but when I do I always leave the same website

    Not buying it.

  57. 50

    Sorry I missed that fish scales. Ned’s posts are so replete with bogus positions of law, that I tend to glaze over them.

  58. 49

    As I mentioned, your view, while not incorrect, is tenuous.

    Yes, the four factors would need to be applied. Yes, the transformative effect is evident. And quite so.

    So while perhaps not determinative, you do have the fact pattern directly in front of you.

    What other factor do you see that would change the analysis so drasticly given the nature of the posting today?

    Do you really want to counsel about a takedown notice that would be defeated nearly instaneously?

    I accept your false extension of a compliment, roll it into a stick and hit you upside the head with it.

    Prudence dictates that you not waste your client’s time with such a tenuous reach.

  59. 48

    Such a rewrite might impact United States in so many different ways that it would be unwise and imprudent to even contemplate it.

    It can be no more imprudent than the nose of wax twisted off and thrown into the corner by the Prometheus decision.

    Clearly, whether or not the section of law has been in the same form (as set by Congress) has not stopped the back and forth twisting of the wax nose by the Supreme Court.

    And just as clearly, since as you state that portion of the statute has not changed by Congress’ hands, yet yet 101 has been treated like a tennis ball and the Court has radically and viciously rent the meaning asunder, it is time for Congress to grab the power given to it under Golan and remove the 101 screwups from the hands of the Supreme Court.

    You are quite incorrect to think that 101 has remained intact. You are just not looking at the right branch of government that has torn it of its proper face of patent law. Fundamental? Quite so. It’s time the government decided to treat it thusly. And the way to do that is as I suggest.

  60. 42

    Time, the only problem with your analysis is this: section 101 has been in the statutes in almost exactly the same form and using the exact same words since 1790.  The conditions of patentability described in section 102 were added later.  Section 103 was added only in 1952.

    In all this time, it does not appear that Congress clearly stated anywhere, at any time, that all the words of section 101 should not be given effect. I know that Judge Rich contended that that is what Congress meant when Congress divided what was a unitary statute in the patent laws of 1870 into two parts, naming one section 101, and naming the other section 102. He said, in In re Bergey, that Congress intended by this division to confine novelty issues the 102 and to limit 101 to "category" issues. But nothing in the Congressional record actually said this. Federico, who drafted the new statute, did not say this. And clearly, section 101 contains more than categories. It is essentially the same statute that was enacted by Congress in 1790. It is the fundamental patent law of the United States.

    Now you ask Congress to rewrite this fundamental law that has been remained intact from the very beginning of this country, and for what purpose?

    Such a rewrite might impact United States in so many different ways that it would be unwise and imprudent to even contemplate it.

  61. 41

    I told you guys, I don’t often sockpuppet, but when I do I always leave the same website. Obviously I’m not “ghost face” what kind of stu pid name is that anyway?

  62. 40

    Since you apparently feel you are well versed in matters pertaining to Title 17, perhaps you would be so kind as to elaborate on the pertinency of 17 USC 512(f)(1). In my opinion you appear to have concluded that the video is non-infringing because it is “transformative”, and, thus, a fair use, which automatically means that a takedown notice violates the section you cited (i.e., such a notice would be “bogus”).

    The transormative nature of a work is certainly relevant to a fair use analysis as it relates the the first of the four factors enumerated in Section 107, but by itself is not determinative.

    Importantly, I express no opinion regarding whether or not the video comprises a “fair use”. My sole point is that prudence suggests compliance with the provisions of 512 hereafter is appropriate to consider.

  63. 39

    they certainly did not treat the mathematical algorithm there as a familiar part of the prior art.

    That’s expressly false. They announced that the mathematical algorithm was old in the art.

    Try Again.

  64. 38

    Ned,

    You seem to grasp (and grasp quite quickly) the point that eludes MM.

    It’s a shame that MM’s ego prevents him from communicating as a rational human being.

  65. 37

    The video was very funny, but it points to a fundamental misunderstanding, I believe, of the Prometheus case. To understand this case, one simply has to look to the Funk Brothers case. The reasoning and the rationale in Prometheus tracks Funk Brothers to a T.

    What I think the Supreme Court is telling us that if laws of nature or things of nature are the of point of novelty in the claim, everything else being conventional and old and well understood and with no new result of any significance, then the claim is unpatentable. There has to be something inventive beyond the law of nature itself to justify the patent.

    It is almost as if one must assume that the law of nature is a familiar part of the prior art so that there is invention beyond the mere recital of the law of nature. The law of nature must be applied to some new result that is not trivial.

    I know the Flook said this as well, but it said so in connection with a mathematical algorithm. I think we should make a distinction between laws of nature and mathematical algorithms because the two things are not the same. A mathematical algorithm can describe laws of nature. But I think that there are also mathematical relationships that have nothing to do with laws of nature.

