Mayo v. Prometheus: Natural Process + Known Elements = Normally No Patent

by Dennis Crouch

Mayo Collaborative Services v. Prometheus Labs., Inc. (Supreme Court 2012)

A unanimous (9–0) Supreme Court has held that the personalized medicine dosing process invented by Prometheus is not eligible for patent protection because the process is effectively an unpatentable law of nature. This decision reverses the Court of Appeals for the Federal Circuit’s holding that the claims were patentable because they included substantial physical limitations.

The Prometheus invention identifies a “relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove [either] ineffective or cause harm. Claim 1, for example, states that if the levels of 6–TG in the blood (of a patient who has taken a dose of a thiopurine drug) exceed about 400 pmol per 8×10(8) red blood cells, then the administered dose is likely to produce toxic side effects.”  In addition to claiming the boundaries between over and under dosage of thiopurine based upon measuring 6–TG in the blood, some of the Prometheus claims include additional limitations such as (1) administering thiopurine to a patient and (2) determining the blood level of 6–TG.

Law of Nature: In its decision, the Supreme Court first identified the correlation between 6–TG blood levels and over/under thiopurine dosage as an unpatentable law of nature.

The relation is a consequence of the ways in which thiopurine compounds are metabolized by the body—entirely natural processes. And so a patent that simply describes that relation sets forth a natural law.

As is usual in these cases, the Court referenced the groundbreaking discoveries by Einstein and Newton and noted that neither “E=mc²” nor the “law of gravity” would have been subject matter eligible.  Taking that as a premise, the court jumped to the conclusion that, therefore, the discovery that the blood level of 6–TG in a human correlates with either an overdose or underdose of thiopurine is also subject matter ineligible.

Additional Elements: The Supreme Court then considered the additional limitations and held them insufficient to transform the identified natural law into a patentable process.  The opinion repeatedly and favorably cites Parker v. Flook, 437 U. S. 584 (1978) in finding that the physical and transformative elements of the invention were not “genuine applications of those laws[, but] rather .. drafting efforts designed to monopolize the correlations.”  As to the claimed application of the law of nature, court here found it relevant and important that the additional steps were already known in the art.

Because methods for making such determinations were well known in the art, this step simply tells doctors to engage in well-understood, routine, conventional activity previously engaged in by scientists in the field. Such activity is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.

The conclusion here is that (1) a newly discovered law of nature is itself unpatentable and (2) the application of that newly discovered law is also normally unpatentable if the application merely relies upon elements already known in the art.  To be clear, the court still maintains the law of Diehr that “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”  On the other hand, the “application” must be “significant,” not “too broadly preempt” use of the law, and include other elements that constitute an “inventive concept” that is significant and separate from the natural law itself.  Of note, it is likely important that in this decision the court unfavorably cites the limitation of Flook found in Diehr that eligibility under §  101 “must be” based on claims “considered as a whole.”

Process and Presumption: In addition to the legal elements, the decision can be read to create a process for determining patent eligibility for patent claims that include a law of nature.  The court wrote that the “additional features” that show an application of the law must “provide practical assurance that the [claimed] process is more than a drafting effort.”  This language suggests that the burden will be on the patentee to prove that its limitations are more than patent attorney tricks. 

Whither Myriad: Although no action has been taken yet, I presume that the Supreme Court will now vacate and remand the pending Myriad case with instructions to the Federal Circuit to reconsider its holding that isolated human DNA is patentable.  Following Mayo, the court could logically find that the information in the DNA represents a law of nature, that the DNA itself is a natural phenomenon,  that the isolation of the DNA simply employs an isolation process already well known and expected at the time of the invention, and ultimately that the isolated DNA is unpatentable because it effectively claims a law of nature or natural phenomenon.  One distinguishing point is that Prometheus claimed a process while Myriad claims a composition of matter.  As we have seen in recent cases, the Federal Circuit already largely rejects formalistic distinctions between process and composition claims. Here, that distinction is further minimized by the reality that the claimed DNA is functionally characterized by the already well known process of isolating human DNA.

