Guest post by Professor Michael Burstein. This review is cross-posted on the Concurring-Opinions blog.
In his new book Infrastructure: The Social Value of Shared Resources (OUP 2012), Brett Frischmann explores how infrastructural resources contribute to social welfare. He defines a set of resources — infrastructure — in terms of the manner in which they create value and then examines the conditions under which such resources ought to be managed as a commons. He develops a framework for understanding the demand for infrastructure and the advantages and disadvantages of managing infrastructure in a nondiscriminatory manner. Prof. Frischmann then applies this framework to a variety of infrastructural resources — roads, telecommunications networks, the environment, and, of particular interest to readers of this blog, cultural resources including those which are protected by patent and copyright law.
I'm going to focus my comments on Frischmann's theory of intellectual infrastructure and how it relates to the structure of intellectual property law. Just a few days after the release of Infrastructure, the Supreme Court handed down its decision in Mayo Collaborative Services v. Prometheus Laboratories. That case presented the question whether certain diagnostic claims were within the scope of patentable subject matter under section 101 of the Patent Act. The Court held that they were not, in a manner that is strikingly consistent with Frischmann's theory. Hence the title of my post. But Frischmann's theory may also go a long way toward bringing some order to an area of patent law that has long been confused.
Let's start with the concept of intellectual infrastructure. Frischmann explains that intellectual or cultural resources can be infrastructural in the same manner as physical goods. So long as the resource is a "nonrival input into a wide variety of outputs" (275), it satisfies the characteristics of infrastructure that Frischmann so richly describes. In turn, that suggests that the case for managing the resource as a commons is strong. Frischmann then explains how this concept applies to ideas. Ideas, he writes, often are infrastructure (subject to a number of complications that I'll put to the side). So in his view, intellectual property should protect implementations of ideas but not the ideas themselves (286). To sort one from the other, Frischmann turns to the concept of abstraction in copyright law and argues that patent law should follow a similar path.
Now consider Prometheus. The inventors in that case discovered a correlation between the effectiveness of a drug and the amount of certain metabolites of that drug in a patient's blood. Their patent claimed a method of optimizing the dosage of the drug based on that correlation. The method was simple: (1) administer the drug; (2) determine the amount of metabolites in the patient's blood; (3) make an inference about drug dosage based on the correlation. Doctrinally, the question before the Court was whether this amounted to a claim on a "natural law" – the correlation between drug dosage and metabolism that happens in the human body – which would be unpatentable under a long-standing exception to the scope of patentable subject matter, or a patentable application of that law.
Substitute "idea" for "natural law" and the analogy to Frischmann's analysis becomes clear. Indeed, there is no reason why a "natural law" cannot be an "idea" as Frischmann describes it. A natural law is the articulation of a principle; whether that principle is an infrastructural idea turns on its characteristics, not its origins. In Prometheus, the Court, with Justice Breyer authoring the unanimous decision, held that the patent claimed the natural law itself and not an application of that law. The Court held that the the patent claims did not "add enough to their statements of the correlations . . . to qualify as patent-eligible processes that apply" those correlations (slip op. 8). The "administering" and "determining" steps, in the Court's view, comprised "well-understood, routine, conventional activity already engaged in by the scientific community" and so were "not sufficient to transform unpatentable natural correlations into patentable application of those regularities" (slip op. 11). Or, in Frischmann's terms, the patent claims did not amount to an implementation of an idea; they claimed the idea itself.
The rationale underlying the Court's decision also resonates with Frischmann's argument. Justice Breyer cast the decision in expressly functional terms. The danger, he wrote, is that because natural laws are "the basic tools of scientific and technological work," patents on natural laws "foreclose[] more future invention than the underlying discovery could reasonably justify" (slip op. 17). So too, the rationale for managing infrastructural resources as commons turns on the demand-side benefits: the spillovers and externalities that non-rival consumption of infrastructure resources enables. In this way, Prometheus is quite consistent with Frischmann's injunction against propertizing ideas.
