Guest Posts: Preparing for Mayo v. Prometheus Labs

By Professor John Golden, Professor in Law, The University of Texas at Austin

Mayo Collaborative Services v. Prometheus Laboratories, Inc., No. 10-1150 (S. Ct.)

Scheduled for oral argument on Wednesday, December 7, 2011

In Mayo Collaborative Services v. Prometheus Laboratories, Inc., the U.S. Supreme Court looks to address questions of whether and when certain types of medical methods are patentable subject matter. Prometheus specifically involves methods for optimizing patient treatment in which the level of a drug metabolite is measured and a measured level above or below a recited amount "indicates a need" to decrease or increase dosage levels. In 2005, the Court granted certiorari on related issues in Laboratory Corp. of America v. Metabolite Laboratories, Inc., but the Court later dismissed LabCorp as improvidently granted. In 2010, the Court reaffirmed the existence of meaningful limitations on patentable subject matter in Bilski v. Kappos, but the Court but did little to clarify the scope of those limitations.

Will Prometheus bring light where Bilski failed? Arguments to the Court invite it to further clarify the status of the machine-or-transformation test for process claims. Bilski indicated that this test is relevant but not necessarily decisive, and the Federal Circuit relied heavily on the test in upholding the subject-matter eligibility of Prometheus's claims. In the circuit's view, "asserted claims are in effect claims to methods of treatment, which are always transformative when one of a defined group of drugs is administered to the body to ameliorate the effects of an undesired condition." Likewise, a metabolite-level measurement step was found to "necessarily involv[e] a transformation." Although Prometheus's claims include "mental steps," the circuit emphasized that the inclusion of such steps "does not, by itself, negate the transformative nature of prior steps."

Prior posts provide additional background on the Prometheus case. The first wave of merits briefs have been filed. These include the opening brief for the petitioners, briefs in support of the petitioners, and briefs in support of neither party. The respondent-patentee's brief as well as supporting amicus briefs will be due in the upcoming weeks.

BRIEF FOR PETITIONERS (Stephen Shapiro, Mayer Brown): Prometheus's patent claims violate Supreme Court precedent forbidding claims that "preemp[t] all practical use of an abstract idea, natural phenomenon, or mathematical formula." Prometheus's claims "recite a natural phenomenon—the biological correlation between metabolite levels and health—without describing what is to be done with that phenomenon beyond considering whether a dosage adjustment may be necessary." The claims' drug-administration and metabolite-measurement steps are merely "'token' and 'conventional' data-gathering steps" that cannot establish subject-matter eligibility. Patent protection is unnecessary to promote the development of diagnostic methods like those claimed and will in fact interfere with both their development and actual medical practice.

AMICUS BRIEFS SUPPORTING PETITIONERS

AARP & PUBLIC PATENT FOUNDATION (Daniel Ravicher, Public Patent & Cardozo School of Law): "Allowing patents on pure medical correlations … threatens doctors with claims of patent infringement" and "burdens the public with excessive health care costs, and dulls incentives for real innovation." "The Federal Circuit has latched on to trivial steps beyond mental processes, such as the 'administering' step in this case, to uphold patents that effectively preempt all uses of laws of nature." Prometheus's recitation of an "administering" step stands "in stark contrast to most pharmaceutical patents that require a 'therapeutically effective amount' of a drug be administered."

ACLU (Sandra Park, ACLU): In assessing subject matter eligibility, the Supreme Court "has focused on the essence of the claim," using a "pragmatic approach [that] allows the Court to see through clever drafting." Prometheus's insertion of drug-administration and/or measurement steps into a claim "does not alter the fact that the essence of the claim is the correlation between thiopurine drugs and metabolite levels in the blood." Further, the First Amendment bars Prometheus's claims. "What Prometheus seeks to monopolize … is the right to think about the correlation between thiopurine drugs and metabolite levels, and the therapeutic consequences of that correlation."

AMERICAN COLLEGE OF MEDICAL GENETICS ET AL. (Katherine Strandburg, NYU School of Law): The patents at issue "grant exclusive rights over the mere observation of natural, statistical correlations." They "convert routine, sound medical practice into prohibited infringement" and generate burdens and conflicts for patient care and follow-on innovation. "The machine or transformation test is inapposite … to determining whether a claim preempts a natural phenomenon." It can be too trivially satisfied without shedding sufficient light on whether claims "reflect inventive activity" or "improperly preempt downstream uses of the phenomenon."

ARUP & LABCORP (Kathleen Sullivan, Quinn Emanuel): "The patents assert exclusive rights over the process of administering a drug and observing the results…. This not only blocks the mental work of doctors advising patients, but also impedes the progress of research by seeking to own a basic law of nature concerning the human body's reaction to drugs." "Patents on measurements of nature" raise constitutional concerns by removing factual information from the public domain, thereby conflicting with patents' constitutional purpose to "promote the Progress of Science and useful Arts" and threatening to chill "scientific and commercial publication."

CATO INSTITUTE ET AL. (Ilya Shapiro, Cato Institute): This case provides the Supreme Court with an opportunity to strike a blow against the "thousands of abstract process patents which have been improvidently granted since the 1990s" and that are already adversely affecting software and financial innovation. Historically, patentable "processes" "aimed to produce an effect on matter, and these patents do not." The "indicat[ing] a need" clauses in Prometheus's claims do not even form part of a process because they do "not describe an action." Patent claims such as these, "whose final step is mental," impermissibly tread on the public domain and "freedom of thought."

NINE LAW PROFESSORS (Joshua Sarnoff, DePaul College of Law): The Supreme Court "should expressly recognize" that the Constitution requires that "laws of nature, physical phenomena, and abstract ideas" be treated as prior art for purposes of determining patentability. "Allowing patents for uncreative applications would effectively provide exclusive rights in and impermissibly reward the ineligible discovery itself." Barring claims like Prometheus's under section 101, as opposed to relying on patentability requirements such as novelty and nonobviousness, promotes "efficient gate-keeping" and "sends important signals."

VERIZON & HP (Michael Kellogg, Kellogg Huber): "It is longstanding law that a claim is non-patentable if it recites a prior art process and adds only the mental recognition of a newly discovered property of that process." See Gen. Elec. Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242 (1945). "This principle is soundly based on Section 101's limitation to processes and products that are not only 'useful' but 'new.'" "[A]dding to the old process in Prometheus's patent claims nothing more than a mental step of recognizing the possible health (toxicity or efficacy) significance of the result of the process does not define a 'new and useful process.'"

AMICUS BRIEFS SUPPORTING NEITHER PARTY

UNITED STATES (Solicitor General Donald Verrilli, Jr.): The claimed methods recite "patent-eligible subject matter," and petitioners' objections to patentability are properly understood as challenges to the claimed methods' novelty and nonobviousness. By analogy with "patent law's 'printed matter' doctrine," the claims should ultimately be found invalid because, as construed by the district court, they "merely … appen[d] a purely mental step or inference to a process that is otherwise known in (or obvious in light of) the prior art." But the Supreme Court should affirm the Federal Circuit's holding on subject matter eligibility.

AIPPI (Peter Schechter, Edwards Wildman): AIPPI "encourages all member countries to allow medical personnel the freedom to provide medical treatment of patients without the authorization of any patentee." Unlike the U.S. and Australia, most countries "exclud[e] methods of medical treatment of patients from patent eligibility." When the medical-practitioner exemption of 35 U.S.C. § 287(c)(1) applies, "the courts lack subject matter jurisdiction." The exemption applies to the defendants, who "are plainly 'related health care entities.'" Thus, "the case should be dismissed for lack of federal subject matter jurisdiction."

MICROSOFT (Matthew McGill, Gibson Dunn): Subject-matter eligibility tests should not involve "pars[ing] the claimed invention into the 'underlying invention' and those aspects that are 'conventional' or 'obvious' or insignificant 'extra- or post-solution activity.'" Such parsing lacks any guiding principle that can make its application predictable. Petitioners seek an improperly "expansive application of the mental steps doctrine." "[I]f every step of a process claim can be performed in the human mind, that process is unpatentable." But the Federal Circuit has improperly "extended th[is] principle to apply to machines or manufactures that replicate mental steps."

NYIPLA (Ronald Daignault, Robins Kaplan): Innovation's "bewildering pace" argues against "rigid categorization of patent-eligible subject matter." "[T]here is no basis for excluding processes directed to analyzing the chemicals in a patient's body from patent eligibility." When satisfied, the machine-or-transformation test should decisively establish eligibility. But failure of the test should not necessarily establish ineligibility. Preemption analysis "must incorporate a critical assessment of whether the claim at issue actually claims a fundamental principle as a fundamental principle in contrast to an application of that principle."

ROCHE & ABBOTT (Seth Waxman, WilmerHale): Patents are crucial for innovation in personalized medicine and more particularly for the continued development diagnostic tests that can enable such medicine's practice. Arguments "that patents on diagnostic tests stifle innovation and basic scientific research" are "largely based on speculation, rather than sound evidence." Generally speaking, "market-driven business practices and self-enforcing market norms correct for any perceived limitations on the accessibility of patented diagnostic technologies." Congress should be trusted to provide appropriate patent-law exemptions for medical practice and research.

333 thoughts on “Guest Posts: Preparing for Mayo v. Prometheus Labs

  1. I agree with the logic and holding in Ultramercial v. Hulu.

    Reply
  2. In re Grams

    Indeed Malcolm, that case is exactly on point to Prometheus. It follows In re Christensen, and In re Walter. A mental “step(s)” must modify a physical step (or define interrelationships between structure). If it does not, then the other elements, even if physical or transformative, may simply be data gathering.

    Thus Diehr is patent eligible, while Christensen and Grams are not.

    But there is a different line of authority from Rich and his followers. Whenever they form(ed) the panel, they tend to ignore the Grams line of authority and emphasize the physical nature of the data gathering steps. Perhaps the reason is, as you suggest, is that these steps themselves might be new.

    But, when novelty of the physical steps is not claimed, then, I will agree emphatically, that Grams holds the physical steps to be data gathering only. The mental steps that follow do not define patentable subject matter.

    How did Rader distinguish Grams?

    Reply
  3. “Not sure why the browser resets when I select reply”

    If you’re using the latest IE then hit the “compatibility” button and that might help. More “magic” unprotected by the darned ol’ patent system that doesn’t work right.

    Reply
  4. I will say though Ned if you want to really put an effort into understanding my arugments I may take he time to present them to you. But, if you are going to be a troll, then not.

    Your second example is actaully an interesting question and guess what? You can blame Benson for why this is like it is.

    But, Ned, do you agree that represented information is tranformed by a computer?

