Summary of Mayo v. Prometheus Oral Argument

Guest Post by Jonas Anderson, Assistant Professor at American University Washington College of Law

Yesterday morning I attended the highly anticipated oral argument in Mayo v. Prometheus at the Supreme Court.  The case raises the question of whether a patent claim that covers correlations between blood tests and patient health is 'patentable' under 35 U.S.C. § 101. 

I assume most PatentlyO readers are familiar with this case, but will provide a very brief background before diving into today's argument.  Prometheus is the owner of a patent that covers a method of analyzing the effectiveness of thiopurine drugs for treating gastrointestinal disorders.  Claim 1 of the relevant patent reads as follows:

    (1) A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:

(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and

(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,

wherein the level of 6-thioguanine less than about 230 pmol per 8×10^8 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and

wherein the level of 6-thioguanine greater than about 400 pmol per 8×10^8 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

Prometheus offers a blood test which analyzes metabolite levels in patients.  Mayo sought to offer a competing blood test at a lower price.  Prometheus promptly sued Mayo for infringement.

I have divided my review into 7 topics.  The topics are ranked based on my impression of the importance that the justices appeared to give to each topic.  Although I have tried to transcribe the key statements made by the justices and advocates as accurately as possible, all quotations are approximate.

1.  The preemption question

The justices and the parties focused much of their discussion on the issue of preemption.  One of Mayo's principal arguments in its brief and at oral argument is that Prometheus's patent preempts the use of a law of nature — namely, the relationship between metabolite levels and patient health. 

Justice Kennedy began the preemption questioning by asking whether a system of measurements that continually monitor drug retention would be patentable.  Mayo's counsel responded that it would depend on the breadth of the claims.  "Claim specificity is key."  According to Mayo, if Prometheus's patent had provided competitors room to develop different, more accurate metabolite levels it may have passed the 101 test.  But, in this case Prometheus's patent preempted any reduction in dosage if a patient's metabolite levels were above 400 pmol.  In Mayo's view, "incidental" steps added to a natural phenomenon were insufficient to avoid preemption.  Thus, any patent consisting only of a natural phenomenon and "incidental steps" would be preempted under Mayo's test.

Justice Breyer, the author of the famous LabCorp dissent, focused nearly all of his questions on the issue of differentiating between a patentable application of a law of nature and an unpatentable law of nature.  He pressed both parties to identify a process by which the court could discern the difference.  Mayo's counsel first suggested that a preemption test could be used to ferret out unpatentable laws of nature.  Later, he suggested that Bilski suggests that courts can determine if the non-novel elements of a claim are "incidental."  "You're getting warmer," Justice Breyer quipped.

Justice Scalia interrupted the exchange and scoffed "I'm not comfortable with that.  It depends on how broad it is?  Is up to 700 [pmol]? Is that OK?  550?  830?  How are we supposed to apply that kind of rule?  It just seems to me not a patent rule that we could apply."  It seems fair to say that Scalia was not convinced by either party that a 101 standard based on preemption could be reliably applied by courts.

Despite Scalia's concerns, preemption seemed to carry the day — with both sides.  Justice Breyer continued the preemption line of questioning with Prometheus's counsel.  "What has to be added to a law of nature to make it a patentable process?  If you put too little to the answer to that question, I believe I can take things like e=mc2 and make them patentable, and if you put too much in you'll wreck your case."  Prometheus's counsel also advocated a preemption test, but its test would be much more limited than Mayo's.  Whereas Mayo would consider any natural phenomenon with "incidental" transformational steps as preempted subject matter, Prometheus would only find preemption when no applicative steps were added.  Prometheus repeatedly cited to the Morse telegraph case as a classic example of preemption under 101.

Of course, Prometheus's suggested application of the preemption test has an obvious problem: Bilski.  The patented hedging method in Bilski was not a naked claim to an abstract idea; the claim was limited by both industry and analysis techniques.  Prometheus's counsel acknowledged this difficulty, but argued that Bilski's abstract idea was merely coupled with other abstract ideas.

2.  The 'creep' of novelty and obviousness

Many of the Justices, but primarily the Chief Justice, expressed concern about the blurred relationship between novelty, non-obviousness and the 101 inquiry.  Chief Justice Roberts wanted to know what efficiencies would be gained, if any, by relying on Section 101 instead of obviousness or novelty to reject invalid patents.  Mayo made the case that 101 is a much more manageable and predictable doctrine than 102 or 103.  Prometheus countered by reference to the very case before the court — clearly Section 101 had not led to a quick resolution of this long-running case.

The Chief Justice asked Prometheus's counsel whether he was advocating for the elimination of a Section 101 limitation on patentability.  In response, counsel conceded that he was urging that courts rely on other patent doctrines in most cases, but that there would be some instances, such as the Morse case, in which 101 would be the proper vehicle for rejecting or invalidating a patent.

3.  The impact (or lack thereof) of LabCorp

In my view, one of the most surprising statements of the day came about as a result of Mayo's suggestion—in response to a question from Justice Scalia—that Justice Breyer's dissent in LabCorp could guide some of the analysis in this case.  Justice Breyer quickly interrupted and seemed to distance himself from his dissent.  Although he was convinced that the patent claims in the LabCorp case were merely directed to an observation of a law of nature, the dissenting opinion, he said, "lacked an explanation of why [the claims in that case were not] an application of the law of nature."

Throughout the argument, he was clearly wrestling with how much "extra" is needed in order to patent a newly discovered natural law.  If, as many have predicted, Justice Breyer pens part of the Prometheus decision, I expect that he will attempt to give some guidance to this most difficult question.

4.  The innovation question.

A healthy amount of discussion centered around the impact on innovation that a decision in this case will have.  Justice Breyer, who had been extremely skeptical of diagnostic method patents in his dissent in LabCorp, noted that discovering laws of nature can be an incredibly expensive process.  His search for a line between phenomenon and application seemed to center around balancing the incentive to discover new laws of nature with a desire to allow access to those laws to follow-on innovators. 

Mayo repeatedly urged the court to overturn the patent at issue by arguing that Promtheus could limit others from developing new, improved, and cheaper alternatives to their blood test and was therefore preemptive.  Mayo argued that if the claims incorrectly correlated metabolite levels and outcomes, "the public is stuck with the erroneous information."  In response, Prometheus stated that there are ways that follow-on innovators can improve on Prometheus's patent; namely, by acquiring an improvement patent or by challenging Prometheus's patent under Section 101's utility requirement.

Finally, as any good appellate attorney would, Mayo's counsel attempted to limit the perceived impact of a reversal.  When asked by Justice Sotomayor how many patents would be impacted by a ruling favoring Mayo, counsel responded "only a couple."

5.  The scope of Prometheus's patent

The newest Justices, Sotomayor and Kagan, directed nearly all of their questions to the scope of the patent claims at issue.  Although claim construction was no longer at issue, the Justices probed the extent to which Prometheus's patent foreclosed competitors.  Justice Kagan wanted to know what, in Mayo's opinion, Prometheus's patent attorney could have done to make their invention patent-eligible.  Mayo's counsel responded by saying that a claim with a more narrow range of relevant metabolite levels and a specified treatment protocol would satisfy 101.  Justice Kagan followed-up by asking whether "the difference is the scope of the ranges, or the treatment protocol."  "Both," Mayo responded.

Justice Kagan followed up with Prometheus.  When asked why the patent drafter had failed to include a therapeutic step (which Mayo conceded would have made the claim patent-eligible), Prometheus's counsel responded that it was unnecessary.  He pointed to numerous patents that merely claimed a method of gathering information: patents on identifying ore deposits (but not requiring removal); patents on navigating boats in fog (but not requiring redirecting the ship); patent to find leak in a water main (but not requiring repair).

