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. Four posts in 29 minutes, none of which were replied to by anyone. On a Saturday no less. Wow. I’m sensing that even you acknowledge that the CAFC is going to get its sharpest rebuke ever. You think Ned is committing an act of violence by not submitting to you? You’re a pretty interesting character.

    Reply
  2. “So Ned, how about it? Will you ever actually provide the answers? Will you ever actually stop your games and be intellectually honest and provide answers?”

    No,

    No.

    Hellll No!

    Reply
  3. a general purpose computer plus software is a particular machine.

    That is the pith and essence of the law.

    In Bilski, notwithstanding the fact that Bilski was not about computer implemented/software inventions, the Supreme Court directed the CAFC to redevelop the jurisprudence of 101.

    In Ultramercial, the CAFC has done precisely that in regards to the MOT clue. The CAFC has taken the jurisprudence of the MOT and has redeveloped the MOT in relation to software – actually has taken the opportunity to forcefully and unequivocally reinforce what MANY have always maintained: the holding of Alappat. The question of what makes a paticular machine has been fully answered and reinforced in Ultramercial, and one must look at what Ultramercial has to say about “software.”

    From page 11:
    “…to satisfy the “particular machine” requirement. This court confronted that contention nearly two decades ago in the en banc case of In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994). At that time, this court observed that “programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.” Id. at 1545.”

    From page 12:
    “In other words, a programmed computer contains circuitry unique to that computer. That “new machine” could be claimed in terms of a complex array of hardware circuits, or more efficiently, in terms of the programming that facilitates a unique function”

    It is clear that NWPA has been completely vindicated in his expresed views of software and a general computer being a particular machine – a new machine – that software transforms the general purpose machine and that software thus satifies both the machine prong and the transformation prong of MOT.

    It is clear that the courts are getting tired of the
    policy driven attemtps to limit inventions based on the attempted nose-of-wax bendings of 101 and trying to limit patent eligible inventions to 18th century thinking.

    It is clear that we all need to move forward and embrace the fact that the patent world is supposed to be forward looking, not backward limiting.

    It is clear that the views of 6 and Ned in regards to Alappat have been expressly denied.

    Reply
  4. Notice that Ned does not provide any answers in his reply.

    Notice that Ned stops reading when Ned gets “That is all I needed”

    Notice that Ned reacts to the messenger and not to the message. Why? you may ask. Because the message is the k_iller, and it is easier to react to the messenger and ignore the message if that message k_ills “the agenda.”

    Notice that Ned is all about “his agenda” and never really gets into any discussion that shows the holes in “his agenda.” Never. Ned appears to be all about engaging in discussions, but Ned’s “discussions” are always one sided affairs, always his view and never never never about what the law actually is.

    Notice the offer to listen, but that listening is not what is being sought from Nef. Answers are being sought. Answers.

    So Ned, how about it? Will you ever actually provide the answers? Will you ever actually stop your games and be intellectually honest and provide answers?

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  5. AFter you address this isssue, I will gladly shot down again, again, your silly little arguments regarding cannons, general purpose computers, and the other frivilous arguments you present.

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  6. And, then Ned, ask yourself how the method in Deener is fine when it could be carried out by a human body, but the information processing methods are not ok because they can be carried out by a human brain.

    Get it? The reason I am sure I am right is that all of this is very simple in my framework. Simple to understand. Occam’s razor.

    And, please, when thinking about information tell us about information and black holes. Yes, black holes and information and the great geniuses of our day. Get out of the iron age. Anyone with an IQ as high as yours Ned has an obligation to try and honestly understand these issues and not try to obfuscate the issues to get policy based arguments put through that belong in Congress. To do less is to commit an act of violence against our society and the law which is our profession.

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  7. I will also point out that if one performs a thought experiment and says that a tranformation of represented information is a transformation then all of sudden you find all of these arguments are trivial to understand. The methods are acting on a substancd like the grain in Deener. Represented information. You see that is the job of patent attorneys and decent human being. To try to understand modern technology. Not exploit weakness in the human mind to get policy based reasoning.

    You are smart Ned, but you are not a decent person. You motives are bad and thinking muddled and impure. Face the music. Game, set, match. You lose. Represented information being transformed is a transfomratin every bit as much as a grain of wheat being transformed.

