Punishing Prometheus: Part III – Conclusions Masquerading as Analysis

Guest Post by Robert R. Sachs of Fenwick & West LLP; Read Part I and Part II. 

Patent attorneys are trained to draft claims using clear and precise language, and in particular to not rely upon relative terminology to define an invention–terms like “about,” “substantially,” “superior,” “better,” “good,” “sufficient” etc.  See, Manual of Patent Examination Procedure (MPEP), § 2173. After all, claims are definitions and indefiniteness is fatal.

So when the Court articulates expresses what is ostensibly a rule of analysis—a definition of what is patentable—patent attorneys naturally look for precision and clarity. Alas, we find a jumble of relative terminology and conclusory statements masquerading as legal reasoning. Consider the following samples:

The question before us is whether the claims do significantly more than simply describe these natural relations. To put the matter more precisely, do the patent claims add enough to their statements of the correlations to allow the processes they describe to qualify as patent-eligible processes that apply natural laws? We believe that the answer to this question is no.

[T]hose steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately. For these reasons we believe that the steps are not sufficient to transform unpatentable natural correlations into patentable applications of those regularities.

The Court has repeatedly emphasized this last mentioned concern, a concern that patent law not inhibit further discovery by improperly tying up the future use of laws of nature.

What is “significant” or “enough” or “sufficient?” What would be “properly tying” up future uses? It is “not enough” to say that what’s in Prometheus’s claim is “not enough,” especially when, at the same time, the Court makes sweeping statements that the presence of “entirely natural processes” indicate that the patent recites a “natural law.”  These various statements or criteria are not functional tests—they are conclusions and nothing else.  This leads us to the next problem.

So Long Technology, Hello Business Methods!

The Court pays lip service to the principle that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.”  Indeed, any invention in the “hard sciences” of electronics, physics, chemistry, biology, engineering, etc. would perforce comply with the laws—or more properly—descriptive paradigms of the domain. An invention for a new electronic circuit clearly operates according to Maxwell’s equations. An invention for a new way of making a chemical compound necessarily recites steps that in essence are nothing more than chemical reactions—laws of nature in the Court’s book.

Let’s take a look the core of the Court’s analysis of the Prometheus claim and see what happens when we transport it to the domain of electronics, to a simple device such as loudspeaker:

Prometheus

While it takes a human action (the administration of a thiopurine drug) to trigger a manifestation of this relation in a particular person, the relation itself exists in principle apart from any human action. 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.

A loudspeaker

While it takes a human action (the activation of the amplifier) to trigger the output of the sound from the loudspeaker in response to an electrical signal, the relation itself exists in principle apart from any human action. The relation is a consequence of the ways in which electrical impulses are converted to mechanical movement—entirely natural processes. And so a patent that simply describes that relation sets forth a natural law.

There are—or should I say, were—by my estimate, approximately 10,000 patents on various types of loudspeakers. This is only one example, and a trivial one at that. A similar example could be constructed in any field of technology. And if that is the case, then no patent is immune from this line of attack. Well, no patent except one for a business method.

Business methods, being entirely the province of arbitrary human behavior such as advertising, finance and the like, are the one class of inventions clearly not based upon or using laws of nature and natural phenomenon. Yes, all inventions comply with the law of thermodynamics, etc., and perhaps all human behavior could be explained if we truly could model the regularities that govern the behavior of all fundamental particles, and as result we divorced ourselves from a persistent macro-phenomenon as free will and consciousness.   If we get that far, then we will have a more difficult problem on our hands, whether we can patent non-obvious applications of those laws.   Whether these methods are “abstract ideas” is another matter—but as should be clear from the above, it is my view that a method used in a business is not an abstract idea. If you can sell it, it’s patent-eligible. 

 

240 thoughts on “Punishing Prometheus: Part III – Conclusions Masquerading as Analysis

  1. His is a misquote.  I quoted the relevant rebuttal by the CCPA which state flatly that the criteria for novelty in 101 are specified in 102, and not in some judicial exception based on product of nature.

    If ever there was a case that flatly rejected your the proposition that a product of nature, unknown under 102, is not new, it is Bergstrom.

  2. Conjecture, you stand without clothes and ask us to applaud your tailor.

    Stop it with your unsupported arguments.  I provide support for mine.  I invite you to support yours with authority.

    Show me one case, just one, where the court held the claims to a novel composition of matter invalid because they were a product of nature.  It cannot be that hard as you say your clothes are real.  

    Give me and all of us that one case.

  3. I gave you the quote that is the basis for my statement, and it is the second time I have given the quote in these threads.  

    Now, if you wish to rebut Hand with his own opinion, please do.

  4. And, just what is it that I have to prove.

    You guys assert that compositions of matter, discovered by a discoverer who also finds a use for the composition, are categorically ineligible under 101.  

    I invite you to cite one case that held this way.  Just one.

    To date, none.

  5. He then was quoting out of context as my point is consistently made that compositions of matter are expressly authorized by statute.  You change the topic to something difference, the answer might be different.

  6. Conjecture:

    [T]he base was an original production of Takamine's. That was a
    distinction not in degree, but in kind. <b>But, even if it were merely an
    extracted product without change, there is no rule that such products are
    not patentable.</b> Takamine was the first to make it available for any use by
    removing it from the other gland-tissue in which it was found, and, while [*12]
    it is of course possible logically to call this a purification of the principle, it became for every practical purpose a new thing commercially and
    therapeutically.[33]
    Parke-Davis, 189 F. at 103.

  7. The Court’s holding is of interest. “New” required the hand of man in the form of purification.

    Jack is correct in what he said.

    Ned does not know Jack.

  8. On further review of Bergstrom, it supported my view entirely

    Your ultimate position has fallen.

    You are disgraced. You cannot hide in moving goalposts that the “new” in 101 is from 102 (which, by the way, was never your stated position).

  9. He says that his loudspeaker claim is not patentable because the Prometheus claim is not patentable. Yes, he was talking about abstraction, but ironically not in the abstract.

    You were reading a different post. Apparently, it was a better one.

  10. L. Hand in Parke-Davis opined exactly the opposite from Bergstrom in that he viewed unpurified adrenalin patentable.

    Completely false. In fact, I can comfortably say this is a lie.

    Also a lie is that Bergstrom has been directly overturned. It has not.