    I think the Supreme Court may actually have recognized this distinction in Diehr, because in Diehr they certainly did not treat the mathematical algorithm there as a familiar part of the prior art.

  66. 35

    Sorry NWPA,

    6 has already been tagged as the Fox News of the patent world.

    You need to find a different analogy.

  67. 34

    And further, the time to act is precisely because the court was unanimous. If the Court were close, Congress might feel that it would be wiser to wait and see how the Court further evolved. A 9-0 decision takes the wait away. It is most defintiely a statement. That statement is just saying more than you are hearing.

    Can you really think there was not a message with such horrendous logic in the Breyer decision so readily agreed to by all nine? The only other option is to think that all Nine are really that brain dead, which is quite scary.

  68. 33

    Shallow, there is a difference between adding a mental step to an otherwise patentable claim and adding a novel mental step to an otherwise unpatentable claim. The novel mental step must interact with the old elements in some way to produce a new result. The old elements can’t simply be data-gathering for the medical step.

    I don’t think Malcolm has ever fully agreed with my analysis here, but is very consistent with dear and with the result here in Prometheus.

  69. 32

    to the Federal Circuit and to the patent bar. It is the Federal Circuit and the patent bar that had been b*tch-slapped by the Supreme Court

    No doubt.

    But it’s more than that.

    And the slap was given with a painfully convoluted and logically incomplete and muddled answer, which begs, no dares Congress to do something about it.

    The reasonings given in the slap are for the wrong reasons, the wrong sections of law that were properly identified by the Executive Branch.

    And the SC slap definitely smacks right back at Congress who set up the CAFC and gave that lesser court its mandate.

    This is a dog fight reminiscent of Marbury v. Madison; just that its between the judicial branch and the legislative branch rather than between the judical and executive branches.

    The funny thing is that the Supremes just laid down their cards and displayed them for Congress to see in the Golan case. All Congress needs to do is to redo 101 and be explicit about what is and what is not “in.” The Supremes in Golan eviscerated any previous check on Congress and fully and completely gives power to COngress to set appliable rules (including the ability to take things out of the public domain).

    My feeling is that the Supremes are quietly steaming abou the AIA just being passed and their three exceptions totally being ignored (one does not scorn a lady, and the Nine have never been more like a fickle woman at any time in its tenure).

  70. 31

    OK. I read the Lemley article. This is a typical Lemley article that is almost impossible to get through because it is so filled of misstatements and false premises. A polemic—not scholarship. Lemley is best characterized as Fox News for Silicon Valley VCs. False premises, misrepresentations, omissions, etc.

  71. 30

    9-0.

    If there was any time to act, it would have been before the Supreme Court ruled.

    No one in Congress is going to seriously listen to anybody complaining about the Prometheus decision because the decision was unanimous. I think the Supreme Court was trying to send a message, a strong message, to the Federal Circuit and to the patent bar. It is the Federal Circuit and the patent bar that had been b*tch-slapped by the Supreme Court.

  72. 29

    Well, I wrote a response to the “scholarship,” but for some reason it won’t post here. And, there isn’t one mention of a simian.

  73. 28

    Actually the two issues are intimately intertwined. You are now digging yourself deeper. Take a friendly suggestion: put your shovel down.

    Have you checked out the section I noted yet?

    Do you really think that the party who would put Patently-O “into the fray” would fail to recognize the futililty of their action and how much it would cost them?

    As I noted, your comment is tenuous (I did not say completely incorrect).

  74. 27

    Fish scales,

    Consider the source (and realize that Ghost Face is 6).

    Ignore (or poke fun at) as deserved.

  75. 26

    it makes far more sense than either of the CAFC’s opinions

    On the contrary, the two CAFC opinions make eminent sense because neither conflate the law as was done here (the very reason why this SC decision blows). It is not an “alleged” lack of logic, either. The lack of logic and integration with the existing body of law is one reason the clip on this thread is so funny.

    The result of “no patent” is correct. But as has been pointed out, the manner of reaching that result is critically incorrect. Anyone who understands law gets this.

    Your “better question” is not, for the reasons pointed out on previous threads. Namely, merely having mental steps, any mental steps, let alone new mental steps, in claims is entirely permissible, and there are other doctrines to take care of claim elements not being related to each other (and the lack of relation applies to the mental steps as well as non-mental step conglomerated claims). As such, your beloved hypo is a mere strawman of the actual issue. For some reason you do not make clear, you think this line of thought does not pertain to your banal example.

  76. 25

    Apparently you are thinking about this in the context of “is this an infringement”. That, of course, turns upon the Fair Use Doctrine codified at 17 USC 107.

    I am thinking about it in the context of how a site provider can keep its “tush” above the fray and from being hauled into court in the first instance.

    These are two entirely separate issues.

  77. 23

    You may wish to consider what I actually posted.

