By Dennis Crouch
On his side of the blog, Professor David Hricik again raises the question of whether Section 101 can serve as the basis for a defense to patentability.
The basic notion is that the defenses to charges of patent infringement are listed in 35 U.S.C. § 282 and there is no statutory pathway for recognizing § 101 as such a defense. Hricik also discusses some amount of legislative history in drafting of the 1952 Patent Act that bolsters his conclusion. The Supreme Court approach makes sense then only by ignoring the statutory language and legislative history.
Other Posts:
- Hricik, Are the Courts Correct in Their Assumption that a Patent Issued on Non-patentable Subject Matter is Invalid?
- Crouch, Can a Third Party Challenge Section 101 Subject Matter Eligibility in the USPTO’s new Post-Grant Review Procedure?
- Kappos, PTAB and Patentability Challenges (responding to my post above)
- Crouch, Beyond Question: RMail Challenges the Use of Subject Matter Eligibility as an Invalidity Defense
There are a few potential legal challenges on this question that are rising through the process, including the Versata case (Inter partes (CBM) review on eligibility grounds). In Sinclair-Allison v. Fifth Ave. Physician (2013-1177), the accused infringer is counter-intuitively agreeing with Hricik that subject matter eligibility is not a validity defense but instead is an off-book “eligibility defense.” The point of the line of argument is that the presumption of validity shouldn’t apply to eligibility challenges.
Test
6, “It is most certainly not the results of a PET scan.”
What type of scanning technology was used is irrelevant. You still have not shown me a thought.
6: “They tell all about the methodology in the other paper.”
There is no other paper or study referenced or linked in that article .
6:|”collecting the electrical signals from the part of the brain that processes visual information and then displaying it in a manner similar to how the mind comprehends it.”
There is no link to any Harvard study and for the record you cannot collect electrical signals from the brain. You can record the signals but the signals do not show you a thought. Any such interpretation is purely subjective. And you cannot change that fact by calling me names.
6: I’ll move on to a topic that is worth discussing alright?
Like performing Integration Analysis? Discussing the ladders of abstraction? Proving your pre-emtpion theory? Oh wait, you can’t discuss those topics either. So never mind.
“But he can blaze away in glorious self-defeat and be the very first to post a link to the USPTO application of that decision that featured your integration rationale ..”
You are correct anon, as usual. Here is the link.
link to uspto.gov ]
The anti business method crowd err continuously by arguing that the Prometheus ruling was a new 101 test, when in fact the case was about post solution activity. The Court explicitly stated that they were not departing from precedent. Thus no new test was created or enacted. And all nine Justices agreed that the case most on point for what “is” patent eligible subject matter was Diehr. And Diehr’s claims were statutory because the claims as a whole were “integrated”. No anti can face or respond to these facts. They simpy “ignore” the plain words of the Court and commit the gross legal error of using post solution activity as a bright line test for 101 to invalidate or reject business methods, especially those methods aided or fully implemented by the use of computer software process. I hope the Court takes the opportunity in the Alice and Ultramercial cases to make it clear to all to follow the law and start considering all 101 claims as an “Integrated” inseparable whole.
You obviously didn’t look at the picture. It is most certainly not the results of a PET scan. They tell all about the methodology in the other paper. Follow the links ta rd. As to the harvard study the Harvard people did it by collecting the electrical signals from the part of the brain that processes visual information and then displaying it in a manner similar to how the mind comprehends it. And while you’re busy fumbling about trying to figure out what you’re even looking at I’ll move on to a topic that is worth discussing alright?
But he can blaze away in glorious self-defeat and be the very first to post a link to the USPTO application of that decision that featured your integration rationale and (shockingly) was completely barren of his [oldstep]+[newthought] pet ‘theory’
LOL
But they do kick up a pretty cloud of dust (another specialty of Malcolm’s)
MM: “My guess is that the in-house counsel for Prometheus lost his marbles after the decision and this is what’s left.”
What’s clear after Prometheus is that claims must be considered as an “Integrated” inseparable whole. A fact you nor any anti can refute or face.
“Did you even bother thinking before you typed that response?”