    It has been distingushed, but not overturned. In fact one of the case of distinguishment is along the lines you propose and was rejected by the court. See Ass’n for Molecular Pathology v. United States PTO, 702 F. Supp. 2d 181 and the other case of distinguishment is favorable to the case. See In re Kratz, 592 F.2d 1169.

    What I posted above was too kind.

    I have scoured the Parke-Davis decision and find no cause for your contention. Not even the remotest of dicta.

    In fact, Learned Hand dutifully details the amount of work and evidence of the hand of man that earned the admiration of the judge for the invention.

    I think your bank has absconded with your funds.

    Ned Heller, you are beyond BS. You should be disbarred.

  11. Carter's Nat. Sec. Advisor: Jack's post misquoted Bergstrom.  He quoted from the solicitor brief summarized in the opinion.  The solicitor position was flatly rejected.

    The solicitor proposed that the compounds were of nature and not new, citing Funk Bros.  The CCPA rejected that proposition emphatically!!!!!!!  Saying that Section 102 set out the exclusive criteria for newness in 101.

  12. Ugh! On further review of Bergstrom, it supported my view entirely, rejecting the notion that compound found in nature are not new based on some judicial exception:

    “The solicitor’s position seems to hark back to the examiner’s view, heretofore summarized, that the present compounds, as claimed, are “naturally occurring” and therefore not “new.” At the outset we would observe that what appellants claim — pure PGE2 and pure PGE3 — is not “naturally occurring.” Those compounds, as far as the record establishes, do not exist in nature in pure form, and appellants have neither merely discovered, nor claimed sufficiently broadly to encompass, what has previously existed in fact in nature’s storehouse, albeit unknown, or what has previously been known to exist.

    But quite apart from those considerations, the criteria for determining whether given subject matter is “new” within the meaning of § 101 are no different than the criteria for determining whether that subject matter possesses the “novelty” expressed in the title of § 102. The word “new” in § 101 is defined and is to be construed in accordance with the provisions of § 102.[8] Thus, that which possesses statutory novelty under the provisions of § 102 is also new within the intendment of § 101. We have found no evidence of Congressional intent to define the word “new” as used in § 101 in any different manner.”

  13. I have scoured the Parke-Davis decision and find no cause for your contention. Not even the remotest of dicta.

    In fact, Leaned Hand dutifully details the amount of work and evidence of the hand of man that earned the admiration of the judge for the invention.

    I think your bank has absconded with your funds.

    You are full of BS.

  14. Jack, Bergstrom is based on questionable authority, as Funk Bros. dealt with known bacteria, and the exclusion involved there was a discovery of a property of the known bacteria, a law of nature.

    L. Hand in Parke-Davis opined exactly the opposite from Bergstrom in that he viewed unpurified adrenalin patentable.

    The problem for the inventor in Parke Davis was that the unpurified adrenalin had been discovered by another, not by himself. The issue was whether the purified form was novel. It was if was different in kind, the standard applied to invention at that time.

    It seems though that Bergstrom does makes the wild DNA prior art to the isolated DNA so that the isolated DNA is obvious as a matter of law over the wild DNA per Dennis’ analysis. Obviously, every purified or isolated compound is at risk of Bergstrom and it too has to be directly overturned by the Federal Circuit.

  15. sockie I think you predicted that the Diehr-bots would be crushed completely.

    LOL. That’s pretty much happened, txrdo.

    I think you predicted that business method patents would be permanently extinguished.

    Methods whose only credible utility relates to speculation schemes and/or schemes for manipulating money are dead under 101. Take it to the “Bank”. All that we’re waiting for is for a greedy dxpshxt NPE to assert such a dog patent against a real company.

  16. Your QED is meaningless.

    Chakrabarty did not decide between the two classes. So what?

    You “circle back” to Hand in Parke Davis.
    Again, so what?

    You have proven nothing.

  17. From Chakrabarty:

    "Specifically, we must determine whether respondent's micro-organism constitutes a "manufacture" or "composition of matter" within the meaning of the statute.[5]

    The issue before them was this narrow one.  The issue of whether a discovered organism was patentable was not before them for the simple fact that the organism they were considering was artificial, a product of man, not nature.

    The cases they cited, not one of them, ever stated that compositions of matter found in nature were not patentable.  A concurrence in O'Reilly v. Morse did suggest that unknown elements were not patentable, but they are not compositions of matter.

    In the end, the court relied Frederico's language concerning manufactures, in footnote 6:
     "This same language was employed by P. J. Federico, a principal draftsman of the 1952 recodification, in his testimony regarding that legislation: "[U]nder section 101 a person may have invented a machine or a manufacture, which may include anything under the sun that is made by man. . . ." Hearings on H. R. 3760 before Subcommittee No. 3 of the House Committee on the Judiciary, 82d Cong., 1st Sess., 37 (1951)."

    Since the issue was not squarely before them, they did not have to decide whether a discovered composition of matter, not made by man, was patentable.  (Note also, that the discoverer must also find a use for it.) 

    I circle back to Hand in Parke Davis.  He noted that there was no authority that he was aware of that would prevent the patenting of un-purified adrenalin, a compostion of matter discovered from nature.

    QED

  18. Great chart.

    Why did Ned not include Chakrabarty in his original quotes on the subject?

    Gives one pause.

  19. in addition to being intentionally uniformed

    You are correct. His hiding from MPEP 2105 and Chakrabarty clearly show that his research was intentionally faulty and his position disingenuous.

  20. See also the comment at the bottom of the thread by Jack Costas (2:33 PM).

    None of your replies have dealt with the mountain of evidence (a man-made mountain) building in front of you.

    Court and court case, Congress quotes and the directions of the Office all say you are wrong.

    You have only your misquotes of cases which have no credibility.

    You are no position to tell anyone to get a clue.

  21. Ned,

    You have not shown any inclination that you understand Chakrabarty at all. You say that Chakrabarty does not discuss discoveries, but it does. When you are shown this, you mouth, “but that is only dicta.”

    You are pushing for an impossibly thin reading of the subject that simply has no support (not even dicta), and certainly has no support in any of the cases you have cited.

    Show a cite that explicitly holds what you claim.

    You cannot.

    Show a cite that explicitly mentions even in dicta what you claim.

    You cannot.

    You have nothing.