Frischmann's theory also suggests some provocative solutions to problems that have long plagued the doctrine of patentable subject matter. Section 101 of the Patent Act defines as patentable any "new and useful process, machine, manufacture, or composition of matter." But the Supreme Court has long carved out from those categories several broad exceptions. They are usually described by the terms "laws of nature, natural phenomena, and abstract ideas," but at times appear also to encompass "products of nature," "mental processes," "mathematical formulae," "algorithms," and the like. Infrastructure may offer a unifying principle for choosing to exclude these things from the scope of patentable subject matter. Frischmann writes that "[t]he Supreme Court should stop referring to abstract ideas" in its patentable subject matter jurisprudence and should instead "make clear that ideas are not patentable" (300). Viewed through the lens of infrastructure, Prometheus is a step in this direction. The correlations at issue in that case were actually quite narrow. At the very least, they were not "abstract" in the sense that the "concept of hedging risk" found to be unpatentable in Bilski v. Kappos was abstract. Yet the correlations in Prometheus and the concept of hedging in Bilski are both ideas. And they are ideas that have the characteristics of infrastructure — nonrival inputs into a wide range of outputs. The Court's functional analysis suggests that the problem in both cases was that granting exclusive rights to ideas that have the characteristics of infrastructure might foreclose future innovation.
I would go even further. The next big patentable subject matter case is likely going to be the Public Patent Foundation's ongoing challenge to gene patents held by Myriad Genetics. Doctrinally, the question raised in that case — whether the patents claim "products of nature" – is different than the question whether a patent claims an idea. But to the extent that genes can be characterized as infrastructure — and I think there is a reasonable case that they can be — the functional analysis described above should apply. The exclusion of products of nature from the scope of patentable subject matter may therefore be consistent with the exclusion of ideas from the scope of patentable subject matter.
It has also been a matter of debate among academics and practitioners whether and to what extent the inquiry into patentable subject matter serves a function different from other requirements of patentability like novelty or nonobviousness. To the extent that infrastructural resources ought to lie beyond the scope of patent protection for functional reasons, the patentable subject matter screen will capture this insight in a way that other patentability doctrines will not. But this is a topic for further exploration.
Frischmann's book is an important contribution across a wide range of fields. It is a terrific achievement and I think its influence will continue to grow as we grapple with the implications of its analysis.
Concurring Opinions has been hosting a symposium to discuss Prof. Frischmann's book and includes posts by Marvin Ammori, Adam Thierer, Barbara A. Cherry, Frank Pasquale, Michael Burstein, Timothy B. Lee, Tim Wu, Laura DeNardis, Andrew Odlyzko, Deven Desai, and Brett Frischmann himself.
But the Great Ned Heller Theory of Method Exclusion Applies:
Prometheus was a medical method.
Prometheus was ruled patent ineligible.
Therefore, all medicall methods have been ruled patent ineligible.
Can’t you see the impeccable logic?
“Max, I daresay that Prometheus may have sparked a revolution in thinking about 101”
You do realize that Prometheus is limited to natural laws don’t you?
The holding does not apply to business methods and certainly not to software.
In fact you can’t even apply it to all medical methods.
If you want to espouse on a theory about where you believe the law might be headed, go right ahead.
But to mix speculation of future law with actual law, as it exist today is wreck less, irresponsible, and less than ethical.
It is precisely because Stevens had so much unnecessary dicta in Benson that Rich was legally able to sidestep Benson in the ensuing CAFC cases.
Look for more of the same as history repeats itself.
Apply the Prometheus Test.
Is this more than simply saying “apply it?”
I think not.
Everything physical was old.
Even the idea of timing the cure in the mold based on temperature was old.
The only “novel” thing, the so-called point of novelty was the “continuously” element. But that’s just an abstraction. It is no different from doing the action itself. All you have is repeating an old action. All you are doing is re-doing the Arrhenius equation exactly as it had been done singularly before. All you are doing is adding an old step that was already there and that does nothing new.
