Guest Post by Robert R. Sachs of Fenwick & West LLP; Read Part I
Yes, I said that: the Court does not understand the nature of patent law—more precisely, it does not understand what claims do. Reading the Court’s treatment of Prometheus’ claim, one would think that claims are some type of qualitative instruction manual, a recipe that speaks to “audiences” such as doctors, about which things are “relevant to their decision making.” Claims are no such thing: they are definitions that articulate a specific combination of steps or structures. They are objective in form and design, not subjective or advisory. The notion that the claims here “trust” doctors to “use those laws” is at best silly, and at worst badly misguided. Reducing the claim to this “instruction manual” allows the Court to analogize the claim to Einstein “telling linear accelerator operators about his basic law”—a low point in modern legal reasoning.
In this decision, as well as in Bilski, Benson, and Flook, the Court simply does not “get” what claims are about. The entire preemption analysis, born of a conflation of “algorithms” with “scientific truths” in Benson, is based on this misunderstanding. By definition claims preempt, that is what they are designed to do: to preclude one from making, using, selling, etc., the invention. A broadly drafted claim preempts broadly. And it is this further confusion—between “breadth” or “abstraction” and “abstract ideas”—that is the second damaging mistake the Court made (and continues to make).
The core principle that claims are “abstractions” was recognized many years ago:
The physical embodiment or disclosure, which, in itself is something tangible is confused with the definition or claim to the inventive novelty, and this definition or claim or monopoly, also sometimes called "invention" in one of that word's meanings, is not something tangible, but is an abstraction. Definitions are always abstractions. This primitive confusion of "invention" in the sense of physical embodiment with "invention" in the sense of definition of the patentable amount of novelty, survives to the present day, not only in the courts, but among some of the examiners in the Patent Office.
Stringham, E. Double Patenting, Washington D.C. Pacot Publications (1933) (emphasis added).
Claims are abstractions, but that does not make them abstract ideas. For example, consider the following claim:
1. A method, comprising:
freezing a volume of water into ice;
granulating the ice;
compacting the ice; and
applying a sweet liquid to the ice.
Now this claim would—at least until the Prometheus decision—have qualified as patentable subject matter, even though it recited the use of “freezing” which is a either a natural phenomenon (yes) or according to this Court, an almighty Law of Nature. But I will not address that problem yet. Now consider this claim:
1. A method, comprising:
freezing a volume of liquid into a frozen portion;
granulating the frozen portion;
compacting the frozen portion; and
applying a sweetener to the frozen portion.
What have I done? I have done what every patent attorney is trained to do: to “abstract” the claim, to generalize it, to broaden it. Instead of “water” I now claim a “liquid;” instead of a “sweet liquid” I now claim a “sweetener.” Where the claim before covered sno-cones (the “sweet liquid” limitation), it now more broadly covers ice cream with fudge swirls. Is anything here an abstract idea? Hardly.
And this reveals the Court’s other blindness: as patent attorneys, we do not seek to draft claims that read on “abstract ideas” or mental steps. The Court’s suggestion that patent attorneys engage in “drafting effort[s] designed to monopolize [a] law of nature itself” is absurd. We draft claims that read on actual infringers in the real world. Intentionally drafting a claim that read on an abstract idea or a law of nature per se would be foolish at best and malpractice at worst, for there would be no infringers. No one makes, sells, or uses an abstract idea. Judge Rader understands this, when he states in RTC that “inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract”.
Patent-Eligibility vs. Patentability
The third critical mistake the Court makes is to intertwine the analysis of patent eligibility under § 101 with analysis of patentability (novelty and non-obviousness) under §§ 102 and 103.
The Court makes repeated reference to how the Prometheus claim recites “conventional activity,” and that “post-solution activity that is purely conventional or obvious” cannot transform an unpatentable principle into a patentable process. The Court observes that these conventional steps “add nothing significant beyond the sum of their parts taken separately.” Finally, the Court suggests that it is proper to ignore claim limitations and boil the claim down: “a process that focuses upon the use of a natural law [must] also contain other elements or a combination of elements, sometimes referred to as an “inventive concept.”