Maybe someone has a patent on that thought.
::Sarcasm Off::
PART II
Again, you are a neophyte in Neuroscience, and apparently, scientific
research analysis, or you would not be so easily hoodwinked. A thought is no doubt at the top ladder of abstraction. However a process for making a medical diagnosis based on reading scans from brain imaging technology, ( like the kind referenced) along with the computer software processes that are functionally tied to the technology, are eligible for patenting. Granting such patents will not
prevent anyone from thinking any thought they want. So all the
hysterics on “patenting thoughts” really needs to cease as such antics
have no place in science, technology or the law.
PART I
6, it’s obvious you do not have a background in Neuroscience or you would
know the short blog article you referenced is not showing a thought. What we
see briefly described are examples of brain imaging technology,
possibly Positron Emission Tomography (P.E.T.) imaging showing blood
flow in activated areas of the brain. Do not let an internet writers
science fiction blurb ( ..could display your dreams on screen )
confuse you. Live pictures taken of brain functioning do not tell
you what a person is thinking, or believing, anymore than a live
picture of a beating heart during opening heart surgery tells you if a
person loves or hates you. Such is an an anthropomorphic conception.
So yes, it is quite ridicules for MM, and apparently yourself to propose there is some type of risk that inventors will patent thoughts, when indeed it is
impossible to even show a thought. And no, drawing letters on the
pictures and claiming the pictures represent the letters is not
evidence because I can take those same pictures and draw any letters I want and subjectively claim that is what the subjects were thinking.
LOL – you are saying that you are going to see the actual thoughts during open brain surgery? That’s some pretty powerful eyes (or extreme imagination).
Did you even bother thinking before you typed that response?
Well if you want to see the actual land then you’re going to need to cut open the man’s brain and take a peek, it can be done.
Flook was cabined by Diehr Ned.
This has been shown to you many times now.
And the merry-go-round takes another turn.
You are both missing the point and missing the opportunity to acknowledge that the point I make means your ploy here fails.
Take the opportunity Ned to squelch your anti-method as a full category bias while learning how to apply case law in a more finely-tuned (and on point) manner.
The map is not the land.
“But, isn’t that the holding of Benson?“
LOL -Ned, need I produce (yet again) the critical quote from Benson about what EXPLICITLY that decision did NOT hold?
You owe me too many answers that are necessary as predicates to an intelligent discussion Ned.
But here is a point for your consideration: is something still abstract if ‘putting it on a computer’ involves developing an actual application?
(This distinguishes from the vague mere ‘on a computer’ smokescreen so often employed as an empty rhetorical ‘tool’ on this board)
And remember the item that you consistently refuse to acknowledge: anthropomorphication – machines really do NOT think.
Ned,
Learn not to conflate.
It appears that you willingly jump at every opportunity to conflate and thus seem to endlessly delight in confusing yourself.
I will ask a broader audience as Anon will not answer. In Alice, Rader closed his opinion with this:
“Taking … an abstract idea and simply
putting it on a computer is likely not entitled to patent protection. Section 102’s novelty or § 103’s nonobviousness requirements are the means to challenge a system claim that does no more than take a familiar, well known concept and put it on a computer.”
What does he mean when he says “putting it on a computer?” How does one put an idea anywhere?
Can I be so bold as to translate?
He is saying that using a computer to implement an abstract idea is not enough?
But, isn’t that the holding of Benson?
Actually, the quoted passage is a brilliant thought piece that dovetails well with our discussion here of 101.
The whole issue (from Morse onwards) according to DC Circuit devolves into scope and whether the claim is covering too much.
Conflate. Let’s revisit Rader in Alice:
“Taking … an abstract idea and simply
putting it on a computer is likely not entitled to patent protection. Section 102’s novelty or § 103’s nonobviousness requirements are the means to challenge a system claim that does no more than take a familiar, well known concept and put it on a computer.”
What is he saying?
Is he saying, in effect, that an abstract idea is deemed “old” within the meaning of 102/103? If he did, then he is exactly where the Supreme Court was in Flook.
“with the new and improved patent statute”
Did you really try to say that with a straight face Ned?