Read the opinion by Justice Breyer hereLINK.

The following is the text of the now invalidated Claim 1 of the Prometheus U.S. Patent No. 6,355,623.

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 8×108 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 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently ad­ ministered to said subject.

374 thoughts on “Mayo v. Prometheus: Natural Process + Known Elements = Normally No Patent

  1. 374

    I’ve finally had time to go through the opinion myself and pay attention to the Court’s discussion of Diehr and Flook. I don’t think they overruled Diehr. They don’t seem to me to have gone back to the type of dissection in Flook that Stephens clearly would have wanted (based on his dissent in Diehr wanting an entirely new machine to be in the claim absent the algorithm). Rather, it seems like they are saying that Diehr’s prohibition against dissecting the claim into old and new elements cuts both ways. Just as you can’t point to the useful elements and say ” nothing new,” you also can’t point to those elements and say “utility.”

    In Diehr, the old electromechanical elements are configured to operate in a new way via the algorithm. So in considering the claim as a whole, and not dissecting out the algorithm, there is a new and useful application. In Flook, the formula, though new, does not result in a new application of anything, because no application was recited. The claim in Mayo v Prometheus, considered as a whole, does not apply the old test in a new way because the mental correlation, though new, is just a mental step. To me, that doesn’t seem so bad, at least not for software, methods of treatment, machines that generate reports indicating whether test results exceed a threshold, etc.

    I can see why pharma wants a way to stop competitors from selling their old tests for the new purpose, or labs from using anyone else’s lit for tests for the new purpose. And maybe there’s a good policy argument for encouraging pharma companies to invest in research. I don’t know what is the best solution for meeting those goals.

  2. 373

    And there we have it.

    6’s post offers high-quality evidence in support of everything I have said.

    Thank-you, 6.

    And thank-YOU, Supreme Court.

  3. 372

    Only to MM could “considering water boiling” or “considering grapes” NOT involve so-called “thinking”.

    Unworkable in its current form.

  4. 371

    The Federal Circuit screwed this case up. They dumped the case back to district ct after the Supremes had previously vacated their first decision.

    They should have seen this coming.

    They should have had the guts to state in their decision for remand that where the transformations recited in the claim are old but the claim adds a recitation of a law of nature, the claim does not recited novel subject matter as a matter of law. The patent itself appears to admit the transformations were old. Even previously unknown laws of nature cannot confer novelty.

    A remand to determine if there were any disputed fact issues on novelty of the transformation steps probably would have kept Section 101 out of it.

    But these claims were astonishingly broad and the Supremes had indicated that they will use sec. 101 in these situations, even though for the practitioner of patent law it is the wrong tool. Once the Supremes granted cert the second time this decision cannot be a suprise to anyone.

  5. 369

    was evident from Bilski

    LOLZ at Malcolm who did hide under a rock when Bilski cam out and did not crush the Diehrbots as he predicted.

  6. 368

    ” I don’t know of any authority for requiring it when deciding patent eligibility under 101.”

    Well we did have Diehr…

    Deihr never stood for what the txxbxgggxrs thought it stood for. That was evident from Bilski and from many CAFC cases after Diehr. You would have been better off “under a rock” than listening to the txxbxxgers and sockpuppets who posted there Diehrbot crxp in the comments here.

  7. 367

    Jim: That being said, I think the Court erred when they dragged 103 elements into the 101 analysis: “[W]ell-understood, routine, conventional activity previously engaged in by scientists in the field . . . is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.” There is no logical connection between the obviousness of the additional steps, and whether or not the claim pre-empts the use of the natural phenomenon.

    The connection between 103 and 101 is the same as the connection between 102 and 101. Everyone is legally permitted to practice obvious subject matter. Everyone is legally permitted to practice ineligible subject matter, e.g., thinking about a “new fact”. You can’t prevent someone from thinking about a “new fact” merely be reciting some antecedent obvious steps that the person is otherwise legally entitled to.

    If it’s any consolation, patentees and applicants with non-obvious process steps will be able to distinguish their cases on that basis

    Fixed.