These statements are a sharp departure from the current regime of claim construction, and indicate a return to several repudiated doctrines. Until March 20th, it was black letter law that one considered the claim as a whole, that a court was not to dissect the claim into individual elements and treat each one separately. Indeed, for all the Court’s reliance on Diehr, it ignores one of the core holdings of that case:
In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.
This dissection is precisely what the present Court does. But it gets worse. Why does the Court ignore Diehr’s injunction? Because they essentially overrule the immediately following statement of law:
The “novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the §101 categories of possibly patentable subject matter.
Just as the Court in Flook inappropriately dissected the claim there and having removed the “mathematical algorithm” found the remainder to be unpatentable—so has the Prometheus Court found the alleged law of nature, and then disregarded the remainder as either data gathering or post solution activity. And this entire approach is exactly what Diehr said not to do. Now, I’m not one given to histrionics, but really: OMG! This is huge!
Second, the Court’s reference to the “sum of the parts” analysis reprises the notions that there must be some synergy present in the claims in order to qualify for an invention—an analysis that has always been tied specifically to non-obviousness, not subject matter.
Both of these vectors will lead district courts astray, for they incorrectly bind a category decision—is the invention the kind of thing that is patentable—with a quality decision—is this invention different from the prior art and by how much. Courts will be looking for the “inventive concept”—what makes the invention different from the prior art—when trying to assess whether the invention is type of patentable subject matter, a “process, machine, manufacture, or composition of matter.” As I said before: not even wrong.
Worse, the Court’s treatment of patent-eligibility supports the view that § 101 is a gatekeeper analysis that must be decided before a court considers §§ 112, 102, and 103. This is particularly dangerous because it contradicts judicial economy: if a patent claim can be readily disposed under § 102 as being entirely anticipated, then that analysis should prevail, rather than heading into the swamp of patent eligibility. Indeed, the Court itself recognized that “judges are not institutionally well suited to making the kinds of judgments needed to distinguish among different laws of nature,” and yet then nonetheless leads them to right to the edge of this morass.
What is especially Kafkaesque is the Court’s intimation that analysis under §§ 102 and 103 is somehow significantly more uncertain than under § 101:
And to shift the patenteligibility inquiry entirely to these later sections risks creating significantly greater legal uncertainty, while assuming that those section can do work that they are not equipped to do.
There could not be “greater legal uncertainty” than the Court has created by this decision by this decision and Bilski. Patents which only last week had utterly ordinary, run of the mill, Landis on Mechanics of Patent Claim Drafting-certified claims are now suspect, merely because they do what every claim ought to do: comply with the laws of thermodynamics.
No one is suggesting that patent-eligibility be “shifted” to §§ 102 and 103. Rather, the suggestion is one of judicial economy: courts and juries are finders of facts. Sections 112, 102 and 103 are all grounded in facts: is the specification enabling? What does the prior art disclose? What is the level of ordinary skill in the art? Would the invention be ”obvious” to that person? These questions are answerable—in principle and in practice—based on a factual record. What a court is “institutionally well suited for” is making judgments based on evidence from the past and the present, and this is precisely what §§ 102, 103 and 112 focus on.
But § 101 is different in kind. Any bright line test will by its nature, be both under- and over-inclusive, because we simply cannot know what will be invented next. If we learn anything from history, it is that we are particularly bad at predicting the future, and especially the future of technology. Yet that is precisely the task with which the Court has now saddled every district court, and especially the Federal Circuit.
The Court seems concerned with preventing § 101 from becoming a “dead letter” should courts use the instruments of §§ 112, 102 and 103 to evaluate patents. Again, the Court does not understand the relationship between these sections from either a practical or a legal point of view. When a court is troubled by a claim as appearing too “abstract” or “preempting” all uses in a field, those are real clues that there is something else wrong with the claim. To the extent that a patent claims so broadly as to encompass subject matter that is old—as the Court certainly stated here—KSR provides a strong mechanism for addressing that problem. A claim that appears to be so broad to cover any possible way of practicing an invention will almost assuredly read on the existing ways of solving that same problem, and lack novelty. A patent examiner and a court can readily compare evidence from the prior art to a patent claim and judge its novelty and non-obviousness. Similarly, whether a patent claims more than the inventor has disclosed or enabled is a question that is judged on the evidence of the specification and the knowledge of those in the field. Again, a patent examiner or court can review such evidence and evaluate it under the defining law. Thus, § 101 is not at risk of becoming a dead letter. Rather, it simply serves a limited purpose given the acknowledged capabilities and limitations of our court system.