    Reply
  5. Ned: (for some reason I can’t respond directly to your comments and have to make a comment here at the bottom. Not sure why the browser resets when I select reply.)

    As I suspected, you hold underlying assumptions of which I do not agree. They are, of course, part of the canon, pun intended, of Benson. I do not have time to discuss this with you right now, but they are central to the discussion–at last. Maybe I can respond to them tomorrow.

    Reply
  6. What exactly were you hoping to achieve by posting your message

    The answer (playing to MM’s strengths):

    A weird, whiny [post]… suggesting that [MM] has no clue…

    Mission accomplished.

    Pass the lulz.

    Reply
  7. Alright NWPA, then let us discuss this seriously. I will concur with you that it would definitely be best for congress to take care of the issue and then either side will have to live with the tyranny of the majority. Or perhaps a compromise could be reached where a new form of protection is made available to software and business methods etc. while removing them from the patent system. However, I also feel as if it would be far better if a congress that was not bought by big interests decided the issue. I believe that you might also concur with that.

    In light of the fact that Congress abstains from dealing with these matters, and is corrupt in any event, will you join me in McPherson square tomorrow evening to protest the government’s inaction on these issues and rampant corruption? Will you also join me in gathering a crowd to specifically protest re this issue? Maybe we can protest outside the USSC just prior to Prom oral arguments?

    A few hundred people might even do the trick on such a non-issue in the congress, to at least turn it into an issue. We already have a ready made crowd in the park eager to make such a demonstration. I’m on the action committee, you can bring your ideas for a protest directly to me.

    Reply
  8. What exactly were you hoping to achieve by posting your message?

    A weird, whiny response suggesting that the commenter has no clue that its endless “battle” with Ned became tiresome years ago.

    Mission accomplished.

    Pass the lulz.

    Reply
  9. Now my offering of a personal opinion (that runs counter to a particular view of the world) means that I am a sockpuppet with a game?

    Sorry, but Ned’s refusal to address the clear points cannot be ignored.

    Of course, if you MM don’t want to actually have a conversation (which does typically involve more than one particular view of the world) and you only want to preach from a pedastal (or soapbox), then by all means, accuse anyone with a different viewpoint of merely having a game.

    Problem is, that game has been played so often on these threads as to be easily seen for what it is.

    What exactly were you hoping to achieve by posting your message? Do you think that you have invigorated Ned to address issues that should be addressed in order to try to find some common ground? What do you expect to accomplish with such jeers from the sidelines?

    Reply
  10. Personally, the exchanges that run on (and on) make it appear that you are being beaten at the fight

    LOL. Every once in a while the sockpuppet’s game is laid bare for all to see.

    Too funny.

    Reply
  11. You do not want to come to any agreement or meet on common ground

    Ned, aren’t you assuming that there is a common ground? Aren’t you assuming that a “discussion of the law” has taken place (at least one enough to establish soome common ground)?

    As for meeting at some common ground, I cannot tell if that is even possible yet because you have not answered questions or addressed the issues laid out by Anon and others.

    When you address the issues and discuss the actual points (for example, your attempted use of the new Covered Business Methods section in defining a 101 platform – in express violation of that new law), maybe a ground that is common can be identified.

    Until then, I see only your rhetoric and ideals that have been rejected, and it is difficult to find commonality of any sort when your line of reasoning has not been accepted.

    Personally, the exchanges that run on (and on) make it appear that you are being beaten at the fight and that you want to move on, yet you also want to move on with your ideals as the focal point (as if the fight never took place to begin with and like your ideals should be the focal point).

    That’s a great rhetorical move, if you can get away with it. I just don’t think your opponents will let you get away with it.

    Reply
  12. Now let’s talk about circuits.

    The invention of one circuit to perform a function does not entitle one to claim all circuits that perform that same function, or any machine that might be programmed to perform that function.

    Your argument about equivalency is seductive, but false.

    While it may be true that the invention of a new process may be implemented in a number of machines or circuits; the converse is not true and the law does not entitle one to claim all machines and circuits for inventing one that may perform the function.

    But a process claim does. It is independent of circuits and machines.

    So when you make the argument you make, you make the process argument.

    Think about it Night.

    Reply
  13. NWPA,

    Let’s take a cannon that has gear that may be adjusted to aim at different targets. If i adjust the gear to aim a new target, can I re-patent the cannon?

    Now, the sophist would point to the different arrangement of parts of the gear and say the machine is new.

    The man on the street would laugh.

    NWPA, get serious.

    The new use of an old machine is a process!!!!!!!

    Reply
  14. Simple, the 273 definition you reference has been repealed, I believe.

    Regardless, it is way too broad. Such a definintion could include patentable inventions to the technology that enables business.

    Such lose definitions are the very reason the Kennedy majority could not agree with Stevens to ban BMPs. There was no good definition of what they are.

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  15. Publius, the banking industry did react, as was its right.

    The software industry has reacted.

    There is a lot of reaction to the Rich era, and all of it negative.

    Reply
  16. And, one more point, if I agree with you, and you say that we do not agree on anything, then I would suggest that you AI simply have no real interest in discussing the law. You do not want to come to any agreement or meet on common ground, and will do anything to continue a verbal conflict.

    You are emotionally wedded to the fight. Admit it.

    Reply
  17. MM: >>That’s why you’ll be cheering along with the rest of us >>when the PTO starts ignoring mental steps when considering >>the novelty and non-obviousness of claims. Right?

    Non sequitur.

    Reply
  18. bizarre arguments about science and technology

    ?

    gives the PTO excuses not to enforce 102, 103, and 112

    That’s why you’ll be cheering along with the rest of us when the PTO starts ignoring mental steps when considering the novelty and non-obviousness of claims. Right?

    Reply
  19. ….which, as I understand it, is the PTO Board of Appeals saying they can’t find “technical” in the patent statute. But that’s right, isn’t it? To grant patents (and thereby restrain trade) outside the ambit of the “useful arts” though; that would be un-Constitutional, would it not?

    As I understand it, 4 SCOTUS judges failed to turn just one of the remaining 5 to issue a blanket ruling, that everything falling under the rubric “business method” must, by definition, be outside that ambit. That’s not really surprising either, is it?

    So SCOTUS is miles away from announcing that every business method under the sun is, by definition, inside the ambit. The undistributed middle of the business method subject matter range remains, for the time being, undistributed between eligible and not eligible. All we know so far is that Bilski methods aren’t eligible. A good start, I would say.

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  20. 6: sure I’ve thought about it, but these issues are best dealt with in Congress not the courts. Making up all these bizarre arguments about science and technology to exclude subject matter under 101 just causes untold billions of dollars in waste and gives the PTO excuses not to enforce 102, 103, and 112. And, it is dishonest,and shameful. And, the art wrought by twisted sick minds.

    Reply
  21. If you are talking about

    Yes, Ned, that is precisely what I am talking about.

    Do you think that you are exempt from the direct meaning of the law? It is abundantly clear that this law was written expressly not to change the given understanding of Business Methods as eligible subject matter under Section 101.

    It appears that you are doing something that is expressly forbidden by the writers of the law in that you are attempting to use the section definition of a subset of Business Methods that fall into the category of Covered Business Methods to make a 101 argument against Business Methods as patent eligible subject matter.

    I do not understand how you think you can even begin to fashion an argument that this section supports your theory. Quite in fact, this section takes the legs out from your position. If Congress indeed meant to change the status of Business Method eligibility – as confirmed in the Supreme Court case of Bilski, the America Invents Act was an unmistakable opportunity to directly do so. Congress chose not to. What do you think this means?

    Further, you ask if I have a “better” definition and I think that your asking such a question is a red herring.

    First, I don’t need a better definition, because I am not trying to change the more global definition already given in the legislative section as pointed out by Anon above (35 USC 273(a)(3)). Second, I think you are implicitly making a vallue judgment regarding “better” and in making that value judgment, you have assumed that whatever end-goal you have in miind is fully justified (in other words, you have assumed a conclusion that is likely unwarranted).

    Reply
  22. In all honesty NWPA, do you never stop to think that your “basic tenant of why we have patent laws” simply might not be applicable to everything in the whole universe? Just be honest, have you ever even considered it?

    Reply
  23. The CATO brief is a pure policy BS paper. It quotes pure academic-policy driven ideas and conjures up an anti-software bias completely disassociated with any legal foundation.

    I am now going to take a second shower to try to clean the stench of that brief from my being.

    Reply
  24. MM: the purpose is to promote innovation. Without patents diagnostic methods will not see the same amount of innovation. A computer would not have to be recited for a long diagnostic method. But, typical MM tactic, dodge the real issues, and make bold assertions about what others can’t prove when they are simply reciting the basic tenants of patent law. So, let’s see MM, no I can’t prove without a lot of money that not have patents for diagnostic patents is going to hurt the development of diagnostic methods, but that is a basic tenant of why we have the patent laws to begin with so it is fair for me to be able to make this assertion. So your statements have been reduced to their substance—vapor.

    Your nonsense never ends.

    Ned: your statement above about a computer doing what it was intended to do is nonsense. I see you went to the MM school of reasoning. OK. Let’s apply your reasoning to all machines. No fan may be included in a claim as it is always just doing what it was intended to do. Likewise for every machine every made.

    Additionally, any general purpose computer that is running software can also be made with special purpose hardware to run the method. The general purpose computer is really just convenience that costs a lot in terms of time and space to run the method. But, you know all this, don’t you Ned? You know the Fed. Cir. has held as such, don’t you? You like baiting people and repeating the samme nonsense over and over again. What fun you are to interact with. A mindless, heartless, policy driven intellectually dishonest gollum.

    The fact is that Benson held that a machine that transformed information from one state to another state was not eligible for patentability because it was magic. It capture a natural law and was abstract. Benson, the 1920′s thinking of information. Benson, only God has the right to make a machine that thinks. Let’s face it any rational thinker knows that Benson is worst SCOTUS decision ever in patent law. It should be explicitly overturned as a policy based decision that illustrates all that is bad in humanity.

    Reply
  25. But now, startlingly

    What is “startingly” is that you are discussing concepts that were not in the Bilski claims.

    What I was thinking is that the only infringers Bilski is ever likely to be interested in are those using a computer to implement his method.

    Nice, now come back to this reality and understand thae fact that computer implementation was simply not at issue in this case. The only way to interject your nonsense of “also bad for non-enablement and want of written description?” is to interject your fantasy of claim elements never present before because you are thinking.

    The problem is plainly evident: you are thinking.

    Reply
  26. So what?

    Seriously?

    Is that the extent of your capacity for legal thinking?

    Anyone (and everyone), can (and should) see that this “toleration” sinks your position.