    I think it’s time people start getting over how this case “should have been decided.” It doesn’t matter how it was decided. The same result flows either way. Either the mental steps are ignored for 102/103 purposes, or we look at the non-mental steps to determine if the claim is effectively precluding a mental step.

    It’s not difficult. Let’s move on already.

    Nine-zero. Not even a concurrence! LOLOLOLOLOL.

    I’m still loving it.

  8. 366

    Breyer’s intellectually bankrupt. he spent 1.5 pages discussing Neilson v Harford from 1841 in England about “air heating” and analogizing it to a biotech process. technology has changed at least as much as civil rights in 200 years (they don’t cite Plessy v. Ferguson very often anymore)

  9. 365

    Nathanael

    I’m not so sure about a “non-fact”; obviously thinking something which is false would be found to have no utility, but what about something which is merely opinion, but has some measurable psychological benefit?

    You’d be moving into the realm of effectively patenting a mental process, which is also ineligible subject matter. You can’t patent, e.g., “A method of improving health, comprising thinking about the word ‘Rippledeediddledoo'” because it’s obviously ineligible subject matter.

    By the same reasoning in Prometheus, you could’t rescue that patent from 101 oblivion by reciting conventional, old steps of “Drinking orange juice” or “crossing one’s legs” while doing so.

    Don’t get me wrong: I’m quite certain that people have tried and succeeded at obtaining such claims from the USPTO and probably will continue to do so. But I’m not aware of one ever surviving a court challenge or inter parte re-exam.

  10. 364

    So; how can administering a man made compound, and observing metabolite levels of the man made compound, and determining how much of the man made compound to administer based on the man made compounds’ metabolite levels, be a “law of nature”?

    Read the decision. The claim at issue here is effectively a claim to the “law of nature” (= “any alleged fact”) because it prevents people who are otherwise practicing the prior art from thinking about that fact.

    Thanks for your comment.

  11. 363

    So; how can administering a man made compound, and observing metabolite levels of the man made compound, and determining how much of the man made compound to administer based on the man made compounds’ metabolite levels, be a “law of nature”?

  12. 362

    Inherently, there is nothing new uuner the sun and nothing is patentable.

    All you need to do is divide up any claim into small enough pieces and the claim will fail.

  13. 361

    Inherently, there is nothing new uuner the sun and nothing is patentable.

    All you need to do is divide up any claim into small enough pieces and the claim will fail.

  14. 359

    Agreed.  Isolated DNA is known from Wild DNA; and, under the Supreme Court case law, is unpatentable.  This is not a complicated issue at all.

  15. 358

    an invitation to unaccountable chaos

    Hence the utter glee from the What-Ev man.

  16. 357

    Consider instead the statutory basis for your “thinking” construct, and then you will be able to articulate something more valuable, more broadly applicable in a consistent manner.

    Mission Impossible.

  17. 356

    Why did you discredit yourself with one statement?

    Why not a whole bushel at one time, like Nathanael?

  18. 355

    I’m glad that you’re admitting that you’re posting paid commercial advertisements, NWPA.

  19. 354

    “And, how is converting a number a scientific truth or natural law? ”

    It’s an abstract mathematical process. Like, you know, it always was?

    Mathematical truths are scientific truths too.

  20. 353

    Substantial such evidence. Please look up the literature on the economic effects of patents.

    They decrease innovation in almost all fields. Hell, I’m watching it happen with some friends of mine RIGHT NOW, as patents discourage disclosure and slow down the process of prototyping.

    Only in pharma, and within pharma, only in new drugs and new medical devices, does it appear that patents have *any benefit whatsoever*. In every other field patents seem to hurt innovation, period, end of story.

    The cross-country studies comparing the same fields in two different countries, one with patents on that field, one without, are the most damning. (Sadly the least common; more studies are longitudinal over time.)

  21. 352

    The CAFC has never put out a professional or nuanced ruling; it’s in the tank for the patent bar.

    Why did you discredit yourself with one statement?

  22. 351

    NWPA continually disputes that proposition, as does every issuer of software patents.