  22. When the issue is MANUFACTURE, things made by man are patentable.

    Chakrabarty did not discuss discoveries.  Composition of matter that are discovered are expressly patent eligible.

  23. Chakrabarty was not about expanding the exclusion, but excepting live articles of manufacture from it.

    Get a clue.

    BTW, since the topic was articles of manufacture and not discoveries, the whole issue of discoveries was not before the court.

  24. Ned,

    Your research on this topic is suspect.

    Anything under the sun made by nature?.

    From the guy who so vehemently argues against business methods, this comes across a bit surreal.

    How is patenting nature not over protection?

    Obviously, what is made by nature is not patent eligible. In fact, “The Committee Reports accompanying the 1952 act inform us that Congress intended statutory subject matter to ‘include any thing under the sun that is made by man.’ S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952).”

    See also quotes 7 and 8 in my namesake.

  25. Disbelief, which case, then, expanded the exclusions announced in Le Roy (1850,  three before O'Reilly v. Morse (1853) and four years before Corning v. Burden.

    BTW, this is the critical passage from Le Roy:

    "The word principle is used by elementary writers on patent subjects, and sometimes in adjudications of courts, with such a want of precision in its application, as to mislead. It is admitted, 5*175 that a principle is not patentable. A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right. Nor can an exclusive right exist to a new power, should one be discovered in addition to those already known. Through the agency of machinery a new steam power may be said to have been generated. But no one can appropriate this power exclusively to himself, under the patent laws. The same may be said of electricity, and of any other power in nature, which is alike open to all, and may be applied to useful purposes by the use of machinery.
    In all such cases, the processes used to extract, modify, and concentrate natural agencies, constitute the invention. The elements of the power exist; the invention is not in discovering them, but in applying them to useful objects. Whether the machinery used be novel, or consist of a new combination of parts known, the right of the inventor is secured against all who use the same mechanical power, or one that shall be substantially the same.
    A patent is not good for an effect, or the result of a certain process, as that would prohibit all other persons from making the same thing by any means whatsoever. This, by creating monopolies, would discourage arts and manufactures, against the avowed policy of the patent laws.
    A new property discovered in matter, when practically applied, in the construction of a useful article of commerce or manufacture, is patentable; but the process through which the new property is developed and applied, must be stated, with such precision as to enable an ordinary mechanic to construct and apply the necessary process. This is required by the patent laws of England and of the United States, in order that when the patent shall run out, the public may know how to profit by the invention. It is said, in the case of the Househill Company v. Neilson, Webster's Patent Cases, 683, "A patent will be good, though the subject of the patent consists in the discovery of a great, general, and most comprehensive principle in science or law of nature, if that principle is by the specification applied to any special purpose, so as thereby to effectuate a practical result and benefit not previously attained." In that case, Mr. Justice Clerk, in his charge to the jury, said, "the specification does not claim any thing as to the form, nature, shape, materials, numbers, or mathematical character of the vessel or vessels in which the air is to be heated, or as to the mode of heating such vessels," &c. The patent was for "the improved application of air to produce heat in fires, forges and furnaces, where bellows or other blowing apparatus are required."

    http://scholar.google.com/scholar_case?case=9195622383669422745&q=Le+Roy+v.+Tatham&hl=en&as_sdt=2,5

  26. Of possible interest is In re Bergstrom 427 F.2d 1394, which held that products of nature are not patent eligible, but purification of such are since such purification creates a new thing, not found in nature.

    Two quotes follow:

    The consistent principle, and the one which we follow, is that a claim to a purified material cannot be allowed unless the purified material exhibits properties and utilities not possessed by the unpurified material.

    Certainly, an unknown compound or composition of materials merely discovered from nature is not patentable. Citing Funk [Funk Bros. Seed Co.] v. Kalo [Kalo Inoculant Co.], 333 U.S. 127 [68 S.Ct. 440, 92 L.Ed. 588] 76 USPQ 280.

  27. are effectively

    What-Ev.

    Prometheus was decided

    Return the goalposts to their original position.

  28. What was the holding in Le Roy?
    What was the subject being touched upon?

    What was the holding in Chakrabarty?
    What was the subject being touched upon?

    How can you say with a straight face that Le Roy is more pertinent than Chakrabarty? How can you clamor about “dicta” of Chakrabarty, yet make pronouncements from Le Roy?

    Ned Heller, there is no credibility in what you post.

  29. He was trying to show…

    No. He wasn’t.

    He was discussing the concept of abstraction.

    That’s why your pseudonym is aptly chosen. You went off the reservationon a critique that was nowhere close to being on point.

    Pay attention.

  30. Chakrabarty is only following Le Roy, not expanding it. Take a closer look.

    Not believable.

    At all.

  31. Chakrabarty was about whether man made bacteria were patentable as articles of manufacture.  That was the issue decided.
     
    Compositions of matter found in nature were not.

  32. My point is that his analogy was so bad it didn’t make his case. He was trying to show that because the Prometheus claims are not patentable subject matter that his analogous claims were also not patentable subject matter. However, that argument relies on similarity between the two claims. Because there was no similarity between the claims, it was a bad analogy.

  33. Every time you post [old method] +[new thought] you contradict this precedent.

    Everytime you say this you demonstrate that you are incredibly dense. Prometheus was decided the way it was because the claims are effectively claims to ineligible subject matter, not because the claims recited ineligible subject matter.

    Man, this blog has the dxmbest trolls.

  34. Every time you post [old method] +[new thought] you contradict this precedent.

    Every. Single. Time.

    You just don’t know what the h311 you are talking about with your petty strawman.

  35. Ned,

    Clearly, the plants and minerals were provided as examples in Chakrabaty. Just as clearly, the defining notion was laid out as to be not between living and nonliving but as between things of nature and things of man.

    You are arguing with a losing position. The more you struggle, the more futile you appear.

  36. Le Roy is for older and far less on point than Chakrabaty.

    Ned,

    Do yourself (and everyone else) a favor and discuss the appropriate guiding case. Consistency with Chakrabaty is much more powerful than the reach you are attempting with Le Roy.

  37. Furthermore I previously agreed that the Supreme Court in Chakrabarty

    Agreed, and then go on to ignore.

    A better response Ned would be to agree and then explain what that agreement means.