6.  Prior decisions: are they helpful?

Justice Scalia seemed genuinely dismissive of the Court's precedents that have held that laws of nature (or natural phenomenon) are not patentable.  "Tell me why you can't patent nature?" he asked Mayo's counsel early in the proceeding.  "Doesn't any medical patent rely on natural processes?  Even if you invent a new drug, what that new drug does is natural.  Whatís the difference [from this case]?"  When Mayo's counsel responded that the specificity would be the key test for preemption, Justice Kennedy responded "I thought your answer to Justice Scalia would be…that [the claims here cover] the measurement of a result.  That's how I would have answered the question.  But that's obviously not the right way to do it."

In a related vein, Justice Breyer openly questioned whether the holdings in Flook and Diehr can be reconciled.  "If you look at the Court's cases, they seem to say Flook, one thing, and Diehr another thing."

7.  The transformation question

Almost no time was devoted to discussing whether the claims at issue meet the machine or transformation test. In fact, I can't recall hearing the words "Machine or Transformation" escape from the Justices.  Perhaps the Court is going to distance itself from the MOT test — or at least give courts another "clue."

Conclusion

Predicting the outcome of Supreme Court rulings in patent cases is a treacherous hobby.  If anything, the argument today revealed a Court troubled by the fact that both sides have urged an application of Section 101 that centers on preemption, but with little guidance on how to apply such a test.  While I would expect a ruling to have some mention of preemption, none of the justices seemed comfortable with either side's suggested application of such a test, while Justice Scalia was dismissive of such an idea. 

Perhaps most surprising was that the Court's most vocal critic of diagnostic patents, Justice Breyer, appeared to distance himself from LabCorp.  I get the feeling that he is still troubled with the idea of granting patent rights covering natural phenomenon, he is genuinely concerned with the impact of the Court's decision in this case on the medical innovation community. 

87 thoughts on “Summary of Mayo v. Prometheus Oral Argument

  1. 6, “So far my record is that non have had to go to the board.”

    Wait! All these years of tough talk about being a rogue scofflaw examiner. And daring folks to appeal and you have never even been to the board???

    And your SPE, is making you roll over on preemption??????

    I am totally disillusioned with you 6. Here you try and come off as being 50 Cent, and you are really Vanilla Ice!!!!

    LOL!!!!

  2. Ned–

    Thank-you for that.

    Again, without any SS&C utility analysis:

    The claim fails 112p2.

    You articulated two data-gathering steps, and then a third step that literally includes within those two steps the third step of multiplication of the data values resulting from the first two steps, a logical impossibility.

    That is, there is no multiplication within the two data-gathering steps.

    Claim is rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claim recites the limitation “the multiplication” in paragraph 3. There is insufficient antecedent basis for this limitation in the claim.

    Claim is rejected under 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps.

    This analysis is relatively straightforward, IMHO, and has the benefit of never even reaching 101, 102, or 103.

  3. MM, you’d do much better without the attitude.

    So what if a claim step “can be carried out mentally”? WHY should that necessarily result in non-eligibility? The answer is that it shouldn’t. Claims that include a calculation step that “can be carried out mentally” can meet all the conditions of patent eligibility, even though one or more steps “can be carried out mentally”.

    Your so-called “doctrine” is no doctrine at all, but only a vague suggestion. You don’t even know if the result of its application should be ineligibility, invalidity, or unenforceability! Yours is a house without a foundation, and has no articulated underpinnings in patent law, and would leave everybody guessing and chasing their tails for decades to come.

    It is totally unworkable in the form you presented.

    And as for objectivity, you and I both know that legal objectivity is different from philosophical objectivity. The utility-based method articulated is legally objective.

  4. Agreed.

    But clever  patent attorneys will write the claim as

    1. Process comprising:

    measuring the mass of an article; and

    measuring the acceleration of the article;

    wherein the the multiplication of the mass times the exhilaration is the force applied to the article.

    Here we have two arguably physical steps, and a third "wherein" clause that is entirely mental in nature.

    The analysis becomes more difficult, does it not?

  5. IBP The questions that you proposed are not easily legally answerable–for instance, in looking at the novelty of individual steps, you are not treating the claim as a whole.

    Still trying to curry the favor of the sockpuppets, IBP? I’m disappointed.

    I could go on all day about the difficulties inherent in possible “mental steps” doctrines, but it would be easier if you actually articulated something tighter and more complete, that was amenable to analysis. I would treat it seriously, but I cannot take the current vague suggestions that seriously.

    Here’s my doctrine: claims in the form [old step]+[newthought] are ineligible, invalid per se, or unenforceable.

    You want something “tighter” than that?

    LOL. You’re doing that “head in the sand” thing, IBP.

    The questions that you proposed are not easily legally answerable

    They are as “easily legally answerable” as answering questions about claims such as: “A new kit, comprising [old kit]+[new instructions]“. And that’s about as easy as patent law gets.

    it doesn’t matter if applicants remove assertions of utility from their preambles–the foregoing analysis is exactly the same. IF there is a SS&C well-established utility, it suffices initially, and is used in claim construction as required, unless there is an assertion of utility within the claim–which, if required for claim construction purposes, should trump either a well-established utility, or an assertion of utility in the spec. If there is no assertion of utility within the claim, then an assertion of utility in the spec should trump any potential well-established utility, because at this point in the analysis, as the claim has not yet been completely construed, it is not possible to ascertain any well-established utility.

    There is nothing subjective about it,

    It’s at *least* as subjective as claim construction itself, IBP.

    I’m sorry but there is no way you can convince me that an analysis of whether an invention’s utility is “specific, substantial and credible” is remotely as objective as determining whether a recited step in a claim (or a wherein clause) includes a mental process or not. For starters, all you need to do is ask the patentee: can this step be carried out mentally? Is this a step of thinking? Almost every time the applicant will say YES because if they don’t admit it then they are effectively admitting that the limitation is an inherent result of practicing the other steps. What do you think happened during construction of the Prometheus claim?

    Somebody would want to “reanimate the utility requirement” because, unlike any “mental steps doctrine”, IT ASKS NO NEW LEGAL QUESTIONS and raises NO NEW LEGAL ISSUES

    Wow. What next, IBP? “I know you are but what am I?”

  6. Ned–

    Something like “F=ma” is neither a physical article nor a process, and therefore is not patent-eligible.

    Also, without using any SS&C utility analysis, a so-called “law of nature”, as such, cannot be patented because it is not novel–but no 102 analysis should ever be performed, as there was a 101 failure.

    I would even say that there should likely be no 101 analysis, as the claim would fail 112…but I have run out of time for today.

  7. MM–

    There are only 2 sources of utility: well-established, and specifically-asserted.

    If there is no well-established utility, there must be an asserted utility.

    Even well-established utility must be specific, substantial, and credible.

    Consider Prometheus’ claim, without considering the asserted utility in the preamble: add (a) to (b), then take a measurement. The results of the measurement are data, which when combined with other data about the biochemistry and symptomatology of (b), constitute information.

    The claim is really of this form: measure (b) to generate data, add (a) to (b), measure (c) to generate data, and combine the data from (c) with the data from (b) and also with data disclosed in the spec to produce information.

    Consider that the end product is information. Does the claim have utility? i.e. would PHOSITA “immediately appreciate why the invention is useful based on the characteristics of the invention”? Certainly. It would be evident to most rational people that the process can be used to generate information.

    Is that utility a “well-established” utility? i.e. is it SS&C? Yes, it is credible and specific, but by one definition of substantial, it is not substantial, and the utility would therefore not be a “well-established” utility for 101 purposes.

    Since there is no well-established utility in this instance, an assertion of utility must be sought, and it is provided by the applicant in the preamble. Is the asserted utility SS&C? It is certainly both specific and substantial by the same definition of substantial used earlier, but it is not credible–the claim produces information, not the optimization of therepeutic efficacy. The information would have to be applied somehow, which it is not. It is not credible for information itself, existing alone, to optimize therapeutic efficacy, and the asserted utility is therefore not credible.

    Also, the claim should be rejected under 112p1 for the disclosure failing to teach how to use the invention as claimed.

    This is all very tidy, but of course the question must be asked: given such a tidy outcome, what is the benefit of using the particular definition of “substantial” desired, versus using another definition, such as “significant” or “not de minimis”?