    What NWPA doesn’t realize is that these aren’t inventions and they would be there without the nonexistent inventors. They are discoveries, and would be there with or without the discoverers.

    Now, yes, we should incentivize the discoverers, but patents suck miserably at providing incentives for discoverers of laws of nature to reveal them. Hence the traditional system of prizes, awards, and academic tenured positions for discoverers.

  23. 350

    This case has the same flaw as software patents and business method patents — they’re all patents on nonpatentable subject matter (each patent in those fields is an obvious and unoriginal combination of natural laws, abstract mathematics or abstract thoughts, and preexisting devices).

    That’s why 6 was led from this subject-matter-rejection case to those fields which will be full of subject-matter-rejection cases.

    Other fields will be fine. Oh, except the obscene pharmaceutical attempts to patent naturally occurring compounds (rather than the industrial processes for manufacturing them, which are still patentable). Those are dead too.

  24. 349

    Ned, all Diehr was saying about not “dissecting” the claims, was that the arrangement of things in toto, could be where the novelty was, even if the individual parts were all old or obvious.

    Here, however, the arrangement was obvious. What do you do with the fact that particular metabolite levels indicate that there’s “too much” or “too little” drug? Well, duh.

  25. 348

    The combination (arrangement) can be non-obvious.

    In this case, the combination was completely obvious, and indeed what any doctor would do given the knowledge of the FACTS.

  26. 347

    This is a pretty important and accurate view of the case.

    Isolated DNA is going to have to be thrown out, because nothing was invented. Using a method of isolation invented by other people to isolate a natural product — just isn’t an invention at all, let alone patentable.

  27. 346

    I think he may have been in a hurry, though

    Oh, why didn’t he just say so? Then it’s OK to butcher the law if you are in a hurry.

  28. 345

    “So, if the new piano roll had some identified non-musical (i.e., patent-eligible) utility, it might escape the 101 guillotine.”

    I can think of two categories: a piano roll which was less likely to break while performing the same music;

    or a HYPNOTIC piano roll. I don’t think the latter category (patents on methods and devices which manipulate people’s minds) has really been seriously considered by any of the courts, apart from psych drugs.

  29. 344

    Computers were patented long ago (not novel, so not patentable). They are designed to run any software whatsoever, any abstract algorithm; therefore adding a computer to any algorithm is obvious and not patentable. The algorithm itself is pure mathematics and not patentable. If the algorithm is merely designed to apply a law of nature (such as, all faces have this statistical color pattern), you’ve added yet another non-patentable element.

    The end result is completely non-patentable. And always has been, Federal Circuit notwithstanding.

    I see why you’re angry. Your business model of filing invalid patents and getting them accepted has been disrupted. I suggest you retrain for a useful line of work. The problem with corruption of the sort you have is the way it builds on itself; once you start making money from your corrupt filing of invalid patents, you start talking yourself into believing that the patents are actually valid. It’s really sad.

  30. 343

    You are an ignorant person. Please learn the difference between the symbols and what they represent.

    The symbols and the manipulation of the symbols cannot be patented under any circumstances ever; this is math. If the only originality is in the manipulation of the symbols, you don’t have a patent.

    It is only in the realm of the interaction between the symbols and the real world that patents can be possible. And reciting “plus a computer” doesn’t cut it, either; you have to have actually done something non-obvious and new in that limited realm. Nowadays, “let’s computerize that” is obvious in pretty nearly any field, though in the 1970s, there might have been a field where it wasn’t obvious and would have been patentable.

  31. 342

    Information processing algorithms are laws of nature and always have been.

    Math is a type of scientific truth.

    Furthermore, as we all know, patents do not actually disclose algorithms (largely because the patent lawyers are trying to hide the fact that they’re patenting math.)

    The fact that the algorithm actually works for detecting *faces* (as opposed to for some other purpose) might conceivably allow for patentable application of the algorithm in the context of *face detection only*, but it would not preempt use in any other context (such as detection of the faces of dogs).

    Nor would it preempt use of any other algorithms for face detection.

    Plus which the person who figured out that this worked for detecting faces would have to have actually invented the entire face detection system.

