Classen Immunotherapies v. Biogen: The Broad, Broad Scope of Statutory Subject Matter

By Jason Rantanen

Classen Immunotherapies, Inc. v. Biogen Idec (Fed. Cir. 2011) Download 06-1634-1649
Panel: Rader (offering "additional views"), Newman (author), Moore (dissent)

There is no doubt that the Federal Circuit continues to struggle mightily with Section 101.  If Myriad were not enough evidence of this, Classen Immunotherapies – and Judge Rader's additional views in particular – should remove all doubt.

Classen Immunotherapies holds three patents that it contends are infringed by virtually everyone: Patent Nos. 6,638,739; 6,420,139; and 5,723,283.  According to the patents, their inventor, Dr. Classen, has discovered that "the schedule of infant immunization for infectious diseases can affect the later occurrence of chronic immune-mediated disorders…and that immunization should be conducted on the schedule that presents the lowest risk with respect to such disorders."  Slip Op. at 5. Claim 1 of the '739 patent is illustrative of Classen's broad claim scope:

1. A method of immunizing a mammalian subject which comprises:

(I) screening a plurality of immunization schedules, by

(a) identifying a first group of mammals and at least a second group of mammals, said mammals being of the same species, the first group of mammals having been immunized with one or more doses of one or more infectious disease-causing organism-associated immunogens according to a first screened immunization schedule, and the second group of mammals having been immunized with one or more doses of one or more infectious disease-causing organism-associated immunogens according to a second screened im-munization schedule, each group of mammals having been immunized according to a different immunization schedule, and

(b) comparing the effectiveness of said first and second screened immunization schedules in pro-tecting against or inducing a chronic immune-mediated disorder in said first and second groups, as a result of which one of said screened immuni-zation schedules may be identified as a lower risk screened immunization schedule and the other of said screened schedules as a higher risk screened immunization schedule with regard to the risk of developing said chronic immune mediated disorder(s),

(II) immunizing said subject according to a subject immunization schedule, according to which at least one of said infectious disease-causing organism-associated immunogens of said lower risk schedule is administered in accordance with said lower risk screened immunization schedule, which administration is associated with a lower risk of development of said chronic immune-mediated disorder(s) than when said immunogen was administered according to said higher risk screened immunization schedule.

Classen asserts that the '139 and '739 patents are infringed "when a health care provider reads the relevant literature and selects and uses an immunization schedule that is of lower risk for development of a chronic immune-mediated disorder."  Slip Op. at 7.  According to Classen, this includes "the act of reviewing the published information, whether or not any change in the immunization schedule is made upon such review."  Id. The '283 patent is similar, except that it does not include the subsequent step of selecting an immunization schedule.  Classen asserts that the '283 patent is infringed "when a person reviews relevant information, whether the person is a producer of vaccines, a health care provider, or a concerned parent."  Slip Op. at 8.  The three patents list several hundred preexisting references relating to immunization schedules, the occurrence of immune-mediated disorders, and studies and reports from the field.

The district court granted summary judgment of invalidity of the asserted claims on the ground that they claimed an abstract idea.  On initial appeal, the CAFC affirmed, with Judge Moore penning an extremely short affirmance.  Following Bilski, the Supreme Court grant-vacate-remanded the case to the Federal Circuit, where it was assigned to the panel of Rader, Newman, and Moore.

 The Majority: Writing for herself and Judge Rader, Judge Newman concluded that while the '283 patent failed to satisfy Section 101, the '139 and '739 patent did.  Although the '139/'739 patents included a mental step, "precedent has recognized that the presence of a mental step is not of itself fatal to § 101 eligibility."  Slip Op. at 15.  Because the claims of these patents include the physical step of immunization, the majority held, they were directed to a "specific, tangible application."  Slip Op. at 18.  This was sufficient to assure the majority, which declined to offer any additional reasoning, of their subject matter patentablity.    On the other hand, the majority held, the '283 patent attempted to claim an abstract idea unfettered to any physical steps.  Thus, it was invalid under Section 101.

The Dissent: Judge Moore disagreed entirely.  "While I confess the precise line to be drawn between patentable subject matter and abstract idea is quite elusive, at least for me, this case is not even close."  Dissent at 6.  All three claims simply constitute abstract subject matter: "Having discovered a principle – that changing the timing of immunization may change the incidence of chronic immune mediated disorders – Classen now seeks to keep it for himself."  Dissent at 8.  While Judge Moore reserves her harshest criticism for the '283 patent, her views on the '139/'739 reach the same conclusion.  "The immunization step of the '739 patent, like updating the alarm limit in Parker v. Flook, 437 U.S. 584 (1978), is nothing more than post-solution activity."  Id. at 9.  That post-solution activity "does not transform the unpatentable principle – that a correlation exists between vacination schedules and incidence of chronic immune disease – into a patentable process.'  Id. at 10.

Judge Rader's Additional Views:  In an unusual move, Judge Rader, joined by Judge Newman, wrote separately to express frustration with the constant use of Section 101 challenges by accused infringers. 

In the last several years, this court has confronted a rising number of challenges under 35 U.S.C. § 101. The language of § 101 is very broad. Nevertheless, litigants continue to urge this court to impose limitations not present in the statute.

For a variety of policy reasons, Judge Rader urges, "[t]his court should decline to accept invitations to restrict subject matter eligibility."  Rader additional views at 2.  Chief among these is the problem that "eligibility restrictions usually engender a health dose of claim-drafting ingenuity," evasions that "add to the cost and complexity of the patent system and may cause technology research to shift to countries where protection is not so difficult or expensive."  Id. at 3.  

Comments: I am troubled by several aspects of the court's opinions.  Particularly concerning is the majority's apparent desire to abdicate the subject matter inquiry altogether, a desire expressed both implicitly, in the majority opinion's unwillingness to offer any substantive reasoning to support its ruling on the '139/'739 patents, and explicitly in Judge Rader's policy statement.  This approach seems problematic on its own, but becomes even more so when coupled with the numerous Supreme Court opinions relating to the issue of subject matter patentability – an area of traditional significance in the patent sphere.  While the Court may have repeatedly suggested that broad categorical rules may be inpermissible, it has nowhere suggested that subject matter arguments lack merit as a class, or that subject matter arguments must fail as a matter of course.  In particular, I find it difficult to see how the '139/'739 patents possibly survive scrutiny under Parker v. Flook, 437 U.S. 584 (1978).  The mental step itself is not a patentable subject, so how can combining it with an act (or the lack of an act) that has previously been done without the mental step make it patentable?   

Nor does Section 101 seem to present such a unique problem that the Federal Circuit should adopt a policy of declining to address arguments relating to it.  Even as Judge Rader criticizes the case law limiting subject matter patentablity because it encourages costly legal design-arounds, he joins with an opinion that does precisely that by drawing the line between the two sets of claims.  Mental step claims are now clearly out; mental step plus claims are now in.  And since every process is simply a link in a longer process, claim drafters need only look one step forward to avoid the effects of the majority's ruling.  Nor should the effects of Judge Rader's parade of horribles be limited to Section 101 – they strike me as equally applicable to Section 102, Section 103, and especially Section 112. 

 

 

 

 

421 thoughts on “Classen Immunotherapies v. Biogen: The Broad, Broad Scope of Statutory Subject Matter

  1. Malcolm, I daresay that a claim that cannot be infringed until someone thinks about something, or does a calculation based upon data, without doing anything else, is a claim that cannot be infringed at all. That is the problem with these claims. The data gathering steps are just that. Merely doing them alone is not infringement. They can be new. They can be old. They can be transformative. It matters not. The claim as a whole is not to the statutory parts of the claim. Their status new or old is irrelevant.

    This is why I think Benson, Flook and Diehr ALL required that the abstract information or steps be used to do something useful. Just doing something useful to provide the data for the abstract parts of the claim is not enough and irrelevant. I think that is what the Supremes will hold when they decide Prometheus.

  2. Ned I think the real theory is inducement by using the information to devise a schedule that is then used by some doctor or by a nurse for immunization for a particular disease.

    Except that Classen is clear that it doesn’t matter if the immunization schedule “used by some doctor” is the same old (unpatentable) immunization schedule that the doctor has been using since, well, forever.

    There’s no direct infringer of the claim. And if the only party doing anything other than reading and advising is doing something that is unpatentable because it’s old in the art, then there is either no infringement or the claim is invalid/noneligible, or unenforceable.

    Take your pick.

  3. Um, no. I did respond to Malcolm’s points. Here. link to patentlyo.com

    He has not responded to me, so maybe he missed it.

    As to you, I may not have responded to every substantive post you ever made. However, your demand that I respond to your every point you make in your post or else is what I find just a bit over the top. Perhaps I ignored you, perhaps I agreed with you, perhaps I didn’t have time, perhaps I had no rebuttal? You read an awful lot into a failure to respond. You assume the worst of other people and elevate your own self-worth to levels that are just a bit much.

  4. “a car comprising a chassis; a motor, four wheels, a steering mechanism, and a gas tank; and
    the step of navigating the car according to programmed computer having a GPS sensor.”

    That claim wouldn’t pass muster under IPXL

    However, the following claim(s) would:

    a car comprising a chassis; a motor, four wheels, a steering mechanism, a gas tank, and
    a programmed computer having a GPS sensor.

    a car comprising a chassis; a motor, four wheels, a steering mechanism, a gas tank, and a programmed computer having a GPS sensor, wherein the steering mechanism is controlled based upon the programmed computer.

    Nothing but a matter of simple claim drafting. Draft it well, and you won’t have any problems.

    This isn’t brain surgery ….

  5. IBP, I agree with you in principle on your analysis. But there are a series of cases, beginning with In re Taner and including Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (Fed.Cir.1992)(since expressly overruled by In re Bilski), that would hold that any post data gathering process or even mental step might be patent-eligible if the information it developed was otherwise “useful” even though not used.

    Now we have post-Bilski cases that would hold that if the data gathering steps are transformative, that is enough. Prometheus.

    The question really turns out to be the question not answered in Flook: if the data gathering steps are physical, transformative, can the last step in the process be a calculation, a correlation, or some such?

    Then there is the problem of infringement. The person who infringes is the person who does the calculation or the correlation, and not the person who actually uses the information for a purpose. Looking at it this way, that cannot be what the Supreme Court intended in Benson and Flook. Compare that Diehr actually required the use of the calculation.

  6. ” One must merely ask is the Classen claims, taken as a whole, are delights of the mind or do they serve the useful (note: this is broader than the technical) arts.”

    Delightful, or should I say, echoes of Rich, See, In re Musgrave, followed in In re Benson, reversed in Gottschalk v. Benson.

    Here is a brief summary of events from Stevens in Diehr:

    “The Court of Customs and Patent Appeals turned its attention to process claims encompassing computer programs in In re Musgrave, 57 C. C. P. A. (Pat.) 1352, 431 F. 2d 882 (1970). In that case, the court emphasized the fact that Prater had done away with the mental-steps doctrine; in particular, the court rejected the Patent Office’s continued reliance upon the “point of novelty” approach to claim analysis. Id., at 1362, 431 F. 2d, at 889.[15] The court also announced a new standard for evaluating process claims under § 101: any sequence of operational steps was a patentable process under § 101 as long as it was within the “technological arts.” Id., at 1366-1367, 431 F. 2d, at 893. This standard effectively disposed of any vestiges of the mental-steps doctrine remaining 201*201 after Prater and Bernhart.[16] The “technological arts” standard was refined in In re Benson, 58 C. C. P. A. (Pat.) 1134, 441 F. 2d 682 (1971), in which the court held that computers, regardless of the uses to which they are put, are within the technological arts for purposes of § 101. Id., at 1142, 441 F. 2d, at 688.

    In re Benson, of course, was reversed by this Court in Gottschalk v. Benson, 409 U. S. 63 (1972).[17] Justice Douglas’ opinion for a unanimous Court made no reference to the lower court’s rejection of the mental-steps doctrine or to the new technological-arts standard.[18] Rather, the Court clearly held that new mathematical procedures that can be conducted in old computers, like mental processes and abstract intellectual concepts, see id., at 67, are not patentable processes within the meaning of § 101.”

    Clearly Rich’s views have been overturned, but you raise them once again. Obviously, you share Rich’s views which have been inherited by Rader and by Newman. But, I suggest, that your views about policy have been asked and answered.

  7. I think the real theory is inducement by using the information to devise a schedule that is then used by some doctor or by a nurse for immunization for a particular disease.