Tomorrow: Conclusions Masquerading as Analysis, and So Long Technology, Hello Business Methods!
“How about all of chemistry?
Compare the mass of the hydrogen atom to the combined mass of a free proton and a free electron. Compare the masses of the reagents and products of any chemical reaction. It’s a smaller difference than in nuclear fusion, but it’s observable.”
Like I said, some physics should be reqed for the bar.
Ned, your reply does not make sense. Or you making a statement or asking a question?
Well, according to the statute below I can invent a new process.
If I am wrong please explain why, based on the statute below.
And according to the statute cited below a process includes a new use of a known process, machine, manufacture, composition of matter, or material.
Again if I am wrong please explain why, according to the statute.
35 U.S.C. 101 Inventions patentable.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
35 USC § 100 – DEFINITIONS
(a) The term “invention” means invention or discovery.
(b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
(c) The terms “United States” and “this country” mean the United States of America, its territories and possessions.
(d) The word “patentee” includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.
(e) The term “third-party requester” means a person requesting ex parte reexamination under section 302 or inter partes reexamination under section 311 who is not the patent owner.
The diagnostic industry could have benefited from requesting a re-exam of the patents at issue. They could have tried to “kill off” the patents based on a simple 102/103 rejection.
Had they succeeded, they would have been better off. The SCOTUS decision makes things very murky for the diagnostic industry.
Balder, tell me, have you read the brief? You seem to be in denial.
“The Comments: no comment.”
Ned: smartest thing you have said in quite a long time.
Your “nutshell” is wrong. You are making things up.
Balder, read the government brief. I was responding to a comment about its position. That's what it was in a nutshell.
The Comments: no comment.
“it is that a mental step is not a process step because it is not physical.”
Wrong. Pure and simple. Mental steps are fully recognized as preocess steps. There is no such anti-mental steps doctrine.
Stop making things up.
Two, yes it did. And to the extent you do not understand the government position, it is that a mental step is not a process step because it is not physical. It does not count for novelty purposes. So adding a new mental step at the end of a old process does not render claim new.
AI, so might he discover it.
Regarding Parke Davis, I provided a quote and a link.
Regarding Phenomena, find the case that defines what that is. Look, actually to the case the Supreme reference and which I cite as well. Le Roy v. Tatham.
Really? I had no idea that (H+) + (e-) -> H involved a mass/energy conversion. I guess you must get it back going the other way? Does that also happen in chemical reactions? I know there's a change in Gibbs free energy between reactants and products but is there also a corresponding change in mass? Since Gibbs free energy is the difference between enthalpy and temp*entropy, does that mean a change in mass involves a change in entropy as well?
IANAE, please stop.
Chemical bonds are not ruled by nuclear reactions.
Stick to what you are good at. Like subverting patents for infringers’ rights.
Not in the least.
Can you tell me why?
“”non-specific utility” was simply not the issue with the Prometheus claim”
I never said it was.
It was you who raised the concept of pre-emption, I just thought I would discuss it with you.
The issue in Prometheus was a complete lack of SS&C utility, as the “invention” disclosed in the claim was wholly inoperative relative to the express assertion of utility made in the preamble of the claim and elsewhere.
101 fail.
I have the sense that you are a student fishing for information for an upcoming paper. There were no blogs when I was going to law school, and I am wondering how big a role they play in current education…any experience with this?
Any examples?
How about all of chemistry?
Compare the mass of the hydrogen atom to the combined mass of a free proton and a free electron. Compare the masses of the reagents and products of any chemical reaction. It’s a smaller difference than in nuclear fusion, but it’s observable.
You write that you “cannot get a claim for a medical method”. So that’s why the claim is characterized by the thought, because that’s the only thing that’s arguably new. The level of claim-drafting skill involved is dazzling. Thus: frame your subject matter as a method claim to get over 101 and then use absence of the thinking step from the published prior art to ride roughshod over 102 and 103.
Or did you think that, when I wrote “target” I meant “subject test person”? Look, I was writing about a target range of metabolite. Does that change your answer?