This is not even a new thought. This is [old step] + [same old step].
But Ned Heller says MM is always right.
So what ya gonna do?
“suckie has the reasoning and logic capabilities of a five year old, and lacks the social skills to hide or overcome this unfortunate condition”
It’s incredulous that people find this type of posting acceptable.
suckie: I don’t tell anyone something is the law unless I can cite it
Translation: suckie has the reasoning and logic capabilities of a five year old, and lacks the social skills to hide or overcome this unfortunate condition.
I don’t tell anyone something is the law unless I can cite it.
How about you?
Merely saying 9-0 is not citing case law to support your mental steps test theory .
It’s not a “theory”, suckie. It’s the law. Are you still telling your clients otherwise, suckie? LOL. “Clients”. BWAHAHAHAHAAHAHAHAHAHAHAHAA!!!!!!
9-0, suckie. It doesn’t get more effective than that.
Merely saying 9-0 is not citing case law to support your mental steps test theory .
Nor is it even discussing the law at all.
After all.
Anyone can rattle off their opinion, attack people, and claim it is the law.
Ned: “After Prometheus, there will be no way to avoid the notion that novelty analysis may be required if the point of novelty in the claim appears to be ineligible subject matter.”
Is that a fact?
I did not read that in the Prometheus holding.
Can you cite quote please?
Thank you.
Ned, you did not cite the holding from Diehr or Prometheus, nor did you cite the Dicta from either case.
You just rattled off your own general statements with no legal authority or credibility to back them up.
Do you even know the difference between dicta and the holding in a case?
MM,
You ask “Why don’t you discuss,” but it was you that was the one that was asked to place your “example” in ligh tof the existing case law. I and others even provided the cases. You were the one that posted “a position” and it is up to you to defend that position in light of the actual law. All you did was repeate your mantra and proclaim the greatness of it. Empty and meaningless prattle.
And not for one minute should you think that the 9-0 decision in anyway validates your views.
All we really have is you being a windbag. I wonder if you even know how to have a legal discussion, having never seen one from you.
suckie : Maybe that’s why you are so ineffective.
9-0, suckie. It doesn’t get more effective than that.
without actually discussing the law on mental steps.
Why don’t you discuss “the law on mental steps”, suckie? I know it very well. But I’d love to hear what you think. Please show us some claims reciting mental steps that are eligible, and some that are not, and explain the difference. Please. I need a good laugh. And maybe there’s one or two readers out there who still need to be reminded about what a miserable dissembling d–chebag you are.
“that it undermined or trashed a lot of what we understood the law to be”
Not if the trashing part was mere dicta.
Look at Benson and witness the trashing of dicta in that decision.
You keep on pointing it out without actually discussing the law on mental steps.
Maybe that’s why you are so ineffective.
Ned the courts were commanded under Diamond v. Diehr not to dissect claims into old and new elements for section 101 purposes
Whether or not you believed this to be the case, it was not the case. Diehr stood only for the proposition that the mere identification of ineligible subject matter in a claim was not sufficient to render the invention as a whole ineligible for patenting. More analysis was necessary. Prior to Prometheus, both the Supreme Court and the CAFC recognized that it was not possible to “rescue” every ineligible claim from death under 101 simply by tacking on a step reciting eligible subject matter (e.g., “drinking coffee”). The CAFC made a clear (albeit mentally feeble) attempt at exactly this type of analysis in their Prometheus decision. I pointed this out at the time of the CAFC decisions (probably a dozen times) and I’m pointing it out again because the Zombie Myth refuses to die. But it remains a myth.
Credibility, the problem most people have with Prometheus was that it undermined or trashed a lot of what we understood the law to be. We can decry this seachange all we want, but we still have to live with it. That is my point.
Credibility and positions taken on this thread have no correlation to the 9-0 decision and anyone postulating otherwise is either incompetent or dishonest.