And you wonder why you have no credibility left…?
“Process patents must not necessarily produce a product.”
They must product something, anon. Or do you even disagree on that?
JNG,
I think the point is that while this decision does deal with revival, revival is an exception that proves the point.
Revival is not one of the things listed in 282, nor is it an item ‘made a defense’ by the words of the statute.
thanks for the note back
as I see it, the decision there though dealt just with revival; I don’t see where it says it applies to any other defense
now that doesn’t mean that it couldn’t – just that I don’t see it by itself as precluding a “violation of 101 is a defense” argument
“why can’t”
For the millionth time Ned – do not conflate. The different sections have different policy drivers.
By conflating you will only succeed in confusing yourself.
DON’T DO IT.
Correction: process was used to create a product and over-read
Ned,
Process patents must not necessarily produce a product.
Once again you show the bias that I have warned you about. You seek to misuse a case wherein a process was used to create a process an overread the law to demand a subservience that is not there in the law.
Process is an EQUAL category with the ‘hard good’ type of categories.
You need to understand this weakness of yours if you want to understand the law of 101.
Until you do, you will only confuse yourself.
Ned,
I told you previously that your supersized block quotes are not persuasive.
They still are not.
Cited with approval by Brenner v. Manson at note 2: Monsanto Chemical Co. v. Coe, 145 F. 2d 18 – Court of Appeals, Dist. of Columbia Circuit 1944
“But modern industrial technology is concerned with patents on ways of doing things rather than on the machines which do them. A patent on a formula or a way of doing a thing is tied down to no concrete model. It floats in the air like a balloon without moorings, capable of being blown in any direction by the currents of logic and analogy. Patents involving processes or formulae may be turned into monopoly claims on the body of technical information which control the progress of the industrial age of light metals and chemicals which lies before us. The control of a single chemical process may spread out in an ever-increasing radius covering every type of machine which uses the principle. He who has the exclusive right to use and prevent others from using technical principles necessary for the development of machines stands at the center of the inventive circle with power to lock up industrial progress and to obstruct the general use of modern science and experimentation.
It is for this reason that in many industries the careless extension of a patent on a formula or a way of doing things has already turned patents into instruments to suppress new inventive ability, new experimentation and new initiative. Industrial empires have been given power to suppress production and to organize domestic and international cartels through patents of carelessly defined scope which created a prima facie monopoly right over technical information. The shift from the old machine appliance patent to the new type of patents on scientific principles has gradually extended over the basic industries of our economy. It is imperative that we recognize that the change in the character of modern invention requires critical examination of the scope of each process patent in the light of evidence on the probable control which that scope may give in complex and unfamiliar fields such as chemistry.
The scope of a patent is not often discussed by courts as a problem separate from patentability. Yet we submit that this distinction is actually involved when courts deny a patent on a “function” or a “result” or an “idea”, and allow one on a method or a process or an application of a principle.[5] There is no clear distinction 22*22 between these opposing sets of words.[6] But it is apparent from the results of the decisions that when a court calls a claim functional it is simply saying that the claim 23*23 permits control which will impede science and the useful arts.[7] When it says the claim is a patentable method it in effect expresses the conclusion that the probable area of control is not too large. We are, therefore, asserting no new principle here. We are simply pointing out that such conclusions cannot be intelligently reached in our complex modern technology without expert evidence from men who know the industrial field and the probable control the inventor may reasonably expect or his competitors reasonably fear from the grant of a functional claim.”
anon, a process is not eligible unless the product it produces is useful and its usefulness is disclosed.
Brenner v. Manson.
However, note the vigorous dissent by Harlan which Douglas joined. Douglas? That has to be a mistake, right anon?, as it is well known to most that he had to have written Benson out shear spite and malice against the patent system.
link to scholar.google.com
Les, you make an excellent point.
anon, why can’t 102/103/112 give no weight to “new” limitations that do have a functional relationship to the underlying subject matter that is old? Why cannot the law require of a process physical acts as delineated by Government brief in Prometheus?