The comments have not failed.
We are engaging in a sit-down strike because you are ignoring the contents of the comments and blundering poorly in your “understanding” of the discussion.
You have offended our sensibility and we refuse to cooperate with your BS.
“From what you write”
No.
From what I write you cannot specify the target because you cannot get a claim for a medical method.
Vastly different from what you say I say.
I am not impressed with your strawman reappraisal of our exchange.
As to not wanting to apply the Heller logic, I don’t blame you. I put it that way to stress the inanity of that logic. Now, I am off to shower again.
LOLS.
It is apparent that half-baked and overbaked mean the same thing with the What-Ev philosophy.
But I don’t want to apply the Heller logic. I just want to know how meaningful is the 230 to 400 range in the claim, and whether it can be said to be a law of nature.
From what you write, it seems to me you can specify as the target most any numerical range you want, just by a judicious choice of the metabolite level test parameters that you specify for the level test.
In which case, no wonder SCOTUS was not impressed.
Regardless of this dicta
I love when people who know better set about to reclassify a critical holding into mere dicta.
I appreciate the nice bright line guidance to identify claptrap to ignore.
“Ned, can you explain where Diehr is said to be overthrown?”
No. It has not been.
Arguably a new use would be a new result. But Ned is still wrong as a new method can be invented to provide the exact same end product (result).
Does no one actually read what the analogy was for?
Multiple curves per man and woman (other factors involved, sleep, eat, etc.).
No need to take at different times if your aim is to compute a curve.
Curve plotting is math, and yes a law of nature (underlying metobalism is still controlled by nature.)
Apply the Ned Heller logic: Prometheus was a medical method. Prometheus was ruled not patent eligible. Medical methods are categorically not patent eligible.
Malcolm is pure nonsense. The Government is not saying what you are saying.
“The “major dispute” is not over the “law of nature” exclusion.
It is over the “natural phenomena” exclusion.”
Repeat after me: What-Ev
If you plot the concentration of metabolite with time then, is there one curve for the 100kg man and a different curve altogether for that 50kg woman of yours? In other words, should I take the metabolite reading at different times for different sized bodies, to get the value that is meaningful?
Is that too a law of nature?
Chef you are in the wrong oven. You should be over in the claim construction thread. But hey, everything’s connected.
Agreed, Ned. There is no substitute for 1) understanding what the invention and its competitive advantage are, and 2) how to properly draft claims to only cover that which is essential to those.
Not sure that the USPTO test is the vehicle — I’d guess they’d be happy with the candidate merely drafting claims that met 112. But one thing that the old test did (at least for me) is motivated my education in claim drafting.
I think you misunderstood (little wonder, given how I stated it — “the fundamental analytical tool” is obviously an overstatement). I’m not saying Freeman-Walter-Abele is the operative 101 test — that is of course “discredited” as you say.
What I am saying is that its posed question of “What did Applicants invent?” seems to be the first step of this case and Bilski (and the older three if I remember correctly), followed by the pre-emption question if a law of nature nature/abstract idea/mathematical algorithm is implicated. Whether the results of the pre-emption analysis in those cases are consistent or can otherwise be reconciled is a matter of opinion.
MM:
A method of optimizing a snow cone, comprising:
putting ice in a cone,
pouring colored, flavored liquid over the ice,
observing the color intensity of the ice, and thinking that more of said liquid is needed if the color intensity is less than X.
AI: Let’s see.
Its a process.
It has physical acts.
Requires at least one apparatus, which is stated in the claim.
This is a statutory claim. There is nothing in any case law including Prometheus that says other wise.
NWPA: “Ned, this isn’t over and Bilski was hardly a win.”
Simple, well spoken truth. And all likely lost on Ned.
Ned: An inventor can invent a new use of an old process. Never forget that.
Ned, whats important to understand and remember here is that this case is limited to laws of nature exceptions, at best and can’t apply to all processes, business method and software included. Therefore claims as a whole still stands and has NOT been overturned
Basically every position you have argued for and lost is still defeated for now.
Rodander,
I fail to see why. Prior to Prometheus, Abele has been a discredited case to serve as an example for many years. I do not think Prometheus is a case of caliber to reinstitute it. As for your comment of “is also consistent with the Court’s prior decisions on 101,” you’ll forgive me for just not believing you, as the Supreme Court cases themselves have not been consistent on 101.