Promethues: the whole discussion about 102 and the government's brief might be considered dicta as it was not necessary to the decision.
And, sir, I also noted to you that I do not have time to thoroughly answer all questions, that I will respond if the question is important to the poster, and asked you repeatedly to identify the queston that you would like to have answered. I did this numbers of time with you. Not only did you not respond to my overtures, you began to attack me in the most unkind and vicious manner possible, to which I responded in kind, sir.
“Ditto: Prometheus.”
So what is the holding in Prometheus. And what is the dicta.
(the holding, even at, or especially because of, a 9-0 decision is razor thin: Laws of nature are not patentable.
Nothing more.
No sir, not even close to being true.
You do not seem to recall that my initial forays were civil and had well constructed analogies. It was you that refused to acknowledge the points I made (think back to discussions on inchoate rights, races, Congress setting the terms of races, and case law).
It was you that arrogantly declared your view of case law to be correct and it was you that was completely dismissive of any other view. Your arrogance continues unabated, even to the point and beyond when simple inventors show you the error of your legal thinking. You have no shame.
Shortly thereafter it was noted by others that you routinely accuse others of that which you do. I noted our discussion fit that pattern. I have occasionally chimed in when that pattern is repeated, and it has been repeated often.
You sir, have no honor. Any ad hominems are justly deserved, and there is no libel in truth.
Max, I daresay that Prometheus may have sparked a revolution in thinking about 101 issues. I think the government brief was an example of more traditional thinking where ineligible subject matter was simply ignored during novelty analysis and where the courts were commanded under Diamond v. Diehr not to dissect claims into old and new elements for section 101 purposes, and further to consider patentable subject matter as a threshold issue to be decided prior to any novelty analysis. After Prometheus, there will be no way to avoid the notion that novelty analysis may be required if the point of novelty in the claim appears to be ineligible subject matter.
Thus a claim to a player piano, where the novelty was in the player piano, will be clearly patentable subject matter. While the same claim to player piano with new music would not be directed to patentable subject matter if the player piano was old.
In some cases, of course, the inventor will describe the player piano elements as old and conventional in his specification; but this may not always be the case. Thus the section 101 issue may emerge during prosecution. As such, section 101 can no longer be characterized as a threshold issue.
Many have concurred with Paul’s observations.
Few have rejoiced in the “What-Ev” style of law that is really not law at all.
You know who you are.
Says one who uses ad hominem's and libels as is preferred mode of discussion.
Any way, the problem you have is that you declare that you are right and everybody else is wrong, end of discussion. That is the way you behave, and have behaved for very long time. It is annoying to say the least.
Diehr, holding: that part necessary for the decision, including the bit about the process being claimed involved the transformation of an article into a new state or thing which made it a traditional process under historical Supreme Court case law. Dicta: that part discussing generalities about the statute the resolution of which had little or nothing to do with the result in the case.
Ditto: Prometheus.
With that information doctors could use thiopurine drugs safely, without it not.
That’s where you part ways with Titanic. It’s not a binary test for “abandon patient Y/N”. It’s not like testing for a BRCA gene, where I would be more inclined to say that the test was the invention.
The invention in Prometheus was a way to better administer thiopurines based on monitoring a parameter that nobody was using before. It’s more like Diehr, where the invention wasn’t monitoring temperature or numerically integrating the Arrhenius equation, but using temperature as a parameter to get a better cure.
The objection was obviousness, not patent elegibility.
Patent eligibility issues seem to come up when people claim something other than what they’ve actually invented. Whether it’s inventing a method of processing data and claiming a storage medium, or inventing a method of administering a drug and claiming a blood test. They seem to come up more frequently when the patentee gets greedy and drafts claims to capture as many wealthy infringers as he possibly can.
Again, there is no legislative history. The meaning of the terms was well established at their adoption, and have been further developed by case law both here and in England.