    And if you want to continue to interact with me address my assertion directly and in terms of modern physics. Not your 1920 physics.

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  8. Information transformed is a transformation under MOT.

    a general purpose computer plus software is a particular machine.

    You want to skip over information being transformed. Why? Because it destroys your arguments. Try to refute that. Modern physics recognizes conservation of information. Information is now seen as a fundamental property of nature. A transformation of information is work. It takes time, energy, and space. You lose, Ned. You cannot fight that. You avoid it because you lose. Either argue with me over this point or be seen forever as a troll. A policy based troll that for whatever reason is not interested in a quality discussion.

    That is modern physics. Modern information theory. You cannot skip over this point. Not possible. You face it or you are not interested in real debate. A bad human being trying to use the law for your policy based arguments.. Man up or drop out.

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  9. For all the Rader h_ate being expressed, it is amazing then, that the highly fragmented Supreme Court in Bilski actually found common ground in one particular spot: Rader’s legal thinking.

    Also note that Rader, in Ultramercial led in with the Bilski majority quote of what the 101 purpose is.

    The clues are there if people place their agendas to the side for a moment: Rader is very much in touch with what the majority of the Supreme Court think and Rader’s crafting of 101 Jurisprudence at the CAFC level is very likely to be affirmed by the SC.

    Rader Love.

    link to youtube.com

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  10. I think the reason that the majority did not join the Stevens minority and simply ban business methods from patent eligibility was because there was no clear definition of business method.

    That and the little fact that Congress expressly provided for business methods as patent eligible subject matter in Section 273…

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  11. So please stop making these dishonest statements.

    Not. Going. To. Happen.

    Ever.

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  12. “confine his claims as did the Halliburton court did in England to processes that necessarily must run completely on machines.”

    ???

    I think that is the opposite of the Halliburton court result.

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  13. And what if Congress said no patent may issue on a claim directed to a human organism?

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  14. Max, also note that he speaks of a transformation of data. At least he now admits that we are speaking of processes.

    And, without more, he claims any means for transforming, including the human brain with or without using aids, like paper and pen.

    Night, of course will add limits if pressed. And, when pressed hard enough, he might confine his claims as did the Halliburton court did in England to processes that necessarily must run completely on machines.

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  15. Regarding Chief Judge Rader, it is clear that this man has a significant problem with the MOT test. He absolutely refuses in any case to acknowledge that it exists or will apply it except in a perversion of the test as he did in Prometheus.

    Sent from iPhone

    Reply
  16. Night , then we will agree to disagree.

    Regarding Bilski: I think the reason that the majority did not join the Stevens minority and simply ban business methods from patent eligibility was because there was no clear definition of business method. 

    Bilski had little or nothing to do with the patentability of program computers.  That issue was not before the court in that case.

    Sent from iPhone

    Reply
  17. Europe requires subject matter to be tied to a machine, you report. How about the claims the EPO issues, directed to a signal, an electromagnetic waveform carrying data?

    By contrast, electromagnetic activity within the human brain is not actionable, in free-thinking Europe, as an infringement of a presumed valid claim duly issued by the Patent Office.

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  18. It does not sound like you want a quality discussion. It is enough to transform the data. Period. We are not Europe where we are chained to try to tie our inventions to a piece of hardware in some specific way. 1920’s thinking.

    Ned: Rader is a great judge. Rader does not need to walk through the swamp of SCOTUS cases based on iron age technology. The SCOTUS did not do this for Bilski and this was a business method not tied to a machine. He worked within the framework set out in Bilski. Nice that you like this old cases with 1920’s thinking. The SCOTUS did not in Bilski.

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  19. Mayo then says: ” The “administering” and “determining” steps of Prom- etheus’s claims are not, however, its inventions. The drugs involved and the method of blood testing for metabolites are well known and have been used by physicians and researchers for decades.”

    Oh really? used by physicians and researchers for decades???? Why not just argue 103 and end this? With KSR out there you can knock the claims out in a heart beat. And you would not even have to do any of that MM dissection of mental/old steps craaaap.

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  20. Mayo cries:” Prometheus insists that Mayo cannot develop a test with different criteria relating to any autoimmune disease unless it invents (needlessly) an entirely new way of examining the body for metabolites.”