In other words, I don’t buy your answer to “why.” I don’t see a credible reason (yet).
Ned Heller,
Are you for real?
The “major dispute” is not over the “law of nature” exclusion.
It is over the “natural phenomena” exclusion.
I realize certain people get a bit happy with the “What-Ev” line of thought, but don’t get sloppy and refer a conversation to the wrong exclusion.
And please provide a pincite to the Parke Davis case for your proposition (and distinguish it from teh consensus view that that case held to be patentable the item must be new in kind). In other words, I do not think you can say the case opined what you say it does. In fact, the general view is the opposite.
Thank you. It will be difficult to forget how very smart you seem to be.
“Does that sort of thing happen often?”
Yes.
“examples?”
link to fnal.gov
Browse the rest of the site at your leisure or find the fermilab special on ur netflix. It is called The Atom Smashers.
link to worsleyschool.net
I found you one for small children where they didn’t bother to break it up into the difference but just left it as E=mc^2 and said you can predict it with that. Just fyi, you predict it by taking the difference. If you want further “authority” on that you can look it up yourself. I don’t have all night.
“I mostly associated E=mc**2 with energy produced as a result of fission or fusion. ”
You do know what fusion entails correct? Two particles being forced together, aka collided, ring a bell? As in, in the sun, in a linear accel, or a fusion (not a normal fission) power plant?
Physics classes should soooo be reqed for the bar.
OK, I see your point. But “non-specific utility” was simply not the issue with the Prometheus claim, at least as presented in the Supreme Court (I haven’t followed the litigation before then).
Bilski also followed the approach I outlined — the claim was to a process in the broad sense, but not to a patentable process.
If you are saying that the Court should have decided Prometheus on those grounds, rather than how it did, OK. You and I have then been talking to each other about different things, so little wonder we haven’t gotten anywhere.
Red, because in the Gene Patents thread we are having a major dispute as to whether the "law of nature" exclusion extends to include compositions of matter found in nature. I think a law of nature is entirely different than a composition of matter. A patent may issue to a practical application of a law. But compositions are the practical application and the statutes expressly state that one may have a patent when one discovers a new composition of matter. There simply is no exclusion based on where the composition was at the time it was discovered.
L. Hand, of all people, in the Parke Davis purification case, opined that the unpurified adrenaline itself could have been patented. That unpurified adrenaline was a product of nature.
If Hand thought so in 1911, I think it can be said that at that time it was generally thought to be the case.
Where the thinking evolved that one could not patent a composition first discovered from nature is beyond me. In fact, the recent Hemcon case described just this phenomena. The patentees there identified a compound in the legs of diatoms, creatures of the sea. They patented that compound itself because they found it remarkably good at treating wounds. No one ever thought that that compound was unpatentable just because they found it in diatoms, an animal of the sea.
This issue is critically important for the Myriad case just remanded by the Supreme Court.
rodander–
“pre-emption” = non-specific utility, 101 fail
You are wrong in your understanding that “pre-emption” applies to “inventions” that are “useful”, for one of the utility criteria is specificity…”pre-emption” describes the effect of upholding as valid a claim that has an insufficiently specific statement of asserted utility.
“law of nature” = gobbledygook
We are not here talking about a signal, but about the process of generating and possibly transmitting a signal. Notwithstanding the abhorrent fact that the courts feel free to treat a claim in 1 category as a claim in another category, a process is well within the process category.
Think about this: does a claim that describes the process of generating one or more signals disclose eligible subject-matter under 101?
I suppose if that happens it might be applicable. Does that sort of thing happen often? Any examples? I mostly associated E=mc**2 with energy produced as a result of fission or fusion.
Yes, I think so. It's things like "all bodies exert gravity" and stuff like that. Why?
Night, I think you are following a red herring. Regardless of this dicta, I think the real point is that the claims must be tied to a new result. They cannot claim a principle in the abstract.
Morse did claim a new result. The problem is, that is all he claimed.
Red, did you understand what they had in mind when they talked about laws of nature?
Rodander, in my experience, a lot of the problem is including in claims unnecessary limitations. Very unnecessary.