If I recite the combination of A and B, A being old and B being new, but where A and B have no functional relationship, and B not being a machine, process, article or composition, cannot one consider the claim to be old if limited to A, non statutory if limited to B, or a violation of 112, p.2, if the two claim elements are not functionally related?
I do admit there is a problem with the above in that 101 does sneak in.
LOL
+1
Nothing special about long claims at all. But Lourie did not declare the long claim per se to be abstract. Understood? He created an ad hoc 6 word reformulation of the claim a few paragraphs before he reconsidered and created a new and different ad hoc 14 word reformulation, and then declared each ad hoc surrogate in its turn to be abstract without explaining why each one of his little ad hoc straw men was covered by the definition of abstract. Because there isn’t a definition of abstract. In any case, the name of Lourie’s game ain’t the claim.
I believe someone mentioned “j*nk”?
Leopold,
Where are my answers?
I gave you your answers to your repeated questions within an hour and half and you keep me waiting weeks.
What’s up with that? That’s not very mature of you.
From the number one ‘clutcher of pearls’ (hint: QQ about those EV1L patents some more), this is just more of the lame-@$$ Malcolm oh-so-trite accuse-others-of-that-which-he-does script.
Y A W N.
Better tr011ing please.
Your ‘super’ English as a first language skills FAIL you again Malcolm – hint: try focusing on the ‘stripped down’ portion of the sentence.
I see that you have ZERO substantive reply.
As usual.
@ta boy
Ah so, Malcolm attempts the strawman spin for the thousandth time.
Y A W N
Sorry, but no Malcolm – the context here of applied math is applied to DO something – thus, stuff in the mind (or your bogus purely mental strawman STILL fails).
Put.
The.
Shovel.
Down.
“The problem I see is how this would work only as a 102 matter“
CRIMINY NED – STOP CONFLATING.
You do not and cannot transform 101 into the other sections of law.
A long claim was stripped down by Lourie to a six word “abstract idea”
Is there something special about “long claims”? Is the lenght of a claim proportional to its eligibliity or something? I can imagine some naive person believing that. In fact, it would explain the long-windedness of a lot of computer-implemented j*nk that gets filed.
the perception, if not fact, that the moderators would not meet any ‘net-neutral’ standing should raise eyebrows and more than a few concerns.
Clutch those pearls, TB! Maybe someday this blog will be as devoid of bias and filled with 100% pure truth, just like Genie Baby’s awesome blog.
In the meantime, keep clutching those pearls, as hard as you can.
The minute you use math for a purpose – the minute you apply it – you jump to the realm meant to be protected by patents.
Ah, so you do believe that purely mental processes should be eligible for patenting. I’m glad we finally got that straighted out.
What some here refuse to acknowledge is that the practice of business has become scientific.
What some here refuse to acknowledge is that software is a manufacture, a machine component.
These truths are plain to see and their simplicity survive all manners of obfuscations and dust-kicking.
Patent Jeebus has returned from the mountaintop! All praise the Great One.
anon, if a product is known or of nature and even if the product of nature is discovered by the applicant, the Supreme Court has held even since the 1880s that one can only patent its use, or some other incidental process to isolated or use.
But, since Myriad, this rule is reaffirmed as good law.
The problem I see is how this would work only as a 102 matter if 101 is not grounds for invalidity in court and given the repeal of 102(f).
I hear you Les – but you have to take that up with the Court and their implicit making up of law, er, um, of reading the law…
To them, something more than mere ‘discover’ is required. You not only have to do more than merely discover it, you also have to do more than merely say apply that which was discovered. You need to actually come up with an inventive way of applying it, or doing it. And since you cannot ‘apply’ or ‘do’ a product (it just ‘is’), a product that is merely (or effectively) just something in the warehouse does not count.
In any event, discovering the utility of say, naturally occurring aspirin, is apparently discovering the “law of nature” that says aspirin reduces inflammation or what ever else it does. and discoveries are patentable according to the statute, and I respectfully submit, there is nothing to discover BUT products and laws of nature.