    Retracing the above steps using this alternate definition, it is likely that the utility of providing the particular information provided by the claim would be SS&C, and that the utility requirement would therefore be satisfied.

    But are there any drawbacks to using this approach, or is there anything unappealing or unwieldy about it?

    I think so–for instance, what do we do with the assertion of utility made by the applicant in the preamble? We need to invent another dimension of claim construction to dispose of this contradictory assertion, because it cannot be allowed to stand, as it is not credible as previously demonstrated.

    The dimension the courts have invented is that “the preamble is sometimes limiting if it is necessary to breathe life or meaning into the claim”.

    I have justifiably ridiculed and dismantled this dimension in other threads as not only unwieldy but totally unjustifiable and unworkable.

    Thus, the alternate dimension of “substantial” leads to nothing but increased complexity, irrationality, confusion, expense, and inefficiency, for all patentees, applicants, and future applicants.

    The only real downside of my suggested definition of “substantial” is that a number of existing patent claims could now be ruled invalid if challenged. What kind of claims? The poorly-drafted kind that appear in this case, for starters.

    There is also the issue of measurement-type claims being invalidated, the end product of which is either data, or information, if that data are combined with other data or knowledge. This issue seems to bother you tremendously, but I am less bothered by it. It would be easy enough to convert an invalid-form measurement claim to a valid-form process claim by including a step that USES the information provided to achieve a generally-worded result, and let the DOE determine the ultimate scope of the equivalents.

    These outcomes are preferable to me over the current outcomes–101 would be cleaned up and differentiated from 102/103; the so-called “pre-emption doctrine” would be obsoleted; any so-called “mental steps doctrine” would be obviated; the current so-called “preamble rule” would be nullified; predictability would be enhanced and drafting improved; and so on.

    I’m not requiring courts to undertake any “subjective analysis about what the ‘real utility’ is”, as you suggested. The analysis is entirely objective, and within the 4 corners of the text, as I have just illustrated in this one example using Prometheus’ claim.

    And it doesn’t matter if applicants remove assertions of utility from their preambles–the foregoing analysis is exactly the same. IF there is a SS&C well-established utility, it sufficies initially, and is used in claim construction as required, unless there is an assertion of utility within the claim–which, if required for claim construction purposes, should trump either a well-established utility, or an assertion of utility in the spec. If there is no assertion of utility within the claim, then an assertion of utility in the spec should trump any potential well-established utility, because at this point in the analysis, as the claim has not yet been completely construed, it is not possible to ascertain any well-established utility.

    There is nothing subjective about it, and there is no “returning to square one”, as “square one” was never left.

    “Square one” should ALWAYS be claim construction–it is a necessary precursor to any other analysis. Assertions of utility made by the applicant can inform claim construction. If no assertion of utility has been made by the applicant, then a well-established utility that preserves the validity of the claim is used, as it furthers the presumption of validity.

    I don’t see any so-called “mental steps doctrine” being as clear as the above analysis. Necessarily performed mentally? Actually performed mentally? Capable of being performed mentally? By whom? “Thinking a thought”? WHAT is thinking, and what is a thought? Is it “noticing” something? Is it “deciding” something? Should it require cognition, or just stimulus-response?

    I could go on all day about the difficulties inherent in possible “mental steps” doctrines, but it would be easier if you actually articulated something tighter and more complete, that was amenable to analysis. I would treat it seriously, but I cannot take the current vague suggestions that seriously.

    The questions that you proposed are not easily legally answerable–for instance, in looking at the novelty of individual steps, you are not treating the claim as a whole. A process, like an article, can exhibit novelty in the new combination of entirely old elements, as you know–not to mention the difficulties with “mental”, “thought”, and “thinking”, some of which I have already identified.

    Somebody would want to “reanimate the utility requirement” because, unlike any “mental steps doctrine”, IT ASKS NO NEW LEGAL QUESTIONS and raises NO NEW LEGAL ISSUES, and to the extent that it requires any change to the status quo, it requires changes to only judicially-made law, which changes are well within the purview and authority of the court.

    The result would of course not be any “eligibility-destroying 101 zombie”, as you suggested–whatever that means.

  8. It’s no more cynical than your believing that I was the poster anon!

    I think that both beliefs are justifiable, if incorrect.

  9. Must be an, um, aquired taste…

    Waling in a sewer smelling of p*ss and sh*t” is exactly like going through Ned’s mind.

    Hurry 6, hurry.

  10. IBP, Why can’t a law of nature be patented? F=ma for example?

    Such are abstract mental processes. Mental process are not processes within the meaning of process. See, e.g., Benson (Cybersource, citing Benson).

    Mental steps are not process steps, abeit a mental step can modify a physical step to transform it into a new state or thing. But a mental step that does not do that is not a step in a process, period.

    Thus, laws of nature cannot be claimed as such. But they can be used to modify physical steps or structures. Such are patentable eligible.

    Thus, in Eibel Process, raising one end of a wire sufficiently to cause the wet pulp to flow as fast as the wire (an effect of gravity) was patentable.

  11. 6, who do you think this sockpuppet is? Ping? He really likes to erect strawman, and to lie through his teeth. Honesty is not his best suit.

    I see every conversation he gets into, with anybody, is exactly the same. One quickly regrets talking to this scumbang. Waling in a sewer smelling of p*ss and sh*t is more pleasant.

  12. In light of the patent at issue, tell me if the claim below should be patent eligible under 101. Also try to figure out what this “invention” is about.

    1. A method of optimizing somatic acceptability of a medium for mitigating effects of viral infection of respiratory system, the method comprising the steps of:

    (a) administering about 4 g/L of a mineral composed primarily of sodium chloride to the medium for mitigating effects of viral infection of respiratory system;

    (b) transferring and causing the medium for mitigating effects of viral infection of respiratory system to react with lingual papillae of a human subject;

    (c) determining somatic acceptability of the medium for mitigating effects of viral infection of respiratory system;

    wherein over-activation of sodium ion channels of the lingual papillae indicates a need to increase the volume of the medium for mitigating effects of viral infection of respiratory system;

    wherein under-activation of sodium ion channels of the lingual papillae indicates a need to administer additional amount of the mineral composed primarily of sodium chloride to the medium for mitigating effects of viral infection of respiratory system; and

    wherein the medium for mitigating effects of viral infection of respiratory system comprises avian protein and gluten.

  13. “Do you mean that there is yet another art unit out there (besides business methods and software cases) that needs to be wiped out?”

    compare:

    “with me reluctantly going along on policy grounds as a successful run to the CAFC with that guy could wipe out an AU”

    Sorry 6, no, you did not say “needs,” but only implied such with your “could,” which does mean another art unit (at least in 6’s mind) could be wiped out.

    Curious 6, what art unit could be wiped out?

    You will have to pardon the could/needs miscoonect, after all, I am channeling through Ned, which tends to induce a bit of bias; but even still the connection with Ned’s Fabled Logic – one instance of something wiping out a whole category is undenialable in your comments.

    Please don’t make me go through Ned’s mind again and just explain yourself a little more clearly.

  14. “Do you mean that there is yet another art unit out there (besides business methods and software cases) that needs to be wiped out?”

    Did I say that?

    “and say that medical methods need to be wiped out. Is that where you are going 6?”

    Did I say that? d

    Although, sure, there probably are a lot of things in medicine which probably should not be subject to patents but I’m not close enough to the issue to speak on it.

  15. Do you mean that there is yet another art unit out there (besides business methods and software cases) that needs to be wiped out?

    Let me guess the upcoming Supreme Court results and use Ned’s Fabled Logic and say that medical methods need to be wiped out. Is that where you are going 6?

  16. “You mean that you had your chance to achieve your (and Malcolm’s) wet dream and you “reluctantly” aggreed to drop the case?”

    This was not a business method or software case. My record on those so far is 1/1 abandoned with 2 more on their way.

    Keep in mind, I do not often step into the “arts” which need to be demolished.

    But boy, when I do, I’m appalled.