Credibility? An you cannot count noses.
9-0.
Still old, you are in denial. You have never agreed that "continuously monitoring the temperature in the mold" was new.
It is when, as here, the meaning was well established at the time the term was adopted. Your whole idea seem to suggest that the term was adopted only in 1952 (or perhaps in 1870 or 1836). That suggestion was a red herring.
Obviously you have not read the books or seen the film on the subject.
The decision was whether to sit tight and wait for rescue or launch lifeboats. With what Captain Smith knew, launch of lifeboats would have been delayed. With the knowledge of Thomas Andrews lifeboats were promptly launched. Very useful knowledge which, despite the tagedy, probably saved a large number of lives.
You cannot remove what you are testing for and the test criteria as technical features of the test. The ship’s carpenter could go through the motions of determining water ingress and report to Captain Smith, but neither of them knew what to do without the critical informationa bout the threshold number of compartments. Similarly in Mayo the metabolite ranges are critical to determining underdosing/therapeutic dosing/overdosing. With that information doctors could use thiopurine drugs safely, without it not.
The objection was obviousness, not patent elegibility. As I have said the damage done by a correct oucome for the wrong reasons is nearly as bad as a decision that is wholly wrong.
sq,
While not the legislative history you seeek, you might enjoy the article at
link to cato.org
Truly, there is much to fear about locking any notion of property – land, intellectual, or otherwise – into an 18th century mode, and the Office that promotes innovation should be at the forefront and not the rearguard of any such thinking.
Those who think that you must be able to drop something on your toe rather miss out on an important underlying concept to the whole innovation paradigm.
Ned Heller is the most arrogant Sonnafo that I have ever dealt with on these boards.
Ned, how can we have a discussion of the law if one side refuses to even acknowledge what the law is.
Fixed.
Ned, Answer two questions please.
1. What part of Diehr was dicta and what part was the actual holding?
2. What part of Prometheus was dicta and what part was the actual holding?
“So, yet again, I ask, where, in the legislative history, does this “tangible” requirement arise?”
Ned,
if you don’t know the answer simply say I don’t know.
if it’s not in the legislative history simply say it’s not in there.
Then if point is irrelevant than make your argument as to why it’s irrelevant.
But all this avoiding the issue is making you looked wrong, ignorant or both and is only going to lead to you to being intellectually pounded into the dirt,
“Prometheus is the gold standard of 101 cases”
There is no way anyone even closely knowledgeable in law would ever advance such a crackpot idea.
Is this a contest for seeing who can have the lowest level of credibility?
The Hans Blix/Malcolm sockpuppet was called on to discuss this on previous threads.
He ran away then. He will run away now.
Doesn’t need to be new – everything in Diehr,in and of itself in each step was old.
That’s kind of the point that your obtuseness prevents you from grasping. The only thing new was an abstract idea.
So understanding the actual source (or lack thereof) in a legislative manner of a key term being bandied about is “red herring?”
I think not.
Stop kicking dust on those who are trying to make things clear.
Again, that portion of Diehr was dicta. Diehr itself is still good law.
Looking, I think you may begin to understand that there is dicta even in Supreme Court cases.
If the measuring step of Prometheus were in fact new, I would tend to agree.
And you, Round, deal exclusively in red herrings.
Any way, how can we have a discussion of the law if one side refuses to even read the cases.
“and that prior cases, to the extent they are inconsistent, should be considered overruled”
WRONG.
Read what Breyer EXPLICITLY stated about cases of precedence.
You now what to overrule what he explicitly said he was not doing.
“agreed that Diehr was not overruled”
cf
“and this portion of Diehr are overruled”
W
T
F
Not married.
My turn.
Are you saying that the Prometheus decision is flawless in its stated treatment and dependence on precedence, especially on what it calls the ideal case of precedence, and how it actually ruled?
“Obviously, this is patent eligible subject matter. ”
Obviously, only because you say so. It has the exact same “objective” level of patent eligible subject matter as Prometheus.