    Hello??? That’s called asserting your patent rights! Don’t like it? Then get off your lazy azz and design around the patent or pioneer something better. That’s call promoting the progress of the useful arts and is what patents are supposed to.

    Part III

    Mayo says: Prometheus thus asserts the power to prevent doctors and researchers—who considered metabolite levels on their own years before these patent claims were filed (see supra, p. 4)—from exercising inde- pendent medical judgment based on ordinary blood evaluations.

    Dam right! Patents equal power to assert rights! Don’t like it start your own country with MM, Ned and 6.

    Mayo citing Diehr: ( Oh and I love how after relying on discredited dissection analysis in Flook and cabined principles in Benson they cite Diehr as if it helps their case. ) “The claimant did not seek to preempt use of the equation generally, but only to foreclose its use “in conjunction with all of the other steps in their claimed process” in the particular application of molding raw rubber into finished products. Id. at 187.”

    Duh??? Isn’t this just what Prometheus is doing? It’s an application of a concept to a specific industrial process. The claims are tied to a transformation and inherently require the use of a machine and apparatus. ( How the &&%$ you gonna test blood without drawing it?) It does not matter if the claims had a mental step or where old or whatever. Did the Mayo attorneys skip class the day they taught U.S.C. 100 (b), new use of a known process. And If the claims were anticipated prove it. If its obvious then show it! All this incessant whining, especially from a big company that gladly used the patent services of another company and is now crying cuz it has to pay a royalty when they ripped them off is too much for an Actual Inventor to stomach.

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  21. 6, can you state one factually unsupportable principle in Ultramericial?

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  22. MM: “practitioners of the prior art being sued because they’ve learned something new and they dare to THINK about it.”

    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.

    So please stop making these dishonest statements.

    Your entire proposition is just a ruse to dissect claims and eliminate process patents.

    Reply
  23. simple, I didn't read all of you post.  I stopped when I read that you sincerely wanted to discuss issues.  That is all I needed.

    You have to understand something that may not be apparent until it happens to you too.  If you are beset by pest who uses a variety of difference monikers to pretend to be different people, you begin to suspect everyone with a similar kind of moniker for being the pest and react accordingly.  I no longer even try to distinguish between the monikers, but treat them all as the same
    person.

    Regarding Um No, I repeatedly offered the olive branch and asked him time and again to again ask what it was that he said he had asked and I did not answer.  (I pointed out that I did not, as far as I know, ignore his argument as I truly did not know what he was talking about.)  Instead, he ignored the offer, did not repeat the question and has never once behaved civilly again.  He is simply angry that I , once upon a time, allegedly ignored his question.  His only discussion with me is to endlessly repeat this mantra.   It is tiresome, its old and it is a bit extreme.

    So, if you truly do want to discuss the law, I am here to listen to your views and arguments.  

    Regarding MM, he doesn't play games and is serious.  I may not always agree with him, but I listen to him.  I do not have a sense he is here to be a pest.  Just to the contrary.  He has a point of view and wants to express it.

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  24. Malcolm, I agree.  The way Rader treats "transformations" is to turn the MOT into a mockery of a test.  I think that was and is his plan anyway.  He is a subversive if ever I saw a subversive.  If one could remove a judge for willful disobedience to judicial precedent, I would remove Rader.  If one disagrees with precedent, one dissents.

    Benson, the precedent it followed, and every Supreme Court case since Benson required the claim as a whole to transform an article such that the abstract elements, or the laws of nature, modified a physical step to cause something new to happen.  The Supreme Court never sanctioned tagging mental steps onto transformative data gathering steps where the novelty, the alleged invention, was in the mental
    steps.  

    It is little wonder that the Supreme Court took up Prometheus so soon after Bilski.  Rader made it clear that he held little or no respect for the opinions of all nine justices.

    Reply
  25. Ned,

    As tiresome as you believe my post to be, I am sure that your repeated non-responses are much, much more so to those that would attempt to have actual answers from you.

    You say to be polite in your directions immediately above.

    I was not born yesterday. I would fully expect the same gamemanship to my questions that you have displayed to others. Quite in fact, I have received that very same gamesmanship, as you have not answered any of my questions, including the questions that I asked that others have asked.

    Indeed I was hoping that as a new person asking, in the politeness you suggest, would fair better, as I believe that a common ground may be achieved – but only if you actually move towards that common ground and away from your agenda.