  17. Scalia is correct. Pre emption is not practical. You can always pre-empt an entire range by having multiple independent claims, each one of which covers only a tiny sub-set of the total range. Thus, no one claim would be ejectable as too pre emptive, and yet as a practical matter, the entire range is pre-empted.

  18. of this type are prima facie obvious when using known items

    Careful with that line of reasoning david, as practically any and all patent discoveries follow some form of methodolgy to arrive at their destination. Do you really want to reduce the world of patents to giving out such only for the “I-don’t-know-what-happened” or “sheer-dumb-luck” types? That’s the taint of anti-patent coming through.

    After all, 103(a) is STILL good law.

  19. reluctantly going along on policy grounds as a successful run to the CAFC with that guy could wipe out an AU

    You mean that you had your chance to achieve your (and Malcolm’s) wet dream and you “reluctantly” aggreed to drop the case?

    The rest of your claptrap is drowned in the roar of your cowardice.

  20. So far my record is that non have had to go to the board. Say probably 4 out of 9 came out abandoned 1 keeps coming back with amendments and seems to be over his issues now, 3 are still pending (these are recent cases I did outside my normal area and this other au has a bit more 101’s than my art does). Only 1 had some clueless office lifers review the claims for MOT on his behalf who then muddled their way past having any particular machine or transformation and who then convinced my spe to back out of an appeal on the grounds that there had to be some sort of machine (although nobody knew what particular machine that might be) with me reluctantly going along on policy grounds as a successful run to the CAFC with that guy could wipe out an AU that I don’t really think needs wipin’ as they’re practicing the useful arts.

    So as of right now you’re looking at a ~ 1 in 9 chance of overcoming my 101 (not counting issues like mixed stat classes etc) sans substantial amendment and only then if you hire on some clueless lifers to help you out.

    Note also that 2 of those 3 still pending have b claims on the choppin’ block. Both have a 101 on em and a 102 over a cd without regard to whatever program is ostensibly on the cd as well as 102’s for some claims with regard to what is on the cd.

  21. “I lulzed, what if I already has that power, and what if I already exercise that power on a semi-regular basis?”

    Oh yeah? Post your win loss record at the BPAI for claims you rejected with your phony pre-emption doctrine.

    ::Silence::

  22. I didn’t take it as approval, BTW, I saw “attempting rationality” as disparaging.

    That’s awfully cynical, IBP, but I guess it could be seen as a backhanded compliment. ;)

  23. 6: I’m sure you’ll [AI] declare complete victory when the ruling comes back that they did indeed preempt a judicial exception and Mayo wins. Won’t you?

    You can bet on that, 6. Kookoo McPatentpants is nothing if not utterly predictable. That may be his only redeeming quality. Check that — it’s not a redeeming quality.

  24. MM–

    I will respond later, I’m too busy a the moment…

    But I SWEAR that I wasn’t the anon who posted.

    I didn’t take it as approval, BTW, I saw “attempting rationality” as disparaging.

  25. “I agree with Scalia on this. And it’s a good sign he won’t side with the libs on this issue either. Can you imagine trusting someone like MM or 6 with the power to use a subjective standard like preemption to deny patents?”

    I lulzed, what if I already has that power, and what if I already exercise that power on a semi-regular basis?

    “I am personally looking forward to another smack down of the anti patent crowd and hopefully non sense like Benson and Flook can be not just cabined this time but completely overruled!”

    And I’m sure you’ll declare complete victory when the ruling comes back that they did indeed preempt a judicial exception and Mayo wins. Won’t you?

  26. MM, you asked a rhetorical question

    It wasn’t a rhetorical question. Here is the question again: Why do you think that every sane person on earth who has ever considered the issue agrees that purely mental processes should not be eligible for patenting?

    Again, I am quite certain you will never answer this question, AI. Go ahead. Prove me wrong. Surprise me. Surprise everybody.

  27. Nice,

    There’s an actual compliment on the board and Malcolm is upset.

    What are you going to WAAAAHHHH over next?

  28. Action-observation-reaction…virtually all process claims of this type are prima facie obvious when using known items.

    The old adage is still true…everything is obvious to those skilled in the art!

  29. Wow!…just…!!!

    You’re acting like this doesn’t happen every day? Like five times a day? Like at least?

  30. I see you avoiding some questions I asked you and responding instead with ad hominems about my “turf” being “slanted”. Wth?

    LOLZ – Like Malcolm has never done that

    /off sarcasm

  31. MM, you asked a rhetorical question and supplied your own conclusion/point as the answer.

    I directly challenged that conclusion with logic and facts that you cant or wont rebut.

    You don’t see this kind of ducking and dodging when it comes to me discussing the DCAT.

    Your proposition has feet of clay and that’s why it will never see the light of day.

    Now you may go back into hiding.

  32. EG : I just choose not to play on your slanted turf.

    You’re starting to sound a lot like the sockpuppets, EG. My slanted turf? I don’t see any turf. I see you avoiding some questions I asked you and responding instead with ad hominems about my “turf” being “slanted”. Wth?

    I think about them far deeper than you might suspect

    LOL, EG. Prove it. Answer the questions I asked you. Let’s have a “civil conversation.” That’s the conversation where we focus on the issues before us with clarity and honesty rather than pontificate about some imaginary tragedy that will befall human civilization if we dare to discuss obvious facts about a class of poorly-drafted patent claims.

    the standard for patent-eligibility also needs to be encompassing enough so that 21st Century technologies don’t get screened out

    21st century technologies … like embryonic stem cell research?

  33. MM: Why do you think that every sane person on earth who has ever considered the issue agrees that purely mental processes should not be eligible for patenting?

    You didn’t answer my question, AI. And I know that you never will.

  34. Any claim that describes a method of producing data has an insubstantial utility, by one (justifiable) definition of “substantial”, and can thereby be held ineligible. If this route is taken, all methods of measurement become ineligible. That is one potential route to take, with certain advantages and disadvantages, and is an example of how utility could be used to dispose of this case.

    I’m LOLing my axx off that a sockpuppet chimed in to congratulate you on this. Yes, IBP, I agree that a test which makes “all methods of measurement” ineligible has “certain … disadvantages.” This is a dead-on-arrival proposition. It’s not a “good 101 test.” Let’s look at your alternative.

    A better way is to rely on the applicant’s own unsolicited statement of asserted utility in the claim.

    Right. So then applicants will simply omit the statements of utility from their preambles. Then you’re back to square one. Are courts then going to dig into the specification to resolve the subject matter issue? As I noted, it’s easy to state a specific substantial credible utility for the invention in the spec or in the claim. You are requiring courts to engage in another subjective analysis about what the “real utility” is.

    The key in all this is to make order from the chaos. The most important thing, from a legal perspective, is to frame the issue in terms of a legally answerable question.

    Is the only novel step in the claim a mental step? Does the claim effectively prevent pracitioners of the prior art from thinking a new thought? Those are legally answereable questions. And they’re the sorts of questions that courts and attorneys are already trained to ask and answer. And the policy reasons for the test are already in place, for years, and are non-controversial. And the test is narrowly tailored to allow applicants to draft better claims which protect their inventions but avoid the 101 issues.

    Or we can just do as the government says and simply read the mental steps out of the claims when performing the anticipation/obvious analysis. Same difference.

    It baffles me why anyone would want to reanimate the utility requirement into yet another eligibility-destroying 101 zombie. But it’s truly hilarious that a sockpuppet would chime into approve of your attempt to do so!! LOLOLOLOLOL!

  35. I understand you can’t offend your clients by thinking about these issues too deeply.

    Whereas, since Malcolm has no clients, he is free to offend all.

    And often does.

  36. I think about them far deeper than you might suspect, MM. I just choose not to play on your slanted turf. Oh, and I’m reminded of a comment by Sue E on different thread too. Over and out, and Merry Christmas/Happy Hannukah, MM.

  37. Sorry MM, I gave you my response when you asked for it. If you don’t like it that’s your problem.

    LOL. What’s there to like about it? It was a cookie cutter response that you could have made about 101 eligibility generally, the same gxrbxge the patent txxbxggers have been spouting since, well, forever.