    *And* the inventor would have to publish the source code so that anyone else could implement the face detection algorithm. Which doesn’t happen.

    I’m bending over backwards to make an argument why a face detection system might be patentable, but the fact is that this set of facts does not happen.

  32. 341

    Breyer has cited actual economic studies in the past (see his scathing Lessig dissent). I think he may have been in a hurry, though I believe at least one of the law review articles does cite economic studies itself — am I mistaken?

  33. 340

    Breyer is a practical man who seems to understand science, so I’m pretty sure he understands that “law of nature” and “fact” are actually synonyms.

    I’m not so sure about a “non-fact”; obviously thinking something which is false would be found to have no utility, but what about something which is merely opinion, but has some measurable psychological benefit? Could the Scientologists have patented their procedure of “engram clearance”, for example, or could someone patent a talk therapy treatment process, for its mental health benefits?

    (I’m playing devil’s advocate here; I don’t think this sort of psychological procedure should be patentable. But I don’t think it’s excluded by Breyer’s reasoning. What do you think, MM?)

  34. 339

    MM–

    It’s not that I have difficulty understanding what I believe it to mean, it is that it is difficult to understand what you, or what some legal authority such as the judiciary, believe it to mean, in any particular instance…and that difficulty is needless.

    Show me where “thinking” is articulated in the statute.

    Show me where “mental steps” is articulated in the statute.

    Show me where “abstract” is articulated in the statute.

    They’re not. They’re terms of convenience, used to obscure a fundamental lack of understanding of the statute. They make analysis more difficult and more convoluted, not easier. If the courts would stick to just interpreting the statutory language, rather than trying to translate the statutory language and concepts into unrecognizable distortions, patent law could finally leave the House of Mirrors, leave behind the grotesque, and emerge into the light of day.

    Consider instead the statutory basis for your “thinking” construct, and then you will be able to articulate something more valuable, more broadly applicable in a consistent manner.

    Consider the distortion of “laws of nature” in this opinion. Is it now more clear than it previously was what “laws of nature” is intended to mean?

    Of course not. Use of these substituted rhetorical labels is an invitation to unaccountable chaos, which is where we’re at right now.

  35. 338

    Your preferred construction of “thought” is akin the USSC’s construction of “law of nature”–“I know it when I see it”, or “we can all generally agree on….”

    You are the only person I’ve ever encountered, IBP, who has difficulty understanding what the term “thinking” means. The. Only. One. In fact, I still have no idea where your confusion lies. Consider the following:

    1) Consider the following

    2) Water boiling

    3) Grapes

    Which of the three necessarily involves thinking? This is about as difficult as it gets.

  36. 337

    MM–

    I don’t have any difficulty whatsoever with the decision, the decision being that Mayo was not liable for any damages resulting from their infringement of valid and enforceable patent claims.

    Also, there is nothing in the written opinion that is difficult to understand.

    Your formulation is, again, merely categorical, and at this point cannot be said to express anything meaningful about 101 generally, and thus represents squandered opportunity.

    Your attitude is the “it’s better than nothing” attitude, which for me, just doesn’t cut it when it comes to a USSC opinion.

    All the problems I previously pointed out with your use of the term “thought” remain outstanding inadequacies of your formulation.

    Your preferred construction of “thought” is akin the USSC’s construction of “law of nature”–“I know it when I see it”, or “we can all generally agree on….”

    Very efficient from a judicial perspective, very inefficient from a business perspective.

    In my estimation, the social benefit of increased judicial efficiency is vastly outweighed by the social detriment of decreased invention and disclosure efficiency.

    In other words, the courts are self-referential, and exist in a vacuum. Not news, I know, but neither is it a laudable state of affairs.

    Overall, this is not a victory for the broader patent system, and the fact that you are going about this board trumpeting victory says nothing other than that you lack a comprehensive perspective.

    Which is fine, too, but it does suggest that you have a bias, as has been pointed out by many other posters on this board, which bias then taints potentially any and all of your comments.

    This is also not news to anybody.

    Again, this was an opportunity squandered by the court.