    And do you know what I received? I received an insult from you, calling me “simpleminded.” Do you really expect me to think that you are ever going to answer the questions that have been put to you, no matter how politely I bring them to you again when you do not answer questions politely brought to you in the first instance?

    You now ask “Why bother?” I bother because I want to discuss the answers to the questions that have been put to you. Fight or discuss, you ask, but that is too, mererly a game, as it seems that you have no intention of providing answers to those questions. Fight or discuss, you ask, and I know waht it takes to discuss, that would be you actually supplying answers, and I know what it takes to fight, you palying the same repeated games.

    You now ask “Why bother?” I bother because I want to see you answer legitimate questions that take your agenda and put it on its head. It is not a matter of “fighting,” as I hope that in seriously answering those questions you either advance your theory in support of your agenda, or you realize that your agenda is not supportable in the face of the law as it is and you stop shooting yourself in the foot by claiming the law says something it does not.

    As for Actual Inventor’s response, the fact that you do not understand why he responded as he did only means that you have ignored my post as I explained why – you want to move on without providing answers that set the foundation and it appears that you want to do so because you are losing the discussion. It appears that to actually answer the questions put to you on top of the points that you cannot sustain would mean that you would have to stop pursuing your agenda, and it appears that that is something you would rather receive dishonor to your name than do.

    I would say, don’t shoot the messenger for what I tell you, but you already have fired at me several times.

    Likewise, I note, you have fired on several others. In fact, I do recall Um, No. explaining to you his visceral reaction to you, and his not accepting your olive branch because you never did answer the points he raised, and you simply starting playing your games with him, just as you are doing with me.

    Lastly, I note with no small irony that MM stops by to shoot some of his typical nonsense from the sidelines and really do hope that you do not follow his path towards total lack of respect (although I do note that you have posted quite some admiration for him, which is beyond my understanding to understand why).

    And please, do not inslut me by saying my post is too long. The points within th epost are short enough that you can understand them one at a time. Take a paragraph at a time if you must, but at least try to be intellectually honest and give me the courtesy that a true gentleman would do.

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  26. simple, such posts are really tiresome.  Why even bother.  What do they accomplish?

    If you want to discuss a legal point, do so.  If your point is ignored, or you think it ignored, politely bring it to the attention of the person with who you are discussing the point.  

    Now, I was saying to AI that I agreed with him on a couple of points.  He reacted as if I touched an infected wound and basically said that he would never agree with me.

    So what are we doing here, I ask?  

    Fighting or discussing?

    Reply
  27. The Grams “tests” did not expressly require transformations.

    The Grams tests certainly did require transformations. Where in the In re Grams decision does it say that the tests did not require transformations? The data being analyzed in Grams claims could not be obtained without the same sort of transformation recited in Prometheus’ claims.

    The CAFC also engaged in some very slick handwaving wherein they try to pretend that the Prometheus’ claims somehow “optimize” treatment when, in fact, they do nothing of the sort. Or they pretend that the transformation steps aren’t mere data gathering because they’re “therapeutic” (also not true).

    There is an unclever game that the CAFC likes to play. It’s called “find the transformation only when we feel like it.” Hence, Classen’s claims and Myriad’s claims that were found ineligible were very conveniently construed to not require a transformation, in spite of the fact that some animal’s skin had to be broken and transformed in order to obtain the information.

    The bottom line (again) is that the “any transformation saves the claim” test is a test that a five year old would come up with if you gave him just one minute to think about it. It’s childish, simple-minded and, unsurprisingly, leads to unacceptable outcomes, i.e., practitioners of the prior art being sued because they’ve learned something new and they dare to THINK about it.

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  28. Ah, I see. The Grams “tests” did not expressly require transformations.

    A Grams test simply measured the presence of, for example, metabolites. When the claim, as in Prometheus, additionally requires a preliminary administering step, that is enough, it seems. The claim “as a whole” is part of a treatment method, not just a calculation.

    Yet, the claim actually does not include the treatment step, as that is statutorily excluded subject matter.

    Regardless of the answer in other contexts such as oil exploration, the claim as a whole here makes a treatment method infringing when Congress has expressly excluded that treatment method from infringement.