Exact.
UP, Prometheus is the first unanimous 101 opinion from the Supreme Court since Benson, but Benson was only 6-0, not 9-0.
I politely suggest that Prometheus is the gold standard of 101 cases, and that prior cases, to the extent they are inconsistent, should be considered overruled.
The portion of Diehr that suggested that novelty was not part of section 101 analysis has to be reconciled with Prometheus. What I suggest is that the central problem of this portion of Diehr is its suggestion, consistent with In re Bergy, that section 101 was a threshold issue that had to be resolved prior to addressing novelty and invention in sections 102/103. Clearly, the Supreme Court in Prometheus indicates that it may be important to conduct a novelty analysis first to determine what in the claim is new and what in the claim is old. The reason for this is that section 101 analysis is not so easily confined to a simple determination of whether the claimed subject matter falls within one of the four named subject matter categories. But that was the premise of Judge Rich's opinion in In re Bergy, followed by the Supreme Court in Diehr, that section 101 issues could be resolved prior to any novelty analysis.
suckie explain how it is an abomination
When did you stop beating your husband, suckie?
LOL.
If you do not have any clue about the legislative sources, just say so Ned.
Been there, done that.
Rather, it is you that displays the arrogance, continuing to think that your view is correct when time and again and by quite a few people, you have been shown to be in error.
Do you remember the story of the wrong way driver, wherein the driver that the whole world had gone mad and was driving done the one-way street in error? The reality is that you are that one single wrong-way driver.
The point isPrometheus is utter crrp, and no good can come from it. It is an abberation that should be expunged.
Any Way, you and your fellow sock puppets think a lot of yourself don't you? I invite you to actually read the patent, and then reread the decision, and rather than take up the invitation, you rely on the mistaken postings of your fellow posters here as proof that you are right. What arrogance.
Simple, I recommend that you read the Supreme Court cases I quoted.
And, I have agreed that Diehr was not overruled. So what's your point?
OK, let's appoint those Wall Street lobbyists to the Federal Circuit. They would "get the job done," just as much as Rich did.
"Using temperature to modify time to open a mold was old."
I'm not so sure that this in fact was true. However, the novelty was in the "continuous" monitoring of temperature the mold and adjusting the time to open the mold accordingly.
Obviously, this is patent eligible subject matter. I believe the reason the case was taken on up by the Supreme Court in the first place was because Stevens believed that the point of novelty was the use of mathematics in an old process. The majority did not agree. I agree with the majority.
It did so. It was a holding of the case.
This has been shown to you many times by many posters with far greater skill and patience than I have.
Let’s just take this as a proven fact and move on.
Even the Statute of Monopolies was not constrained to tangible things, nor was “manufacture” limited to “things.”
And further, since the US law is not solely based on what came out of England, it is pertinent to the discussion to understand precisely where this requirement of “tangible” comes from, if it comes at all (and not from the courts).
Remember too the critical difference in US jurisprudence of 101: “or any new and useful improvement thereof” which veers sharply from the English jurisprudence.
So, yet again, I ask, where, in the legislative history, does this “tangible” requirement arise?
Any way, "…it was the software that created the nontangible signal.
Should I really expect you to take an honest look at the case, when doing so means that your arguments elsewhere are void?
Here you are faced with a dilemma: accept that software changed the machine and thus software as a component is patent elligible, or renounce your entire new theory under Prometheus. (or better yet, both)."
Any way, I can see your problem with understanding Alappat. The corresponding structure described the specification was not software and had nothing to do with software. It was hardware. Circuits! You might want to actually get the specification of the application involved in the case, it has issued as a patent. The circuitry claimed, if I recall correctly, is illustrated in figure 3. This is all hardware.
Your misconception about Alappat is entirely related to your thinking that the case had something to do about patenting software. It did not.
result… portion…
It does not matter.