No court ruling is good if it ignores that statute. Might don’t make right. And you didn’t answer the question. What is there to “discover” other than products and laws of nature? If you believe, as I do, that there is nothing to discover but products and laws of nature, then you must agree that the statue clearly indicates that products and laws of nature are patentable.
I think the Boys at Bayer would agree.
Utility as in ‘use’, Ned?
Remember – if you invent a new use, you can still obtain a method patent (if you meet the rest of the legal requirements). You cannot ‘own’ the actual item (or its effective equivalent), if that item is in the warehouse of nature.
And remember – this is not a timing policy.
Sometimes one. Sometimes Both. Not sure what your point is.
LOL
Please post my answers on the correct board, Leopold.
Thanks
If Brenner v. Manson is good law on the issue of utility, then the mere discovery of a product (of nature) is not patentable.
Les, Does one discover the product of nature or does one discover its utility?
Oops – sorry. Wrong board.
Thanks for the more detailed explanation, Mark. That makes a lot of sense.
“If one claims a product of nature, this is a matter for section 102 which formally included, but which does not now include, a prohibition on patenting things one did not invent.”
Does the phrase: “Whoever invents OR DISCOVERS” ring a bell, Ned?
What is there to DISCOVER but products and laws of nature? The new Star Bucks on the corner?
Thar sheee bllllooooowsss…..
(It’s National Talk Like a Pirate Day)
LOL – that was a ‘I don’t know for certain, but given his experiment posting with a different pseudonym from a different ISP, and the asserted failure in being able to post even a simple ‘test’ message, what do you think’ answer.
My perception is yes, most definitely he is being blocked.
But that’s just a mere perception, nothing more.
So, was that a yes or a no?
Both you and I have first hand knowledge that the editing on this site is not content-neutral, and given the failed ‘expletive’ test of my own above (I which post material far worse than anything that 101 Integration Expert ever posted, the perception, if not fact, that the moderators would not meet any ‘net-neutral’ standing should raise eyebrows and more than a few concerns.
But the site belongs to the good professor, and he can do what he wants (whatever the consequences, or views of the discerning public).
C’est La Vie
Across the board, what percentage of posts from Malcolm are nothing but snide remarks, strawmen, misrepresentations of fact, misrepresentations of law, misrepresentations of what others post, accusations of others of that which he does, or other pitiful poor blogging posting techniques?
Why do you think we don’t see 101 Integration? Do you think he is blocked as he contends?
Somehow I expected a snide remark from you.
on the shadow board Mark Lemley was posting
Was this in Technicolor, or black and white?
Indeed. Truly “revolutionary stuff” that nobody could have predicted, in the abstract generalized sense. We can see your dreams! And wait for it … one of those dreams involves an old acquaintance … a blood relative … his name is Ramon … he needs something … it’s directions to a movie reissued in 3D … and an available parking space … and all of this information is transmitted to you through … two machines separated wirelessly! CAN I HAS PATENT NOW?
“and he explains why in a persuasive manner”
Your reading skills really svck – you missed this part: his writing is nothing more than academic gobbledygook masquerading as an attempt to desperately find some statutory toe hold. It is internally inconsistent and unworthy of attention.
“Again, that’s what I said.”
Yes, you said the spin I idnetified and missed this part: it is the exceptions that rule the day – If you eliminate the judicial doctrine to begin with, then the exceptions would apply even more powerfully and you wouldn’t like that – at all. As you say, be careful of what you ask for
What’s ‘funny’ is your showing of that special ability of yours with English as a first language.
You spin so much, you simply don’t now which end is up.
Can you you show me a thought?
link to gizmodo.com
Also they did something similar in a Harvard study.
So you say, and I appreciate that. I look forward to my lulz when a judge disagrees with you. Been good talking Ned.
Apparently not all the kinks have been worked out. This morning I ended up here in the public site.
Check your j*nk mail folder, LB. The General sent out the new passwords early this morning. We missed you today. Colonel L told a great joke about you-know-who.
Can you you show me a thought?
Didn’t think so.
Nuff said!
My guess is that the in-house counsel for Prometheus lost his marbles after the decision and this is what’s left.
6, the issue has never been litigated and decided — at least no the 282 bit.