    You are doing yourself only harm by trying to sweep Chakbaraty under the rug. Clearly that is the defining case on the matter (much moreso than any case you have dragged out).

  38. EG We take a slight detour to thrust a blade into the MM [mental (midget) step] with:

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

    Hey, lying ignorant jackxss: for the billionth time, I’ve never ever contradicted this precedent.

  39. I remember your prediction and it was not the holding of Bilski.

    You think I predicted that the Court would find Bilski’s claims eligible under 101??

  40. Why do patent prosecutors write about patent litigation. IME, patent prosecutors understand so little about patent litigation that it’s sometimes hard to image. And of course, if patent prosecutors actually wrote clear claims, like they claim they do, there would be much less litigation about them.

  41. An Alexandrian solution is required for the Gordian knot between the facts that Diehr is not overturned and Prometheus is in direct conflict with Diehr (and the point of conflict is not in dicta).

  42. Then there is the statute itself that expressly authorizes the patenting of processes.

    (Still doesn’t work)

  43. Yeah, but we have to look to 1790 to find out what Congress meant by that term,

    No. See 35 USC 100.

  44. What a lazy, rushed, disorganized, scattered, discombobulated opinion Prometheus is. And this is coming from the Supreme Ct. too, not some confused district judge.
    Knocking out those claims was fine, and the correct outcome IMO, but that opinion is just embarrassing. Did the law clerk who wrote it even read a patent treatise?

    Now excuse me while I get on the same page as the Sups and go solve my aphid problem with an elephant gun.

  45. Night, agreed.  I think the Supreme Court really has to go back to Le Roy v. Tatham, the case that first brought up the idea that one cannot claim a principal in the abstract. That case held that all one had to do is claim a practical application of a principle such that it produced a new and useful result.

    All they had to say in Prometheus, as in Ninth Circuit Haliburton case, was at the claims ended in an abstraction, pretty much along the lines of the government brief. That would've been a very simple result consistent with Le Roy.

  46. Night, Agreed.  That is why I bet the way I did with Malcolm.
     
    However, Learned Hand said in Parke-Davis that an un-purified composition of matter that later became known as adrenaline, as far as he knew, was patentable. I take that quote to the bank.

    Then there is the statute itself that expressly authorizes the patenting of "discoveries" of "compositions of matter." Now any fair reading of that express statutory authorization has to include the concept that the discovered composition of matter could be found in nature. The only exception is that provided in the concept of "new," which is also in the statute. When Congress first authorized patenting of compositions of matter in 1793, the statute explained that the only exception to newness was that the subject matter of the patent not be previously known or used before. The Supreme Court later explained that "known or used before "meant not publicly known or in public use. The Supreme Court never said anything about something being in nature being an exclusion.

  47. Heller is being disingenuous and in addition to being intentionally uniformed. Read the fricken cases the SC relied upon to learn what is required for a patent involving an item found in nature.

    And read the record of Congress that the SC relied upon.

    Ned’s out of control truck has plummetted through the mountain pass guardrail.

  48. Batty (as you call yourself), plants and minerals respectfully are not compositions of matter.

    Furthermore I previously agreed that the Supreme Court in Chakrabarty was operating under the assumption that products of nature as a category were excluded from eligibility for patenting. Where they got these ideas is by use of loose language in other cases and perhaps from congressional history. But as I suggested, there is no case anywhere in the Supreme Court history that has, to my knowledge, expressly ruled or held that compositions of matter found in nature and not previously publicly known were excluded from patentability.

  49. Boy you are tempermental. Take a chill pill and think about what I said. Deep processing is what you need. Stop the knee jerk reactions. You have come far and it is not too late to turn you from the dark side.

  50. Products of nature are not patent eligible. Period.
     
    Where in the statute does it say that?  In contrast, §101 does say that newly discovered compositions of matter are patentable …Period.

  51. Nice band aid EG. You are still going to bleed out.

    Newman sets up the Prometheus/Flook stage by stating:

    The defendants argue that the Classen methods are directed to no more than the steps of reading published information, that the “determining” and “comparing” steps of the claims are performed in the mind, and that any immunizing step is simply conventional activity, citing the Court’s negation of the “notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process,” Parker v. Flook, 437 U.S. 584, 590 (1978).

    But she does not close the loop in her reasoning, and does not address the setup point directly.

    Other tidbits:

    We take a slight detour to thrust a blade into the MM [mental (midget) step] with:

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

    Another meander:

    “This court concluded that the specified method is “functional and palpable,” and that the claims recite tangible limitations on performing the specified method of comparing images.”

    So much for consistency:

    “patentability of subject matter that is facially within the classes set forth in §101 is most reliably resolved in accordance with the conditions of §§102, 103, and 112. See Diehr, 450 U.S. at 190″

  52. I don’t trust you to pay me or to get the bet straight. And you did not get Bilski right as you claim. I remember your prediction and it was not the holding of Bilski.

    The claim is held ineligible for patentability and thus invalid.

  53. Ned, you did get me to read Haliburton and rethink the abstract idea doctrine. But, Ned, come on. If you are a fair minded person, then you have to see that the SCOTUS in Benson, Bilski, and Prometheus is not applying the abstract idea and natural law doctrine correctly. In Haliburton their is a clear public policy. In these other cases there is not. There are not other uses. The fact is there are no specific examples.

    In Benson, the argument comes down to we think others should be able to use your invention because it is a basic tool? Ok, what is the test for basic tool? The Benson invention is not a basic tool.

    Test for abstract idea should be what other inventions is this precluding? After invalidating it can we name some 10 years later that are not just the invention?

    If we are stuck with these doctrines then what about a real fact based inquiry, rather than psychotically repeating abstract words and declaring the claims invalid.

  54. If this is all you have, you have proved my point. There is no public policy. in Benson, no public policy either.

  55. What is absurd is that you and the Cybersource 3 and Moore think that enormous algorithms for processing data are not patent eligible per se because somehow they are laws of nature or abstract.

  56. Can someone please explain?
    Here’s what I don’t understand, thioguanine was synthesized in a laboratory and to my knowledge, does not occur in nature. Therefore, administration of thioguanine to human beings does not occur in nature. So how could any effect of the drug on a human being be a law of nature? If it is, then there is nothing in this world that is not a law of nature.