    So what? So, you are wrong. Oh, OK. Now move on.

    Reply
  27. Whether or not Ned is a “shill” for any certain industry, I do not comment upon.

    However, the mindset of Special Interest tampering with the laws (the law applies “equally” to all, but some are more equal than others) is evident throughout the AIA (Special bailout for the well-connected law firm, anyone? Special provisions for the Big Banks, anyone?).

    Isn’t it interesting how Ned’s comment at 5:51 PM on the “Pending Supreme Court” thread picks up on this very subtlely? That comment was:

    When State Street Bank came down, I was asked my opinion. I said that it was not my ox being gored and that we should wait for the banking industry to react. Well it has.

    It has indeed.

    Well, they do say that politics is the second oldest profession…

    Reply
  28. Score one for posting with a real name and “accountability.”

    /off sarcasm

    Reply
  29. “i.e., how do you deal with claims that effectively prevent practitioners of the prior art from thinking about patent-ineligible facts (i.e, [old transformative step]+ [new mental step])? ”

    By first proving such is even possible. Remember Malcolm, you can’t cite one case were someone was successfully sued for merely thinking about a patent. Let alone successfully prevented from thinking!

    “They can’t be both eligible AND patentable and/or enforceable.”

    Says who?

    Reply
  30. “where did the Supreme Court ever suggest that claims which prevented those practicing the prior art from “thinking” new thoughts while they did so were patent eligible?”

    MM when did Supreme Court ever say it was ineligible?

    “The fact that Dierh’s claims were found to be eligible is evidence of nothing except,” …..

    1. Claims must be taken as a whole. No dissection of old, mental, inventive, crappy, or any other kind of steps.

    2. Claims can be known/old and include mental and purely physical steps and STILL be patent eligible for 101

    3. Machines or transformations are not required. See claim 11

    4 Applications of concepts to specific industrial processes controls 101 analysis. See Bilski 14, Then see Research Corp and Ultramercial.

    Reply
  31. Mayo seems to be more upset that it has to pay royalties to an inventor than it does that the Prometheus patents are invalid. Their brief spends more time and words attacking the concept of patents than actually attacking the claims. All the terrible things they say will happen to doctors and the medical field will not happen. Medical businesses can simply pay the licensing and royalty fees like everyone else and life goes on for doctors, and patients alike. So please Mayo, spare me the drama about how doctors can’t think or diagnose and patients are gonna die and what not. Doctors, researchers and everyone in between make good money in the medical field and can afford to pay their fare share for research, testing, and other services. Their attacks with the law seem out of place and weak. My first thought is why is this a 101 case???????

    Mayo says: “The Prometheus patents seek to monopolize these metabolite numbers. They advise physicians to think about the need for a dosage adjustment when metabolites reach certain levels, but do not offer any specific change in therapy. Thinking about metab- olite levels is exactly what doctors have long done, without any advice from Prometheus.”

    Okay then why didn’t they argue 102? If what they say is true 102 should be a slam dunk and everyone can go home right? ( continued)

    Reply
  32. What I was thinking is that the only infringers Bilski is ever likely to be interested in are those using a computer to implement his method. So, if one were notionally to narrow the claim to a “computer-implemented” method (so it is no longer an abstract idea) that would be no narrowing at all.

    But now, startlingly, you tell me that Bilski did not possess a computer-implemented method. Are you hinting that his patent was also bad for non-enablement and want of written description?

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  33. The word “method” is one that can tolerate the adjective “business” in front of it. So what? The word “arts” is also one that can tolerate adjectives like “useful” or “fine” in front of it. So what?

    Reply
  34. Who is “we”?

    You and I do not agree on ANYTHING.

    You have ducked and evaded pertinent questions from me,

    Anon, Um No, Simple Questions, NWPA and more.

    You have lied and played games when confronted with your own fallacies and inconsistencies in your arguments.

    You have no ethics, no accountability and zero respectability in your behavior on this blog.

    Congratulations in surpassing 6 as the most derided person on this blog, and replacing MM as the resident troll.

    I dont know what you are in real life, nor do I care. But here online you are simply a scoundrel.

    Reply
  35. So you want to ban all processes for financial products or services?

    Again you have not explained why you have a need to ban these patents. Nor have you demonstrated that you even know exactly what such a ban would scoop in and entail. But first let’s stick with the reason for your motivation.

    Why ban processes for financial products or services?

    Why the crusade??

    How will this save us???

    Reply
  36. simple, I have no idea what you are talking about, once again.  I searched through Section 18 for any definition of any other kind of BMP and could not see any.

    Are you suggesting that by declaring that some BMPs are covered by Section 18, that there are others that are not?   If so, I do not agree with that.

    If you are talking about this, (e) RULE OF CONSTRUCTION.—Nothing in this section shall be
    construed as amending or interpreting categories of patent-eligible
    subject matter set forth under section 101 of title 35, United States
    Code.

    That does permit the courts to independently arrive at a different definition.  However, if you had a better definition, please have at it.  I already gave you mine.

    Reply
  37. Ned,

    Did you deliberately leave out the part of that section that talked about busines methods and patent eligible subject matter (as opposed to “covered” business methods – a clear subset)?

    I am trying to give you the benefit of doubt, even though you still find it easy to insult me.

    Or do you think this question too, is some type of game?

    Or do you simply just not answer questions?

    Reply
  38. AI, when we begin to narrow our definition of BMP, you and I really do not disagree. 

    Just as, when all was said and done, we do not disagree on Diehr.

    I hope you appreciate this for the future.  We seem to be talking past each other because we are not talking about the same things.

    Reply
  39. Ned:

    IIRC, Bilski’s claim was declared to an abstract idea. I do not see anyone in these threads arguing that abstract ideas should be patent eligible subject matter.

    I also believe the Court further explained the claims as being nothing more than math equations.

    And while I personally concur with NWPA views on math, I certainly accept the current state of the law.

    So Ned, why this flaming crusade for narrowing the Constitution and statute to ban what you define as business methods?

    Why, as you say, ” We are in a world of hurt?”

    Honestly, if you think this thing called “Business Methods” is going to be the death of us all then please tell us why?

    Reply
  40. You are right, simple mind.  However, Congress has now defined BMPs in the new AIA as follows"(d) DEFINITION.—
    (1) IN GENERAL.—For purposes of this section, the term
    ‘‘covered business method patent’’ means a patent that claims
    a method or corresponding apparatus for performing data processing
    or other operations used in the practice,
    administration,
    or management of a financial product or service, except that
    the term does not include patents for technological inventions."

    This comports with the definition I proposed.  A BMP has a

    1) business (financial to be specific) utility; and
    2) is not technological.

    QED

    Reply
  41. Dam goog questions!

    And with each refusal to answer each another nail is driven in the coffin of Neds crusade!

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  42. MaxDrei,

    I have provide this direct pincite to Ned previously, but I will provide it again because it is directly on point here – and is from the majority of Bilski and cites to the majority of Diehr

    130 S. Ct. 3218 at 3222 citing Diehr as noted:

    The Court is unaware of any argument that the “ordinary, contemporary, common meaning,” Diehr, supra, at 182, 101 S. Ct. 1048, 67 L. Ed. 2d 155, of “method” excludes business methods.

    Ignoring not one but two majority Supreme Court rulings is no way for you to develop a sound “justification for seeing” anything that can be taken seriously.

    Reply
  43. Another question I asked Ned in the other thread and he has simply refused to answer. I don’t know why we need any more than what the Supreme Court has already expressed:

    Which is essentially that business methods or simply another type of method and processes same as any other method and processes and is subject to the same conditions and requirements of U.S.C. title 35 as any other methods and processes.

    So Ned, why do we need any further definition than this???

    Why the crusade???

    Reply
  44. But requiring that the claims to pass the MOT

    Ned,

    It would be really nice if you actually answered questions on this topic, or in the meantime not make such an outlandish claim that claims are required to pass MOT.

    (If the claim is not outlandish, I can only presume that you would have actually provided an answer, instead of insults and evasions – it is clearly you playing the games and accusing all who point this out is a rather pathetic attempt at diversion on your end)

    Reply
  45. simple,

    That’s just it – the US Legislature has defined “Business Methods.”

    See 35 USC 273(a)(3): the term “method” means a method of doing or conducting business.

    The real questions are

    - why does Ned think that this fact is somehow not of substance?

    - why does Ned think that the discussions in Bilski (at the “rallying cries of Bilski 11 and Bilski 14″) are not of substance?

    - why does he feign ignorance of the 11 and 14 rallying cries, but still does not provide answers when correct pincites are given?

    - why does Ned think that the passage of the AIA, in not eliminating the basis for upholding the patent eligibility of Business Methods, as explicated in the majority opinion of Bilski, and even explicitly noting in a different section that no new effect on the patent eligibility of Business Methods is to be inferred (and further ignoring the legal implication of such a move as has been viewed by the Supreme Court), not of substance?

    - why is Ned avoiding actually addressing these very real, substantive and intelligent points, yet all too eager to dive into character assinations, and other rather obvious gamesmanship like “I don’t understand” and mischaracterizing positions on “Categorically” versus “as a cateogry” that have been clearly and repeatedly stressed?

    Why is it that Ned refuses to answer your direct and straightforward questions, and quickly stoops to insulting you?

    Does anyone doubt that Ned is merely a self-serving, agenda driven, advocate, only to willing to basicly do anything to try to make his position look good (and utterly clueless that his machinations are having the exact opposite effect)?

    These, these are the real questions!

    Reply
  46. In the boiled egg example, removing the egg, but at a different
    time.

    I don’t see a mental step in your “claim” Ned.

    If you are claiming “A method of achieving X, comprising [practicing old step for a new specified length time]“, then I think you don’t have a 101 issue. 102/103 issues? Yes, most likely very serious ones. Those issues are also likely present if rather than specifying a time, you specify the algorithm, because such algorithms typically accept broad ranges of input and spit out broad ranges of output (including “null” results).

    Look at Prometheus’ claims. The “invention” is claimed as determining the relationship (greater or less than) of an old result (level of a certain metabolite in blood) to a single, specified number. As written, the claims cover a method of administering “more” drug if there is no metabolite present (something completely obvious to everyone in the field) and not administering “more” drug if the patient has deadly amounts of metabolite in the drug (something completely obvious to everyone in the field). But here’s the deal: Prometheus will argue that such acts don’t invalidate the claim because those people in the prior art weren’t thinking about that magical number that Prometheus “discovered” and disclosed to the public in their specification.

    And now we’re right back in 101 land again, with the patentee trying to have its cake (you can’t find a patent ineligible under 101 merely because the only novel feature is a mental step) and eat it, too (you can’t ignore the novel mental step when determining invalidity under 102/103).