Sent from Windows Mail
I thought your whole sphele was that it wasn’t grounds for rejection at the office OR invalidation at the district courts.
I guess if you’re giving up on 101 being a grounds of rejection at the office then that is a step in the right direction.
Still, there are hundreds if not thousands of 101 cases before the DCs that provide ample stare decisis for the district court invalidations as well.
But, again, gl with that whole line of “reasoning”.
This is my final post on the subject, have your final say and let’s call it a thread.
6, but there may be a difference between the PTO and the district courts. 282 applies only to the latter. Benson and Brenner came out of the PTO.
Sent from Windows Mail
For some reason ned my comment keeps getting eaten. Suffice to say: gl with that line of argument. That isn’t how stare decisis works, and furthermore, the actions of agencies have minimal if any impact on stare decisis when an issue is finally brought to a court for the first time.
“Furthermore, the statutory construction issue has never been litigated and decided and therefore there is no stare decisis. ”
I’m sorry Ned, but Benson, and all the rest of the 101 cases provide stare decisis as to 101 being a grounds of rejection or invali dation. Just because some los er hasn’t gotten up and said “But but but Freddy said back in the 50’s…” doesn’t mean that stare decisis doesn’t end the statutory construction. I literally cannot believe that you would bother to suggest otherwise.
But be my guest to was te your money in the courts over this issue. You’ll be paying for my l ulz.
“But even the Supreme Court found that the long history of the PTO issuing patents on DNA was not sufficient when the legal issue of their eligibility was finally litigated and decided.”
Actions of administrative agencies have minimal, if any, effect on stare decisis.
“Furthermore, the statutory construction issue has never been litigated and decided and therefore there is no stare decisis. ”
I’m sorry Ned, but Benson, and all the rest of the 101 cases provide stare decisis as to 101 being a grounds of rejection or invalidation. Just because some los er hasn’t gotten up and said “But but but Freddy said back in the 50’s…” doesn’t mean that stare decisis doesn’t end the statutory construction. I literally cannot believe that you would bother to suggest otherwise.
But be my guest to was te your money in the courts over this issue. You’ll be paying for my lulz.
“But even the Supreme Court found that the long history of the PTO issuing patents on DNA was not sufficient when the legal issue of their eligibility was finally litigated and decided.”
Actions of administrative agencies have minimal, if any, effect on stare decisis.
“Furthermore, the statutory construction issue has never been litigated and decided and therefore there is no stare decisis. ”
I’m sorry Ned, but Benson, and all the rest of the 101 cases provide stare decisis as to 101 being a grounds of rejection or invalidation. Just because some loser hasn’t gotten up and said “But but but Freddy said back in the 50’s…” doesn’t mean that stare decisis doesn’t end the statutory construction. I literally cannot beleive that you would bother to suggest otherwise.
But be my guest to waste your money in the courts over this issue. You’ll be paying for my lulz.
“But even the Supreme Court found that the long history of the PTO issuing patents on DNA was not sufficient when the legal issue of their eligibility was finally litigated and decided.”
Actions of administrative agencies have minimal, if any, effect on stare decisis.
I think we are in steerage.
Malcolm, perhaps not – and neither was Judge Rich. I wonder if are going to have more luck with the new and improved patent statute.
Good post, 6. But it is interesting that the statutory language is consistent with Frederico's testimony and commentary, not inconsistent.
Furthermore, the statutory construction issue has never been litigated and decided and therefore there is no stare decisis. The fact that the courts had assumed something to be true which is not true in fact may be worth consideration if substantial rights are dependent upon the prior assumption being correct. But even the Supreme Court found that the long history of the PTO issuing patents on DNA was not sufficient when the legal issue of their eligibility was finally litigated and decided.
I think the Supreme Court will be definitely interested in whether confining patentability of validity to 102/103/112 is constitutionally permissible. This will of course involve a consideration of whether the statutes are sufficient to address eligibility issues.
Then ask him what he means by new thought process (as I am sure that he is not thinking…, well, not thinking about the same thought proess with varying content).
LOL – On Malcolm’s different world, machines think and that may be what he considers a new thought process.