  8. MM-

    Meaningful analysis of a claim is not possible without the provision of an assertion of utility.

    If one accepts the premise that THE PREAMBLE IS ALWAYS LIMITING, any limitations of the claimed method must contribute to the “mowing of a lawn”, which I assume is your way of providing a statement of specific utility.

    The object of the claim–that is, the physical structure upon which the method is performed, is the lawn. All claimed limitations must affect the physical lawn in order to be rationally related to the claimed utility–that is, if a claim limitation is removed from the process, there must be a resulting change to the lawn relative to if the limitation was included in the process.

    There is no change to the lawn that is necessarily occasioned by the removal of the claimed “correlating” step. The “correlating” step is therefore not rationally related to the asserted utility.

    Such a claim should be rejected in prosecution, or held invalid in litigation, under 112p2 for failure to particularly point out and distinctly claim.

  9. Shocking, however, the law I quote is from In re Christensen, which applied Benson.  While that case was later overturned, it is basically the same as Classen on the facts and its holding.

    The case that overruled it, In re Taner, resulted in the thinking that has emerged as the Prometheus case, which is now on cert. to the Supreme Court.  Obviously they have concerns.

    What all this suggests is that In re Christensen was correctly decided and is consistent with Benson.

  10. Hey brain surgeon, move the goalposts shall we?  Anything at all wrong with the following?

    Apparatus comprising;

    a car comprising a chassis; a motor, four wheels, a steering mechanism, and a gas tank; and

    the step of navigating the car according to programmed computer having a GPS sensor.

  11. I’m sorry, Malcolm, not just anywhere, but the final step only. A mental step earlier may actually have a functional relationship to a step in the process. But if the mental step is the final step, all that goes before is mere data gathering as in In re Christensen.

  12. Max, thanks much for your reply.  I think the sensibility of European practice in this area (albeit approaching the problem in a different way) illustrates just why Baldwin, dissenting in Musgrave, was so apoplectic about Rich's broad definition of patent-eligible process, as being any sequence of steps that were technological in nature.

    Rader and Newman clearly  have taken up the
    banner of their fallen hero Rich, and are again tilting at the windmills of higher authority in a vainglorious attempt to turn the tide in a lost cause.

    But we shall see.

  13. Pro Se, I’m glad you appreciate the issue. That is the problem presented to practioners in the relevant field by all of these claims in the form [old step + new thinking step] and [new thinking step + old step].

  14. If the quotes in the opinion are accurate and presented in their proper context, of course the patentee would loudly proclaim “infringement, infringement, infringement, etc.”

    Obviously I view “use” in a much more limited manner. Otherwise, one might be deemed an infringer simply by reading one or more of the claims that may be directed to specific vaccines and auto-immune responses.

  15. there is no actual legal argument here

    If you applied your criticism equally to other commenters, Smells, I might give a shxt. Since that is not the case, please go eff yourself.

  16. Courtenay Who cares what the patentee says his claims cover? Isn’t it the court’s job to construe the claims?

    If the patentee makes an admission about the scope of the claims, I see absolutely no reason why that admission can not be accepted by the defendant and adopted, regardless of what alternative construction the canons of claim construction might suggest.

    How can can you perform the step of “immunizing” by sitting in your office reviewing scientific journals?

    I believe the Classen’s “theory” of infringement is that Merck is immunizing animals and they know about his “discovery.” Note that Merck need not change a particular immunization schedule to infringe if it already happens to be using the lowest risk protocol. They need only to have done a bit of research and concluded that they can continue doing the otherwise non-infringing immunizations they were doing before. That makes them infringers of the method.

    It’s not a bad theory, except for the 101 issue. Of course, if you’re Judge Newman or Judge Rader you just look the other way because “immunization is transformative”, except when the claim doesn’t have a lot of words.

  17. Fxxxxxx off, FYI. US law changes.

    Pretty sure that there is no actual legal argument here – only table pounding.

    Thanks for playing. Come back when you have somethign useful to say.

  18. For cripessake, I just corrected a bunch of crxp that you wrote and you can’t acknowledge it? What’s the problem?

    You are just noticing that now? That has been Ned’s standard practice since at least the time I started posting.

  19. US is not Europe and in the US the law is useful arts not technical arts.

    Fxxxxxx off, FYI. US law changes. If the EP has an efficient way to tank these claims, which can’t be both eligible AND valid, then good for the EP.

    Or you can simply explain to me how a claim can be eligible if turns someone who is practicing the prior art into an infringer merely because they are thinking about some unpatentable fact that they read. Are you up for that?

    I know you’re not. And I know you won’t admit it.

    Gob, I hxte axxxhxle sockpuppets.

  20. Assume there is no divided infringement issue. A first party gathers the data and publishes it. A second party becomes an infringer simply by reading it and mentally doing the correlation.

    If there is no “divided infringement issue” then there is no point in talking about “first” and “second” party’s Ned. For cripessake, I just corrected a bunch of crxp that you wrote and you can’t acknowledge it? What’s the problem?

  21. Ned But the real point is that the claim is only infringed by the thinking about the information regardless of whether the other steps are new or old.

    No, that’s not the real point, Ned, unless you want to argue that a mental step in a claim renders the claim ineligible, period. Do you want to go there?

    I don’t have a real problem with that but …

  22. Smells

    programming physically changes a computer into a special purpose machine

    Then describe the novel, non-obvious structure in physical terms.

    Thanks.

  23. I feel your “Excedrin headache” pain, Pro Se. Those who seem to like the current “chaotic” case law situation in the patent-eligibility area remind me of what the Joker (played by the late Heath Ledger) in Dark Knight said to Two-Face/Harvey Dent (while he’s in the hospital) before the Joker blows up the hospital:

    “Upset the established order, and everything becomes chaos. I’m an agent of chaos. Oh, and you know the thing about chaos? It’s fair!”

    Enjoy the quote, it certainly applies to the current state of the law on patent-eligibility.

  24. The good doctor leans back in his chair and thinks about the subject matter. Mind you, all he/she does is think about it and nothing more.

    Thinking is “make”?
    Thinking is “use”?
    Thinking is “sell”?
    Thinking is “offer to sell”?
    Thinking is “import”?

    Quite frankly, all this fuss about 101 has always concerned me because of my propensity to take holdings and think (without infringing, of course)about how they may be used strategically. I simply cannot help but wonder that if something does not get past the 101 portal, and hence Title 35 is of no moment, does that mean the subject matter denied entrance can turn to state law, or perhaps to some other aspect of federal law?

  25. The printed matter doctrine, if you’re going to rely on a generic inert substrate to assert that a list of instructions is statutory subject matter.

    Sort of like a plastic hatband or glass measuring cup, sort of like those inert substrates?

    LULZ – yeah I thought you might get around to the complete (including the vaunted exception) printed matter doctrine. It’s just too bad for you that that’s the law and that that’s the facts.

    But look on the brightside, there is no shortage of tables for you to pound on, and you can join your friends in a great big table pounding festival.

    I recommend you holding the festival in your tower.

  26. “The printed matter doctrine”

    1) the printed matter doctrine applies to 102/103.
    2) pits on a DVD are not “a list of instructions” they are an improvement to a machine.

    “your claim is not to a particular manufacture.”
    Interesting statement, got any case law you want to cite?

    I have a gun, I have a bullet. A bullet is useless (for its intended purpose) without the gun. Both are separately patentable without the other. Why should a DVD and computer be any different?

  27. Pardon me for interrupting you with an incovenient truth.

    If you want to hold a personal conversation, may I suggest you do not use a public forum? That way, little things like actual law won’t get in the way of your spanking each other.

  28. Beauregard claims cover them all.

    Say the lie often enough, you might believe it.

    Back to the tower with you!

  29. All are man-made products (i.e., manufactures), which is OK under 35 USC 101. And your problem is?

    The printed matter doctrine, if you’re going to rely on a generic inert substrate to assert that a list of instructions is statutory subject matter.

    Or, if you prefer, your claim is not to a particular manufacture, because it’s coextensive with reciting “a manufacture”. You’re claiming “whatever works”, which didn’t work for Morse, Benson, Flook, or Wyeth v. Stone.

  30. “the apparatus claim is recited with process steps”

    Again Ned, you really need to read the case law instead of just parroting other’s people’s opinion of the case law.

    A method of creating a hole in a piece of wood, comprising:
    drilling the hole with an auger.

    This is not a mixed class simply because it recites “an auger.” There is a difference between claiming an auger and claiming the use of an auger.

    FYI — in order for a claim to recite statutory subject matter there must be a machine or transformation. As such, the recitation of a machine in a method step isn’t a per se fatal problem.

  31. “Besides, CD-ROMs and DVDs are not the only computer-readable media. Lots of computer-readable media are also human-readable. The one you’re reading right now, for example. Punch cards. UPC codes. Sheets of paper with text printed on them. Beauregard claims cover them all.”

    All are man-made products (i.e., manufactures), which is OK under 35 USC 101. And your problem is?

  32. But if the lawnmower is not new and non-obvious, then how can the patent be granted without effectively patenting the mental process?

    You’d essentially make everybody who cuts their grass an infringer by disclosing the best-mowed.

  33. “the problem of claiming programmed computers as machines is that they really add process limitations to apparatus claims.”

    Wrong again Ned. There is nothing wrong with claim an apparatus by what it does. In fact, if you look at common terminology many names for objects describe what they do (e.g., computer, light, drill, switch, fan, power supply, a drain). What you call a process limitation is a description of the functionality of the object.

    Is this claim directed to mixed classes?

    A screw driver, comprising a shaft, and a tip on a distal end of the shaft, wherein the tip is configured for driving a screw having a cross-shaped indentation.

    To you, I would imagine that the “driving a screw having a cross-shaped indentation” looks like a process step, but it is not. It is just language used to described a configuration of the tip.

    “it would be better simply to ban the class of claims altogether, as you suggested in one of your posts recently. Ditto, B-claims.”
    This is where are your legal misconceptions derive. You just want to get rid of software claims because they interfere with your business. There are innovators and there are copiers. Being a copier, you merely want to be able to copy what the innovators have created.

    “a data encryption method could not be claimed as an apparatus”
    Are you saying the “Enigma Machine” couldn’t have been patented?

  34. Ruding computer executable steps to a computer readable medium necessarily requires the underlying process to be performed by a computer (a machine).

    No, it doesn’t. The computer is not positively recited in the claim. If you need proof, ask any Beauregard patentee whether he’d assert his claims against someone selling CD-ROMs with the software on them, who is not also selling a computer. The entire point of the Beauregard format is to avoid claiming the computer so the patentee can enjoin stand-alone software.

    Besides, CD-ROMs and DVDs are not the only computer-readable media. Lots of computer-readable media are also human-readable. The one you’re reading right now, for example. Punch cards. UPC codes. Sheets of paper with text printed on them. Beauregard claims cover them all.

  35. Rader makes a good point that anytime a court strikes down a claim under 101 clever patent attorneys alway find a way to draft the magic words that mysteriously overcomes the 101 problem. Yet that simply elevates form over substance. Why do that? Seriously.

    The obvious answer would be to stop letting “magic words” overcome the 101 problem when the substance of the claim remains problematic. Which is exactly what’s happening right now with Beauregard claims, incidentally.

    Kind of disingenuous of Rader to suggest ignoring the law because the law is broken because his own court keeps letting people skirt the law with clever wordplay.

  36. Who cares what the patentee says his claims cover?

    If what the patentee says his claims cover is effectively an admission of their invalidity, it’s entirely appropriate to care – whether the admission is they cover prior art or that the claims are non-statutory.

    Perhaps someone can explain to me how just thinking about something infringes any of the exclusive rights accorded by Title 35.

    Have you read Classen’s brief? They do actually assert that their patent is infringed “when a person reviews relevant information”, so maybe they included some sort of explanation of how that’s possible.

  37. Don’t conflate your view of the Constitutional “useful arts” with Europe anything.

    See Bilski for the very very broad (as in most definitely beyond “technical”) definition of “useful arts” – and 6, no, this is still in Bilski’s majority holding.

  38. Sorry, the Constitutional “useful arts” is not synonymous with “anything that serves a useful purpose. Soothing music, for example, serves a useful purpose. Defined clearly, it would be, in Europe, “technical”. But you don’t want to hear that tune, do you?

  39. So you keep telling me, but I have not seen SCOTUS stating explicitly that “useful” goes wider than “technical”. You infer it but that don’t impress me so much.