  57. 6, you could not build a routine machine to carry out the method in Prometheus without infringing. But, what is the public policy to build a routine machine to carry out the method? The method itself is the invention. It is what we want. The machine in this case is not. If there were a machine to carry out the method it would be capable of carrying out any such method.

    No public policy as I said. You are coming up snake eyes kid.

  58. Scr ew it, not worth the g d heada che. I have work I can do to make $.

    And the fi n k icker is, this law, as set forth in this line of cases BARELY EVEN AFF ECTS patent law as a whole. 5-10% of cases will barely be affected, and most of those will still be saved somewhat. Big WH OOP. They should have been being affected in the SIXTIES.

  59. I have pity because you just lost your entire worldview, or whatever shreds of it you thought still existed after Bilski. It would be like for EG, who is, from what I can tell deeply chri stian if we went back in time, saw there was never a Je sus and he was totally made up. But that is no excuse. Loss of worldview is no excuse.

  60. “but the specifics of the Prometheus method claim would not contribute to the inventive part”

    Which is the G D POINT YOU G D TA RD. It doesn’t CONTRIBUTE BUT IT PREEMPTS IT being used for the only purpose that it was built to achieve. FI N OPEN YOUR EYES.

    Sorry you don’t like that these “inventions” are “inventions” just as much or more than Prom’s “invention”. I swear to go d I would literally spi t on you people, you hold yourself so high and mighty for your understanding of the law, and then when it is spelled out for you all of a sudden you’re a 1L that has no knowledge of the law, the law that you know good and well has been spouted to you for decades is all up ins your face, and double standards start a flyin’ everywhere. And heaven f in forbid, that even when I’m trying to be very modest about, oh I don’t know, what I’ve been saying for years, that suddenly gets spouted, for the 6th time by the USSC, and I can’t get a g d “ok, f it, the USSC wants to play that way then we’ll play that way”, from you guys.

  61. As to the ranges… tell it to rader next time he gets ahold of an “overlapping ranges” case. Also, even if they couldn’t get the patent on the full range of 100-250 such that it overlaps with the 200-400, they can just chop it off at 199. Either way, even if it is obvious, it’s an invention. This isn’t europe, we don’t give a sht about inventive step. Sorry you all of a sudden disagree that something claimed is an “invention” simply because a plaintiff accused infringer pooped it out instead of your precious Prom. Nice double standard old man.

    And as to the machine, sure there is, you could make a special setup to administer, you could make a special circuit (note that I have personally performed something of this nature) to do the “determination”, you could put a su cker dispenser on it to give out a sucker only when the determination is that the toxic dose is determined to need to decrease, the list goes on and on forever. All of it, prevented from ever being used by this claim.

  62. As to the ranges… tell it to rader next time he gets ahold of an “overlapping ranges” case. Also, even if they couldn’t get the patent on the full range of 100-250 such that it overlaps with the 200-400, they can just chop it off at 199. Either way, even if it is obvious, it’s an invention. This isn’t europe, we don’t give a sht about inventive step. Sorry you all of a sudden disagree that something claimed is an “invention” simply because a plaintiff accused infringer pooped it out instead of your precious Prom. Nice double standard old man.

  63. You lack antecedent basis for this term in the claim.

    You missed the period in the claim and the fact the terms you reference are not in the claim.

    Perhaps you should reject yourself.

  64. “We need you to fight the good fight”

    Oh you can be sure of that! I have one pending that I intend on going all the way to the Supreme Court very soon. We are not even wasting time with the PTO. Soon as we get past the BPAI stage we can start the real fight!

  65. I’ve responded to this twice and neither showed up.

    My prediction is that something to do with DNA molecule will be held a law of nature.

    Law of nature is the answer to your question. It is a law of nature.

    The irony is that you don’t see that you are making analogous arguments to information processing methods.

  66. From the Supreme Court and channelling Congress directly (sorry, Thomas Jefferson was not available):

    “There is a clear and logical distinction between the discovery of a new variety of plant and of certain inanimate things, such, for example, as a new and useful natural mineral. The mineral is created wholly by nature unassisted by man. . . . On the other hand, a plant discovery resulting from cultivation is unique, isolated, and is not repeated by nature, nor can it be reproduced by nature unaided by man. . . .”
    S.Rep. No. 315, supra at 6; H.R.Rep. No. 1129, supra at 7 (emphasis added). Congress thus recognized that the relevant distinction was not between living and inanimate things, but between products of nature, whether living or not, and human-made inventions.

  67. Do you recognize the purpose of the analogy? Hint: it was not a direct analogy to the Prometheus claims says:

    Can you be done when you haven’t even begun?

  68. would have intended

    Dxmm that Law of Nature of the Law of Unintended Consequences.

    at least to the extent that

    Cite please. Or are you just making up this connection (’cause it certianly isn’t there in black and white).

  69. 6, there is no invention in making a machine to carry out the method. There may be invention in making a machine to administer a drug in general, but the specifics of the Prometheus method claim would not contribute to the inventive part. Come on now. That is pretty easy to understand.

    And, the ranges would be an improvement patent if inside the ranges, and not infringing if outside the ranges.

    You got nothing kid. Nothing.

  70. Hobgoblin:Diehr would be outlawed under a consistent reading of Prometheus.Open door = post solution activity, old in the art and does not do more than the sum of its parts. Therfore, not enough.
    I agree one reading of Prometheus could result in a holding that simply administering the drug would not be enough, but since that would overrule Diehr and render unpatentable potentially millions of patents where the sole novelty was in the new algorithm or the new use of a natural phenomena, I hardly think the Supreme Court would have intended such a result, not at all.

    We then have to add to Prometheus that they did not intend to overrule Diehr, at least to the extent that the new algorithm or law of nature was actually used in the old process to provide a new result.

    If this assumption is correct, and I think it has to be correct because, in the words of Scalia, the SC justices are not st*pid, then we know that the problem with Prometheus was that it ended in a abstraction that comprised the information, the correlations, that were the result of a nature phenomena.

  71. Diehr would be outlawed under a consistent reading of Prometheus.

    Open door = post solution activity, old in the art and does not do more than the sum of its parts. Therfore, not enough.

  72. Every patent is “Abstract”

    It says so right on the first page. Usually after the references cited.

  73. but rather is entirely consistent with the long line of Supreme Court case authority on point.