  37. 334

    IBP Notably, the court COULD have used this case as a vehicle to describe with more particularity what it actually means by “law of nature”, rather than with less particularity as it seems to have done. The opinion could have encompassed both “law of nature” and “abstract”

    As I noted eons before this decision and have noted several times after, you would be a fool to focus on the “law of nature” language in this decision as if that were somehow the key to avoiding 101 shortcomings. Claims in form [oldstep]+[newthought] are ineligible under 101 (we need no longer worry about the 102 issue) *regardless* of how one chooses to categorize the [newthought]. The newthought could be thinking about a law of nature, it could be thinking about a fact (e.g., “my neighbor’s dog smells like popcorn”), or it could be thinking about an abstraction (e.g., “purple clowns in an orange sky”).

    I’m not sure why this is difficult to understand. It shouldn’t be. 9-0, folks. If you are having difficulty with the decision, then maybe you need to get out of the business.

  38. 333

    Did you do as I directed?

    There. Done. Proven. Next.

    I’m not aware

    Not my problem. You are not aware of a great many things.

    But here’s a blow to your EGO: your awareness simply does not matter.

  39. 331

    “Law of nature” = descriptive rhetorical tool, now descriptive of anything the court doesn’t feel worthy of patent protection, for one reason or another

    There would have been nothing easier WRT 101 than my analysis: the claims DO describe a process, but one that is wholly lacking any specific, substantial, and credible (SS&C) utility. Period. 101 fail.

    A total lack of SS&C utility IS the STATUTORY way of describing a so-called “law of nature”. “Law of nature” is judicial gobbledygook for those too lazy to read and develop a good understanding of the statute.

    Responding to those who wonder what would have happened had a last step been included that actually optimized therapeutic efficacy, it is my sense that 101 should then have been satisfied. The general statement of utility in the preamble, as sufficiently further detailed in the spec to be SS&C, would be satisfied.

    The action would then move to 102, 103, and 112.

    The claim would clearly be an improvement-type claim, as the court acknowledges that metabolite levels were known to be correlated with therapeutic efficacy; the claim would therefore optimize therapeutic efficacy by applying to the treatment of patients those findings that identified that correlation with a greater degree of precision than was previously available.

    IMO, there would be a rather straightforward 102 discussion to be had, WRT the discussion recently had on this board regarding anticipation, and inherency, and genus-species anticipation.

    And even if it passed the 102 analysis, a straightforward 103 analysis could then be conducted, once the logical framework required by any such analysis was presented clearly, through a process such as that I have just gone through in this thread.

    Easy. Notably, the court COULD have used this case as a vehicle to describe with more particularity what it actually means by “law of nature”, rather than with less particularity as it seems to have done. The opinion could have encompassed both “law of nature” and “abstract” by having focused on the utility requirement of 101, and could have been a MUCH better, and much more comprehensive, opinion.

    Another opportunity squandered. I should have filed an amicus brief.

    And the fact that the court unanimously supported Breyer’s awful written opinion is telling–none of them have any idea whatsoever about patent law, and simply deferred to Breyer’s judgment. Not even a brief concurring opinion by anybody.

    I wonder if Breyer held himself out as an expert, or if he got the shaft. Breyer seems to have an internalized view of patent law, and he seems like he has some unfinished patent business to address.

    This may be one of those instances in which experience amounts to a a history of doing things wrong, or unfortunately. Breyer may have been exactly the wrong justice to have assumed, or to have been assigned to, the lead of this case.

    And here it now sits…this giant, steaming turd of an opinion.

  40. 329

    There are plenty of people who think “all such chemicals” should be outside of the patent system for basic humanitarian reasons.

    Prove it. I’m not aware of any such person or organization who is advocating that every novel, non-obvious essentially pure, synthetic chemical becomes ineligible subject matter when it is subsequently discovered inside an organ of animal.

  41. 327

    I see your larger point, but I think it would be very difficult to assess that, because it is very difficult to look at a system where there are patents and wonder what would happen without them. I can tell you that there are a number of companies out there that only create IP. I am not talking about patent trolls, but about companies that do not have the cash to produce, for example, an electronics device, but instead design those devices and license them. ARM is a very good example. Without patents that business model would not exist, and given how much upfront cash is needed to actually produce in high-tech, probably those guys would be doing very different things.