    This boiling egg business is a sideshow, Ned. It is tangentially related to the issues we’ve been discussing but it does not represent a “flaw” in my approach to the claims at issue in Prometheus. Your concern seems to be that someone might come up with a clever defense that tries to “read in” a mental step in a claim where there is none. Guess what? Defendants can do this now, under the current law, to their hearts content, and shrewd ones will make the argument I’ve been making. Either the defendant is infringing a well-claimed novel, non-obvious method by practicing a series of well-claimed, non-obvious transformative steps or he/she isn’t. If the latter, then the real problem may be that the patentee is trying to effectively prevent the defendant from thinking certain thoughts while praciticing the prior art.

    Reply
  47. If the US Supreme Court refuses to define “Business Methods” and the US Legislature refuses to define “Business Methods”, how in the world is it of any import whatsoever for anyone on a patent blog to define “Business Methods”?

    Reply
  48. I would like to close with a quote from In re Taner for your comment.

    My comment is that I’m not at all interested in cases that do not address the issues I have raised squarely. Jurisprudence on the issue of claims reciting mental steps has been relentlessly shallow and confused for many, many years.

    The holding you quoted says absolutely nothing that is reasonable, intelligent or compelling becaus it fails to consider the obvious ramifications of its holding. This was equally true of nearly all of the product-by-process case law prior to Sandoz v. Abbott. It was vapid, self-serving, and shockingly short-sighted.

    It sounds very easy and high-minded to say that “a claim … when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101.” How wonderful and clear and straighftforward! But somehow the court fails to address the obvious ramifications of the decision, i.e., how do you deal with claims that effectively prevent practitioners of the prior art from thinking about patent-ineligible facts (i.e, [old transformative step]+ [new mental step])? They can’t be both eligible AND patentable and/or enforceable.

    Some will say that the “question wasn’t before the court”. You know what? That’s utter horsexxxt. The obvious ramifications of a court’s decision are ALWAYS before it. In nearly every other area of the law, these ramifications are discussed ad nauseum. But somehow when it comes to patents, it’s strictly verboten to consider the obvious ramifications of a holding. Either that, or it’s just way too hard for these brilliant minds to deal with. Or they simply don’t want to deal with reality because it feels so good to recite some vague haughty pronouncement that reflects the “broad inclusive” nature of our awesome patent system but has the practical effect of completely fxxxing it up and turning it into a joke.

    Reply
  49. Malcolm, you never cease to amaze.  Big smiley here.

    Spoon bending, indeed.

    No, my remarks are limited to the use of the mental step to modify a physical act.

    In the boiled egg example, removing the egg, but at a different time.

    Reply
  50. Malcolm, you never cease to amaze.  Big smiley here.

    Spoon bending, indeed.

    No, my remarks are limited to the use of the mental step to modify a physical act.

    In the boiled egg example, removing the egg, but at a different
    time.

    Reply
  51. Agreed.

    In my discussions with AI, I think I hit upon the reason that the Kennedy court did not agree with Stevens minority to simply ban business methods. The Kennedy majority did not have a well accepted definition of business methods. Without such a well accepted definition, there was no way to categorically exclude them.

    But requiring that the claims to pass the MOT, or that they in some way be tied, as a matter of necessity, to machines, articles of manufacture or compositions of matter, or to methods of making and using such, the Supreme Court did not have to do categorically exclude business methods.

    Reply
  52. Stop it you annoying pest. Stop playing word games. Tell us what you consider to be Business Method Patents. Until then you your status here is nothing more that that of an annoying fly.

    Reply
  53. Let us be clear: Bilski fell at the 101 hurdle but his computer-implemented method has “technical character”, more than enough for patent-eligibility at the EPO.

    Reply
  54. Another, Anon, or whomever you are, said “Useful arts” …includes …business methods …as such.

    You really, really have to be kidding yourself to the extent that you would define BMPs to include the very kind of claim that the Supremes held patent ineligible in Bilski.

    Define BMPs, or tell me whether you agree or disagree with this definition:

    A business method is a method that has business utility and which does not otherwise pass the MOT test.

    When the likes of MaxDrei and myself speak about BMPs, this is what we mean. I think you mean that as well, but it is not clear since you will never actually say what it is that you mean. You will instead play word games and engage in sophistry and semantics endlessly.

    Reply
  55. when one modifies a physical act with the results of a mental step

    When you put it that way, it sounds like spoon-bending.

    Are you talking about claims in the form:

    1. A method of achieving a useful result, comprising [new mental step], wherein if new mental step = X then [old transformative step] and wherein if new step = Y then [different old transformative step].

    I can tell you how such claims must be analyzed in order to prevent the effective patenting of a mental step, but you won’t like it. For a preview, I can assure that there is no “modification of a transformative step” by the “result” of a mental step in such a method. Instead, there are merely two old, unpatentable transformative steps, claimed in the alternative, each preceeded by the same ineligible mental step.

    If there is, in fact, a novel transformative method buried somewhere in the claim, then it should be claimed as such. Otherwise, gosh, I’m really sorry but you’re effectively claiming a mental step. Find a better patent attorney next time?

    Reply
  56. AI, I think the “clarity” of your kind thinking is what gave Kennedy pause in declaring BMPs unpatentable. There really was no clear understanding of where a BMP began and where it ended.

    AI, I thank you for waking me up to this fact.

    Reply
  57. Malcolm, "My approach is to ask the question: does the claim effectively turn a practitioner of the prior art into an infringer merely because the practitioner is thinking an allegedly "new" thought? If the answer is yes, the claim is invalid under 101."

    Assume for the moment the Prometheus claim and assume further I will you and you and you and you and you and you is a you is what is further is a you yeah probably had I seen alone I will you and you is a you is that the spring, is is is is is and you is a you will you there is a you and you is the lot is a you will is a is and you and you and I and you and you will you will you will you and you is a is and you will you we are as real as is is and you and you and you and you and you all isthat the process elements are new.  Is it your position that one can prove
    infringement of this claim without proving that the reader of the results thinks anything?  I think your answer is yes, but I'm not sure.

    But assume your answer is yes, and I believe your answer is yes because the report simply states levels of metabolites and what they mean is self-evident.  Why is it your position, then, that one has to prove what one thinks if the process elements are  old?  The elements of proof of infringement should not change
    depending on whether some elements are new and some elements are old.

    However, if your answer is yes, that regardless of whether the process claims or new or old that one still must prove what one thinks about the results to prove infringement, the vice of the claim still remains.  One must still prove what one thinks as an element of proof.  

    Agreed?

    Reply
  58. Malcolm, with your implicit definition of "append," you are of course right.  There is no functional relationship claimed between any step and the mental gymnastics.  

    However, when one modifies a physical act with the results of a mental step, the answer is not so clear whether the mental step can be ignored for either 101 or 102/103 purposes.

    I do see the problem of proving infringement.  But, when abstract elements modify physical steps, the claims "as a whole" are clearly directed to patentable subject matter under any of 101, 102/103.

    On the contrary, if the mental element merely sits there, not modifying a physical step, the answer is quite
    different.  With this understanding of "append" we are in agreement.  

    Thus, when the final elements of a method are abstract, they modify nothing.  They do not create a patentable process.  They do not define anything new under 102/103 if one discounts the non functional abstraction.  In this sense of the term, I completely agree with the US position.

    In fact, this analysis used to be the pith and essence of the Freeman-Walter-Abele test, IIRC.  

    I would like to close with a quote from In re Taner for your comment.  http://scholar.google.com/scholar_case?case=8076128360630262165&q=application+of+taner&hl=en&as_sdt=2,5

    Much has transpired in the development of the law in this area since our decision in Christensen. Most recently in Diehr, the Supreme Court made clear that Benson stands for no more than the long-established principle that laws of nature, natural phenomena, and abstract ideas are excluded from patent protection, 450 U.S. at 185, 101 S.Ct. at 1055, and that "a claim drawn to subject matter otherwise statutory does not become nonstatutory because it uses a mathematical formula, computer program, or digital computer." 450 U.S. at 187, 101 S.Ct. at 1056. The Court in Diehr rejected the "point of novelty" analysis saying "[t]he `novelty' of any element or steps in a process … is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter," 450 U.S. at 189, 101 S.Ct. at 1057, and went on to explain that "when a claim containing a mathematical formula implements or applies that formula in a structure or process, which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101." 450 U.S. at 192, 101 S.Ct. at 1059, 209 U.S.P.Q. at 10. Accordingly, to the extent that it conflicts with what we say here, Christensen is overruled."

    Reply
  59. AI, you are lost in the same weeds as the Kennedy majority on this issue.  Lack of clear thinking predominates your remarks.

    If a BMP is a method that method that has business utility and which is not technological, then there is nothing in Bilski which would suggest that such claims are patent eligible.  The very claim they had before them in that case met this definition and was
    held not to be patent eligible.

    I think the best take away from Bilski was that the majority was reluctant to give any definition to "business method."  Without such a well accepted definition, they were unwilling to categorically exclude them from patent eligibility.

    Reply
  60. “Append” has to be understood to be the final steps, with the transformative steps being mere data gathering.

    I’m not sure why that’s the case.

    Consider:

    1. A method of achieving something useful comprising, thinking about a “new fact” and performing an old transformative act.

    Why is it appropriate for the “new” thought to render this claim patentable under 102/103? How is such a claim not an effective patent on the “new thought”, at least as far as practitioners of the prior art concerned?

    Rhetorical questions. It doesn’t matter if the new thought comes first or second or is simultaneous with the otherwise unpatentable subject matter. The claim in the form I’ve proposed (i.e., without additional novel limitations not carried out mentally) can not be found valid.

    Is there a way to claim certain inventions of this type in a form so that they are both patentable and eligible under 102/103? Sure. For example, if you discover that dancing a waltz for three seconds on a cat’s grave at the exact moment of the summer equinox in a leap year while whittling a baseball bat from a blue spruce causes the bat to be ten times smoother than at any other time, you can probably draft a patentable claim that avoids the mental step of thinking about when to do it.

    Reply
  61. simple, if you want to discuss something with me, why don't you simply state what it is your position is.  I do not intend to play words games with you.

    Reply
  62. Malcolm, "My approach is to ask the question: does the claim effectively turn a practitioner of the prior art into an infringer merely because the practitioner is thinking an allegedly "new" thought? If the answer is yes, the claim is invalid under 101."