Many, if not even most, patent prosecutors today appear to be virtually incompetent in the way they draft claims. The term uneducated or under-educated comes to mind. Mixing statutory classes at will, functionally describing everything, explaining how things operate when that is entirely unnecessary, and so on.
The patent office needs to up the testing of wannabe patent agents in claim drafting before they affix the stamp of approval on these boobs. It is a embarrassment, really.
I took the agents examine sometime in prehistory. However, IIRC, someone here recently said that the PTO no longer requires the drafting of claims in its tests?
This has got to be a big mistake, if true.
Really when you collide two particles in a linear accel. and the generate a shower of sub-particles and energy you do not use E=(the mass difference between the particles generated and the parent masses)c^2?
Because I’m pretty sure that is the correct formula. If my recollection from the special on Fermilab, and those few years I spent in physics classes is complete.
Dennis, the show more comments link in the Gene Patents thread has failed.
Bingo, Bang.
Patent litigators have the advantage of an accused product/method in front of them. Patent prosecutors don’t — we don’t know what the infringing products/methods look like when we write the claims.
Just give the litigator a narrow claim that covers all competitive products/methods, say 10 years later. That’s all. Easy breezy. /sarc
Ned?
Try Malcolm, and the US government. See, its amicus brief in Prometheus.
Because it seems that is what the Prometheus decision did. Again, Breyer is not the most succinct writer, but he talks about the “discoveries”, and “the patent claims seek to embody this research in a set of processes”, “Prometheus’ patents set forth laws of nature”, etc. And then he looks to see how the law is claimed (i.e., whether the claims add enough to qualify as patent-eligible processes that apply those laws).
That approach is also consistent with the Court’s prior decisions on 101.
And I’ve found that it is a good test to keep in mind as I’ve written claims and specifications for algorithm cases.
I (sort of) see where you are going with the signal. And I would agree that the additional steps of generating and transmitting a signal responsive to the determining step (or corresponding to the “whereins”), and controlling a drug-administering device responsive to the signal, would definitely meet 101.
But merely generating and transmitting a signal responsive to the determining/whereins? Maybe so, maybe not — the problem, again, is pre-emption of the law of nature.
I don’t see how utility enters into the analysis under the case law. As I understand it, pre-emption of a law of nature is an exception to 101, and as such applies to inventions that are 1) useful, and 2) in one of the four categories.
The Nuijten case, as I read it, found that transitory signals per se do not land in any of the four categories. Utility was not a question, nor was pre-emption.
But I may be missing your point. Clarify if you’d like to keep this discussion going (it is helping me think through this).
Nathan, is that you? I’m really enjoying your cookbook.
There’s no difference in terms of “what temperature is done”. For beef (e.g.), a center temp of ca. 51°C is a nice medium rare (no matter the size of cut), and ca. 70°C is going to be well done (for any size, again).
Now of course, the cooking times may vary depending on the size/thickness of your various joints of beef. This may be analogous to the idea that a 100 kg man needs more of a particular drug than a 50 kg woman. But both get the same amount of drug expressed in terms of mg drug/kg body weight. (Cooking times are very analogous to this, mins cook time per kg meat weight.)
Can I get some rolls with that?
I’m grateful. I had supposed that a piece of beef weighing 20lb would yield a lower temperature in the middle of it than a (much smaller) 3lb joint. But, on reflection, I suppose not. (I’m no cook).
“Now some of us think the problem is not law of nature, but a claim ending”
Translation: the inferior us = Ned and Ned only.
Some of one is one.
One is such a lonely number.
That’s funny, I haven’t heard anything (truthful) from you.
“I’m grateful. I like the thermometer example because every joint of meat is different, like every patient body is different, so every temperature reading has a different significance for that particular joint.”
No, or not in any way that is useful to your arguments. While it may be true that every joint of meat as between different species of animals (chicken vs. grizzly bear, venison chuck roast vs. beef chuck roast, etc.) may have different significance by temperature, for all chicken breasts 72°C is perfectly done, and we are not talking about different species with Prometheus. Just humans.
“from Abele as the fundamental 101 analytical tool. ”
Why?
While contemplating the thoughts posted by Inviting Body Punches, I happened across a fresh link to an old story at the second most popular patent blog.