    Ned did ask me, How would you do it, so I told him. They you interrupted us.

  40. MaxDrei,

    Your thought of “Stuck with 101 of the US patent statute as it is now, obviousness might be the way to do it… it lacks the kind of non-obviousness

    is nothing more than a different flavor of conflation.

    “The kind of non-obviousness” is a 101 question. That is why music and “other delights of the mind” do not even have a 103 basis at all – it is not as if they are “obvious per se” or that they “must be deemed old” (talk about a perverted legal construct!), rather, they simply are not in the patent realm to begin with.

    SLightly different than the point of your post, but nonetheless pertinent, clearly, the utilitarian aspects of software patenting cannot be equated with these “delights of the mind,” and thus, also quite clearly, belong to the patent realm. One must merely ask is the Classen claims, taken as a whole, are delights of the mind or do they serve the useful (note: this is broader than the technical) arts.

  41. I would posit the shocking theory that Ned is again misapplying case law.

    Bilski v. Kappos, reinforcing as it does the complete 101 history including Diehr, and Classen v. Biogen, reinforcing as it does both Diehr and Research Corporation, decidely do not support his philosophical views.

  42. MaxDrei – US is not Europe and in the US the law is useful arts not technical arts.

    I know that you have been reminded of this many times, so it would be helpful when you post on this to make this distinction.

  43. Research project for somebody who has more time than I do. Read the EPO file wrapper in each of the 5 Classen files at the EPO. They all bombed. Why, exactly?

  44. Ned, you an IANAE stink because you purposefully insist on ignoring the law and the facts that programming physically changes a computer into a special purpose machine.

    It is you that is hung up on “form” over substance – falling prey to the “structure” “form” of the claim and ignoring the substance of the claim.

    There is no mix of statutory classes because “programmed to do” is not a method claim – it is rightfully considered a structural element. It is merely a “shortcut” notation made for easier understanding of the claim because a pure structural recitation would be a machine language version and would not be readily understood.

    What really stinks is the adamant ignorance of the actual physical reality and legal grounds being paraded in these philosophical arguments against software patenting.

    I understand the Kantian perspective that to make the true Rose grow better one can use m_anure as fertilizer, but this does not mean that you keep shoveling the m_anure and try to bury the entire rose bush in s_htt.

  45. Ned, Europe does it by giving no patentable weight to features in the claim that are not technical features that are solving an objective technical problem. Making mental judgements is not technology so doesn’t count. Prescribing an immunisation schedule is old. Devising the schedule in line with best current clinical practice is old and obvious (I would hope).

    The Boards of Appeal of the EPO are telling us what “technical” means. Currently, they are handing down about 1100 Decisions a year. Follow them and you get to know what “technical” means. Mind you, it does tend to evolve, with European progress in science and useful arts.

  46. Max, but how does one handle a claim to a process entirely new and non obvious, but nevertheless consisting only of steps wholly mental, but also withing the technological arts, such as a correlation based on published data about an improved schedule for immunizations?

  47. OK. But the real point is that the claim is only infringed by the thinking about the information regardless of whether the other steps are new or old.

    Assume there is no divided infringement issue. A first party gathers the data and publishes it. A second party becomes an infringer simply by reading it and mentally doing the correlation.

    Benson clearly stood for the proposition — pointedly, deliberately, derisively, and repeatedly misunderstood by Rich and Rader — that a patentable process must have a specific useful end, something physical, something within, for example, the MOT. Ending the process with a non statutory step cannot pass this simple test originally set forth in Benson, and followed in In re Christenson (overruled in In re Taner, but see Bilski v. Kappos and Classen v. Biogen).

  48. The two most patent-lovin’ judges on the Federal Circuit just held that a claim with a clear transformative step is nevertheless ineligible under 101.

    Yes, it’s been a very bad month for the Dierhbots. And it’s not going to get better. I’m loving it.

    What I’m loving is how wrong Malcolm is.

    Actually reading the decision shows the one patent not making it across the 101 line was the one that did not actually claim a transformation (but merely used information available from an unclaimed transformation). And actually reading the decision shows it’s ONLY going to get better.

    This decision is a firm slap across the face
    of those advocating conflation,
    of those advocating “whatever,”
    of those advocating broad sweeping categorization of whole art units as patent ineligible,
    of those advocating improper appelate procedures,
    of those advocating an improper 101 analysis by not including Diehr and Research Corp,
    of those advocating improper parsing and disection of claims for 101 purposes.

    In short, this is a firm slap across the faces of the dancing F O O L S Malcolm, 6, Ned, IANAE and their ilk.

    Awesome loving back at all of you.

  49. Malcolm: [Ned:] “The process as a whole results in something that is abstract.”

    [Malcolm] “There is nothing abstract about a lawn being cut . “Process as a whole” is just the usual result-affirming hand-waving that the lazy judges are engaging in.”

    I highlighted the difference between what you said and what I said to try to illustrate my point. Your sample process claim is as follows:

    “1. A method for mowing a lawn comprising pushing a lawnmower, wherein said lawmower is gas powered, and correlating the amount of blades being cut with an increased predisposition to Martell’s syndrome.”

    Mowing the lawn is a data-gathering step. It can be quite physical, it can be transformative, it can be new, it can be old. But all it does is gather data. The “result” of the process is the correlation. That is abstract. That is what I said and that is my point. If the result is abstract it matters not that the earlier steps are new, are old, are physical, or are transformative. They are nothing more than data-gathering steps. Once this was a well-known concept in 101 jurisprudence, stemming from I believe In re Christiansen. In re Christensen, 478 F.2d 1392, 178 USPQ 35 (CCPA 1973) (If the last step in a process is directed to nonstatutory subject matter, the claim as a whole is directed to the nonstatutory subject matter.) link to scholar.google.com

    Accord, in re Flook, 559 F.2d 21 (CCPA 1977) (overturned on other grounds) link to digital-law-online.info (Christensen’s holding of nonstatutory subject matter is expressly limited to claims directed to determining data used in an algorithm and solving the algorithm, that is, to claims in which nothing is done after solution of the algorithm. Christensen recognized that the absence of a step other than those steps required for solution of the algorithm necessarily precludes the possibility that the claim involves statutory subject matter. The court, in Christensen, reasoned that Benson requires that a claim must include a recitation which materially limits the claim to a scope less than the mere act of solving an algorithm. The court determined that this requirement of a limitative recitation is not satisfied by the recitation of data-gathering steps but implied that it may be satisfied by the recitation of some sort of post-solution activity. Because the court found no post-solution activity recited in the claims of Christensen, the court did not need to reach the question of what sort of post-solution activity is required for statutory subject matter. Thus, Christensen does not render the claims before us unpatentable, because these claims include recitation of post-solution activity, a step in which the solution is applied to a control system.)

    In the affirming the end patentability of the’ 283 patent, the Federal Circuit again gives vitality to the doctrine announced in In re Christiansen.

    However, one must note that the Feds overturned In re Christensen in In re Taner, 681 F. 2d 787 (1982) link to scholar.google.com

    It appears, inferentially, that Bilski may have overturned in re Tanner and restored In re Christensen.

  50. Before it was removed… I had to decide dismiss or premise.. So I took a drive. I decided it was mean and just more evil to upset me. Cliff or Cliff note. Another long drive, file it, Cliff note.

  51. anon, I don’t quite see your point about Benson and “conflation,” to the extent that conflation means mixing into section 101 analysis, considerations pertinent to 112, 102 and 103.

    Benson’s holding is as follows: mathematical algorithm per se are abstract in that they were steps that could be performed by a person using pen and paper. To be patentable, such claims must be applied to a “new and useful end:”

    “If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.” We dealt there with a “product” claim, while the [409 U.S. 63, 68] present case deals with a “process” claim. But we think the same principle applies.

    Here the “process” claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion. The end use may (1) vary from the operation of a train to verification of drivers’ licenses to researching the law books for precedents and (2) be performed through any existing machinery or future-devised machinery or without any apparatus.”

    The holding of the case seems somewhat clear. The problems with the Benson claims were that they were not tied to a specific and useful end. I don’t see how this is conflating anything in 112, 102, or 103.

    But you say that Diehr in some manner cabined Benson. To that I ask, what are you talking about? The holding in Benson was at the mathematical algorithm claimed there was not patentable because they were not tied to a specific and use. In Diehr they were held patentable because they were tied to a specific and use. It seems to the observer that Diehr followed Benson, and did not cabin it in any way.

  52. As Rader points out, the patent system is for disseminating information that promotes the progress. Reading scientific papers is what we hope doctors and scientists will actually do, to stimulate thought, and promote the progress of their research, and so keep us from falling ill.

    But if patent law becomes dysfunctional, it works against the dissemination of information, and turns thinking into an infringing act. Thus, it positively discourages folks from acquiring and gathering to themselves new knowledge of scientific and technological advance. I give you two examples:

    1. corporations deliberately do not inform themselves about the content of the patent applications the USPTO publishes, for the good reason that they don’t want to pay triple damages for infringing wilfully.

    2. doctors don’t read Classen. So long as they don’t know his proposition, they can’t infringe his claims. But if they prescribe, and immunise after having received knowledge of the Classen theory, they would then infringe. Good for Classen, but less good for everybody else.

    As many point out, the judges (or the Congress) are in a position to do something to cure the dysfunction. Are they doing so? From here, I see little sign of it.

    You can tell me I am barking, but I know my example 1 is real and I know from the thread above that my 2 is real too.

    Stuck with 101 of the US patent statute as it is now, obviousness might be the way to do it. No matter how non-obvious is, say, a new thought, or a new musical composition on a disc, it lacks the kind of non-obviousness that is the only thing that justifies the issue of a utility patent claim and the grant of a 20 year monopoly over any reproduction of that thought or that tune.

  53. Perhaps someone can explain to me how just thinking about something infringes any of the exclusive rights accorded by Title 35.

  54. I think your lawnmower process is patent eligible because it’s a process, and 101 does not place any limits on the types of processes that can be patented. I guess I am the Justice Black/Justice Douglas of section 101 (I am an absolutist just like they believed in 1st amendment absolutism-no restraints on free speech of any kind are permitted)

  55. I have read 101 opinions over the years to the point that I long ago decided it would be useful to stick an ice pick through my temple to relive the painful experience of trying to comprehend the incomprehensible.

    101 cases have always troubled me for two reasons. First, the “common law” exceptions are far too abstract to provide any meaningful objective guidance. What is an “abstract principle, law of nature, or natural phenomena” invites personal bias on the part of the judiciary. Judge #1: It is not an abstract principle! Judge #2: Is too! Judge #3: I can’t define it, but I know it when I see it! Yes, this adds clarity (Not!). Second, you can only decide if 101 is relevant by actually taking a relatively detailed look at the claims, and not just broad representive claims since all others stand on an equal footing as individual inventions. Last time I looked claims are deemed matters of law, and not fact, and perhaps therein lies the rub. How one can cursorily look at a claim without the benefit of some level of detailed analysis and make an intellectually honest decision under 101 eludes me entirely.

    What I do find intriguing about the majority opinion is that the decision when the CAFC was first presented the case was to find ineligible subject matter under 101 using the then test applied by the CAFC. The Supreme Court enters the fray via Bilski, basically says that the CAFC’s test is too parsimonious, and then remands this case for reconsideration in view of Bilski. Taking SCOTUS at its word, the CAFC reverses itself based upon the the holding in Bilski to now hold that the subject matter passes 101 muster.

    I cannot help but wonder if perhaps Judge Newman was issuing a challenge to the Supreme Court that its Bilski decision places lower tribunals in an impossible situation (basically, craft a plurality of other tests so that the Supreme Court can later take a look at them collectively to pick and choose which ones are OK and which ones are not…an approach that in some ways mirrors what Dr. Classen did).

    This said, I know I laid my ice pick somewhere, so I feel the pressing need to get away from my keyboard and find it so that I can thereby once again relieve cranial pressure and pain.

  56. The obvious thing about a mental step is that it is uniquely man-made and therefore is not a natural phenomenon or abstract principal. And isn’t the point of a patent to pre-empt infringers from infringing the patented invention? Is the problem that there is simply too much of it? So breadth of pre-emption is the 101 issue? Where does that end? How much pre-emption is too much, how much is too little, and how much is just right? Maybe the story of Goldilocks can shed some light. And the notion that mathematical algorithms are per se natural phenomena is bogus because that incorporates Platonic formalism into patent law (i.e., mathematical algorithms aren’t discovered by men and wymin, they are simply forms created by the gods). Of course, the reason you can’t patent E=MC2 is because it doesn’t fit any of the four patent categories (not a process, manufacture, machine or composition of matter): you don’t need to dream up an exception. And I apologize for my typos but the last time I pressed “preview” I lost my entire post.