    Assume for the moment the Prometheus claim and assume further I will you and you and you and you and you and you is a you is what is further is a you yeah probably had I
    seen alone I will you and you is a you is that the spring, is is is is is and you is a you will you there is a you and you is the lot is a you will is a is and you and you and I and you and you will you will you will you and you is a is and you will you we are as real as is is and you and you and you and you and you all isthat the process elements are new.  Is it your position that one can prove infringement of this claim without proving that the reader of the results thinks anything?  I think your answer is yes, but I'm not sure.

    But assume your answer is yes, and I believe your answer is yes because the report simply states levels of metabolites and what they mean is
    self-evident.  Why is it your position, then, that one has to prove what one thinks if the process elements are  old?  The elements of proof of infringement should not change depending on whether some elements are new and some elements are old.

    However, if your answer is yes, that regardless of whether the process claims or new or old that one still must prove what one thinks about the results to prove infringement, the vice of the claim still remains.  One must still prove what one thinks as an element of proof.  

    Agreed?

    Reply
  63. I have not personally verified this but have heard that Ned Heller is an important and powerful patent celebrity and that can do whatever the heck he wants.

    Apparently zero accountability = absolute power. That’s some Ned!

    Reply
  64. “Until I see some more caselaw, I think I’m justified in seeing useful arts and “technical” as different terminology for pretty much the same concept, the one the founding fathers had in mind in the days when the Constitution was written, a time of huge innovation in ways of doing business.”

    I know where you are coming from, Max. We haven’t gotten there yet. We’re headed there, I suspect, but it will take a few more Supreme Court cases, at least, and probably some Congressional action as well. There is quite a lot to be gained, I think, by requiring patent-eligible solutions to be technical in nature.

    Reply
  65. “And please, do not try to feed me the line that you thought I was someone else”

    Bb b but you are AI, Ping, NAL, Anon, anon, sockie, sock puppet, Um No, Ghost of Giles Rich, and/or any number of imaginary villains that are simply the same person stalking Ned on this blog 24/7!

    After all how could there be more than one person that has a different view than Ned Heller and ask simple, relevant questions that require an honest answer?

    Thus expect the usual irrelevant evasive remark as is his trademark. Or he will simply ignore as he does when he loses a debate based on the merits.

    Reply
  66. mocking Ned’s proposed rule by asking whether a dependent claim which recites an additional, final mental step (relative to a patent-eligible independent method claim which does not end in a mental step) is patent-eligible deserves to be at least slightly mocked itself.

    No, it doesn’t. It illustrates a fundamental problem with Ned’s “rule”. The other problem, as I noted, is that the justification for this strict (but arbitrary) rule is opaque, to say the least.

    The problem with that rule as applied to a lot of these diagnostic method claims is that they frequently don’t end in a mental step

    That’s yet another problem with Ned’s rule.

    Reply
  67. Ned,

    Bilski’s claims never issued as a patent. Therefore they could not be business method patents. You should stop repeating this obvious mistake on your part.

    As far as my view on Bilski’s claims and business methods I originally stated, and have always said that Bilski “UPHELD” Business Methods as statutory subject matter. The word “UPHELD” is of particular importance here.

    Upheld is defined in the dictionary as:

    confirm or support (something that has been questioned) : the court upheld his claim for damages.
    • maintain (a custom or practice)

    This is relevant to my position that business methods have always been statutory so there is no reason to argue that they are statutory.

    The Court agreed in Bilski by saying business methods are processes and methods same as any process and method, and subject to the same requirements as any other process and method.

    The opposition, of which you are a part tried to get the Court to narrow the Constitution and the Statute to exclude so called business methods.

    The opposition failed to do so, and thus the Court “upheld” business methods as statutory subject matter.

    Now feel free to post an irrelevant evasive remark as is your trademark. Or simply ignore as you do when you lose a debate based on the merits.

    Reply
  68. Here’s the point: mocking Ned’s proposed rule by asking whether a dependent claim which recites an additional, final mental step (relative to a patent-eligible independent method claim which does not end in a mental step) is patent-eligible deserves to be at least slightly mocked itself. I’m not saying I agree with Ned’s rule, but it’s not bad. The problem with that rule as applied to a lot of these diagnostic method claims is that they frequently don’t end in a mental step. Here’s an example:

    A method for detecting the presence of a mutation in [insert gene] which causes [insert disease], wherein said method comprises obtaining a sample from a human subject and detecting said mutation in said sample by means which identify the presence of said mutation.

    Clearly ineligible, but would appear to pass Ned’s test.

    Reply
  69. does not prove that every single business method that could ever be claimed lies within the scope of “useful arts”.

    This lies along the “categorically” versus “as a category” trap. Put bluntly, there is no single category of patent eligible subject matter that will pass the “categorically” doctrine. NONE. Nor will there ever be. You do understand this, do you not? One can take any category of patent eligible subject matter and draft a claim that is not patent eligible. This simply means that the logic of trying to reach the general state from a particular example is FALSE.

    and we do not yet know how many other business method claims it might bin, as failing to make the useful arts 101 test.

    Just as if Prometheus bites the dust on 101, we too shall not know how many other medical method claims it might bin. Just as if any case bites the dust on 101, we too shall not know how many other method claims of the same category it might bin, as failing to make the useful arts 101 test” (and by the way, you do know that Bilski did not fail because of the “Useful Arts” test, do you not?)

    There is NO logical difference between the application of the logic between these two categories of (or ANY two categories of) patent eligible subject matter. You do realize that it comes down to the actual particular claim, do you not?

    Until I see some more caselaw, I think I’m justified in seeing useful arts and “technical” as different terminology for pretty much the same concept, the one the founding fathers had in mind in the days when the Constitution was written, a time of huge innovation in ways of doing business.

    And you would be wrong. There is sufficient Supreme Court caselaw in both the majority opinions of Bilski and Diehr that guide the determination of what “Useful Arts” are. That determination has been legally made and it is clear legal error to apply your “self-justified” (non)sight. In truth, your (non)sight is just nonsense. It is indeed a good thing that the legal meaning simply is not up to you seeing more caselaw, you do understand that, do you not?

    Reply
  70. simple, your question implied something I did not say.

    What do you think my question implied?

    What do you think I am suggesting?

    My questions are very straightforward and are directly tied to your statements.

    Are you saying that your statements have a tightly constrained meaning not evident on their face? If so, then you could easily have treated my questions as asking for what is obviously a needed explanation from you.

    Since you actually did not answer my questions, it is a bit difficult to tell why you feel the way you do, let alone to even begin to understand why you feel the need to insult me.

    And please, do not try to feed me the line that you thought I was someone else – my questions stand on their own, and it is a reach to try to associate the questions themselves with any type of messenger. In other words, why don’t you just answer the questions?

    Reply
  71. But there’s this thing about the “undistributed middle” isn’t there. That a SCOTUS majority declines to rule that business methods as such are outside the ambit of “useful arts” does not prove that every single business method that could ever be claimed lies within the scope of “useful arts”.

    As you say, the EPC bans methods for doing business but only to the extent that the subject matter of the claim is a business method as such. All the others get through. Now SCOTUS binned the process Bilski claimed, using its 101 shovel, and we do not yet know how many other business method claims it might bin, as failing to make the useful arts 101 test.

    Until I see some more caselaw, I think I’m justified in seeing useful arts and “technical” as different terminology for pretty much the same concept, the one the founding fathers had in mind in the days when the Constitution was written, a time of huge innovation in ways of doing business.

    Reply
  72. Ned

    Night, the problem I have with the Malcolm and US government approach to this issue is that they seem to adopt the Steven’s approach to simply treat the mental step as part of the prior art and to determine whether the balance of the claim is new.

    First, that’s not my approach, Ned. How many times do I need to repeat it? One hundred? One thousand? My approach is to ask the question: does the claim effectively turn a practitioner of the prior art into an infringer merely because the practitioner is thinking an allegedly “new” thought? If the answer is yes, the claim is invalid under 101. It’s true that this approach will render all claims where the novelty lies only in the mental step ineligible. The fact that you don’t like this conclusion does not mean that the approach is invalid. No Supreme Court case has ever stated that the practical effects of a claim on the public’s ability to think freely can not be considered when determining patent eligibility. Do you understand, Ned?

    Thanks. Now stop playing dxxb and misrepresenting my views which I’ve set forth in crystal clear fashion for you a hundred times over the past several years, at least.

    As for the Solicitor, the Solicitor is simply adopting the default position which I’ve also iterated countless times: if you don’t render the claim ineligible under 101 according to my analysis, then you MUST either find it invalid under 102/103 (by ignoring the mental step when determining novelty) or find the claim unenforceable or, if you really want to reach, unconstitutional (if you want to drag the First Amendment into it). Again, this is because the practical effect of such claims is not acceptable in our patent system.

    Reply
  73. NWPA Diagnositc methods will be harmed. Plan and simple.

    You have absolutely no evidence for this proposition. You are engaging in pure pxtxnt txxbxggery.

    in this case the diagnostic method is so simple as to be laughable. But, what of more complicated diagnostic methods? One where it is probably too complex for a doctor to even keep in his/her head where they are in the method. What of them?

    Gosh, I guess the claims will need to recite a computer, then.

    Reply
  74. Hans Malcolm, are you aware of a single published decision where a district court or the CAFC held invalid a dependent claim but held valid its independent claim?

    Off the top of my head, no, but I can think of circumstances where a court might reasonably reach such a conclusion. To be “valid,” a claim must meet numerous criteria …

    Consider the following claims, wherein claim 1 is patent-eligible.

    1. A bike.

    2. The bike of claim 1, further comprising a feeling about God.

    3. The bike of claim 1, further comprising a perpetual motion machine.

    I humbly suggest that in certain circumstances, it might matter what’s in the dependent claims.

    Also, please be aware that we are discussing issues that are right now before the Supreme Court or soon will be. The non-existence of cases on point is not terribly relevant. Patent law is changing. Have you noticed?

    Lastly, the proposition that ANY claim with a final mental step is patent ineligible as a matter of law is Ned’s proposition, not mine. I merely pointed out to Ned that such a rule is easily rendered meaningless (and frankly I find the justification for the strict rule to be lacking; I don’t believe such a blanket rule will be considered seriously by anyone).

    Reply
  75. Night, the problem I have with the Malcolm and US government approach to this issue is that they seem to adopt the Steven’s approach to simply treat the mental step as part of the prior art and to determine whether the balance of the claim is new. I think this approach has been rejected by the Supreme Court.

    Reply
  76. Night, The new use of unknown machine is patentable as a process. With the computer, there is a suggestion that a programmed machine is a new machine. But really, the machine is not a new machine when the machine is being used for its intended purpose.

    For some reason, the Federal Circuit has not squarely addressed the issue of whether one should be able the patent software as a machine. But for patentability purposes, they will treat program machines as processes. I think this is right.