    As for the 12:50 comment, yes, I understand you can’t offend your clients by thinking about these issues too deeply.

  38. MM:

    “This case is about effectively claiming mental processes and nothing else. Unless this fact and all of its implications are addressed directly, confusion will reign.”

    MM, it is that very characterization that is responsible for the confusion.

    The question is not whether mental processes should be eligible, but is instead how to demonstrate their ineligibility within the bounds of the law, without having to carve out a particular category for special treatment.

    I have merely pointed out one possible way to demonstrate, or justify, their ineligibility within the bounds of the law. It works, it maintains legal equilibrium, and it is coherent.

    The key in all this is to make order from the chaos. The most important thing, from a legal perspective, is to frame the issue in terms of a legally answerable question.

    The utility analysis can deal effectively with the unwieldy concepts of abstractness, laws of nature, preemption, practical application, etc..

    If it is combined with my other hobby-horse, that the claim preamble should always be limiting (easily legally justified), the utility analysis becomes even stronger if there is an asserted utility included by the applicant in the preamble.

    “The reason for the complication is that Prometheus’ claims recite steps that are undeniably “specific, substantial and credible”, namely administering therapeutic drugs to patients or determining the metabolite levels in the blood of patients.”

    Whether the individual STEPS have some S,S, and C utility is irrelevant–it is the UTILITY OF THE ENTIRE CLAIM that must be SS&C.

    If it is argued that the claimed method is a method of production of something, utility is often expressed as that very production being the useful thing, totally disregarding any utility of the end product. In this case, the things that are produced are data, which when combined with other data, can be used to generate potentially useful information.

    The claim steps (a) and (b) define the production of the data, whereas the two subsequent “wherein” clauses describe a potential utility OF that data, which are not relevant to the utility of the method.

    Any claim that describes a method of producing data has an insubstantial utility, by one (justifiable) definition of “substantial”, and can thereby be held ineligible. If this route is taken, all methods of measurement become ineligible. That is one potential route to take, with certain advantages and disadvantages, and is an example of how utility could be used to dispose of this case.

    A better way is to rely on the applicant’s own unsolicited statement of asserted utility in the claim. The court can do this by deciding that the preamble is necessary to breathe life and meaning into the claim, or it can just lay down a rule that preambles are always limiting–easy to do, because the suggestion that they are only sometimes limiting is itself only judge-made. The second route is preferable, and affords tremendous clarity; the first route is acceptable as it still enables a good 101 test.

    And Non Sequitur II, I do not believe that Prometheus’s claims disclose patent-eligible subject-matter.

    Again, I understand the complexities. I am not claiming this as a total panacea, but I do claim that it can easily resolve the instant case, and can result in rules that could move patent law forward in a positive direction–not without its own set of problems, but with a rational paradigm in place that would enable the more meaningful and efficient addressing of those problems down the road.

    The current system is like an old car, or old home, that is beyond repair–at some point, you just have to recognize that it needs to be demolished and rebuilt. A utility-based 101 test at least allows us to retain the foundation.

  39. agrees that purely mental processes

    You can move the goal posts back now.

    Purely, being the key, is not in play in this case, now is it?

    Unless of course, by “purely” you mean “any” – but the courts have already been through this and have found that claims CAN have mental steps, and that for 101 purposes, you MUST take the claim as a whole, which means that your test HAS been rejected, and that the reasons are not exactly the same, no matter how many times you say the same thing over and over again.

    Dissection.

    This was the cause of your lovely absence after the Bilski decision. Your vaunted “trashing of the Diehrbots” did not happen like you predicted and you were forced to retreat.

  40. Sorry MM, I gave you my response when you asked for it. If you don’t like it that’s your problem. I don’t have time to debate you further on your designated turf. Some of us do have “day jobs” we need to attend to. BTW, I echo the comment upthread at 12:50PM.

  41. It has not been “changed” in the slightest.

    It is wonderful what you can “see” with your eyes closed.

    And then the real world moves on.

  42. MM: “I don’t need to.

    AI: But we ( society) require you to. That’s the way the law works here in America.

    MM: Why do you think that every sane person on earth who has ever considered the issue agrees that purely mental processes should not be eligible for patenting?

    AI: old step]+[new thought] is not necessarily a purely mental process. Even if all the physical steps are old and contain pure mental steps as well, you can still get a patent for a new use of an old process.

    The “New Use” can be useful.

    The “New Use” can be novel.

    The “New Use” can be non obvious.

    That’s the law as it stands now and there is no reason why it should not so remain.

  43. you have not made any argument as to why such a policy enacted into law would be beneficial to American society.

    I don’t need to. That’s another sublime feature of my test.

    Why do you think that every sane person on earth who has ever considered the issue agrees that purely mental processes should not be eligible for patenting?

    The reasons for disallowing claims to [old step]+[new thought] are exactly the same.

  44. “Justice Scalia interrupted the exchange and scoffed “I’m not comfortable with that. It depends on how broad it is? Is up to 700 [pmol]? Is that OK? 550? 830? How are we supposed to apply that kind of rule? It just seems to me not a patent rule that we could apply.” It seems fair to say that Scalia was not convinced by either party that a 101 standard based on preemption could be reliably applied by courts.”

    I agree with Scalia on this. And it’s a good sign he won’t side with the libs on this issue either. Can you imagine trusting someone like MM or 6 with the power to use a subjective standard like preemption to deny patents? That would be like giving the KKK the power to decide what is and what is not an acceptable skin color.

    And so what if an invention pre-empts? Isn’t that what patents are supposed to do?

    That’s the reason Actual Inventors file patents. To get a preemption over an entire field if possible. Our 20 year monopoly.

    If an Actual Inventor is the first to invent anything then it’s their right to have a broad patent on it.

    And for those worried about it being too broad there is a simple solution.

    Its called prior art!

    Show where someone has actually disclosed the invention ( the entire invention, in exact order of steps, and in one reference), and the inventor will be forced to narrow the claims.

    And that should be the end of this case.

    The only reason we have a 101 case like this at the Supreme Court no less is because there are jealous ( socialist types), greedy ( competitors and big business) , A.K.A. anti-patent forces that want to stop patents.

    I am personally looking forward to another smack down of the anti patent crowd and hopefully non sense like Benson and Flook can be not just cabined this time but completely overruled!

  45. MM:”My point is once it has been determined that the transforming step is old what difference does it make if a claim in the form [old step]+[new thought] is determined to be ineligible under 101 or per se anticipated under 102?”

    The point is Malcolm that you have not made any argument as to why such a policy enacted into law would be beneficial to American society.

    Do you truly expect everyone to accept your wishes because of your own deeply held political and personal beliefs?

    Seriously

  46. Non Sequitur II I think I extracted your proposed rule from your comment, which I understand to be “specific, substantial, and credible utility.” Isn’t that the same as saying everything should be patentable?

    I don’t think so, but it does appear from IBP’s comment that he believes that an analysis under the “specific, substantial and credibile utility” test could remove Prometheus’ claims from eligibility. Unfortunately, I think the analysis is more complicated and nuanced than IBP has led us to believe (although a revision may be forthcoming). The reason for the complication is that Prometheus’ claims recite steps that are undeniably “specific, substantial and credible”, namely administering therapeutic drugs to patients or determining the metabolite levels in the blood of patients. I don’t think the Supreme Court justices will be inclined to pretend that these specific, substantial and credible uses aren’t inherent to the claimed methods. Yes, the utility of those steps is exactly identical to the utility disclosed in the prior art. Has that ever mattered when determining the sufficiency of utility of an invention? Relying on the utility prong to kill Prometheus’ claims will only lead to more confusion about patent eligibility.

    This case is about effectively claiming mental processes and nothing else. Unless this fact and all of its implications are addressed directly, confusion will reign. Of course, confusion favors those who support the status quo (which is not to say that IBP supports the status quo) because the already invested will surely whine about “the millions” they have spent prosecuting poorly drafted claims to methods of thinking about stuff.

  47. “as a basic proposition, do you agree that the reason mathematical algorithms are abstract is that all they do is manipulate abstract ideas such as numbers?”