  42. 326

    Ned–

    You are confusing “simple” with “simplistic”.

    Both MM’s and the USSC’s approaches certainly embody the attribute of “simplisticity”.

  43. 324

    Just what a multi-hundred thread needs. Ned Heller posting the identical thought in more than one place.

  44. 323

    wonder how I do so well on 101 issues.

    It’s simple.

    We don’t because you don’t.

  45. 322

    What if a law of nature were not involved?

    Given the holding, that a law of nature correlation was merely presented in the last step, what did Breyer suggest if the last step presented processed but man-made data? Did he suggest that 101 was not involved, that the answer would be different under 101, that we look to 102/103/112? What?

    For example, Diehr: What if instead of opening the mold, it presented a final wherein clause such as in Prometheus only suggesting that the mold be opened?

  46. 321

    Given the holding that a law of nature correlation was merely presented in the last step, what did Breyer suggest if the last step presented processed but man-made data? Did he suggest that 101 was not involved, that the answer would be different under 101, that we look to 102/103/112? What?

    For example, Diehr. What if instead of opening the mold, it presented a final wherein clause such as in Prometheus only suggesting that the mold be opened?

  47. 320

    All software is not “pure mathematics.” You probably mean that it can be represented in some symbol system and therefore you limited brain believes it to be pure. Sorry–not true.

    You have not read about software patents.

    You obviously don’t understand information processing, physics, cognitive psychology, or mathematics. If you understood just one of those well, you could dig yourself out of your silly arguments.

  48. 319

    I don’t know of any authority for requiring it when deciding patent eligibility under 101.

    Well we did have Diehr…

  49. 317

    The “claim as a whole” must be considered in a 103 analysis… I don’t know of any authority for requiring it when deciding patent eligibility under 101.

    That being said, I think the Court erred when they dragged 103 elements into the 101 analysis: “[W]ell-understood, routine, conventional activity previously engaged in by scientists in the field . . . is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.” There is no logical connection between the obviousness of the additional steps, and whether or not the claim pre-empts the use of the natural phenomenon.

    The Prometheus claims had glaring 103 problems, and I think that bothered the Justices … but they should have passed the claims on 101 grounds and left the patent to be invalidated for obviousness. (From the ‘623 patent itself: “Previous studies suggested that measurement of 6-MP metabolite levels can be used to predict clinical efficacy and tolerance to azathioprine or 6-MP … However, it was unknown what concentrations of 6-MP metabolites correlated with optimized therapeutic efficacy or with toxicity.”) A person of ordinary skill could hardly fail to think, “Gee, let’s measure those levels and find out.”

    If it’s any consolation, patentees and applicants with less obvious process steps might well be able to distinguish their cases on that basis … and the CAFC might be favorably disposed to such an argument.

  50. 315

    Prometheus:

    Hey Doc, y’knows alreddy how if ya duzzint gif enuf meds, the payshunt dont get no better? And iffn ya gif too much meds, the payshunt gets a-sicker or a-dies? An y’knows alreddy, too, that ya’s kin mayshure the amornts of the meds in the payshunts blood and yoo-rine, right, tah see iffn itsa not enuf or iffn itsa too much? Well, then, keep them meds on the strate an’ narry way fer each o’ yorn payshunts, and pay me a Roy L. Tee whilz yer at it.

  51. 312

    It’s about time that method claim steps be interpreted as “means plus function” claim steps for 112 indefiniteness. There is no structure in the specification for the wherein clauses that express the only novelty, the discovered range.

  52. 311

    A predictable decision. As the saying goes, bad facts make bad law. The claims should have been rejected as obvious, and none of this would have occurred.

  53. 310

    Dennis, Malcolm, et al.