    Reply
  77. AI, since we do not agree that the claims at issue in Bilski were BMPs, why should we continue this discussion?  We are not talking about same thing.

    Reply
  78. simple, your question implied something I did not say.  I do not accept the suggestion that my statement can be read the way you suggested.  Period.

    Reply
  79. Sorry about the inadvertent sockpuppetry NWPA. I had used the name newfags when I posted a little piece about newfags not being able to triforce in a thread a long time ago intending to try to get some fools to rerase their system32 folder. I couldn’t have them knowing it was 6 about to fool them or they wouldn’t do it. For some reason my machine decided to keep newfags as the default posting name even after I got done with that gag and posted back on 6 several times. Observant posters can tell if I’m using a different name for a little gag or such because I always use the http://www.hello.com (you can hover over the name and see it) and examiner6k@yahoo.com.

    In any case, I asked the question up thread.

    I’m glad to know you think Siri ineligible and thus not a slave. At least until you get your way and she, and all of “her offspring” are one.

    I’m curious what you think the probability that they’ve filed no fewer than 50 patents for Siri is?

    I appreciate your having finally understood that the reason such claims are rejected is because attorneytards try to define the machine in terms of “magic” instead of by its structure. I believe this is a breakthrough for you.

    Reply
  80. There is nothing wrong with Sockpuppets.

    Reply
  81. What I can (and what has been, and yet even though you ask how you can forget and yet you do) tell you is that “useful arts” is a larger set than “technical arts” and includes at least business methods (which you have a “as such” prohibition against and the US does not).

    This should be a very clear indicator that your continued use and reference back to “technical arts” should be stopped any time you are discussing US law (which in other words, is the same as saying you need to be specific that anytimne you say “technical arts,” you are not talking about US law.

    Is this really too hard for you to do? What reason do you have for not doing this already?

    Reply
  82. When did you ask the question the first time?

    Siri is a machine that is running an information processing method. Under Benson it is likely not eligible for patentability as the information processing methods appear to resemble a law of nature and it is too abstract to be eligible for patentability aoccoding to the pschotic holdings in Benson. Magical machines according to Benson.

    And, MM, please no more sock puppets. Be proud to be you.

    Reply
  83. Clever sock puppet for MM. It is unfortunate that the USPTO has spent untold billions with 101 rather than digging in and learning how to use 102 and 103.

    It is unfortunate that untold tens of thousands of companies and people do not understand what is eligible for patentability and what is not for fear of building a machine that captures a law of nature or is abstract. Yes, a machine that is running and performing the method as claimed can be abstract according to the SCOTUS, and capture a law of nature. Magical machines.

    Reply
  84. How can I forget? Why don’t you tell me what “useful arts” encompasses? Social skills, perhaps?

    Reply
  85. The patent system is to reward innovation in all fields of useful arts.”

    Corrected. (yet again).

    C’mon MaxDrei – please please please please please try to remember the difference in US law.

    Reply
  86. “This 101 business has done nothing but cause billions and billions of dollars of needless waste”

    I agree, a lot of people filed claims that were invalid over 101 because of unfortunate wordings in some few cases leading them to believe they had a 101 eligible claim. :( But, that’s how the legal system goes.

    Reply
  87. Yes but inventive activity comes in many forms besides that which justifies a twenty year monopoly. Why should being financially ingenious, mathematically creative or musically inventive, for example, be enough. The patent system is to reward innovation in all fields of technology, not finance or math.

    Yet if the 101 filter is abandoned, what stands in the way of twenty year monopolies, for the asking, on enabled contributions to the fields of pure math, sports and games, haggling in the market, methods of lying convincingly, or any other ordinary human social activity? Do you have a 103 filter that can cope with a full flow through a non-functional 101 filter?

    Reply
  88. All of this 101 business is the hope of a free lunch. If only we could just do all this patent business without having to do any work. Sorry boys and girls if you want a real patent system, you need 102, 103, and 112.

    This 101 business has done nothing but cause billions and billions of dollars of needless waste. Benson is probably the most expensive patent case ever litigated in the destruction it has caused to the patent system. Shame on you policy boys and girls and the Cybersource three.

    Reply
  89. A machine–a machine mind you—that transforms information by converting a number from one representation to another–is held inelgible for patentability because the SCOTUS determines that the method the machine is using–and mind you that mehtod is hard coded with transistors and resisters–can be represented in a human head with symbols and numbers that somehow are a law of nature.

    That is policy based medieval thinking.

    Information takes time, energy, and space to transform. Physic recognizes information as a fundamental property of nature that is conserved.

    Reply
  90. My opinion:

    1) nonsense that it is more efficient to police patents with 101 than 102, and 103. Nothing could be further from the truth. The truth is that getting around 101 is possible with money and time and cleverness, but that 102 and 103 are real. The focus should be on 102, 103, and 112. 101 is not real. It is a vanity of those that believe they know better than others. Rader has it right. Dump all these 101 arguments and focus on 102, 103, and 112.

    2) This business of breaking things up into known and unknown components is nonsense. Horrible methodology as claims elements are intertwined. If we get into this chipping away business, we patent attorneys are going to be spending a lot ot time getting clever to write elements that you cannot say are known. What a terrible thing to do.

    3) Diagnositc methods will be harmed. Plan and simple. And, in this case the diagnostic method is so simple as to be laughable. But, what of more complicated diagnostic methods? One where it is probably too complex for a doctor to even keep in his/her head where they are in the method. What of them?

    In the end, this 101 business by the courts and the “friends” of the court are nothing more than an alternative route to legislation. Go to Congress and away from the SCOTUS.

    lastly) Congress just passed the AIA and thought about these issues and didn’t pass legislation narrowing 101. So, why should the SCOTUS be doing this? This is legislation from the SCOTUS. Face boys and girls your motives are bad. Your intent policy and your means violence against the law.

    Reply
  91. Does anyone think that these diagnostic methods — if left alone by the SCOTUS to continue to receive promotion — will evolve over time to very complex methods that perhaps fill a wall with how complicated it is to follow the method to diagnose a person?

    Reply
  92. Prediction:

    Ned won’t (because Ned can’t).

    Reply
  93. Great hypo Ned. I asked myself how the EPO would deal with it.

    Methods of boiling eggs have technical character. 101 OK. The claim would fail 102/103 though, because in the claim there is no “technical feature” that gives the claim novelty over the state of the egg-boiling art. Mental acts are not part of technology.

    As to method claims, included in a patent that is directed to an altitude-compensated egg-boiling machine, how wide can we go? Interesting thought.

    Reply
  94. Oh this has got to be good.

    I have asked Ned this question a hundred times and never got a straight answer.

    Let’s see what kind of dishonest verbiage he comes up with this time.

    Reply
  95. Right, you are the one that proposed Business Methods were NOT patent eligible subject matter.

    The burden has and always will be on you to prove otherwise and you have failed to do so quite spectacularly.

    Reply
  96. Ned, It’s your statement.

    Are you asking what I mean by my question?

    If so, you really shouldn’t be calling me simpleminded.

    If not, why don’t you just answer the question?

    Reply
  97. Having giving it further consideration, I think the answer is this:

    Referencing the boiled egg claim where the novel element is a calculation based upon altitude, where the calculation is performed by human:

    The claim is patent eligible because, considered as a whole, it claims a process which transforms matter from one state to another.  However, because the novel subject matter lies in a mental step, and because that mental step cannot distinguish over the prior
    art, the claim is nevertheless unpatentable under 102/103.

    To make the claim patentable, either the process as a whole has to be new, or the calculation step must be performed by a machine.

    Reply
  98. There is no way that the Prometheus claim(s) should have passed the MOT

    Where is this passing the MOT a requirement? I cannot seem to find this in either the legislative law or in valid case law. Can you help me out?

    Reply
  99. 1. eligible
    2. doesn’t matter because 1 is eligible
    3. doesn’t matter because 1 is eligible

    Malcolm, are you aware of a single published decision where a district court or the CAFC held invalid a dependent claim but held valid its independent claim? How about the reverse? I seem to recall Allison and Lemley publishing the results of a study they did of all final, published validity decisions by either district courts or the CAFC from the 90′s and found only one instance where there was a final holding of validity of a dependent claim but invalidity of its independent claim. Allison and Lemley concluded that dependent claims are basically pointless. I’m not saying I agree with their conclusions or anything, but something tells me that the one instance of valid dependent claim/invalid independent claim was a district court decision where the judge was either intoxicated or senile or both.

    Reply
  100. Ned

    So I boil an egg and call for the time to be adjusted according to information from a measurement of altitude according to a formula. Is the adjustment an act? It sure is in my book.

    I knew this was coming. ;)

    All I can say, Ned, is that if you are going to discuss hypothetical methods, you need to be crystal clear about what’s being claimed. Frankly, it’s impossible to tell what you mean by “calling for the time to be adjusted.” You say that “is an act” in “your book.” Uh … okay. Still incredibly unclear what you are talking about.

    Let’s assume this is the claim you are referring to:

    1. A method of boiling an egg, comprising placing an egg in boiling water until [novel formula converting altitude to time for egg boiling], then removing the egg from the water.

    Respectfully, the real problem with this claim is that it covers all practical uses of the novel idea (the formula). I would have no problem finding the claim (and all similar claims) ineligible based on that principle.

    Obviously there is a transformation, however. So let’s just pretend for the moment that the claim is eligible, unless we find a reason to doubt that conclusion.

    How do we examine such a claim in view of the prior art which clearly teaches egg boiling? Well, obviously if any possible altitude input into the formula yields a time that was previously used to boil an egg in the prior art (or even a similar time), then the claim is invalid as novel or obvious. And that is surely going to be the result.

    So it’s a dxxb hypothetical. But let’s ignore that fact as well.

    Let’s say that your patent is granted and you see me at a certain altitude boiling an egg and you see me remove the egg from the water at the same time that your formula would suggest. Then you sue me. And in court the judge asks me what I was doing.

    I say, “I was boiling an egg for [x seconds].”

    The judge says “Why?”

    I say, “Because the yolks are perfect that way.”

    The judge says “I like em that way, too. Am I infringing when I boil my eggs for that time? I live at the same altitude.”

    And you say to the judge “Only if you think about the algorithm.”

    And now we have a bona fide 101 issue, thanks to your greed. Sure, the judge can construe the claim to require a machine, I suppose, to save your sad claim for some future action. But your own actions and statements (not to mention the broad claim) are responsible for putting the issue front and center.

    Same with Prometheus. Same with Classen. Same with Metabolite Labs. What were they thinking? Hint: begins with an ‘m’ and rhymes with “honey.”