    I am more of a fundamentalist Ned, I do not generally see “reasons” why something is abstract, I see abstractness or non-abstractness as a fundamental quality of a given thing. Nor do I particularly care to. Abstractness, or not, is determined by a mere observation (or lack of observation if the thing is intangible), or pondering upon, of the thing in question. Although there may be some quantifiable ways to identify things which are abstract by applying various “reasons”, and indeed I imagine that in some cases you can find and enunciate some “reasons” simply enough, I do not know what specifically what those reasons might be as a group, nor do I see any use for such other than to instruct the weak-minded. And I have little sympathy for the weak-minded when it comes to matters of business, unless they have come to me for tutelage and I have agreed to do so, and so I would not trouble myself with such.

    That said, I do remember reading a wonderful (“ok” really) article on nearly this topic in the recent JPTOS where the author figured that there is a spectrum of abstraction and he gives various examples with “reasons” why the thing things are abstract iirc. I however simply observe the things in question in the article and ennunciate a finding.

    “It is only when the numbers represent something real and/or are applied to do something real that the claims involving mathematical algorithms move from the abstract to the non abstract.”

    I disagree with the CAFC and you on this issue. It doesn’t matter w tf the number is. Preemption is preemption and non-preemption is non-preemption there is no need to look to what the numbers represent or not, save to determine whether a given abstract idea or other judicial exception is preempt or not. It is possible to have a claim that still preempts that is using numbers that are tied to a heartbeat and it is also (most likely, though I do not swear it) possible to have a claim using numbers that are not tied to anything which does not preempt any judicial exceptions. Therefore I find the entire discussion about what the numbers represent of very limited or no value.

  48. I think I extracted your proposed rule from your comment, which I understand to be “specific, substantial, and credible utility.” Isn’t that the same as saying everything should be patentable? Speed reading techniques? a new form of sign language? a method for testing compliance with 101?

  49. 6, as a basic proposition, do you agree that the reason mathematical algorithms are abstract is that all they do is manipulate abstract ideas such as numbers?

    It is only when the numbers represent something real and/or are applied to do something real that the claims involving mathematical algorithms move from the abstract to the non abstract.

  50. Benson has been reaffirmed time and time again, see Diehr and Benson. It has not been “changed” in the slightest.

    The only “change” that some people will say have happened, although it isn’t really proper to even say that, is the notion that if the claim was plainly already directed to patentable subject matter then adding on a math formula doesn’t all of a sudden invalidate the claim when you haven’t preempted all uses of the math formula. And that is no change at all because if you haven’t preempt all the uses of the math formula then the reasoning in Benson doesn’t apply anyway.

  51. EG

    Thanks for responding, EG.

    It wouldn’t matter which provision of Title 35 the claim “died” under if that provision, be it 101, 102, 103, or 112 had an objective standard that was applied consistently and uniformly.

    The test I’ve proposed here numerous times is objective and easy to apply in a consistent matter. I don’t recall you ever once suggesting that my proposed test is not objective or easy to apply. Is there something you find difficult about a test that says, in a nutshell, a claim in the form [old step]+[new thought] is ineligible under 101? Where is the “subjectivity” in that test?

    Besides be applied objectively, the standard for patent-eligibility also needs to be encompassing enough so that 21st Century technologies don’t get screened out because they don’t fall into 19th Century “pigeonholes.”

    Is thinking about a new fact a “21st century technology”? Because that’s the “technology” that claims in the form [old step]+[new thought] are protecting.

    That’s the best I can do to answer your question (at least from my point of view).

    Thanks. As I just noted, you seem to addressing some vague strawman rather than the very specific issue we’re dealing with. That’s the strange “silence” I’ve referred to before.

    If I add a new mental thought to an old (and therefore unpatentable) step, am I entitled by law to a patent, EG? The US government doesn’t think so. I certainly don’t think so. Do you? How is granting such a patent any different than granting a patent to the new mental thought, at least as far as practitioners of the prior art are concerned?

    My apologies if these follow-up questions seem incredibly difficult. They aren’t very difficult. They are also incredibly obvious follow-up questions based on your response so I expect you have already considered them.

  52. EG,

    You realize that your pragmatism is too radical for MM?

    Must of rubbed off from your dealings with that “evil” Gene Quinn character.

    By the way, who is Gene Quinn

  53. what difference does it make…ineligible under 101 or per se anticipated under 102?

    The old faithful legally (un)sound WHAT-EV argument.

    Nice.

  54. Indeed, Justice Breyer has got himself off on the wrong foot, applications of abstract ideas can preempt just as much as claims that wholly lack any application. For example, see Benson.

    Someone who clearly does not understand the patenteable subject matter cases and how Benson has been altered by the later cases.

  55. OK MM, since you asked me, I’ll give it a try:

    It wouldn’t matter which provision of Title 35 the claim “died” under if that provision, be it 101, 102, 103, or 112 had an objective standard that was applied consistently and uniformly. The problem is that the standard for applying 101 is still strictly “subjective” (I know it when I see it “abstract idea”). SCOTUS in Bilski did nothing to change the “subjectiveness” of how the patent-eligibility standard is applied to claimed processes/methods, and the Federal Circuit has been wrestling with the “chaos” created in the wake of Bilski without much success.

    Besides be applied objectively, the standard for patent-eligibility also needs to be encompassing enough so that 21st Century technologies don’t get screened out because they don’t fall into 19th Century “pigeonholes.” When you have minds on SCOTUS who can’t think outside the 19th Century “box” like Scalia (and as you’ve probably figured out, I’m a political conservative and still think Scalia is an “intellectual midget” when it comes to IP law), you’re going to have trouble if you apply a patent-eligibility standard restrictively. Conversely, patentability as applied under 35 USC 102/103 is much more objective (as is 35 USC 112), so if the claim fails on one of these grounds (which even Prometheus claimed method might), the invention wasn’t deserving in the first place (and not simply screened out because it’s too “futuristic” to fall into 19th Century “pigeonholes.”

    That’s the best I can do to answer your question (at least from my point of view).

  56. ” you have identify the “solution” (i.e., point of novelty). ”

    Not really, the solution is both often not the point of novelty and is often laid out in the specification for all to see, or can clearly be understood from implications in the case without even touching prior art or having a general idea of what the prior art is.

    Indeed, this is why you can often analyze many claims under 101 without even looking at prior art.

    That said, for some weak minded individuals or people unfamiliar with the given area of art it may sometimes be necessary for them to familiarize themselves with the prior art to get themselves a jumping off point. But that is the individual’s fault, not the preemption doctrine’s fault.

  57. “Justice Scalia interrupted the exchange and scoffed “I’m not comfortable with that. It depends on how broad it is? Is up to 700 [pmol]? Is that OK? 550? 830? How are we supposed to apply that kind of rule? It just seems to me not a patent rule that we could apply.” It seems fair to say that Scalia was not convinced by either party that a 101 standard based on preemption could be reliably applied by courts.”

    He is right of course, it doesn’t just depend on how broad the claim is, it depends on the RELATIVE breadth of the claim vs the given juducial exception in the instant case.

    ” “What has to be added to a law of nature to make it a patentable process?”

    People ask this a lot as if there is some magical thing which will always prevent preemption. There isn’t. It is on a case by case basis. There is no magic bean that cuts across arts and is always the solution. Of course there are some general things that generally do the trick, specific machines and specific transformations are quite handy. Also, entire industrial processes usually do the trick.

    “Of course, Prometheus’s suggested application of the preemption test has an obvious problem: Bilski.”

    There’s an even more obvious problem. Benson and Flook. Indeed, even Diehr.

    “2. The ‘creep’ of novelty and obviousness”

    Man I would lol if they explicitly combined 102/103 with 101.

    “Mayo’s counsel responded by saying that a claim with a more narrow range of relevant metabolite levels and a specified treatment protocol would satisfy 101. ”

    I tend to disagree. You don’t solve preemption of one natural phenom by simply preempting a different natural phenom. If however the ranges were tiny tiny or single numbers within a given natural phenom then it may very well get through. But that just makes the claims nearly worthless I would think.