  57. Cybersource was an anomoloy and will soon join Stalinism in the dustbin of history when overruled en banc. The analysis was so shabby as to be almost comical. Think about it. Dyk and Co actually reasoned thusly: Since the underlying method could possibly be carried out wholly in one’s mind and is therefore not itself patent eligible, a computer program product that encodes a computer to perform that same function is a fortiari not patent eligible. That assumes, of course, that the one could read a CD-ROM or DVD and perform the computerized function in their brain, which is of course absurd. Ruding computer executable steps to a computer readable medium necessarily requires the underlying process to be performed by a computer (a machine). “Hello McFly…”

  58. Of course, I didn’t say “male inventors” did I. The term “man” is a generic term that includes all humans. Perhaps you should have said “wymin” so that we could really get your non-generocentric point!

  59. Rader makes a good point that anytime a court strikes down a claim under 101 clever patent attorneys alway find a way to draft the magic words that mysteriously overcomes the 101 problem. Yet that simply elevates form over substance. Why do that? Seriously. To enrich patent lawyers?

    I agree with Rader that patentability is best handled using 102, 103 and 112. 101 is broad mandate that covers just about everything. If you don’t like how its drafted then lobby Congress to eliminate stuff you don’t think should be patent eligible, like it did with tax avoidance strategies.

    By way of full disclosure, I am so pro-patent I believe that when they first discovered how to isolate ground state aluminum it could have been patented even though it’s an element on the periodic table. The reason: it is not a natural phenomenon because aluminum metal in its gound state never has and never will exist free in nature unless produced by the hand of man. Same is true for the higher elements on the periodic table which are only hypothetically exist unless and until someone figures out how to make it.

  60. Who cares what the patentee says his claims cover? Isn’t it the court’s job to construe the claims? How can can you perform the step of “immunizing” by sitting in your office reviewing scientific journals?

  61. However, I think I’ve heard you say that the process is statutory if the data-gathering steps are new. I don’t think I agree.

    Consider that a novel method claim that is unquestionably statutory but which uses comprising language necessarily includes all kinds of mental steps. Does that render the claim ineligible? Of course not.

    The ineligibility of claims in the form I’m addressing (old process/new thought) flows directly from the fact that they turn non-infringers (practicing the prior art) into infringers based on what the infringer is THINKING and nothing else.

    This is not “conflation”. It is a bona fide 101 issue. Sure, you can make the issue moot by invalidating as a per se matter under 103 (e.g., by ignoring the “new” mental step when performing the 103 analysis) but you can’t ignore the FACT that the issue exists, which is what the Dierhbots/trolls around here try to do.

    And the issue is coming at the courts not because of “academics” or blog commenters but because patentees are sueing people for KNOWING STUFF. It didn’t start with LabCorp but that was an excellent example of the problem and Breyer was all over it, although he failed to articulate it well.

  62. Ned, you wrote Rich would respond, Malcolm, that the proper inquiry, even where the point of novelty were in a mental step, would be under any of 112, 102 or 103.

    Since you seem to have insight into Judge Rich’s mind, I’m asking you how would Judge Rich invalidate the claim I proposed under 102 or 103? I’m genuinely curious.

    As for 101 analysis, I think it stinks.

    In my opinion, the statutory nature of this “process” should not depend on whether the data gathering steps are old.

    It doesn’t matter what your “opinion” is Ned. The FACTS change which means that the effect of the claim on potential infringers changes, so the analysis MUST change.

    The process as a whole results in something that is abstract.

    There is nothing abstract about a lawn being cut. “Process as a whole” is just the usual result-affirming hand-waving that the lazy judges are engaging in.

  63. and probably not possible between Ned and anybody else.

    Fixed – See the previous posts about lying and Kant’s view that lying and deception is never appropriate.

    By the way, I stopped trying to have a gentleman’s discussion with you when you refused to acknowledge the points I made – points which you still have not acknowledged. I then noticed that I was not the only one subjected to your non-discussions. You do not want a discussion. You just want to hear yourself talk. That in itself might be somewhat tolerable if you did not practice such outright deceptions, and then try to dress up those deceptions by invoking a Kantian concept, such is not tolerable as you violate one of the primary Kantian concepts.

    Nothing you say can be taken with any degree of veracity, as you have made it perfectly clear in your express words that you do not feel any duty to be honest on these mere blogs, when you are discussing mere opinions.

    Reap what you sow.

  64. Malcolm, I take it your example is something like this:

    Step one: gather data, which could include physical steps including transformative steps; and

    Step two: process the gathered data using criteria, mental steps, or mathematical equations to produce a result, which is abstract.

    In my opinion, the statutory nature of this "process" should not depend on whether the data gathering steps are old.  The process as a whole results in something that is abstract.  It may be useful, this result, but its use is not claimed.  The process considered as a whole is directed to the nonstatutory, abstract result. It should fail section
    101. 

    However, I think I've heard you say that the process is statutory if the data-gathering steps are new. I don't think I agree.

  65. I lost a comment somewhere so here it is again (maybe)

    Assume I discover n-dimensional equations that describe the relation of gravity to time. Can I claim that equation by reciting its calculation on any machine? …. A claim of such scope would be a claim to the principle itself.

    Or as 6 would describe it, such a claim would wholly preempt the non statutory subject matter.

    Actually it “preempts” only the statutory subject matter. Everyone would still be free to think about the correlation and even use the correlation to calculate stuff without a machine.

    Your Wyeth v. Stone is easily distinguished from your hypo because in Wyeth the “principle” itself was field-limited (i.e., the “principle” that machine power (!!!) could be used to cut ice).

    Not a fan of the “pre-emption” analysis generally. It comes off bxtt-stxxxxt half the time and it’s easy to blow up. The abstraction analysis is relatively stronger, in that respect. Of course, if you don’t need to use either analysis to destroy the claim (as in the case of Classen’s claims or Prometheus’ claims) I don’t know why you’d bother.

  66. Conflation was only a topic expounded on at great lengths

    “Expounded on?” Ranted about, by incoherent ranters, maybe, who refuse to answer basic questions about straightforward issues presented by easy-to-understand (but poorly drafted) claims.

    Or you can review Eric Guttag’s post at: “>http://ipwatchdog.com/

    Or you can just read what the anonymous every-evolving sockpuppet txxbxggxers post here relentlessly every time a crxppy software patent is invalidated.

  67. Rich would respond, Malcolm, that the proper inquiry, even where the point of novelty were in a mental step, would be under any of 112, 102 or 103.

    However, consider the apparatus claim modified by adding one or more process steps

    How about you consider the example that I gave, which is in the same form as Classen’s claims and the claims in Prometheus. What is the analysis under 102 or 103? i.e., how do you invalidate the claim (since it must be invalid or ineligible and I am pretending that 101 is not available to make Judge Rich’s ghost happy).

  68. I think it was Alappat that first clearly authorized it, but the problem of claiming programmed computers as machines is that they really add process limitations to apparatus claims, essentially making them non statutory by mixing class. Merely deeming them process claims for 101 purposes helps solve that problem, but it would be better simply to ban the class of claims altogether, as you suggested in one of your posts recently. Ditto, B-claims.

    System claims are not really apparatus claims at all. They should officially be added to the process claim bucket.

    Once we have done these things, matters will be clearer altogether.

    Just looking at processes, it once was well accepted that reciting a mathematical process at the tail end of physical data gathering steps was not sufficient. The output of the process was still a number.

    In order to define a statutory process involving the use of non statutory subject matter, it should, as in the case of the claims determined patentable here, result in doing something physical, something that transforms, etc.

    Thereafter, the question would shift to 112, 102, 103.

    What do you think?

    As an example, a data encryption method could not be claimed as an apparatus. But it could be claimed as a process if the claim required transmitting encrypted data to a receiving mechanism or recording the encrypted data on a computer readable medium.

  69. Conflation? This is a legal doctrine?

    Ned,

    Get a grip. “I don’t know if I understand you” Either you are an outrageous liar, superbly ignorant or both. anon is trying too hard to be polite to you when directness is what is needed. Let me translate into two direct words: STOP LYING.

    Conflation was only a topic expounded on at great lengths recently on various threads.

    If it is a cite you need, then go no farther then the decision that this thread starts with: Classen.

    Or you can review Eric Guttag’s post at: link to ipwatchdog.com

    encouraging preservation of legal and practical distinctions between the threshold inquiry of patent-eligibility and the substantive conditions of patentability [as reflected in 35 U.S.C. §§ 102, 103, and 112].

    This is not a new topic. This topic underscores your repeated deceptions. If you had an ounce of class and self-respect, you would stop the incessant act – your continued vapid postings simply do not measure up to a worthwhile “gentleman’s debate.”

  70. Perhaps, but what is the new structure.

    What really is going on is this, the apparatus claim is recited with process steps. This mixes statutory classes and is per se non statutory.

  71. Rich would respond, Malcolm, that the proper inquiry, even where the point of novelty were in a mental step, would be under any of 112, 102 or 103.

    However, consider the apparatus claim modified by adding one or more process steps. Such claims are per se non statutory as mixing classes. One now begins to see a solution to the problem of programs claimed as new machines.

    Next consider a process claim which recites an otherwise non statutory process. Can it be saved by reciting its implementation using well known apparatus? Assume I discover n-dimensional equations that describe the relation of gravity to time. Can I claim that equation by reciting its calculation on any machine? That story has be told by Story in Wyeth v. Stone where the claim was to any machine for cutting blocks of ice. A claim of such scope would be a claim to the principle itself.

    Or as 6 would describe it, such a claim would wholly preempt the non statutory subject matter.

  72. It’s okay, Sockie. I know the truth hurts ya.

    Patents that effectively preclude an otherwise non-infringing actor from thinking about certain facts can NOT be both valid AND eligible for patenting. It’s one or the other. Take your pick. If Judge Rich’s “absurdity” bothers you, then the patent must be invalidated as per se anticipated/obvious by ignoring the mental step.

    But you can’t have it both ways.

    Just in case you missed it the first time. Soon you’ll be seeing it in a Federal Circuit case, if not a Supreme Court case. You better stock up on your kleenex now.

  73. Judge Rich in Musgrave:

    According to these “Rules,” a process containing both “physical steps” and so-called “mental steps” constitutes statutory subject matter if the “alleged novelty or advance in the art resides in” steps deemed to be “physical” and non-statutory if it resides in steps deemed to be “mental.” It should be apparent, however, that novelty and advancement of an art are irrelevant to a determination of whether the nature of a process is such that it is encompassed by the meaning of “process” in 35 U.S.C. § 101. Were that not so, as it would not be if “Rules” 2 and 3 were the law, a given process including both “physical” and “mental” steps could be statutory during the infancy of the field of technology to which it pertained, when the physical steps were new, and non-statutory at some later time after the physical steps became old, acquiring prior art status, which would be an absurd result. Logically, the identical process cannot be first within and later without the categories of statutory subject matter, depending on such extraneous factors.

    Judge Rich is perhaps patent law’s greatest mental masturbator, a wanker extraordinaire. Here he worries that a a claim reciting the same physical steps could be found eligible under 101 depending on when the claim was filed. He finds that result “absurd.”

    In fact, what is “absurd” is spending more than 1 second concerning oneself with that result. It’s only “absurd” if one pretends that 101 has no purpose whatsoever except to exclude claims lacking the terms “process,” “manufacture,” “machine,” or “composition of matter” in the preamble. Apparently that was Judge Rich’s belief. The original patent txxbxggxr.

    Consider:

    1. A method for mowing a lawn comprising pushing a lawnmower, wherein said lawmower is gas powered, and correlating the amount of blades being cut with an increased predisposition to Martell’s syndrome.

    If the lawnmower is new and non-obvious, it’s eligible under 101. No questions asked. But if the lawnmower is not new and non-obvious, then how can the patent be granted without effectively patenting the mental process? The answer is: it can’t be done. People who mow their lawn and who are aware of the correlation are now infringers. And patentees who believe that certain folks who are mowing their lawn know about the correlation WILL sue those folks. That’s what Classen did. That’s what Prometheus did.