    Serious question: Are you on drugs? You yourself hav eposted how the decision is inconsistent with Diehr and “surprised” you.

    Were you lying then or are you lying now?

    Or both?

  74. Why do you believe that I didn’t read his “analogy”?

    Because of your response.

  75. But I am doing my best to see to it that the claims are upheld.

    No way. I seriously thought your posts were a come on trying to trash that side of the discussion with intentionally horrible advocacy.

    You were really trying to argue for that side?

  76. “Whether these methods are “abstract ideas” is another matter—but as should be clear from the above, it is my view that a method used in a business is not an abstract idea.”

    No truer words have ever been written or spoken!!

    Every member of the examing corps and the patent bar should have this engraved on a plaque above their desk!!!

    And now to extend on this and really blow your mind I challenge you to think about the following statement.

    “Every patent at it’s core is a method used in a business”

  77. As a non attorney I really don’t see the point in criticizing the Supremes for not being experts in patent law. How could they be experts in every area of law? I have 10 different attorneys in two different firms and one independent. My trademark attorney does trademarks all day long and knows nothing about patent law. Likewise my business contract attorney can’t do me any good in filing trademarks. And my tax attorney is in a class all by herself, literally.

    It all cost me a fortune but dam it i need their expertise. Which means I need them focusing on their very narrow and specific area of the legal universe. So how can we expect Supreme Court Justices to know everything in the universe???? And should we expect that at all??? I ma interested in an attorneys perspective.

  78. Maxie “thinking methods” and “business methods” are not the same thing. Thinking is a part or step in every method or process whether applied in commerce ( business) or not. Bad Joke is essentially right. However I would prefer the term “use” rather than practice. When an Actual Inventor like myself licenses a so called business method, we license the “use’ of that method and usually charge a “per use” royalty for the privilege,

  79. Don’t start that again Ned!

    The Supremes believed Bilski’s claims were nothing more than math. And in their minds math is abstract. I personally disagree about math being abstract. But let’s not pretend we do no know why Bilski did not get his patent,

  80. “6, you have provided examples that are all the invention.”

    You specifically said you weren’t going to pull this bs by stating you meant “a level of abstraction” by what “the invention” was. There is not an apparatus claim in the entirety of that patent. An apparatus is as entirely new level of “abstraction”. Specifically it is the “bottom” level of “abstraction”, especially if you call out some of the specific parts of this apparatus. And all the million different ways of construcing a machine to perform this method are all preempt.

    And furthermore, there is no mention of alternate ranges. That is a whole other “invention” I should think since it is wholly outside the scope of the document before us.

    Those are at least 2x other “inventions” which are most certainly not this “invention”. And you just don’t like it.

    I’m through discussing this nonsense with you, you refuse to listen what so ever, due, I suppose, to your head being so far up your arse you probably couldn’t even read the page anyway.

    I swear to go d. I GENEROUSLY give and give to these tar ds and they simply just wave what is freely offered away! Just wave it away with a wave of their hand “it’s part of the invention”. No explanation of how it is “part of the invention” and since obviously it is nowhere NEAR the invention and such an expanation is impossible. Same thing with EG and his Diehr paragraph.

    Well you know what NWPA? F ya, just try to muddle through your ignorant view of this rather simple lawl and <3 the ever fewer courts that let you get away with your shinanigans.

    Perhaps I can allow for beggar sessions like I allow for Ned on occasion when he decides to bs all day long. Perhaps I will allow for you to beg the indulgence of the master if you should desire the answer to these questions that are ever vexing for your small mind.

  81. NWPA What exactly is it that you want to bet about? You’ll note I did not say the claims would necessarily be held invalid

    You mean “ineligible under 101″, right? Because that’s what we’re talking about. The bet is whether the CAFC will find the claims ineligible under 101 based on Prometheus.

    The big point is the law of nature holding for the information part of DNA.

    Nobody is claiming “the information part of DNA” so I don’t see how any court arrives at this holding. The claims are drawn to novel chemical compositions. The fact that a composition behaves in predictable ways under certain circumstances is certainly not unique to nucleic acids. It’s universal.

    Let’s say that a group of people are identified who are relatively resistant to HIV infection. It is discovered that each of these people naturally expresses a 1200 amino acid long mutant protein that is responsible for HIV infection. It turns out that the injection of a particular 112 amino acid fragment of this protein is all that is needed to provide protection.

    You’re telling me that a claim to the novel isolated 112 amino acid peptide is ineligible for protection under 101 because … why? Because it “encodes” “information” “found in nature” relevant to preventing HIV? What if I discover that methylating one specific amino acid in this sequence (an old conventional step) leads to a 100 fold improvement in the resistance provided? Is the novel isolated composition still ineligible? Why?

    The same analysis would apply to ANY chemical composition with an arguable analog/homolog found in nature.

    Smell the absurdity. These questions are asinine and there is no way the Supreme Court will ever allow them to be used to render novel chemical compositions ineligible.

  82. 6, you have provided examples that are all the invention. No public policy to say you can’t have the invention because others want it. Read Haliburon. That one has actual public policy.

  83. Yeah, it is. I bet isolated DNA will go down based on Prometheus.

    But I am doing my best to see to it that the claims are upheld. See my whole discussion concerning the fact that 101 expressly authorizes the patenting of discovered compositions of matter regardless that they might be in nature so long as they are not known.

    Still, I see your point about “information.”

  84. Perhaps we can, in the future, patent the new “you” based on an “epiphany.”

    The who born again movement smacks of this. Wouldn’t it be interesting if one group could patent the process of self discovery.

  85. “I don’t think they are going to risk another 9-0 head slam”

    That much is true. Bilski came away with a plurality, so Rader et al felt free to pick and choose his statements from it to suit his mood. Pick anything from Prom and the patent is going downtown if it was an attempt to patent on a judicial exception.

  86. EG MM, please stow the ad hominems,

    There were “ad hominems” in my comment, EG. The “ad hominems” were in your comment.

    You wrote:

    Any beginning prosecuting patent attorney or agent would understand that characterizing “wherein clauses” as a “step” is nonsense. If Breyer can’t get the basic patent

    I notice that you failed to address the fact that I proved your statement to be completely false in my 1:38 pm comment. To repeat, you’re either lying or you’re an idixt or both. I think the latter is true because only an idixt would l-i-e about something so easily refuted. And your subsequent comment which fails to admit that your dissembling was busted is just more of the same.