    “”lacked an explanation of why [the claims in that case were not] an application of the law of nature.””

    Indeed, Justice Breyer has got himself off on the wrong foot, applications of abstract ideas can preempt just as much as claims that wholly lack any application. For example, see Benson. The claim being an application of the judicial exception at hand is necessary but not sufficient to pass 101 when the claim involves a judicial exception.

  58. Perhaps they could have focused on whether a critical mental step that does not modify an an otherwise patentable process consisting of a series of physical steps, but simply uses the physical steps as as data gathering for input to the abstract, non physical steps, describes a patentable process when the claim is considered as a whole.

  59. Heck, even Prometheus’ counsel suggested that the claim should be challenged under 101’s utility requirement, although he didn’t understand exactly what he was saying when he made the suggestion.

    Ha!

  60. Joe: the Prometheus patent (and other personalized medicine patents) … are more like [old step] + [generate new information]

    This is incorrect. There was nothing new about the information generated in Prometheus’ claims. Measuring the metabolite levels in blood was old. It was also known that measuring metabolite levels could be used to assess the sufficiency of drug dosing. This is all in the summary section of Prometheus’ patent, in black and white. Undisputed facts.

    just concede that it’s a patent eligible process (because it is actually a process)

    You’re not making sense. All parties in this case and all Supreme Court justices agree that the mere fact that a claim is a “process” is not enough to render the claim patent-eligible.

    and deal with the novelty of the new information through 102/103.

    Again, there is no “new information” generated by carrying out the (necessary, old) transforming steps in Prometheus’ claim.

    You seem to be suggesting that courts are incapable of accurately determining when a party has admitted that the transforming steps in a [old step]+[new thought] claim are in fact old. This is just moving the goalpost. The court will either make the proper determination of the novelty of the necessary transforming step or it won’t. My point is once it has been determined that the transforming step is old what difference does it make if a claim in the form [old step]+[new thought] is determined to be ineligible under 101 or per se anticipated under 102?

    Note that the novelty of the transforming step is not even an issue in Prometheus. It’s old. Prometheus’ counsel admitted to the Supreme Court that Prometheus merely discovered a fact about the relationship between drug dosing and certain metabolite levels in human blood. They did not invent a new method of gathering information about the metabolite levels.

  61. Justices of the Supreme Court of the United States, Hear Me,

    For It Is Wisdom That I Speak To Answer Your Troubles.

    Specific, Substantial, and Credible Utility,

    Affords The Path to Peace and Enlightenment.

    ———————————————————————

    The basic problem as seen by the judges is the lack of a good test to differentiate between what some call “laws of nature” and applications thereof. Another way of putting this is that the so-called “preemption doctrine” has no workable test, since that “doctrine” is no test at all, but merely an unhelpful re-statement of the original problem.

    Furthermore, they want a convenient test, that arguably has its origins in their own thinking, so that some semblance of authority and precedent can be maintained.

    A workable test finds its roots in the court’s own Brenner decision, with articulation of the concepts of specificity, substantiality, and credibility of utility. This workable test has subsequently been reduced to practice and disclosed on Patently-O; all that remains is for the court to either adopt the disclosed test, or use it as guidance in reducing to practice its own test based on some or all of the 3 concepts they articulated in Brenner.

    It completely, reproducibly, and justifiably solves all of the problems as perceived by all of the judges.

    It solves Breyer’s problem with “how much “extra” is needed in order to patent a newly discovered natural law”. (ugh, what muddled thinking)

    It solves Scalia’s problem with “finding a patent rule that they could apply”.

    It solves Kennedy’s problem with “making measurements of a result”.

    It solves Roberts’ problem with the “blurred relationship between 101, 102, and 103″.

    It solves Breyer’s problem with “balancing the incentive to discover new laws of nature with a desire to allow access to those laws to follow-on innovators”.

    It solves Kagan’s problem with “what can be done to describe an invention in a patent-eligible way”.

    The only problem had by one of the judges that it doesn’t solve, is Sotomayor’s problem of being a racist and a misandrist.

    Specific, substantial, and credible utility. Even Mayo expressed that in their opinion, had a therapeutic step been included, the claim would have been patent-eligible. Heck, even Prometheus’ counsel suggested that the claim should be challenged under 101’s utility requirement, although he didn’t understand exactly what he was saying when he made the suggestion.

    When Scalia asked why a law of nature can’t be patented, he was probing for guidance. It could have easily been provided by a response that nature is old, and would therefore not satisfy the novelty requirement of 102–a response that would have neatly addressed both Scalia’s immediate concern as well as Roberts’ desire to clearly differentiate between 101 and 102.

    Kagan was getting to the heart of the matter in asking about Prometheus’ failure to include a therapeutic step, and that is a hopeful sign; also very hopeful is the fact that Mayo agreed with a solution proposed by Kagan to Breyer’s problem with how much “extra” is needed for patent-eligibility. In this single exchange, we have the recognition of a single species of solution by Kagan, of a generic solution desired by Breyer, that is amenable to a workable rule as desired by Scalia, that both answers the measurement question as raised by Kennedy and that stays perfectly clear of 102 and 103 as desired by Roberts.

    Even better, one of the parties (Mayo) agrees with the outcome of Kagan’s single species of solution, and the disagreement of the other party (Prometheus) is based on nothing more than what could amount to specific and isolated errors committed by an administrative agency, rather than on any articulated law, principle, or policy.

    All the justices need do now is follow the suggestion of counsel for Prometheus and examine the validity of the claim under 101’s utility requirement.

    I think the justices are agreed on what needs to be done, they just don’t know how to do it–and neither the parties nor any of the amici afford any guidance or assistance.

    Justices, it is all here on Patently-O for your convenience.

  62. Jonas: Finally, as any good appellate attorney would, Mayo’s counsel attempted to limit the perceived impact of a reversal. When asked by Justice Sotomayer how many patents would be impacted by a ruling favoring Mayo, counsel responded “only a couple.”

    Jonas, do you have any idea how many patents in the form [old step] + [thinking new thought about old step] have been granted?

    You seem to be suggesting that the impact of removing such claims from our patent system would make some sort of a mark. I don’t doubt that some entities would be adversely affected but I highly doubt that Prometheus has many more of these clunkers.

  63. MM:

    I think the problem is that the Prometheus patent (and other personalized medicine patents) are not in the form that you postulate. Rather, they are more like [old step] + [generate new information] + [think about new information]. The question really becomes how novel do the latter two steps have to be to become patentable. If you decide in a particular case that the latter two steps aren’t novel enough, but you kick it out at 101, that risks the possibility that other patents that have more novelty are deemed not to be patentable subject matter at all. So the analysis becomes much more focused (and less likely to jeopardize whole industries) if you just concede that it’s a patent eligible process (because it is actually a process), and deal with the novelty of the new information through 102/103.

  64. When asked why the patent drafter had failed to include a therapeutic step (which Mayo conceded would have made the claim patent-eligible), Prometheus’s counsel responded that it was unnecessary. He pointed to numerous patents that merely claimed a method of gathering information: patents on identifying ore deposits (but not requiring removal); patents on navigating boats in fog (but not requiring redirecting the ship); patent to find leak in a water main (but not requiring repair).

    Another irrelevant red herring and dust-kicking by Prometheus.

    Prediction: if you look at the claims in the above patents, they recite NOVEL information gathering steps. The question before the court was not whether claims that “merely gather information” are patent-eligible. Who cares if the USPTO granted patents on new methods of gathering information?

    Unlike the patentees in the cases cited by Prometheus’s counsel, Prometheus didn’t invent a “method of gathering information.” This is an undisputed fact. Prometheus’ claims recite only a generic step of “determining” a particular fact about a patient (a determination that was practiced in the prior art, for the same reason) and thinking a “new” thought about that fact.

    Prometheus seems to suggest that the claims in the patents they refer to look like this:

    1. A method of improving the efficiency of leak repairs in a water main, comprising: determining the rate of water leaking out of a water main and, if the leak is less than 49.243 mg/ml/hour, thinking that the leak does not need immediate repair.