    Patents that effectively preclude an otherwise non-infringing actor from thinking about certain facts can NOT be both valid AND eligible for patenting. It’s one or the other. Take your pick. If Judge Rich’s “absurdity” bothers you, then the patent must be invalidated as per se anticipated/obvious by ignoring the mental step.

    But you can’t have it both ways.

  74. Rich suggested that the real problem of the mental steps doctrine lay in indefiniteness, but that was a problem of 112.

    No, he merely indicated that in certain circumstances a mental step could be indefinite, e.g., if it was a subjective step.

    There is an extreme amount of wanking in that Musgrave. Frankly, I would have no problem with catapulting the entire recorded history of patent jurisprudence prior to the Federal Circuit. It’s that bad and that stxpxd and Judge Rich is a big part of the problem.

  75. IANAE What does Rader expect, from even a “coarse” filter, when there are so many claims of the same style/format that suffer from the same inherent defects as a result? Can’t apply a “coarse” filter because it would invalidate too many patents that all have the same problem? Is the software/diagnostic patent industry too big to fail now?

    It’s not like there’s some convenient way around this whole 101 issue that’s within the patentees’ control, such as claiming computer-implemented methods and methods of treating actual patients. But that makes our jobs hard, so I guess it’s the end of civilization as we know it.

    Because it’s worth repeating.

  76. “What judges like Moore don’t get is that by using the law to legislate as a judge she destroys the entire confidence in the legal system and the country.”

    A very astute observation NWPA about our legal system and particularly applicable SCOTUS, which I and my patent attorney brother share a very dim view of.

  77. Thanks for affirming that I do use (or at least try to use) “critical legal thinking,” anon. I’ve sometimes been accused in the past of not using “critical thinking skills,” which I find amusing.

  78. BTW, to state the uber-obvious, invoking a 103-decision in the last line of my post was my way of extending the lunacy of 101 to cover patent jurisprudence, including 103.

    I guess I’ll have to return to the brutalist style of posting to get points across effectively to MM.

    Or not.

    Maybe I’ll take the civil service path-of-least-resistance approach, and just remain ambivalent.

  79. except programmed computers are new – no assuming required.

    and I don’t think “persuaded” is the right word…

  80. IBP, I was highly persuaded by Rich’s analysis of the whole issue. He was quite derisive of using any sort of novelty analysis in 101, and the mental steps doctrine as administered by the PTO then required a point of novelty analysis. He suggest that the proper way to treat 101 is to assume everything in the claim was new, including, in the case of programmed computers, the computer.

  81. Without knowing the ins-and-outs of Musgrave, it sounds like Rich had the right idea.

    BTW, so-called “mental steps doctrine” = rubbish

    Also, so-called “pre-emption doctrine” = rubbish

  82. It might be a good read for all of us here to see that the very same issues we discuss here were of hot contention 41 years ago before the CCPA. Rich, in Application of Musgrave, 431 F. 2d 882 (CCPA 1970) stated that a process within the “technological arts” was patentable under 101, utterly rejecting the mental steps doctrine.

    Rich suggested that the real problem of the mental steps doctrine lay in indefiniteness, but that was a problem of 112.

    The dissent said this statement regarding “technological arts” was a radical extension of prior cases far beyond the requirements of the case before it. The dissent suggested that the major problem with the test was that it did not require that process be physical at all, or that it be capable of operating without human intervention.

    Just reading the case, it does seem to me that the Baldwin dissent should be studied for a solution to the present problem of identifying “abstractness.”

    link to scholar.google.com

  83. The fact is, section 101 is drafted so broadly as to cover virtually “anything under the sun made by man”.

    Good news for Diehr, who claimed actually making something. Bad news for Benson, Flook, and Bilski.

    What does Rader expect, from even a “coarse” filter, when there are so many claims of the same style/format that suffer from the same inherent defects as a result? Can’t apply a “coarse” filter because it would invalidate too many patents that all have the same problem? Is the software/diagnostic patent industry too big to fail now?

    It’s not like there’s some convenient way around this whole 101 issue that’s within the patentees’ control, such as claiming computer-implemented methods and methods of treating actual patients. But that makes our jobs hard, so I guess it’s the end of civilization as we know it.

  84. From PatentDocs, but does provide a healthy perspective:

    After a departure in Cybersource, I was thrilled to see the “coarse filter” and “manifestly abstract” language return to a decision. Rader’s “additional comments” (joined by Newman, by the way) are a good read and foreshadow the Chief Judge’s tendencies regarding a possible en banc rehearing of Cybersource.

  85. If I MUST state the obvious, I guess I will:

    Patent jurisprudence, as it stands, is absurd. It is the insane asylum of the legal system. It is a place where judges have felt at liberty to just let go, to act completely uninhibited, as though nobody was watching. It’s a funny-farm, with garishly-costumed oompa-loompa judges riding around tiny bicycles in a mirror maze while farting in time with bad show tunes.

    You, in particular, must understand by now how I feel about pretty much the entirety of patent jurisprudence. Maybe Rader feels the same way. If he does, he is justified in his sentiment.

    As the bumper sticker goes, if you’re not outraged, you’re not paying attention.

    And as an anticipatory response to your inevitable forthcoming txabaqqer comment, no, I don’t believe these claims to disclose patent-eligible subject-matter pursuant to 35 USC 101.

  86. but… but… but… if we treat this as a matter of statutory construction, we won’t be able to pound the law, and since we cannot pound the facts (a software change is equivalent to a firmware change is equivalent to a hardware change) and the machine DOES change, we won’t be able to pound the facts. We won’t be able to pound anything if you take away our policy preferences.

  87. Yes, I got that sense.

    Which is why it was doubly-funny for me.

    I prefer the double entendre, thank-you Leopold.

  88. IBP

    It’s a tough nut to crack, and Randall is, I think, just expressing his frustration with something he sees as a problem, but which he feels that he is essentially powerless to solve.

    Except that Rader’s a judge on the Federal Circuit and, as Jason noted, his problem appears to be with all of patent law, not 101, at least in the terms he’s expressing it.

  89. The fact is, section 101 is drafted so broadly as to cover virtually “anything under the sun made by man”.

    Patents with female inventors are invalid.

    /Clarence Thomas off

  90. It must be remembered that both CAFC and USSC judges are POLITICALLY APPOINTED CIVIL SERVANTS.

    No, they are not. Civil servants, that is.

  91. Section 101 is but fodder to those who love to mentally masturbate over inane areas of the law. The fact is, section 101 is drafted so broadly as to cover virtually “anything under the sun made by man”. If the busibodies want to legislate restrictions to the broad mandate of section 101 they are welcome to lobby Congress. Until then, section 101 will be, as Rader says, “a coarse filter” and after the latest decision, a very coarse filter.

  92. MM–

    Have you ever had to work in a team environment, where you couldn’t choose who was on your team and when they were on it?

    It must be remembered that both CAFC and USSC judges are POLITICALLY APPOINTED CIVIL SERVANTS.

    I have no particular love for Randall, as he is no better than the rest of them–but I agree with the sentiment he expressed in his opinion. Furthermore, I agree with his decision to express that sentiment publicly.

    What I do NOT agree with is the path of least resistance that is taken by individual judges, by panels, and by both the CAFC and USSC in general when it comes to 101. It is the characteristic response of the civil service when presented with a challenge.

    I’ve done the work, and I’m not even on the bench. They have fleets of researchers, rafts of clerks, and teams of support staff. Man up and try in earnest to get it done. They are either avoiding, or are incapable of performing, the required work.

    Some see the inability to get it done as symptomatic of a structural institutional problem, others as a failure on the individual level. It’s a tough nut to crack, and Randall is, I think, just expressing his frustration with something he sees as a problem, but which he feels that he is essentially powerless to solve.

    And with that mentality, we can all identify.

  93. It was a problem for the whole panel. The Supreme Court’s 101 cases are a mess, to use a technical legal term. I’ve read all of them several times, slowly. It’s hopeless — they are at odds with each other and they pay insufficient attention to how this is a matter of statutory construction, not the policy preferences of the justices.

  94. Conflation?  This is a legal doctrine?  Cite me a case or article that may help me understand what you are talking about, as I don't know if I understand you.  I am pretty sure that many other readers of this very prominent IP blog will not understand you either.

  95. IBP, would you and Randy like some cheese with your whine?

    we HAVE been watching–most of us aghast in horror

    Drama queens.

  96. The problem is with the Supreme Court’s 101 cases, which she must apply.

    Why wasn’t that also a “problem” for the rest of the panel?

  97. I’ve got lots to write, but I’ll start with this:

    I take full responsibility for Randall Rader’s desire to bail out of the 101 inquiry:

    Remember this patently-o Prometheus v Mayo thread?

    link to patentlyo.com

    In one of my comments, I said the following, in part:

    “Rader said that 101 had no helpful legal standard, and therefore that 101 decisions would be made based upon a political standard.

    The difference is that the necessary implication of Rader’s comment is that every articulated 101 determination that has been made, has been made according to a political standard rather than a legal standard.”

    “Splitting hairs, I know, but Rader went above and beyond. Sure, when non-judges allege judicial decisions to have been made on political grounds, that is one thing; but when a judge does it, what is he saying? That all of his previous 101 rulings were based upon a political standard?

    Why not just refuse to decide on 101 grounds, or articulate an entirely new 101 formulation?”

    Obviously, Randall Rader’s idea of judicial economy is to pick the path of least resistance, when presented the above choice.

    I’m not sure that I disagree with his approach, either. 101 jurisprudence, as it stands, is absurd. It is the insane asylum of patent law. It is a place where judges have felt at liberty to just let go, to act completely uninhibited, as though nobody was watching. It’s a funny-farm, with garishly-costumed oompa-loompa judges riding around tiny bicycles in a mirror maze while farting in time with bad show tunes.

    The problem is, that we HAVE been watching–most of us aghast in horror, while a few like Harold Wegner immediately reach for their bejeweled fezes and magic scepters. We are paralyzed by the scene before us–a paralysis borne not of fear, but of total wonderment and amazement produced by a direct glimpse into the quantum-mechanical underworld of patent law, of judges playing dice with Schrodinger’s cat.

    By the time we can come to our senses the party is over, and we are back on the surface-world. Now we understand everything, and want to share our revelation with others, except that we can’t find anybody who will believe such a fantastic tale.

    So we sit around lonely and glum, with nobody to share with, with no party to go to, until we spy a ray of light in our emotional darkness…wait, wait, what’s that over there?

    Why, it’s a 103 decision!!!!!!!!!!!!!!

  98. EG,

    to essentially violate appeal protocol

    Not the first time that the anti-software patent advocacy has caused individuals to close their eyes to the use of critical legal thinking.

    Won’t be the last either.

  99. EG, I do not ask that the Feds inspect the record not on appeal.  Only the record on appeal.  If that is not sufficient to determine the matter, then, of course, remand might be necessary.

    Discussing this, the defendant might move to invalidate the claims in the first instances on alternative grounds, 101, 102, 103, 112 if they all fit in one way or the other.   That way the appellate court can pick.

  100. But you’re also asking Newman and Rader to essentially violate appeal protocol, Ned. (And how do you know there were sufficient admissions by the patentee in the existing record to make a valid ruling based on 35 USC 112, 102, and/or 103?) Newman and Rader aren’t going to do that (for reasons clearly stated in the majority opinion) and rightly so.

  101. Sorry, I didn’t pick up on your comment as being “humorous.” Live Long and Prosper, Malcolm! (and yes, I’m a long time “trekkie,” and can even make Spock’s sign of greeting, developed by Leonard Nimoy based on his Jewish heritage).

  102. Benson was a bad decision….  In what way?  Should the claims have been held patent-eligible but non novel, for example:  Varying from the prior art only in non statutory ways?  Or obvious — varying from the prior art only in non statutory ways?  Could you be a little more precise here so we can follow your thinking.

    Would the claim stand muster, in your opinion if the claim merely claimed the mathematical algorithm sans any mention of a computer or other apparatus?

    Are mathematical algorithms patentable per se.  Ditto business methods or for that matter; or any method, such an an improved method for combing one's hair?

    Would the recital that the mathematical algorithm be conducted on a abacus change your views?  Would that be statutory?  

    What made these claims patentable?

    What distinctions can or should we make and why?

  103. you might care to note the holding in Bilski, decided later even than Diehr, to the effect that Benson and Flook are still good law.

    You might care to note the actual language used in Bilski about how to use Benson and Flook.