  87. “business method patent” = gobbledygook

    Another unhelpful, obfuscatory and obscurantist rhetorical label applied by those who are unable or unwilling to address 35 USC directly.

    Same for “software patent”

  88. Sachs is being disingenuous and in addition to being intentionally uniformed. Read the fricken cases the SC relied upon to learn what is required for a patent involving a law of nature. The SC has explained this in both Le Roy v. Tatham and in Funk Bros.

    All one need is to apply the law of nature to an useful application that produces a new result.

    A new machine that produces a new result through the operation of a law of nature is patentable. See, e.g., the Eibel process case that relied on gravity. And the examples multiply.

    Assuming the Diehr formula was a law of nature, all Diehr had to do is open the fricken mold. The problem with the Flook claims was the claims ended in an abstraction, updating the alarm limit VALUE! The problem in Flook was the same problem as we have with Prometheus. The claim ended with an abstraction, not with an application to some physical end.

    Mr. Sachs is being, as I said, ridiculous in his denunciation of Prometheus as being some kind of departure. It is not a departure at all, but rather is entirely consistent with the long line of Supreme Court case authority on point.

  89. Why do you believe that I didn’t read his “analogy”? Are you trying not to get it?

    By the way, nice use of “non sequitur”.

  90. “Patent attorneys are trained to draft claims using clear and precise language, and in particular to not rely upon relative terminology to define an invention–terms like “about,” “substantially,” “superior,” “better,” “good,” “sufficient” etc. See, Manual of Patent Examination Procedure (MPEP), § 2173. After all, claims are definitions and indefiniteness is fatal.”

    Gotta love this. Patent attorneys are trained….

    By whom?

    Even the PTO no longer requires drafting claims on us test. An agent can put out his shingle with absolutely no clue how to draft claim.

    Trained.

    What a joke!

    Furthermore, the extent anybody has received any training in drafting claims in America today, it is to not to draft claims in clear language. Patent attorneys are trained to do the exact opposite. The poster must know this. His post is a GD lie from very opening paragraph.

  91. A loudspeaker works because of natural laws. Electrical impulses don’t convert themselves into sound.

  92. Robert,

    You make a number of excellent points, but I disagree with you on the business methods. I do not believe there is any logically consistent definition for a business method patent. Second, everything is subject to laws of nature – you are either inside the laws of nature or you are outside the laws of nature, logically. Take the One-Click patent, which is held up as the quintessential business method patent. It relies on computers, communication systems etc. all employing principles of laws of nature. We have become so abstracted from the basics that as lawyers and judges we sometimes forget the foundations. For instance, many people believe software inventions are not relying on the laws of nature, but software is just a way of wiring a circuit diagram. So software patents are really electronic circuit patents. Many so called business method patents are the application of software to problems of business, which means they are really electronic circuit patents. They deal in information (dollars) but so do error correction codes, DNA diagnostic tests, etc.
    As scientists and engineers, patent attorneys should agree on at least two points: 1) you cannot create something from nothing (conservation of matter and energy) so all inventions are combinations of known elements/steps and connections (112 requires this) and 2) All inventions are within the laws of nature – we are not patenting magic.

  93. Is he trying not to get it?

    He leaves that to blog participants who don’t even read his analogies and go off on tangents…

    …and non sequiturs.

  94. It’s like talking to the wind.

    Not just any wind.

    A fetid wind, downwind of a papermill on a hot and humid day type of wind

  95. “I have said it many times and received no other uses other than exactly what the invention is in machine form. ”

    Well, along with the millions of others 6 just gave you.

    “There are no other applications here.”

    Other than the one you just admitted to.

    “I am not sure why others are not getting this”

    Why are you not getting that you just contradicted yourself?

  96. ” I’ve personally seen rejections from the PTO saying “an amplifier” and “a transceiver” were not particular machines.

    They aren’t very particular.

    “And under Benson, a reentrant shift register was not a particular machine.”

    Sure it was, it’s just that the MOT doesn’t control. Whether or not you’re attempting to preempt an abstract idea does.

    “the coils” “the core” “the cone”

    You lack antecedent basis for this term in the claim.

  97. MM, please stow the ad hominems, get a grip and rethink, as I’ve done since we had this discussion of Mayo Collaborative Services last week. The result in this case (and what Prometheus considered its claimed method to cover at trial) is OLD NEWS. You, me, and everyone else needs to move forward onto what needs to happen from now on if we’re to keep the nonsensical reasoning in this case from leading to future nonsensical results.

    As I pointed out in my comment above, going down the “law of nature” path is the worst way Breyer could have gone. Every invention, be it a composition, article, machine, or method/process is made up of elements and/or steps which are derived from “nature,” a “law of nature,” or “natural phenomenon.” The late Chief Judge Markey said as much years ago. If you go down the “law of nature” path like Breyer’s opinion suggests, you’ll eventually end up in a logical “cul-de-sac” from which you cannot escape.

    Instead, as I’ve suggested in my comment above, use the “abstraction” pathway of Bilski. That’s what the Classen remand decision is based on. By going down the pathway suggested by the Classen remand, we’ll at least have a fighting chance of making some rationality and understandable guidance out of this Mayo Collaborative Services debacle.

    Let me also make this very clear to you MM: I don’t mind having a civil debate with you, even if we don’t agree (and there have been points in the past where we’ve been in agreement). But if you feel it’s necessary to tinge your comments to me (or anyone else who comments on this blog) with profane, uncivil, unprofessional, and ad hominem remarks like just expressed to me now and in the past, it’s pointless for me (or anyone else) to say anything further to you. It’s like talking to the wind.

  98. This is so tedious. Apparently, Sachs can’t distinguish between a device like a loudspeaker, and a method like the Prometheus Claim. At best, Prometheus claimed a method of analyzing information.

    Is he trying not to get it?

  99. “An invention for a new electronic circuit clearly operates according to Maxwell’s equations.”

    Yet none of them are attempts to preempt the entirety of Maxwell’s equations. Funny that.

    Anyway, is this jack just about off his rant wagon yet? Is there supposed to be yet another part?

    “Prometheus

    While it takes a human action (the administration of a thiopurine drug) to trigger a manifestation of this relation in a particular person, the relation itself exists in principle apart from any human action. 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.