    Reply
  101. Not only did the Supreme Court find the claim patent eligible, I think they would have has no trouble at all in finding the claim patentable under 102/103 even if the only new elements were the mental steps.

    Really? Even if they understood that the claim effectively prevented those practicing the prior art from “thinking” new thoughts while they did so? I’m curious, Ned: where did the Supreme Court ever suggest that claims which prevented those practicing the prior art from “thinking” new thoughts while they did so were patent eligible?

    The issue has never been addressed. Breyer came closest in his LabCorp. dissent. The fact that Dierh’s claims were found to be eligible is evidence of nothing except, perhaps, for the Supreme Court’s historically sloppy reasoning and fondness for, shall we say, gobbledygook in this area.

    Reply
  102. Even the government has now agreed that a process step requires an act in the real world. Merely thinking about something is not an act and not a process step.

    So I boil an egg and call for the time to be adjusted according to information from a measurement of altitude according to a formula. Is the adjustment an act? It sure is in my book. Can the adjustment serve to distinguish over the prior art? I do not see why not.

    Therefore, I conclude that adjusting a dosage in response to a correlation is an act, but that thinking about adjusting the dosage is not.

    I think the gov’t brief is close, but not quite there. A mental “step” in a process can limit and qualify another step that is real. But it cannot be a step by itself.

    Reply
  103. Gov’t brief:

    “A patent applicant cannot, however, avoid a rejection
    under Section 102 or 103 merely by appending a purely
    mental step or inference to a process that is otherwise
    known in (or obvious in light of ) the prior art. A “process” is a series of steps for achieving a useful result in the physical world. See, e.g., Cochrane, 94 U.S. at 788.”

    The case they cite, and the legal rational, sounds entirely in 101 however. Entirely.

    Also, I do not the government’s use of “append.” Do they mean, final steps only?

    Recall that Diehr’s claim 11 had mental steps in an admittedly old process. Not only did the Supreme Court find the claim patent eligible, I think they would have has no trouble at all in finding the claim patentable under 102/103 even if the only new elements were the mental steps.

    “Append” has to be understood to be the final steps, with the transformative steps being mere data gathering. With this limitation in mind, even the gov’t argues the Prometheus claims are not patentable subject matter, but under 102/103. However, this is a distinction without a difference.

    Reply
  104. You are conflating again. My position on the the Supreme Court “upholding ” business methods as statutory subject matter in Bilski is clear from start to finish. I reiterated my position in this thread at Oct 19, 2011 at 08:34 PM.

    My position that Coffin Making is within the useful Arts of 1789 and 2011 and in fact was a business method in 1789 is also clear. See my post at Oct 19, 2011 at 08:10 PM

    The fact is you have failed to put forth a cogent response in rebuttal to either position.

    And no, conflating is not a valid rebuttal although it may be telling of the advance of your friendship with Mooney.

    Reply
  105. ROCHE & ABBOTT (Seth Waxman, WilmerHale): Patents are crucial for innovation in personalized medicine and more particularly for the continued development diagnostic tests that can enable such medicine’s practice. Arguments “that patents on diagnostic tests stifle innovation and basic scientific research” are “largely based on speculation, rather than sound evidence.”

    On the other hand, arguments that patents like Prometheus’ effectively prevent practitioners of the prior art from thinking about patent-ineligible, publically disclsoed facts are based on irrefutable logic. Which is why Roche and Abbott would rather attack a strawman than address those arguments.

    There is absolutely no evidence that the pace of research into diagnostic correlations that are useful for treating patients will be affected by refusing to grant claims in the form [old transformative step + mental step] or [mental step + old transformative step]. None at all.

    The increased identification of “correlations” based on such information is 100% due to faster computers, faster machines for obtaining genetic information, and the desire of pharma/insurance companies to identify patients who can be targeted for “personalized medicine.”

    Reply
  106. NED: “AI, this whole topic began when you or a sockpuppet stated that Bilski held that BMPs were patent eligible.”

    I originally stated, and have always said that Bilski “UPHELD” Business Methods as statutory subject matter. The word “UPHELD” is of particular importance here.

    Upheld is defined in the dictionary as:

    confirm or support (something that has been questioned) : the court upheld his claim for damages.
    • maintain (a custom or practice)

    This is relevant to my position that business methods have always been statutory so there is no reason to argue that they are statutory.

    The Court agreed in Bilski by saying business methods are processes and methods same as any process and method, and subject to the same requirements as any other process and method.

    The opposition, of which you are a part tried to get the Court to narrow the Constitution and the Statute to exclude so called business methods.

    The opposition failed to do so, and thus the Court “upheld” business methods as statutory subject matter.

    Not even Stern himself can save you now.

    ::chuckles::

    Reply
  107. Malcolm, the whole point of dependent claims is to tag on further features just in case the broad claim falls. There are good reasons for doing this.

    I agree, Ned, for the general case but not where the dependent claim recites only a mental step.

    “Yes, your honor, we acknowledge that the independent claim in the prior art and to the extent the defendant is only practicing the prior art, he can not infringe the patent. But in addition, the defendant has admitted to THINKING about a fact that we published and which, by itself, is ineligible for patenting. Because he is THINKING while he practices the prior art, he therefore infringes the dependendant claim.”

    You really have to be incredibly clxxlxss to believe that such a claim is going to get you anywhere.

    We’ve reached the end of the road. I guess we should thank Prometheus and Classen for their uncontrollable greed.

    Reply
  108. I just scanned In re Gleave and do not understand how it is relevant to the issue of patentable subject matter.

    Sorry, Ned. I meant In re Grams.

    Reply
  109. Ned, does it bother you at all that claim 3 renders your rule meaningless?

    Reply
  110. Well, since you want to go there let’s analyze it.

    In 1789 Coffin Making was a business plain and simple.

    People paid for the making of pine boxes.

    There were numerous processes and methods for the making, distribution, and delivery of the pine box.

    Money changed hands as part of this process and trade and advertising , even if only word of mouth, occurred in order to make the entire process work.

    No one was making Coffins for sport or games, art or pleasure, or communication, the mere liberal arts, your daddy Stern speaks of.

    If not for the exchange of money and/or trade, including the advertising needed, there most likely would not be anyone in the Coffin Making business.

    So clearly we have a process that involves commerce and is not merely a liberal art process. That logically makes it a business method/process same as any other process and part of the useful arts of 1789 as well as 2011.

    You are the one that “can’t handle the truth!” since it is you Ned Heller that can’t accept the fact that the Supreme Court has ruled that business methods are processes and methods like any other process and method and therefore must be treated accordingly.

    And since no Court or Congress has accepted your unconstitutional definition of business methods, the joke is on you.

    Reply
  111. AI, this whole topic began when you or a sockpuppet stated that Bilski held that BMPs were patent eligible.

    That is the topic I am discussing regardless of your denying that this is the topic.

    I assumed, but I should not have, that we all understood that Bilski’s claims were BMPs. I was shocked to find that you did not believe this, but rather believed that they were not BMPs.

    Your discussion on whether method claims generally must do this or do that is irrelevant. The question on the table is your statement or contention that BMPs are patent eligible. Stop trying to move the goalposts.

    Reply
  112. AI, you are truly delusional. This topic began with your or some other sock puppet’s assertion that BMPs are patent eligible. When pressed, it became clear that you did not consider Bilski’s claims to be BMPs, but that coffin making claims were.

    I have no idea how you can believe this. But, truly AI, you have a screw loose.

    Reply
  113. Ned:

    The GLARING fallacy in your argument is that there is a need to argue and prove that so called BMP’s are patent eligible.

    But the fact is the Supreme Court has ruled that BMPs are processes and methods same as any process and method and therefore are to be treated the same as any process and method.

    Therefore all your posturing about what is and is not a business method and why it’s not patent eligible or in the useful arts is all straw.

    NED: The Supreme Court was clear that the MOT was a primary test.

    AI: Not true. Cite the exact quote. You can’t!

    NED: Breyer and Scalia stated their views that anything that failed
    the MOT was highly unlikely to be patent eligible.

    AI: I would like to see the exact quote on that too. And even if you can provide, Breyer and Scalia make a majority on what ???????

    NED: What I suggest to you AI, is that since BMPs will always fail the MOT by definition, they are highly unlikely ever to be patent eligible.

    AI: Yes, in your world and by your definition. But not by the US Constitution, US Supreme Court, and the US Congress. Business Methods are merely processes and methods therefore not only statutory, they are within the useful arts and the law of the land!

    Reply
  114. I just scanned In re Gleave and do not understand how it is relevant to the issue of patentable subject matter.

    Claim 1: patent eligible.

    Claim 2. Not

    Claim 3. Patent eligible.

    Recall, that the depended claims are legally treated as independent claims for the purposes of patentability.

    Assume that claim 1 is fully supported in a priority application, but claim 2 is new matter added upon filing the present application. Just because claim 1 is patentable does not render claim 2 patentable because claim 2 is not entitled to the priority date of the priority application.

    Each claim has to be individually assessed.

    Reply
  115. AI, in the words of Jack Nicholson, "You can't handle the truth!"  

    Coffin making in 1789 being a form of business method from that era?  

    What a joke.  

    Bilksi's claims to a hedging method are classic BMPs.  They do not pass the MOT and have a business utility.  Coffin Making passes the MOT.  Truly it does.

    Reply
  116. AI, I suggest that the holding in Bilski is inconsistent with dicta that BMPs could be patent eligible.  I will repeat:

    Bilski:  BMPs are NOT categorically EXCLUDED.  

    The double negative implies a positive:  that BMPs are patent eligible.  

    That is what you and other sockpuppets actually said, and repeatedly so.  BMPs are patent eligible.

    But if BMPs are patent eligible, then Bilski's BMPs should have been patent eligible.  But they were not, indicating that there is something wrong in the Supreme Court statement.

    The Supreme Court was clear that the MOT was a primary test.  Breyer and Scalia stated their views that anything that failed
    the MOT was highly unlikely to be patent eligible.  What I suggest to you AI, is that since BMPs will always fail the MOT by definition, they are highly unlikely ever to be patent eligible.

    That is the real takeaway from Bilski.

    Reply
  117. But Malcolm, the whole point of dependent claims is to tag on further features just in case the broad claim falls.  There are good reasons for doing this.

    But the US position seems to be consistent with your position in that it would find claims that ended in mental steps patentable if the transformative steps were new.

    Reply
  118. “What do you do with the following claims:”

    Don’t even try to talk to Ned about his “claims ending in a mental step aren’t patentable” nonsense. Your example literally blows his mind up. He doesn’t understand that whether the claim begins, ends or contains as an intermediate step a mental step then it has to be the same analysis.