    I am sure that there is a pincite available around here somewhere.

  104. Because we insist…for a prior art computer?

    Say the lie often enough and ignore the new machine factual and legal standings…

    Back to the Tower with you!

  105. As far as Benson has been modified (cabined, if you will), the Court has announced its agreement on such.

    That would be Diehr, right? The one that claimed the actual physical machine for curing actual rubber that was quite obviously statutory all along?

    Unless the initial interpretation of Benson was that nothing is patent-eligible anymore, Diehr isn’t much of a limitation. Certainly not one that’s relevant in this case.

    If not mentioning later Court decisions serves to misinform and misrepresent, you might care to note the holding in Bilski, decided later even than Diehr, to the effect that Benson and Flook are still good law. That means any claims that look like the ones at issue in Benson or Flook are just as non-statutory as ever.

  106. Shilling: Combinations that include mental steps are easily patent eligibile.

    Nobody ever said otherwise. You have a reading comprehension problem. You’ve been alerted to this fact before.

    Patent eligibility does not rest on some notion of point of novelty.

    It certainly does and you’re failure to acknowledge this is a sign of your blindness and/or willingness to dissemble.

    It’s certainly true that as long as you are here the shilling shall continue. Along with AI, NWPA and a few of the other txxxbxxgers and their sockpuppets, you have a great reputation for repeating the same tired assertions over and over, like some raving preacher in the middle of the street telling people they are going to hxll for drinking alcohol. The earth is moving under your feet and all you can do is wonder why everyone runs away from you.

    This is patent law we’re talking about, grandpa, not some holy book. It’s changing all the time, not just every 100 years. Get a life.

  107. Actual Inventard: And of course Diehr still controls and claims must be taken as a whole.

    No surprise there. No matter what the facts, the beliefs of the fundamentalists remain unshaken.

  108. citing B-claims as a response to Benson…

    but US law has developed along a different path…

    Two things:

    1)Root cause analysis does not stop at the notion of the creation of the B-claims, which was not the point of the statement. Rather, the point was that conflation is bad, and that Benson itself was most likely a bad decision. As far as Benson has been modified (cabined, if you will), the Court has announced its agreement on such.

    This is not a new point, yet one that still seems to evade some.

    2)US law has developed, but short-circuiting that actual development by not including later Court decisions (like Diehr) only serves to misinform and misrepresent.

    When it comes to the 101 issue, parsing of the law – much like parsing of the claims leads to a false view. There is no shortage of those wanting to have the false view held as the “correct” view, but under the current full development, such is simply not the “correct” view.

  109. Software is not a new use for an old machine. An old machine that cleverly can simulate any machine is used to simulate the new machine. That is fact.

    If that’s a fact, that’s a pretty cool new use for that old machine.

  110. that to go to the trouble of actually reciting them is banal and trite.

    Except that the trouble must be taken because so many don’t seem to get those bedrock fundamentals.

    Banal does not fit because the obvious appears not to be so obvious to a certain vocal few.

    Trite does not fit because obviously, these principles are not of little import.

    So if what you wanted to say is not proper, perhaps you would have been better off not saying it. Speaking volumes – even clearly – is not always a good thing.

  111. >>Nobody’s saying it does. Mostly because software >>claims don’t recite the form of the machine

    This is one of those misrepresentations that is repeated over and over by you tea baggers. The fact is that as much structure is recited in software as in ee and chemcial arts. I note that what is at the end of the chemicals that MM creates is not recited in detail. The reason is that there are a large number of alternatives that one skilled in the art knows. So, if I say sort the numbers, that is structure. One skilled in the art knows what the current sorting algorithms are that can be used. Just as a hinge, chemical structure, and transformer are recited in other art fields.

    That is what is so frustrating about this. You are intellectually dishonest. And, you do not want to engage in a fair discussion. Tea bag boy.

    Software is not a new use for an old machine. An old machine that cleverly can simulate any machine is used to simulate the new machine. That is fact.

  112. software patents are hurt

    Because we insist that you claim software for what the invention actually is – a new method of use for a prior art computer? Oh, the horror.

    101 should not depend on the form of the machine.

    Nobody’s saying it does. Mostly because software claims don’t recite the form of the machine.

    All we’re saying is that “instructions readable by an instruction-reading machine, for performing the instructions” is a bad clam. It’s patent law 101. Literally.

  113. IANAE: I see you are back to annoy me.

    Obviously the dispute is point 2 in whether or not they are applying the law or not.

    As to point 3. Well, let’s see here, if you use 101 to threaten areas of patentability, then yes, software patents are hurt. We have to work harder to make sure Moore and her ilk don’t use some trick to get our clients.

    I see your comments are as inane as ever.

    As to Cybersource: information takes space and energy to represent. Information is fundamental to the laws of physics. It takes time, space, and energy to transform information. Represented information that is transformed is every bit a transforamtion as a chemical transformation. And, one cannot distinguish between ee and cs. Just is not possible anymore. 101 should not depend on the form of the machine. Any software can be implemented by a hardwired computer or software. Any ee invention can be performed by a processor and whatever in/out sensors are needed. Just shameful that there is any disagreement on any of the my assertions made above.

    PS: IANAE you are a pest. Dispute the assertions above.

  114. Paul, when a claim gets that broad, claiming the result achieved by the principle, isn’t the problem exactly like it was stated to be by Story in Wyeth v. Stone — a claim to a principle in the abstract?

    Moore cited Story’s opinion in her dissent.

    Wyeth v. Stone , 30 F. Cas. 723 (C.C.D. Mass. 1840) (No. 18,107)

  115. In my dictionary, there is no such word as “perjorative”. Looked up “banal” and “trite” though. They fit what I wanted to say about propositions that are so “bedrock” fundamental that to go to the trouble of actually reciting them is banal and trite.

    And my being disparaging was deliberate, so I’m glad that came across to you clearly too.

  116. Stop using 101 to legislate. And, stop forcing patent attorneys to spend so much time on 101 (and really 112 issues that Moore and her ilk use to try and get rid of software patents.)

    The following points appear to have escaped your notice:

    1) 101 actually is a condition for obtaining a valid patent, and all patents are still required to comply with it.
    2) 101 is already legislated, by the people whose job it is to legislate, and applying it in court isn’t technically “legislating”.
    3) No software patents were harmed in the making of this decision.

  117. In particular, I find it difficult to see how the ‘139/’739 patents possibly survive scrutiny under Parker v. Flook, 437 U.S. 584 (1978). The mental step itself is not a patentable subject, so how can combining it with an act (or the lack of an act) that has previously been done without the mental step make it patentable?

    If there was any doubt as to why this forum runs at typically 60% plus posts by a vocal three, this invitation by Crouch can easily be seen for the continued Shilling.

    Flook is not law that can be applied by itself (at least on this point).

    Combinations that include mental steps are easily patent eligibile.

    Patent eligibility does not rest on some notion of point of novelty.

    These are hard-core holdings that only the vocal minority of Shillers keep advancing. The fact that Crouch is troubled by this only shows that he has difficulty understanding what the law actually is.

  118. EG, but if they really wanted to resolve the case on 112, 102 or 103 simply based on the claims themselves, coupled with admissions aplenty made by the patentee, they might have done so. This would be like assessing the sufficiency of the complaint in state court, where you take the facts of the complaint and legal theories together to determine whether the plaintiff has a case.

    If there were additional facts that needed to be assessed to avoid such a summary disposition here, I am unaware of them. Due process is important, I agree, but not to the extent that the defendant and the courts should waste their time and money if the plaintiff plainly has no case.

  119. Rader got it exactly right. The CYBERSOURCE decision illustrates the absurdity of many of the other Fed. Cir. “judges.” Stop using 101 to legislate. And, stop forcing patent attorneys to spend so much time on 101 (and really 112 issues that Moore and her ilk use to try and get rid of software patents.)

    Try applying the law. What judges like Moore don’t get is that by using the law to legislate as a judge she destroys the entire confidence in the legal system and the country. So many people you run across these days do not care about morals or ethics or the law. I think this is directly attributable to people like J. Moore.

  120. Exactly. Moore thinks she can use 101 to legislate. This, I believe, is part of a bigger problem in the U.S. where ethics and morals have been lost to purpose. The end justifies the means—let’s get rid of software patents says J. Moore and her ilk by legislating by our decisions.

  121. AI, I think Newman and Rader would simply prefer to deal with the claims under 102, 103 if they otherwise recite a step that is statutory. In other words, where we have

    1) mental steps; and
    2) a physical step,

    where the physical step is old, they would prefer the claim to be held invalid as old or obvious (I think).

    But this case does is very much like Diehr, where there too the old process was actually improved with the new math. Same problem here, it seems. Immunization according to the new schedule does ave long term medical benefits.

    The major difference is this:

    In Diehr, the math operated on measured data and then produced a physical output. The process described was complete. Here, the measurement steps and the administration steps are claimed separately. I think that might be the problem. Each one by itself is incomplete. Each one involves a physical step, but until the whole process is claimed, it is not the same as in Diehr.

    Do you agree?

    Right now,

  122. And of course no one understands anything unless they agree with your interpretation of it

    Of course – that’s a basic proposition of the Shilling.

  123. Banal and trite as ever you like.

    Most people do not consider bedrock propositions “banal and trite.”

    As witnessed by the volume of postings that would giddily sweep away critical legal thinking, the perjorative nomenclature that you choose speaks volumes.

  124. Perhaps he thinks he can teach the EPO a thing or two about how to build a “strong” patent system?

    That’s right. Europe simply doesn’t have the proper incentive structure in place to encourage well-funded researchers to invent the idea of dosing a known medication with the intention of mitigating a known adverse effect of that medication, according to known studies showing the correlation between dosage forms and that particular type of adverse effect.

    I also like Classen’s assertion that a “concerned parent” reading up on what’s being injected into her child would infringe the patent. That would be a fun infringement suit to read about in the papers, wouldn’t it?

  125. Nice isn’t it. Banal and trite as ever you like. Who could ever disagree with it?

    In what way is it helpful to the case in point, though? We are not talking about breadth per se. We are debating whether the claim at the bar is in effect an exclusive right to the scientific method, as such.

  126. I particularly liked this….

    “A pioneering invention, that meets the substan- tive criteria of patentability, may indeed warrant broad scope. Breadth does not negative patent eligibility, al- though it may not meet the conditions of patentability. Nor does breadth preclude investigation by others. To the contrary, a fundamental purpose of patenting is to pro- vide knowledge, to achieve further advance. The dissent’s “absurd” examples are indeed absurd.”

  127. @Paul,
    Good point.
    Not only “over-breadth” in that the inventor is claiming credit for more than he possibly could have alone contributed to society,
    but also 112 indefiniteness because how can we know that “inducing a chronic immune-mediated disorder” is present of not if we have not yet identified or specified the disorder and Dr, Classen has not enabled us to determine if “a” chronic immune-mediated disorder is present or not?

    The claims should have said a predetermined and known disorder rather than any and all disorders. Dr. Classen has not identified all disorders. So yes, it is a mixed question of over-breadth and indefiniteness and nonenablement. Perhaps the judges had a nagging doubt about this in the back of their heads but could not articulate it and perhaps ditto for the defendants. So they reached for 101 “abstractness” instead.

  128. Somebody upthread in Unigene surmised that Rader was desperate to allow the case. In his “additional views” here, he rails against Europe.

    If you plug “Classen Immunotherapies” into the search function for the EPO Register of Patents you get 5 hits. Four are deemed withdrawn and one is actually refused. Perhaps he thinks he can teach the EPO a thing or two about how to build a “strong” patent system?

  129. Having read Moore, Rader seems even more eccentric. Is it all for a purpose, to set the case up for SCOTUS review?

    Rader is worried about pharma research decamping from the USA. But Moore writes:

    “Extending patent protection here would “severely interfere with, or discourage, development and the further spread of useful knowledge itself” Id at 128. To wit, nobody else can search for new immunogens, to treat either existing or currently unknown chronic immune-mediated disorders without infringing”

    She is saying that allowing stuff like this to get past 101 is the best way to sweep pharma research out of the USA.

    SCOTUS, who’s right on 101? Would you like to hand down a unanimous judgement, to bring some legal certainty? Or is it all too difficult for you?

  130. Have just read the Rader musings. I think he is losing his marbles.

    He writes that it was the Swiss form of claim that caused pharma research activity to strike camp in Europe and set up camp in the USA. Since when did corporations move their research activity into countries where the risk of being enjoined is greater? If pharma research did move in the direction he says, it was for other reasons than the Swiss form of claim.