    That claim is EXACTLY the same as Prometheus’ claims, in all relevant respects.

  65. The reason 101 gets confused with 102/103 is the issue of “insignificant post-solution activity.” In order to determine whether activity is insignificant, you have identify the “solution” (i.e., point of novelty). The only way to identify the “solution” is by looking at the prior art.

    Good point. In this case, Prometheus identified a new fact: certain levels of metabolites in the blood correlate with insufficient doses or overdoses of drugs. How is that new fact embodied in Prometheus’ claims? As a step of “thinking about the new fact”.

    And some people believe that you can obtain valid enforceable patents this way. That’s what $$$ will do to the human brain, I guess.

  66. Hey, EG. You’re one of those folks who posts a lot about this topic at Quinn’s blog and Noonan’s blog. Why not take a stab at answering the question in my 12:42 comment?

  67. Gee, your crowing over this argument…almost like you wrote it personally.

    I did write it, in these comments anyway. And I’m not “crowing” over it. And it’s not really an “argument.” It’s just an observation. A claim in the form [old step] + [step of thinking a new thought] can not be BOTH eligible and patentable under 102 without effectively being a claim to a new thought, at least with respect to practitioners of the prior art. This isn’t an “argument”. It’s an irrebuttable statement of fact.

    The only issue is a policy issue: are such claims so important to the future of human civilization (oops, I meant “American dominance of the world”) that we can ignore previous Supreme Court admonitions about the patent ineligiblity of mental processes?

  68. Professor Anderson,

    On the “distancing from LabCorp” you must be referring to the followng exchange between Shapiro and Justice Breyer:

    MR. SHAPIRO: No, it wouldn’t. That would be LabCorp, where there was just one malady in the patent; it was a vitamin deficiency with a natural correlation. And Justice Breyer’s opinion explained that — that is too preemptive of the natural phenomenon.

    JUSTICE BREYER: Yeah, but what my opinion lacked, frankly, and sometimes that’s the virtue of a dissent in such a case, it lacked — and Novartis points this out very well in their brief — it lacked an explanation as to why what I thought was a patent just
    said, observe the correlation

    MR. SHAPIRO: Yes.

    JUSTICE BREYER: — why isn’t that an application of the law of nature? And if you look to LabCorp’s dissent to find an answer to that question, you are better than I, because I couldn’t find it.

    After reviewing the briefs and prior to this oral argument, I predicted that the effort of Mayo and the other “naysayers” to rely on Justice Breyer’s dissent in LabCorp v. Metabolite might come back to haunt them (a big mistake in my view, other than the inane “they’re patenting thought” argument). The exchange above suggests that is exactly what happened.

    Before this exchange, it was my opinion that Mayo and the other “naysayers” may have committed a HUGE tactical error in relying so much on Breyer’s dissent in LabCorp. given that the two Justices who joined him (Souter and Stevens) are no longer on the Court, making that dissent an opinion of one Justice. Now even the author of that dissent appears to have second thoughts about it. How droll!

  69. The reason 101 gets confused with 102/103 is the issue of “insignificant post-solution activity.” In order to determine whether activity is insignificant, you have identify the “solution” (i.e., point of novelty). The only way to identify the “solution” is by looking at the prior art.

    Here, the discovery was the therapeutic range. Once the proper range is known, the application of this information is obvious in every sense of the word. Everyone would understand that keeping the drug in the therapeutic range is a good idea.

  70. The silence from certain otherwise vocal bloggers on this issue has been deafening.

    Gee, your crowing over this argument…

    …almost like you wrote it personally.

    (which you might have – you Office Hack)

  71. Malcolm, you have nailed it. The patent birthers would have you believe that they really wouldn’t mind if these patents were invalidated under 102/103. It always cracks me up when I read that cr*p. Kind of like “I really wouldn’t mind her getting an abortion if she just received an ultrasound test before doing so.” As Kim Jung-il said in Team America: World Police, “Oh Rearry?”

  72. sockie The silence is attributable to much more interesting things

    I’m pretty sure we all know what those “interesting” “things” are, sockie. Still, I’d like an answer to my question.

  73. The silence is attributable to much more interesting things then the “world that revolves around Malcolm”.

    Get over yourself.

  74. Thanks for the summary, Jonas.

    I noticed that there was not much discussion in your summary of the government’s arguments. I pointed this out in the earlier threads but I found this statement by the government very interesting:

    Mayo is correct that you can’t get a patent by tacking a mental step onto an utterly conventional process for administering drugs and testing their effects.

    And similarly, this exchange:

    CHIEF JUSTICE ROBERTS: I was just going to say, what is the great advantage you see of putting this critical question off until the 102, 103 analysis, rather than cutting it off at the beginning, 101, which I understand your friend to say is very important because you don’t want people to have to pause terribly long to see if this is something they can do?

    GENERAL VERRILLI: As a practical matter, at the PTO, Mr. Chief Justice, it doesn’t make any difference, because the PTO examiner gets a patent application and answers every question, 101, 102, 103, 112, and makes a decision about all of them. So it’s not going to lead to any benefit at the PTO.

    Unfortunately, for Mayo of course, the USPTO has already issued the patent and Mayo has spent millions of dollars defending itself against it.

    I will ask the question again that I’ve asked of so many commenters and bloggers: what difference does it make if a claim in the form

    [old step] + [thinking new thought about old step]

    is ineligible under 101 or per se unpatentable under 102/103? In terms of the alleged “devastating” impact on diagnostic technology in the US (a bogus claim, in my opinion, but one that the industry shillers will never tire of repeating), the impact is identical. So why is it so important that the claim die under 102 (which, according to the government at least, whose statement was not rebutted by any of the Justicies) which it surely must and inevitably will?

    The silence from certain otherwise vocal bloggers on this issue has been deafening.

  75. This is surely correct, Ned. Of course, the issue could have been framed as “When is the addition of a step that transforms matter sufficiently transformative to render eligible an otherwise ineligible claim?”

    That would have been a far better issue for cert than the question actually presented. The corollary and also vastly better question would have been: “Can the addition of a step of “thinking a new thought” to an old transforming step result in a patentable claim without effectively removing the thought from the public domain, at least as far as practitioners of the prior art are concerned? And if so, is such a claim therefore ineligible under 101?”

    Such questions would have led to a much more focused and worthwhile oral argument, not to mention the ultimate decision.

  76. Good point… but if it’s not clearly addressed in their opinion, it will have the potential of morphing into preemption in the abstract.

  77. Susannah, I don’t think the question is preemption in the abstract but preemption of a natural phenomena. Claims, all claims, preempt what they cover. The question is whether they cover a natural phenomena, something in the public domain and something that the Supreme Court has historically said cannot be patented.

  78. “Almost no time was devoted to discussing whether the claims at issue meet the machine or transformation test. In fact, I can’t recall hearing the words “Machine or Transformation” escape from the Justices. Perhaps the Court is going to distance itself from the MOT test — or at least give courts another “clue.”

    May I suggest that the reason for this is that all concerned seem to believe that the claims passed MOT. The question then becomes whether even, though the claims passed MOT, they still should still not be patent eligible because they wholly preempt a natural phenomenon.

  79. I just finished reading the transcript of the oral arguments. I find it odd that with respect to whether the issue should be one of 101 or 102/103 … all seem to miss the point, imho, that 101 is directed to patent *eligible* subject matter and 102/103 are directed to whether that subject matter is patent*able*. I also find it interesting that in response to Petitioners’ arguments that allowing one to patent such a broad process preempts a broad field, Respondents didn’t point out that a “robust section 101 standard” (as desired by Petitioners) would likely stifle innovation.

    I can’t imagine in my wildest dreams what types of inventions (including processes… and with new machines and discoveries, new processes related thereto) might be invented or discovered 50+ years from now. If we make it such that one can’t even get their foot in the door with the possibility of recovering R&D expenses by way of patent protection “for limited Times”, I think most wouldn’t be motivated to make new inventions and improvements.

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