The same logic applies. Breyer explicitly said he was not overruling any precedence (or any part of the precedence). He explicitly said Diehr was the most on point case. You cannot overrule what you say you are confirming.
Your armchair announcement of post decision “overruling” is pure BS. There is ZERO legal foundation for such a view.
Not at all. It strikes me as the making of a judge who critically understands the very law he is judging.
On the other hand, who are you to carry such a vendetta? Your personal enmity is palpable and completely unwarranted.
Jepson claims to make progress.
That’s funny. Probably inadvertent, but nonetheless funny.
physical measurement of temperature was old.
Using temperature to modify time to open a mold was old.
Actually opening molds was old.
Ned, you have made no progress in your thesis.
The rasterizer itself in Alappat was old.
The machine was old.
The larger machine was old.
These are all historical facts.
The “point of novelty” (in quotes, since such use is not a workable proper legal concept), was in fact the mere nontangible aliasing signal. Or better yet, it was the software that created the nontangible signal.
Should I really expect you to take an honest look at the case, when doing so means that your arguments elsewhere are void?
Here you are faced with a dilemma: accept that software changed the machine and thus software as a component is patent elligible, or renounce your entire new theory under Prometheus. (or better yet, both).
A Landers, and then he stood as judge upon the law he wrote. Don't you see the conflict?
Diehr, "Ned: "If after determining whether the claim elements in a claim are novel (vis-à-vis the prior art using 102 prior art), and that the only novelty left is ineligible subject matter, at least according to the Supreme Court, the claim is invalid under section 101, not under section 102. "
Diehr Ned: Now, how do you reconcile that with Diehr?"
Simple, the novel subject matter in Diehr was not ineligible. It comprised a physical measurement of temperature on a continuous basis. That is eligible subject matter by any measure. Furthermore, the measurement was used to modify the time when the mold was to be opened, and the mold was actually opened.
Face, I agree that the result in Diehr was not overruled. But that is not what I said, was it?
Any way, but what you seem to ignore is that in Alappat the rasterizer itself was a machine, individual circuits, disclosed and claimed as part of a larger machine described as a display, in this case an oscilloscope. The point of novelty was not ineligible subject matter.
simple, Did you know that "manufacture" came out of England and the Statute of Monopolies? What are you talking about when you speak of "legislative history?"
Meaningless? Is it, SQ? In the patent law of the USA? You tell me. I hesitate in this forum to compare and contrast Jepson and c-i-t claims but I wonder, if we were to do we might make progress.
What I was thinking is that in the face of an admission to the court by the patent owner that everything in the claim is conventional except for the new thought then, in that peculiar situation, (and only in that special situation), the court cannot credibly wriggle out of the 101 job with which it has been seized.
Why the distinction between “old” and “old and conventional”?
“conventional” is meaningless in patent law, is it not?
So when MM is chased away Hans comes out to play!
In the states we have this funny notion that the law is supposed to work the right way, every time. Especially when it reaches the level of the Supremes.
BTW, choosing a quote from Ned Heller is not one of your brighter moves. The quote you chose is especially inapt as it reflects the magic application of 101/102.
I paste below something taken from Ned Heller above which helps me to reconcile the various authorities. Thus:
“Just for example consider the Prometheus claim, and further assume the examiner was not aware that the test for metabolites was old. If he could not find relevant art, he would grant the claim because the test per se is directed to clearly patentable subject matter. The wherein clause would be treated as explanatory subject matter.
However, the eligibility of the wherein clause became paramount once the metabolite test itself was admitted to be old and conventional.”
So, the claim owner concedes that everything in the claim except for the wherein clause is not only old but also conventional. On that basis, the court looks at compliance with 101 of that which is not admitted by the petitioner to be conventional ie just the new thought.
How special are these circumstances? Will they ever arise again? So why worry any more about 101 and the reach of the MvP decision?
I see. You are still evading the questions.
Malcolm will not address the issues because he cannot address the issues. He does not have the mental capacity to do so.