    Parody and satire are quite clearly not the only things at play, and transformation is quite evidently strong enough to make the provision of 512 that I pointed out overcome your rather tenuous cautionary comment.

    The sky remains in place. There is no concern for safe harbors drying up.

  78. 22

    Well Paul, perhaps the abstract idea behind the film borrowing was in bad taste, but would you not agree that the added English script was a first class execution of the abstract idea, and very funny indeed.

    Otherwise at SCOTUS, where the abstract idea (to cut down the over-broad Prometheus claim) was in perfect taste, but the way which they chose to execute that thought was just not very satisfying.

  79. 21

    You may wish to consider the long line of cases stretching up to the Supreme Court that discuss the parody/satire distinction and its relationship to the provisions of Title 17.

    Perhaps it would help to consider this site as a “social network” relating to legal matters. User generated content that is posted by a user is generally not problematic for purposes of securing safe harbor so long as the social network site follows the provisions of 512 if a rights holder raises a ruckus. However, it is quite another matter if the site itself is the poster and ruckus raising transpires. This does not mean that infringement is a given, but only that safe harbors can start to receed over the horizon.

    My comment was merely cautionary since copyright law is not the primary focus of this site.

  80. 20

    The fact remains that for all the complaints about the alleged “lack of logic” in the Prometheus decision, it makes far more sense than either of the CAFC’s opinions. It also has the distinct advantage of not opening up the floodgates to reams and reams of “novel mental step” bullshxt being filed at the USPTO.

    I still remember Jason Rantanen’s reaction way back when (paraphrased): “Can you really patent a method of thinking just by tossing on an old patent-eligible step?” The answer always had to be NO, for very straightforward reasons. The Supreme Court understood this. Many of us commenters here understood this.

    The better question is why so many “patent pundits” refuse to even admit the fundamental problem with [oldstep]+[newthought] clams. These self-styled intellectual leaders won’t even discuss the issue. What does that say about their trustworthiness on issues of patent law generally?

  81. 19

    OMFG

    ONLY THREE DUDES LEFT AFTER THEY LEAVE.

    That is hilarious.

    And that girl is crying about business methods. lol.

    This one was well done.

  82. 17

    Ghost Face is a lonesome pitiful dork, not even accepted by other dorks.

    Not being able to recognize law (or your job) only guarantees that any “mole” efforts will be met with utter failure. Something Ghost Face is no doubt well accustomed to.

  83. 16

    What is funny is that while the thrust of the comment may be accurate (I can see Gene in the H_itler role), the words being spoken in the clip are also accurate.

    The SC has really scr_ewed the pooch of existing patent law on this one.

  84. 15

    Unfortunately, the Nazis are the abstract idea, laws of nature folks that want to send all the software patents, business method patents, and diagnostic patents to the gas chambers. Their their aryan race theory is one that information processing is not an invention and is inferior to the fields that came before them.

  85. 14

    Ghost Face is a member of the freedom-loving resistance – A mole doing their part working ferociously hard deep inside the belly of the government beast to bring sanity to an otherwise dysfunctional, illegitimate, illogical, unethical and corrupt patent system.

  86. 13

    6, nice try to impress your tech-dirt wanna be friends.

    PS They still don’t accept you because your part of the system.

  87. 12

    How common is it for patent lawyers to intentionally draft claims that cover an already existing competitor’s technology? Patents are government-sanctioned legalized theft. The patent system is just one of the many things that are making America less competitive in the world economy.

  88. 11

    The Supreme Court made the right decision whether you like it or not

    Join the chorus: What-Ev.

    Except in law, the why is the most important point, because that’s what gets used in subsequent cases.

  89. 10

    I am not sure why 17 USC 512 would come to mind. You appear to think this is is some type of infringement. Think transformative use.

    Then go back and think about 17 USC 512(f)(1).

  90. 9

    The Supreme Court made the right decision whether you like it or not – it’s a good start. All of the usual patent shills (Quinn, Haling, Heller and the rest of their ilk) are flustered and up in arms about this decision. There would be more innovation WITHOUT a patent system. Patents hinder innovation, any successful entrepreneur can tell you this. Grow up people. The only people that really benefit from the patent system are rent-seeking, parasitic patent lawyers. Companies are forced to participate in the patent system not because it encourages innovation, but to protect themselves so that they can use their own technology unimpeded. The patent system is more like a protection racket, putting money into the pockets of patent lawyers.

  91. 8

    Congress only ‘steps in’ when someone has enough cash that both parties will listen. Then you get what they pay for.

  92. 5

    “Parody” or “satire”, a distinction having a “fuzzy” line of demarcation? 17 USC 512 comes to mind.

  93. 4

    Enough of the back and forth. The nose of wax has been broken off.

    It’s time for Congress to step in and bxtchslap the Supremes and the SC all over the map reasoning.

    Congress should recognize that this slap must be with more force than the 1952 slap against “flash of genius” in the 103 change.

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