    So, how does the placement of the treatment method exclusion in 287 and not in 100 operate on the patentablity of such a claim? It is patentable, but not enforceable? That makes no sense.

    I think the better conclusion is that it really is subject matter statutorily excluded from patentability.

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  29. Night, I welcome a serious discussion on this topic. I think a lot about it, looking not only to understand it for my own purpose, but to see if there is some way of simplifying the description of the general principles involved.

    For example, data compression transforms data into a more compact form. This reduces time to transmit data and the space it requires to store on media.

    So how does one properly claim such an invention that has real physical significance?

    I would like to claim it in two forms:

    1) as a way to reduce time in a transmission; and
    2) as a way to reduce space on a storage medium.

    I am not so sure the source of data is all that relevant.

    I would propose a process claim that ended either in a transmission or in a storage of the data. The recital of a computer may or may not be important, for, after all, the compression may be performed equally well by dedicated circuits.

    What say you?

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  30. AI, the reason this case is important is that Congress declared that the practice of medicine per se is not an infringement. Thus, patent attorneys have attempted to stop their claims just short of treatment. We now have “diagnosis” claims which, even so, effectively make the practice of medicine infringing regardless of the Congressional prohibition.

    I have said here that I wish I had voted at the time I did have a vote not to ban the practice of medicine from infringement. But, Congress did act, and we have to respect the law.

    That is the big picture here, AI. That is why this issue is important to the practice of medicine.

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

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  32. 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?

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  33. “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
  34. 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
  35. 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
  36. 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
  37. 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
  38. 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
  39. 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
  40. 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
  41. 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
  42. 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
  43. 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
  44. 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.

    Reply
  45. 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
  46. 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
  47. 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
  48. 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
  49. ….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.

    Reply
  50. 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
  51. 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
  52. 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
  53. 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
  54. 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
  55. 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
  56. 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
  57. 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
  58. Score one for posting with a real name and “accountability.”

    /off sarcasm

    Reply
  59. “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
  60. “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
  61. 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
  62. 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?

    Reply
  63. 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
  64. 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
  65. 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
  66. 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
  67. 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
  68. 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
  69. 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
  70. 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
  71. Dam goog questions!

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

    Reply
  72. 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
  73. 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
  74. 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
  75. 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
  76. 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
  77. 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
  78. 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
  79. 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
  80. 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
  81. 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
  82. 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
  83. 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
  84. 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
  85. 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
  86. 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
  87. 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
  88. 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
  89. 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.

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  90. “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
  91. 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.

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  92. 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
  93. 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
  94. “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
  95. “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
  96. 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.

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  97. 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
  98. 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
  99. 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
  100. 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
  101. 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
  102. 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.

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  103. 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.

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  104. 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).

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  105. 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.

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  106. 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.

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  107. 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
  108. 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
  109. 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.

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  110. There is nothing wrong with Sockpuppets.

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  111. 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
  112. 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.

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  113. 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.

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

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  115. 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.

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  116. “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.

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  117. 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?

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  118. 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.

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  119. 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.

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  120. 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.

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  121. 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?

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  122. Prediction:

    Ned won’t (because Ned can’t).

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  123. 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.

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  124. 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.

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  125. 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.

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  126. 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?

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  127. 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.

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  128. 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?

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  129. 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.

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  130. 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
  131. 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
  132. 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
  133. 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
  134. 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
  135. 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
  136. 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
  137. 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
  138. 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
  139. Ned, does it bother you at all that claim 3 renders your rule meaningless?

    Reply
  140. 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
  141. 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
  142. 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
  143. 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
  144. 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
  145. 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
  146. 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
  147. 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
  148. “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
  149. 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
  150. I has a question for NWPA if he’s around.

    NWPA, is Siri a slave?

    Reply
  151. 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
  152. “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
  153. “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
  154. 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
  155. 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
  156. 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
  157. Ned, isn’t it a bit odd to refer to discussing your own theory as “polluting” ?

    Reply
  158. 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
  159. 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
  160. 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
  161. …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
  162. 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
  163. 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
  164. 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
  165. 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.

    Reply
  166. 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.

    Reply
  167. 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.

    Reply
  168. 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.

    Reply
  169. 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.

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

    Reply
  171. “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.

    Reply
  172. 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.” ”

    Reply

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