On that link is the following tale:
Blind Dogma September 3rd, 2011 9:06 am
I offer a slightly different perspective to a (recently) well worn debate (no ice picks required):
There is an underlying sense of a need of having a judicial Patent Watchdog and 101 is the billyclub of that watchdog. The courts want (need?) a nose of wax to be able to constrain where patents are in play and where they will be kept out of. All one has to do is take a step back, look at the competing philospohies and doctrines, see their ebb and flow, see which camp has advanced what theories to what success at what times and one can easily see that this is not a legal battle – this is a “political” battle, a philosophical battle. There really is no other explanation for the Court to maintain their fingers in the patent pie.
But why the philosophical battle? Why this philosophical battle? Aren’t we, after all, merely talking about machines?
As a fan of Asimov, I am amused at the personification of machines underlying the computer patentability battle. It appears that we are laying the Foundation of treating machines on equal terms as humanity, with patenting of machines roughly equivalent to slavery. Who owns your DNA (in a robotic sense)? Is it really an accident that a professor of biochemestry who captured the imagination of generations of people by writing about robots and their nascent evolution of “humanity”, may be setting in motion the very beliefs that he envisioned? Shades of Psychohistory…?
Max, 9-0.
If a correlation is of a natural phenomena, regardless of whether it is medical in nature, the claim must do more than just state the correlation as the point of novelty.
Now some of us think the problem is not law of nature, but a claim ending in an abstraction, a point of novelty mental step tagged on to old data gathering, we now have to deal with what the SC handed us.
I personally believe that if one ends the claim with a physical act, that should satisfy. But, we are not sure, are we?
I assume they will not appeal once again. That order sounds bulletproof. What legal error could there possibly be?
A better analogy might be available if you increased your reading comprehension skills and noted that the analogy was not directed to Prometheus, but rather to the concept of abstracting (i.e. from water to liquid).
Oh wait, this is MM, and he is merely accusing others of what he does.
Never mind.
But the correlation discovery is not what Applicants invented here. Best I can tell from the prosecution history, the “discovery” here amounted to the correlation limits.
Correct. The correlation was known. In fact that’s why the claims are so clearly obvious (in addition to ineligible): they read on correlations that were known in the prior art, e.g., that the presence of no metabolite in the patient indicates a need to administer more drug, or that the presence of massive lethal amounts metabolite indicates a need to add less drug.
The “discovery” were those very specific numbers recited in the claims which bound the “optimum” metabolite levels. I’m not sure whether the court reached the point of determining that infringement required knowledge of those exact numbers, or any number within the ranges encompassed by those numbers. Ultimately, it’s a moot point.
rodander–
I never suggested that a preamble in the form I presented would somehow imbue the subject matter with patent eligibility.
But consider this: the generation and transmission of a signal COULD BE CONSIDERED TO BE THE APPLICATION of the data gathered and its comparison to existing knowledge–i.e. “the correlation”.
All utility is potential, which is why an applicant need only make an assertion of utility. The signal, as such, could be used to control a drug-administering device, and said control would be the application of the correlation that is said to be lacking in this instance.
Such a claim may well be ruled to have substantial utility under a particular interpretation of the substantiality requirement. I personally prefer an interpretation which precludes such a claim from satisfying the substantiality criterion, and hence the utility requirement, of 101–but THIS is the type of approach that should have been taken.
Nuitjen.
“and that is what BREYER should be paying attention to, not the garbled nonsense that both he and his predecessors on various courts have created and propagated.”
But.. but… but… if you did that, you would take away all of the opportunities for the Supremes to stick their (wax) noses in everybody’s business and stop the Royal 9 busy bodies and their judicial activism from legislating from the bench.
Their “abstract”, “pre-emption”, “natural phenomena”, [and] “laws of nature” would all be dead letters.
How then would they ever be able to control Congress’s pet CAFC?
Now, I've heard it all.
“WTH is wrong with just sticking with what the inventor actually invented?”
That’s what is being done. The trick is to maximise the definition of what has been done in order to get full credit. It’s perimeter versus central claiming.
“In the example given, did the inventor invent a method for making snocones, iced tea, slushies, slurpies, soft drinks, or what?”
Yes.