    Then he writes that “Excluding categories of subject matter from the patent system achieves no substantive improvement in the patent landscape” So, patents on mental acts, abstract ideas and laws of nature are a good thing, are they?

    Then he laments the 101 hurdle because “language games impose high costs on patent prosecution”. Is this a plea to do away also with the filter imposed by 35 USC 103 because it too requires inventors and prosecutors to play “language games” with the PTO?

    But it is the bare-faced cheek that narks me the most, when he tells us that Europe is known for its “uncertainties in the lagel landscape”. Because Rader CJ has now announced it as a fact, does it now become fact? i wonder.

    Now to the Moore Dissent, for a treat.

  131. “Nothing I read in the decision ”

    I think you meant to say: “nothing I understood in the decision…” which is of course fine because nobody expects you to understand anything.”

    And of course no one understands anything unless they agree with your interpretation of it.

    Oh, and when you talk about USSC’s case law you are talking about dissents, and briefs and papers for losing sides, not the ruling majorities.

    And for the record, anyone that abides by the SCOTUS Case law, and that better be everyone, is on the side of the Actual Inventor.

  132. “Nothing I read in the decision ”

    I think you meant to say: “nothing I understood in the decision…” which is of course fine because nobody expects you to understand anything.

    Let me bottom line it for you old man, the battle lines are a forming up and becoming clear. You’ve got Newman and Rader along with the patent office et al. on one side, and a goodly many number of judges who happen to abide by the USSC’s caselaw along with the USSC on the other. The stage is becoming better set for a large sht storm to go down so to speak and then the USSC to step in and handle its business. Oh and on the side, J Moore was using precisely “my test” in case you missed it.

  133. “OH man, this decision is AWESOME.”

    Okay I only read the decision once, but I honestly don’t see what you, Mooney, Nedo and the rest of the anti patent crowd are so excited about.

    For example…

    Nothing I read in the decision affirms your phony pre-emption doctrine, Which would be impossible anyway since you define it, by always saying you have already defined it, and thus never define it.

    Nothing I read in the decision supports Mooneys loony doctrine of if it has a mental step, or physical step its patent ineligible. Nor his nonsense of combining all separate steps of the statute into one.

    Nothing I read in the decision supports dishonest Neds notion that so called business methods are ruled patent ineligible by SCOUTUS Bilski and Software was made ineligible by Benson.

    And of course Diehr still controls and claims must be taken as a whole.

    So what on earth are you all so tight pants about?

    I did however not the majority up held all the points of laws us Actual Inventors have won over the recent years. You know those pesky precendents from Diehr, and Bilski Paragraph 14, that gives you nightmares..

    For exampled I Liked the following…

    “However, precedent has recognized that the presence of a mental step is not of itself fatal to §101 eligibility, and that the “infinite vari- ety” of mental and physical activity negates application of a rigid rule of ineligibility. See Application of Prater, 415 F.2d 1393, 1402 n.22 (CCPA 1969).”

    Take that Mooney!

    “450 U.S. at 189-190 (quoting In re Bergy, 596 F.2d 952, 961 (CCPA 1979)). The Court recognized the separation of the §101 “categories” of eligible subject matter from the §102 “conditions” of patentability, explaining that “rejec- tion on either of [§102 or 103] does not affect the determi- nation that respondents’ claims recited subject matter which was eligible for patent protection under §101,” id. at 191. We apply this distinction to the Classen patents, and conclude, as we shall discuss, that the ’139 and ’739 claims cross this threshold”

    BOOM!

    “However, precedent has recognized that the presence of a mental step is not of itself fatal to §101 eligibility, and that the “infinite vari- ety” of mental and physical activity negates application of a rigid rule of ineligibility. See Application of Prater, 415 F.2d 1393, 1402 n.22 (CCPA 1969).”

    POW!

    In Prater the court explained the inappropriateness of attempting to establish a universal rule for all situations that include mental activity:
    Between the purely mental and purely physical end of the spectrum there lies an infinite variety of steps that may be either machine-implemented or performed in, or with the aid of, the human mind (e.g., “comparing” and “determining”). In ascertaining whether a particular step is “mental” or “physical,” each case must be decided on its own facts, considering all of the surrounding cir- cumstances, to determine which end of the spec- trum that step is nearer. It may well be that the step of “comparing” may be “mental” in one proc- ess, yet “physical” in another.

    BANG!

    As in Bangs Gavel! All is still the same and still in favor of the winners, Actual Inventors!

  134. Should the question arise on remand, the court may consider whether such a scientific investigation of the Classen position is subject to preclusion by the patentee, or is permissible under patent principles

    Reading this passage from Newman yet again. What is she driving at with this strange “permissible under patent principles” phrase? Is she suggesting some sort of “equitable” exception to infringement rather than invalidation of the claim?

    That would be pretty messed up.

  135. To be sure, you can brush anything off if one wants to. Newman can brush off a holding of obviousness just as easily. I’ve seen her do it. She even runs an illegal claim importation smuggling company on the side. She’s as much a rogue and scoundrel as Han ever was.

    And to be sure, it looks like the claims here blatantly be a claimin’ on abstract ideas. Classen themselves admit it, in their own way.

    And I don’t think the wholly preempt analysis requires too much. Once one gets good at it, it isn’t that hard. That said, it should be given substantial difference. If there is even a chance that you’re preemptin’ on an abstract idea then your sht goes down. If it’s your bad claim drafting to blame, then so be it, learn to hire a good lawlyer next time.

    But I agree, if they admit all that is required to infringe is that you learned something new then there is a problem. Indeed, seems to me that such is an admission that you just patented the thing learned, though perhaps you limited your claim to a certain technological environ. I mean surely what it takes to infringe is in fact what you patented.

  136. The “wholly preempt” analysis asks too much and, as Newman illustrates, is easy to wave off.

    For these types of claims, better to simply ask whether an otherwise non-infringing actor becomes an infringer of the asserted claim merely by learning a fact discussed in the patent specification. That’s enough to demonstrate that the claim runs afoul of 101.

  137. Classne: even if Merck did not “participate in or facilitate” the DeStefano study, Merck infringed the Classen patents when Merck “reviewed” the study and “evaluated the correlation” therein

    I think it would be perfectly fair for the judge to ask Classen which claims are infringed under this theory, and then, upon receiving the answer, immediately declare every one of those claims invalid under 101 as a matter of law. Done.

    That’s real judicial economy.

  138. I should add to this some comments on the interesting last section of Newman’s opinion for the majority:

    Study of the information in patents is not preempted, whether that information is broadly claimed, as in Classen’s “representative” claims, or more narrowly claimed, as in other Classen claims.

    Newman is wrong because, as pointed out above, one need do absolutely nothing new except “compare” public, unpatentable information in the manner suggested by Classen to become an infringer of Classen’s claims.

    Also this:

    The district court accepted the premise that such activities [evaluating risks associated with vaccination timing by reviewing studies performed by others] could be infringing, in deciding the defendants’ motions for summary judgment. Should the question arise on remand, the court may consider whether such a scientific investigation of the Classen position is subject to preclusion by the patentee, or is permissible under patent principles.

    YES: 101 eligibility can be determined at any time, whenever the issue arises.

  139. Newman and Rader could have resolved this case on 103 grounds (they even hinted as much), Ned. But unfortunately, one of the serious problems with cases resolved by summary judgment reared its ugly head again: a sparse factual record relative to the other issues that summmary judgment wasn’t based on. Pulling the trigger too quickly on summary jdugment does have that downside.

  140. “Whoever wrote those claims should simply be flown into the sun and forgotten about for all time.”

    Should we erase even the very memory of Classen from the histories? Shall every piece of their parchment be burned and their emails purged? Shall every Classen historian and scribe have their eyes pulled out and their tongues cut from their mouths? Shall even uttering the very name of Classen, or their attorney, be punishable by death? Shall the world never know that they even existed at all?

    link to youtube.com

    Seems a bit harsh, but I like the idea. They should fear our Devine Power imo.

    “In other words, I’m immunizing some patients according to a schedule. No infringement there. Now I read Classen’s patent and I look at some old data of the type that Classen refers to in his claim, taking into account Classen’s “teaching” about how to interpret those schedules. In light of my investigation, I decide it’s best to continue on with the schedule I was using. According to Classen, I now infringe his patent.”

    Yeah I got that just reading through the decision.

  141. Dittos. Rader noted the endless attempts of the patent bar to elevate form over substance in order to do end runs around subject matter exclusions, citing B-claims as a response to Benson and Swiss claims as a response to the Euro ban on biotech. But, even though he sees this response for what it is, form over substance, he laments not the abuse of system represented by the subterfuges, but the ban on subject matter in the first place.

    The dissent in Flook said something along these lines as well. If the subject matter is nominally withing the four classes, it would be better to treat the claims under 112, 102 or 103. I think the Euros do it exactly this way.

    Rader is not necessarily wrong in this; but US law has developed along a different path. US courts would treat the claim to a piano player with a new music roll as a claim to the unpatentable music (101) and not a claim to a piano player whose variation from the prior art consists only in unpatentable music (103). The difference, however, is one only of form, not of substance.

    Get it, your Honor?

  142. Actually, the more I read of Classen’s statements, the more I understand why the court is confused. Worst lawyers ever, or worst client ever? Sometimes it’s hard to figure that out. I hope and assume that Merck does not back down because at the end of the day, Classen is going to have his axx handed back to him, bigtime. Whoever wrote those claims should simply be flown into the sun and forgotten about for all time.

    Think about this:

    It is not necessary for the infringer to conduct its own clinical trials or to prove the cause of any risks. It is also not necessary for an infringer to change its recommended schedule after assessment of risks. If the risk assessment demonstrates that the current schedule is the low risk schedule, maintenance of the current schedule is step (II) of the Classen method.

    In other words, I’m immunizing some patients according to a schedule. No infringement there. Now I read Classen’s patent and I look at some old data of the type that Classen refers to in his claim, taking into account Classen’s “teaching” about how to interpret those schedules. In light of my investigation, I decide it’s best to continue on with the schedule I was using. According to Classen, I now infringe his patent.

    Yes, folks, it’s that fxxxed up.

    Henceforth, I will refer to this kind of infringement as You Peeked! infringement. It’s a transparent attempt by the patentee to patent knowledge itself. In You Peeked! infringement, merely learning something about one’s otherwise non-infringing actions (e.g., how risky they are, how likely they are to work) turns you into an infringer.

    As Jason notes upthread: The mental step itself is not a patentable subject, so how can combining it with an act (or the lack of an act) that has previously been done without the mental step make it patentable?

    Great question. Hopefully the Supremes will answer this in Prometheus because the issue is staring them right in the face, even if they didn’t do a great job of presenting the question themselves.

  143. “How the court missed this escapes me.”

    You did actually read the opinion didn’t you?

    If you did you must have noticed how desperate Newman and Rader were to curtail the judicial exceptions rampagin’ all across their patents. When one enters such an emotional stage, one says anything.

  144. I just got done reading it all, and I think she did a pretty dam good job. The only thing she doesn’t do is explicitly spell out what the abstract ideas at issue are. Instead she refers to them generally in terms of the scientific method etc. A mistake if you’re trying to persuade a colleague imo. However, she does at least offer good examples of things which are covered which blatantly ought never be covered by a patent. Of course, the majority waves those away with a magic wand of don’t give a sht.

    Also, I get the feeling that as a younger member of the court I think J. Moore may well be a readin’ on this blog. Indeed, readin’ on my comments. Because you’re right, she’s doing the exact analysis I’ve been proposing for a few years now. 0.0

  145. Just think of the incredible ice cubes we’d have now if it wasn’t for Judge Story’s luddite worldview.

    /pxxtxnt txxbxgger off

  146. OH man, this decision is AWESOME.

    You’ve got your clear ideological split clearly defined for all to see betwixt the judges for starters.

    Then you’ve got some judges telling us about how research never infringes patents.

    Then you’ve got Rader arguing AGAINST his own reasoning in the CAFC Bilski decision by arguing against the effects of his reasoning there, specifically whole fields of subject matter going ineligible. And not only that, Rader seems to think that instead of looking past the bs in claims and properly applying the abstract idea analysis he thinks that we should simply allow claim drafting games to triumph. Indeed, one would think from his little essay that he simply does not like the judicial exceptions ever having been made and refuses to apply them save in the most egregious of cases where really the only problem is in how the claims were drafted as opposed to the substance of the subject matter in the claim.