    Regard “Isolated DNA”

    Consider

    “There is another view of the case. According to the description in No. 95,465, and in No. 4,321, and the evidence, the article produced by the process described was the alizarine of madder, having the chemical formula C14H8O4. It was an old article. While a new process for producing it was patentable, the product itself could not be patented, even though it was a product made artificially for the first time, in contradistinction to being eliminated from the madder root. Calling it artificial alizarine did not make it a new composition of matter, and patentable as such, by reason of its having been prepared artificially for the first time from anthracine, if it was set forth as alizarine, a well known substance. The Wood Paper Patent, 23 How. 566, 593. There was, therefore, no foundation for reissue No. 4,321, for the product, because, on 312*312 the description given, no patent for the product could have been taken out originally.

    “Still further, the claim of No. 4,321 is not a claim merely for the product of the process described in it, but is a claim for anything which may be called artificial alizarine, produced from anthracine or its derivatives, by either of the methods described, or by any other method, equivalent or not, which will produce anything called artificial alizarine. The scope of such a claim is seen in this suit. An article is sought to be covered by the reissue, which it is demonstrated Graebe and Liebermann never made by their bromine process, which they knew that process would not produce, which they recognized as produced first by some one else by a different process, and which has become the subject of a large industry abroad and an extensive use in this country, through discoveries made, as they acknowledge, since their bromine process was invented. After those discoveries were made, after it was seen that the bisulpho-acid process would produce desirable dye-stuffs, and could be worked practically and profitably to that end, it was sought to control the market for the product in the United States, by obtaining this reissue No. 4,321.”

    Cochrane v. Badische Anilin & Soda Fabrik, 111 U.S. 293, 311–12 (1884)

    link to scholar.google.com.&hl=en&as_sdt=2,5

  54. 309

    What he should have said is:

    “According to the american bar, some gov. agencies and some lower courts software earns both copyright and patents, but for different reasons and different scopes of coverage. However the legality of such is still very much in question because nobody ever has the balls etc to let a good case be argued before the USSC and they likely never will. Therefore, what software actually earns is dictated by us rather than you, the people”.

  55. 308

    recurse,

    Please educate yourself to some minimal degree to at least understand what the various forms of IP provide in the way of coverage.

    Software earns both copyright and patents, but for different reasons and different scopes of coverage.

    All you are doing is showing how little you understand the arena you are in.

    How would you like it if I showed up and told you that programming can be done by stringing any words I felt like together and it should run OK? And on top of that, perform the desired end result. That is the equivalent of your post here in the legal world.

    You preach “very limited industry knowledge” yet you do not realize that patent attorneys often have knowledge NOT ONLY in the software industry, but also in LAW. You, evidently completely lack that (legal) industry knowledge, yet feel strongly (blithely) enough to post your ignorance.

    Feel free to return to techdirt.

  56. 306

    You clearly have very limited industry knowledge.

    for(int i=0; i < 10; i++) { return i*2; } There's your algorithm. Also easily expressed as epsilon summation. All algorithms can be broken down into pure mathematical expressions, this is proven by, you know, science: link to haskell.org

    So you are exactly correct: computer software should never be patentable. The correct realm of law is copyright law for the source code of an application.

    Just because you want something to be true, doesn’t make it so. Just because you want to make money off of bogus software patents, doesn’t mean we should allow patent trolls to kill the software industry.

    Unfortunately, Bilski didn’t go far enough, and also broke the “machine or transformation” test, which is a shame, but it’s only a matter of time.

    Patents on software are silly, harmful and completely unsupported by both the spirit and the letter of the constitution.

  57. 305

    and that would include things of nature

    Careful Ned, you will enrage the biggest cl of the site and be labeled a sockie.

  58. 303

    IBP, I assume you would agree that the first discoverer of a new land cannot obtain a patent for it.

    Why?

    I would think because it is not among the four categories for one.

    Next, I dress the claim up with method steps wherein I provide directions from a starting point to an ending point and claim the land in a wherein clause. The claim is nominally directed to a method of exploration, but the end result remains that the patent covers the discovered land itself.

    The big takeaway from Prometheus is that they will not tolerate dress up claims to that which is declared to be unpatentable subject matter, and that would include things of nature.

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