    Reply
  119. Ned, you are a conflating S0S. I just brought up the example this morning of Coffin Making as a business method that was within the useful arts in 1789, along with candle making, barn building, and any other wood and iron process from that era.

    This had nothing to do with you declaring all business methods are patent ineligible because Bilski’s particular type of business method was ruled patent ineligible.

    Something you did over a month ago and have continued to do across multiple threads including this one.

    If you want to debate useful arts and what is and it not included then I invite you to you come and get your intellectual b slapping anytime, in the other thread where it started, or this one. It does not matter to me.

    Reply
  120. I has a question for NWPA if he’s around.

    NWPA, is Siri a slave?

    Reply
  121. Ned:

    You are the one being completely disingenuous and accusing others of what you are doing. That’s your MO and favorite fallacy in the dirty tricks argument hand book.

    The fact is you initially made the blanket argument that since Bilski’s business method was patent ineligible all business methods are patent ineligible, with out even having a definition for business methods!

    And when you were called on it by Um No, and others you played dumb, rather than admit your flaw.

    When you were backed into a corner with the medical methods question, you said duh??? whats a medical method???? Again playing dumb just to stick to your dishonest game.

    Now, just today you come up with your own personal definition of business method and act like this was you position for the last month.

    But even that won’t save you now because no one living in the 21st century would accept such a backward definition as representative of business methods. And surely the Court has not and never will back such a narrowing and limiting definition that unconstitutionally impedes the progress of the useful arts.

    Reply
  122. “and will only serve to take your “good name” through the mud.”

    That wagon done already left town.

    However I missed the good name thread that keeps popping up in relation to Ned. What, is this his real name or something? And what difference does it make? I dont know Ned from Malcolm and don’t care actually.

    But I do know when people are honest and when they lie. Ned, who/whatever he/she is, on this board is dishonest and reprehensible when it comes to patent law.

    Reply
  123. “By careful everyone, according to Ned’s logic, if this medical method is found not to be patent eligible, then ALL medical methods are not patent eligible.”

    This is correct. Ned said because Bilski’ business method was found not patent eligible, then ALL business methods are not patent eligible.

    But if I recall correctly someone asked Ned if this applies to medical methods, and he said ( punted actually) he did not know what a medical method was. Thus he avoided having to face the false conclusion of his own illogical argument.

    Reply
  124. Prometheus is consistent with Taner, but inconsistent with Walker and Christensen.

    More importantly, inconsistent with In re Gleave which was a Federal Circuit case directly on point.

    If a process claim ends in a mental step or steps, it is not directed to eligible subject matter regardless of whether the data gathering steps are transformative.

    What do you do with the following claims:

    1. Method comprising a new transformative step
    2. Method of claim 1, wherein after said transformative step, a mental step.
    3. Method of claim 2, further comprising an old transformative step after said mental step, wherein said old tansformative step is insubstantial and was clearly added merely to avoid the rule.

    Reply
  125. It would allow the claims even if they ended in mental steps if the data gathering steps were new.

    Indeed. I don’t see any reason not to allow such claims. A better question, of course, is why would anyone WANT such claims? ;) If you’ve got an eligible, patentable invention, just claim it. What’s the point of adding a mental step, unless you are a masochist who enjoys making infringement of your own patent as difficult as possible?

    Reply
  126. Malcolm, the US brief is very close to your position. It would allow the claims even if they ended in mental steps if the data gathering steps were new.

    I will read this brief with interest.

    The CATO brief is my position.

    Reply
  127. Ned, isn’t it a bit odd to refer to discussing your own theory as “polluting” ?

    Reply
  128. anon, I don’t know where you get “as a category.” The original post(s) I questioned had nothing to do with “as a category.” It simply was a statement that BMPs were patent eligible.

    That is what I am talking about and have always been talking about.

    I know you keep raising “category.” But for the life of me, I have no idea what you are talking about as you never actually tell me what you are taking about.

    Reply
  129. anon, as always, you are being completely disingenous.

    The logical discussion is this: Sockpuppet Premise: BMPs are patent eligible.

    I questioned the premise as Bilski’s claims were BMPs. If BMPs were patent eligible, Bilski’s claims should have been patent eligible.

    But since the result in Bilski is the opposite, I suggested to you and to your fellow sockpuppets that your premise is faulty.

    Just for clarity sake, I have proposed a definition of BMP. It is a method that has business utility but does not otherwise pass the MOT. The Bilski claims meet this definition.

    To date, sockpuppets refuse to agree that the Bilski claims were directed to a BMP. They rather contend that coffin making, as an example, is a BMP.

    The sockpuppuets are having a problem defending their premise.

    Reply
  130. The CATO brief represents my position.

    However, the takeaway from the sheer number of different points of view is that the whole topic of patentable subject matter is in a massive state of confusion. I place the blame here largely on Rader. There is no way that the Prometheus claim(s) should have passed the MOT as the claim as a whole has to be directed to a transformation, not just data gathering steps. The CATO brief gets it.

    After Benson, In re Christensen held that claims that ended in an abstraction (using measured data in a mathematical algorithm), albeit having transformative data gathering steps, were directed to an abstraction. This is consistent with the 9th Circuit case of Halliburton v. Walker to the same effect.

    link to scholar.google.com

    However, Christensen was overruled in a case, In re Taner, that gave significance to the data gathering steps.

    Prometheus is consistent with Taner, but inconsistent with Walker and Christensen.

    The case is simple and should be simply judged. If a process claim ends in a mental step or steps, it is not directed to patentable subject matter regardless of whether the data gathering steps are transformative.

    There is no need to judge beyond these facts and speak of hypothetical cases, or to bring in irrelevancies such as the 287(e) exclusion. Keep it simple, Supreme Court.

    Reply
  131. …and you need to correctly portray my views: you left out “as a category.” (so your “without limitation’ quip is patently false).

    This is a critical distinction and one that you continuously either run from or (as evident now) misrepresent.

    Don’t play the “misrepresent the other side’s view” game – not only is it exceptionally trite, but also exceptionally dishonest, and will only serve to take your “good name” through the mud.

    Reply
  132. Hey Ned,

    I only brought up the actual name of Bilski to set poor MM straight (you know he has a habit of hyperventilating and conflating himself into a state of oblivion).

    After all, it is your brainchild logic I am applying to Prometheus. If you want to talk about Prometheus and use the exact same logic you have pasted all over the various threads, go for it! I only warned the people here about your logic (and I am pretty sure that I have been faithful in presenting it here in context of Prometheus).

    Reply
  133. I already closed the brief mm and i’m not keen to reopen it and waste that amount of time atm. But on the whole, they acknowledged that the claim is effectively a claim to the natural phenomena and then they emphasized the whole “it effectively stops people from thinking” angle as you’ve been stating for awhile now.

    I wonder if Prom filed yet.

    Reply
  134. socketpuppet declared, without limitation,

    “Bilski held that BMPs are patent eligible.”

    I questioned the declaration, noting that the Bilski claims were BMPs and were held to be not patent eligible.

    Result: an interminable discussion where sockpuppet steadfastly refused to agree that the Bilski claims were directed to BMPs, declaring at one point that coffin making was a BMP.

    sockpuppet, let’s not pollute this thread with that discussion. Let’s rather discuss Prometheus.

    Reply
  135. I didn’t get that sense when I read Mayo’s brief. What passages are you referring to, 6?

    Of course, this sounds vaguely familiar:

    NINE LAW PROFESSORS (Joshua Sarnoff, DePaul College of Law): … “Allowing patents for uncreative applications would effectively provide exclusive rights in and impermissibly reward the ineligible discovery itself.”

    I must say that I haven’t felt more comfortable about the outcome of a case since Abbott Labs v. Sandoz decided that product-by-process claims were, effectively, method claims.

    The Federal Circuit’s decision in Prometheus is so short-sighted and its reasoning so sloppy and so childishly simple-minded that it practically begs to be overturned. It’s quite literally a cry for help. And now they’re going to get that help.

    The most unfortunate aspect of the case is that the question presented in the petition for cert was poorly worded and misses the point. The case about whether one can turn ineligible discoveries into eligible claims by reciting an ineligible step of thinking about the discovery (i.e., thinking about a new fact or a new correlation) and tacking on a patent-eligible, but old, transformative step. If the answer to that question is “yes you can”, then such eligible claims must be found unpatentable per se, as suggested by the Solicitor General.

    As for Microsoft’s assertion: Subject-matter eligibility tests should not involve “pars[ing] the claimed invention into the ‘underlying invention’ and those aspects that are ‘conventional’ or ‘obvious’ or insignificant ‘extra- or post-solution activity.’” Such parsing lacks any guiding principle that can make its application predictable.

    This is false. The “guiding principle” is claims can not prevent otherwise non-infringing actors who are practicing the prior art from thinking about what they are doing, what they are going to do, or about the results of what they just did. When the effective preclusion of mental thoughts is considered, there is nothing “unpredictable” about the analysis.

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  136. No confusion at all. The post above merely unviels the fallacy of Ned’s long running Bilski particular-to-general warped logic.

    Try not to confuse yourself and please try to keep up.

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  137. By careful everyone, according to Ned’s logic, if this medical method is found not to be patent eligible, then ALL medical methods are not patent eligible.

    B-b-b-ut they are already all ineligible because they’re d-d-directed to h-hu-humans!!!

    Sockie’s confusion runs deep.

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  138. Thanks for this nice short summary of the amicus arguments in this case, which has been overshadowed by the AIA, and is of only peripheral interest to many of us.
    The Fed. Cir. has been surprisingly lucky at the Sup. Ct. just recently, with affirmances or waffles, but one wonders if they are in for a return to another judical trouncing here? As Mr. Dooley famously said, even Supreme Court judges read the newspapers. They must be aware of what high medical costs are doing to government budgets, and that this subject is a lot more nationally important than whether or not business methods [other than Mr. Bilski's] are patentable.

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  139. By careful everyone, according to Ned’s logic, if this medical method is found not to be patent eligible, then ALL medical methods are not patent eligible.

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  140. Is MM counsel for mayo? Looking at their brief it appears to closely follow MM’s line of reasoning.

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  141. “Preemption analysis “must incorporate a critical assessment of whether the claim at issue actually claims a fundamental principle as a fundamental principle in contrast to an application of that principle.” ”

    I agree, but after you have determined that it is an application that does not end the inquiry. One must futher inquire whether a claim that broadly claims “an application” of the fundamental principle is in fact effectively claiming “all applications”. Indeed, that is good law. And it is further good law to take into account the principles announced in Flook.

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  142. I think they meant to say:

    “But the Federal Circuit has WISELY “extended th[is] principle to apply to machines or manufactures that replicate mental steps.” ”

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