    I love this decision. This, along with the other recent cases is really setting the stage for a show down at high noon between the two groups. I cannot wait for this sht to hit the fan.

    And of course, not to leave her out, you have the newbie to the court writing the most competent decision out of all of them clearly setting forth what she is talking about, what the test is, how to apply it, and the result. Followed by an explanation of how the majority is fin’ up something serious by apparently adopting their own test, ignoring the USSC’s words, and possibly even returning to the useful concrete and tangible result nonsense. Ridiculous. Having two of our best judges clearly getting their arse handed to them by the newbie. All in the name of what? Nothing but patent protectionism/expansionism.

  147. Good result, but I, too, am perplexed by the majority’s suggestion that the ‘283 claim did not involve immunization. It’s explicitly recited as a separate step in the claim. Judge Moore was right on that point.

  148. “Apparently Rader believes there is a “plague” of 101 issues being raised by defendants which is preventing “naive” patentees from more easily recovering their deserved fortunes. And the Federal Circuit has to decide stuff. Oh, the humanity!!”

    I loled most heartily.

  149. The majority unquestionably got this wrong. Here is the patentee’s summary from his earlier appeal brief (2006 WL 3846638):


    The ‘139 and ‘739 patents include a total of 183 claims. The claims of the ‘139 and ‘739 patents cover a routine method of therapeutic use and are directed to “immunizing a mammalian subject”. They recite two method steps: (I) screening two or more immunization schedules; and (II) immunizing according to the lower risk schedule. The ‘283 patent has 47 claims directed to “determining whether an immunization schedule affects the incidence or severity of a chronic immune-mediated disorder” and recite two method steps: (I) immunization and (II) comparison.

    The patent claims pertain to “risk evaluation” which is the possibility of causation not proof of causation. In order to infringe the claims of the patents in suit, the infringer need only assess the risk, step (I). It is not necessary for the infringer to conduct its own clinical trials or to prove the cause of any risks. It is also not necessary for an infringer to change its recommended schedule after assessment of risks. If the risk assessment demonstrates that the current schedule is the low risk schedule, maintenance of the current schedule is step (II) of the Classen method.

    If the comparing step occurs before the immunization step the patent covers a routine therapeutic method of use. If the comparing step occurs after the immunization step then the patent covers what may be called a “research tool.”

    How the court missed this escapes me.

  150. As stated in the dissent, over-broad claims are well known to retard rather than advance the useful arts.

    Consider the claim in Wyeth v. Stone, 30 F. Cas. 723, 727 (C.C.D. Mass. 1840) (No. 18,107) (Story, J.), a case cited by the dissent. The patent disclosed a machine that could cut ice blocks. The prior art disclosed humans using conventional tools. The claim was to “the cutting of ice of a uniform size by means of an apparatus worked by any other power than human,” in essence all machines for cutting ice of an uniform size.

    Story held the claim unpatentable as directed to a principle.

    Some here, and indeed Rader and Newman it seems, would prefer that such a claim be assessed under Section 112, p. 1 or p. 2 rather than under 101. However, the original authority (Story) treated the claim as a claim to a principle, and not to any machine, even though one machine was disclosed.

    Regardless, I hope you can see that the protection claimed went well beyond the disclosure. Having invented one machine for a purpose, the patentee claimed all, regardless that he did not invent them.

    So, given such a patent, does it promote or hinder the progress of the useful arts? Your call.

  151. Another thing the majority got right was upholding the d.c.’s Summary Judgment of non-infringement with respect to one of the claims. Check it out.

    The district court granted Merck’s motion for summary judgment of non-infringement, on the ground that … “Merck offered uncontroverted evidence that it had no involvement in the DeStefano study.”

    Classen appeals, arguing that even if Merck did not “participate in or facilitate” the DeStefano study, Merck infringed the Classen patents when Merck “reviewed” the study and “evaluated the correlation” therein. Classen states that Merck’s “screening of the trials, papers, etc.” of the DeStefano study of itself was an act of infringement. Classen Br. 40. Classen also argues that Merck infringed the representative claims based on its funding of studies of the relationship between the hepatitis B vaccine and the occurrence of multiple sclerosis.

    Wow. What an incredibly obnoxious axxhole.

  152. But, why couldn’t the Feds have simply affirmed the lower court here on 103 grounds? If the claimed subject matter (of the three claims) as a whole varied from the prior art only in unpatentable mental steps, it should be declared obvious as a matter of law. Right?

    Why waste the litigants and the court’s time with a remand? What is the whole point?

    It would be a travesty, in my view, to allow this case to be remanded and then have it decided in the way I suggested. I think it is much better decide on the unpatentability mental steps in some form, 101 or 103, at the appellate level.

  153. What is funny is that while Rader had the best idea in Bilski even he is not quite sure of how to apply the abstract idea analysis.

    Indeed, what may be even more funny is that Moore is better at it than the old timer. Possibly due to her not having affirmed thousands upon thousands of claims in the past that run afoul of it.

  154. Yes, and precisely because a D.C. 101 decision can be so subjective (and thus practically fact-free) is it not thus much easier to grant S.J. for than 103, because of the absense of “disputed facts” that usually prevent S.J.?
    For the same reason, I agree that we seem likely to have unpredictable Fed. Cir. 101 panel decisions that are panel-member and result-oriented driven, as you suggest.
    P.S. could not the Fed. Cir. have gotten itself out of this 101 mess by sustaining the judgment on a different basis – 112 – for being overbroad or overclaiming – as in O’Reilly v. Morse and numerous other cases, instead of trashing normal claim drafting?

  155. EG, I was making a joke. I agree that there is no reason to require that 101 be addressed first, but there are good reasons not to require it (although sometimes it makes sense to do it first, I think). My joke referred to a sad exchange with “David Stein” on one of the Cybersource threads.

  156. It may seem easier, Paul, but resolving what is now all too often a “subjective” issue on summary judgment under 35 USC 101 flies in the face of due process, as well as ensuring that there are no genuine issues of matter fact that are being overlooked by the “easy route” (something which, in my opinion, the courts give too little lip service to because of the docket pressure they feel). Let me put it this way (I believe I’ve said this before to you): do you want consistent resolutions that will be respected, or easier resolutions that create chaos in terms of the inconsistent precedent generated (which is exactly what we unfortunately have right now)?

  157. Hey, I don’t have a big problem with the majority’s holding. The two most patent-lovin’ judges on the Federal Circuit just held that a claim with a clear transformative step is nevertheless ineligible under 101.

    Yes, it’s been a very bad month for the Dierhbots. And it’s not going to get better. I’m loving it.

  158. What public policy is served by saying claims like these are not patentable?
    Patents are available to spur innovation; do we not want innovation in the subject matter of these claims? Why not?

  159. Regarding the ineligible ‘283 claim, here is claim 1:

    1. A method of determining whether an immunization schedule affects the incidence or severity of a chronic immune-mediated disorder in a treatment group of mammals, relative to a control group of mammals, which comprises

    immunizing mammals in the treatment group of mammals with one or more doses of one or more immunogens, according to said immunization schedule, and

    comparing the incidence, prevalence, frequency or severity of said chronic immune-mediated disorder or the level of a marker of such a disorder, in the treatment group, with that in the control group.

    Jason writes upthread (quoting from the majority’s decision, I believe): “Classen asserts that the ‘283 patent is infringed “when a person reviews relevant information, whether the person is a producer of vaccines, a health care provider, or a concerned parent.” Slip Op. at 8.

    This is an obvious (but intentional?) error in the majority’s discussion of the facts, as noted by Judge Moore in a footnote on pages 4-5. Claim 1 of the ‘283 patent unambiguously requires an (transforming) immunization step for infringement.

  160. Only if you view the patent statutes in numerical order, and not in logical order, Malcolm. As I’ve said repeatedly, claimed subject matter should be subjected to the 35 USC 112 screen first (this includes whether the claimed subject matter is “preemptive”), followed by 35 USC 102/103. As Research Corp., and now the Classen remand, astutely point out, we need to address “patentability” (the objective substantive merits) questions first, and “patent-eligibility” questions last (which in most cases will simply be unnecessary to decide). You, of all people, have “railed” against patent/claims coming through that should have been trounced on the patentable merits rocks of 35 USC 112, 102, and 103. Here’s your chance to achieve exactly what you’ve asked for (by endorsing starting with 35 USC 112, 102, and 103 first), and not having to “hand wave” like has happened by using “all too often subjective” 35 USC 101 as the initial screen.

  161. Mooney’s comments re Prometheus claims are the only part of this entire discussion that is relevant, the rest is opinion from the gallery. Judge Rader’s opinions are much more well learned and his comments are correct and long overdue.

  162. True, but since it seems to be very much easier to get a fast and low cost resolution of a patent suit by S.J. on 101 than on 103 [greatly preferable for both defendants and judges, and avoiding payoff settlements just to avoid full litigation costs] and since the PTO also usually takes too long for 103 reexaminations, what is the appropriate judicial solution?

  163. The majority opinion and “additional views” opinion squarely address the absurdity and subjectivity of viewing claimed subject matter through the 35 USC 101 “patent-eligibility” screen first and not initially through the “patentable merits” screens of 35 USC 112, 102, and 103 screens

    But it’s a “threshold issue”! ;)

  164. Jason, I agree with your “Comments” section and I, too, was struck by the remarkable passage in Rader’s “additional views” section. Here are the core paragraphs:

    When careful claim drafting or new claim formats avoid eligibility restrictions, the doctrine becomes very hollow. Excluding categories of subject matter from the patent system achieves no substantive improvement in the patent landscape. Yet, these language games impose high costs on patent prosecution and litigation. At the same time, the new games can cheat naïve inventors out of their inventions due to poor claim drafting. Moreover, our national innovation policy takes on characteristics of rewarding gamesmanship.

    In addition to gamesmanship, eligibility restrictions increase the expense and difficulty in obtaining a patent. By creating obstacles to patent protection, the real-world impact is to frustrate innovation and drive research funding to more hospitable locations. To be direct, if one nation makes patent protection difficult, it will drive research to another, more accommodating, nation.

    That is whining drivel and nothing more. Apparently Rader believes there is a “plague” of 101 issues being raised by defendants which is preventing “naive” patentees from more easily recovering their deserved fortunes. And the Federal Circuit has to decide stuff. Oh, the humanity!!

    I also note that claim 1 from the ‘283 patent, which the majority found ineligible, is indistinguishable from Prometheus’ broadest claim (which the en banc court found eligible). Both claims are in the form: (1) non-patentable (old) transforming step to obtain information and (2) mental step of comparing information to reach a conclusion. The majority’s attempt to distinguish the two claims is as incomprehensible as the en banc’s attempt to distinguish Prometheus broadest claim from In re Grams (where a similar claim was also found ineligible).

    Ultimately, I believe this decision, particularly the invalidation of the ‘283 claim, represents bad news for Prometheus.

  165. Good commentary by Mr. Rantanen.
    The “Bilski waffle” did not create this problem, and it is much older. The subject claim seem to me to be analogous to the famously Sup. Ct. rejected claim 8 from Morse’s patent that was declared invalid as overly broad in O’Reilly v. Morse et al, 56 U. S. 62 (1853)?

  166. Well, this Classen opinion will certainly “rock the patent-eligibility” boat in many quarters. The majority opinion and “additional views” opinion squarely address the absurdity and subjectivity of viewing claimed subject matter through the 35 USC 101 “patent-eligibility” screen first and not initially through the “patentable merits” screens of 35 USC 112, 102, and 103 screens. As Sherlock Holmes would say, “the game is truly afoot” regarding the patent-eligibilty question, and the judicial donnybrook at the Federal Circuit (and potentially at the Supreme Court) is about to begin in earnest.

  167. Andrew Dhuey said: “Instead, the courts have wrestled with policy questions as though they were legislators.”

    This.

  168. Chief Judge Rader and Judge Newman’s opinion looks to me much like a merits-stage brief at the Supreme Court, written to persuade the five conservative justices. I thought the analogy to “substantive due process” in constitutional law was particularly clever. It’s easy to forget that “process” under 101 is a statutory term.

    So much of the 101 jurisprudence barely considers the plain meaning of this statutory term, and any discernible legislative intent behind it. Instead, the courts have wrestled with policy questions as though they were legislators.

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