SS&C = specific, substantial, and credible
And it’s not what “I say” is needed to get past 101, it is what “Congress says” is needed to get past 101, and that is what BREYER should be paying attention to, not the garbled nonsense that both he and his predecessors on various courts have created and propagated.
To be sure, the courts do have a valuable role to play in statutory interpretation–take the utility requirement of 101, for instance: it has thus far been interpreted to require specificity, substantiality, and credibility. When we discuss SS&C, we know that we are discussing the concept of utility, a concept expressly embodied in 101 via inclusion of the word “useful”.
If you were to discuss “correlation claim”, what concept would you be discussing, and in specifically what term or phrase in 35 USC would it be embodied?
Ditto “abstract”, “pre-emption”, “natural phenomena”, “laws of nature”, and so on.
I wish I knew what is meant by SS&C. Sorry.
Other than that, I am having difficulty reconciling what you say is needed to get past 101 with what Justice Breyer decrees is necessary. The PTO pays more attention to him than to you, no?
IVP, I guess it depends on how far the body of the claim went with “signal” — beyond “insignificant post-solution activity”? Just changing the preamble (or referring to the “indications” as “signals”) doesn’t seem to me to go very far beyond “apply it”.
In case you couldn’t otherwise tell, I don’t have a lot of problems with the decision in this case. Like I said, I think the principle could have been stated more succinctly. But then again, the Court is rendering a decision in this case under the existing statutes. Bright lines are nice, but that isn’t their constitutional duty. Nor are policy determinations (if only they would hold to that).
A post got eaten, but…
“Inventive concept”…absolute bunk. You have just sunk deeper into the murk.
There was no “couching” of anything–a claim says what it says, no more, no less. Absolutely nothing in the claim should be ignored, notwithstanding the attempts by courts to obscure their lack of understanding, or misunderstanding, of patent law.
You “get through the 101 filter” by demonstrating that you have disclosed s-m within one of the 4 enumerated statutory categories, and that you have disclosed a utility that is SS&C. The only thing that needs work at this moment in time are the particular definitions of S, S, and C, and that’s where the action should be.
I’m grateful. I like the thermometer example because every joint of meat is different, like every patient body is different, so every temperature reading has a different significance for that particular joint. Perhaps I have been brainwashed by my chemical colleagues, mindful of the “shall not be negatived by the manner” provision of 35 USC 103, but I had thought that hard work, devoid of inspiration, can nevertheless be enough to overcome the 103 hurdle. I presume Prometheus had to trial an awful lot of people to come up with their statistically significant limits of 230 and 400, not for any one body but for the population in general.
I wonder incidentally what that range excludes. One recalls claims drafted by ambitious prosecutors, in which the fancy parameter range relied upon is broad enough to cover everything that might conceivably work, thereby to deprive any competitor of the defence that we are outside the claimed range.
Like I said in my post, illogic, I realize the difficulty with that analysis (Prometheus’ claims being theoretically narrower than the ones I posed). (And to be candid, no, I’m not really sure that I’d have less trouble.)
But I think step 1 of the 101 analysis has to start with “What did Applicants invent?”. If that invention is discovery of an abstract idea/law of nature/mathematical algorithm, then step 2 examines the manner in which that invention is claimed to see if the claims are more than “apply the idea/law/algorithm”.
I think that is what the Court does here, although Breyer writes in the same manner that he speaks — it requires a lot of sifting through to sort out what he is really saying.
Supremes can’t even get the technology right. E=mc**2 has nothing to do with linear accelerators. They are thinking of relativistic mass from the Lorentz transformation. The correct metaphor would be E=mc**2 for nuclear power plant operators (like Homer Simpson).
Yeah well, patent prosecutors (and examiners) don’t understand patent litigation. Yes, I know they think they do, but they don’t. And a patent that isn’t litigated is like a bomb that doesn’t explode. So until prosecutors and examiners start saying what they mean the Court will continue to “not get it.” This trick that “every patent attorney is trained to do” of abstracting from the actual invention is not useful. It results in overly broad, invalid, and yes, abstract claims. WTH is wrong with just sticking with what the inventor actually invented?
In the example given, did the inventor invent a method for making snocones, iced tea, slushies, slurpies, soft drinks, or what?