    A loudspeaker

    While it takes a human action (the activation of the amplifier) to trigger the output of the sound from the loudspeaker in response to an electrical signal, the relation itself exists in principle apart from any human action. The relation is a consequence of the ways in which electrical impulses are converted to mechanical movement—entirely natural processes. And so a patent that simply describes that relation sets forth a natural law.”

    Robert you are an embarrassment to all of patent law.

    Why would D even allow this guy to guest post? It’s like that “in defense of software patents” post, so ridiculous that it must be a comedy spot.

  100. EG Any beginning prosecuting patent attorney or agent would understand that characterizing “wherein clauses” as a “step” is nonsense. If Breyer can’t get the basic patent

    Eric, you are either lying, or you’re an idixt or both. I believe I’ve made this observation before. I’m pretty sure the latter conclusion is correct.

    You KNOW that these claims were construed by the District Court, at the behest of the patentee, to cover the step of thinking about the correlation. I know you do, Eric.

    Just so everyone is clear on this:

    Prometheus demanded and received discovery of
    all Dr. el-Azhary’s patients’ confidential records.
    Prometheus also required Dr. el-Azhary to answer
    hours of questions in deposition about these patients
    and her treatment of them. 1JA 19. Prometheus even
    asserted infringement against Dr. el-Azhary’s work
    when she subsequently received reports that did not
    list the patented “therapeutic range” — because the
    ranges were still in her memory
    . 1JA 20-22, 36-42.
    Once she had seen the patented range one time,
    there was nothing Dr. el-Azhary could do, Prometheus
    maintained, to avoid infringement. Its expert
    testified that Dr. el-Azhary’s receipt of a test report
    would lead to infringement “[w]hether she crumples it up, throws it away, reads it, acts on it, doesn’t act
    on it, any assumptions you want to come up with.”
    1JA 42.

    Please remind your dissembling heroes, Kevin and Gene, of these fundamental, critical facts. They also seem to keep “forgetting” them.

  101. What exactly is it that you want to bet about? You’ll note I did not say the claims would necessarily be held invalid. The big point is the law of nature holding for the information part of DNA. That is the part that is going to cause problems.

    What is your prediction for the holding? Is that a real bet with Ned?

  102. As I and others have said, what those who are “cheering” the Mayo Collaborative Services decision need to understand (and accept) is that the specific result isn’t the problem for us, but instead the abominable reasoning that is employed by Breyer, including mischaracterizing and misusing basic patent claim terminology. A prime example of this issue is Breyer’s opinion characterizing the “wherein clauses” as a “step.” That, by itself is embarrassing in the extreme. (And I’m not making this up, it comes directly out of Breyer’s opinion.) Any beginning prosecuting patent attorney or agent would understand that characterizing “wherein clauses” as a “step” is nonsense. If Breyer can’t get the basic patent claim facts right, is it any wonder that the reasoning he provides won’t be accepted by patent law practitioners, notwithstanding his further nonsensical characterizaton of what the applicable patent law is?

    What is also very unfortunate is that Breyer could have had his “cake,” and even gotten us patent practitioner’s (at least most of us including me) to “eat it” too if he had used the basic patent claim terminology correctly and had framed the applicable patent law issue appropriately. Characterizing Prometheus’ claimed method as not much more than patenting a “law of nature” was the absolutely worst way to go. Instead, he could have (and should have) gone down the path of Bilski and said that Prometheus’ claimed method is nothing more (or not much more) than an “abstraction” because it does’t achieve a “useful result” (i.e., simply providing numerical ranges of what dosages are too high or too low isn’t enough to reach the patent-eligibility zone). Even better, Breyer could have pointed to related U.S. Pat No. 6,987,097, and particularly Claims 1 and 13, and said “that’s what I mean by a ‘useful result’ that is more than a mere abstraction.” Prometheus would have been unhappy, and there might have been some grumbling by some patent practitioners, but such reasoning I would expect would have been accepted by the patent law bar at large (me included), and would have also given us meaningful guidance on how to craft method and process claims to reach the patent-eligibility zone. (Sigh).

    In my view, the path forward for getting us out of this Mayo Collaborative Services debacle is through the Classen Immunotherapies remand decision. Judge Newman’s opinion (joined by Chief Judge Rader) very astutely (and presciently) points to the “immunization step” in two of the patents (the ‘739 patent and the ‘139 patent) for why they made the patent-eligibility grade, while the other ’283 patent did not. And Newman’s opinion primarily relies upon a legal basis other than the Federal Circuit’s “transformative” step reasoning (which I didn’t like in the first place) that was reversed in Mayo Collaborative Services.

  103. Sachs: the Court makes sweeping statements that the presence of “entirely natural processes” indicate that the patent recites a “natural law.”

    Can you show me each of these two or more statements? The paraphrase leaves me wondering about its accuracy.

    In any event, the decision is crystal clear that the mere recitation of a “natural law” in a claim is not enough to render the claim ineligible per se.

    It’s no different than if the court said that “the presence of a step taking place in the mind of an actor indicates that the patent implicates mental processes.” So what? It’s a fact. Deal with it.

    An invention for a new electronic circuit clearly operates according to Maxwell’s equations. An invention for a new way of making a chemical compound necessarily recites steps that in essence are nothing more than chemical reactions—laws of nature in the Court’s book.

    This is an incredibly silly reading of the decision. Again, I’m reminded of the hysterics that accompanied KSR. Get a fxxxxing grip, Mr. Sachs.

  104. Night Wiper: I’d put money on that the fact that the information part of the DNA is going to be held to be a law of nature and the claims are going to be dissected piecemeal.

    How much money? I recall I’ve already got a bet for $500 with Ned.

  105. Les–

    I’m still reeling from Kelo v New London.

    That decision and its implications still send shivers down my spine.

  106. Thanks. The ordinary man on the Clapham omnibus (stuck in the London traffic) can “practice” thinking methods too, but I’m not sure that’s enough to persuade him to accept that methods characterized by a particular thought process should be judged eligible for patent protection.

  107. He should have said “sell or practice” to cover the methods, even those as described above such as receiving audible signals emitted by a loudspeaker, analyzing the recieved audible signals, and adjusting a property of the loudspeaker as a function of said analysis.

    It stood out to me too, but I think his point stands.

  108. How “natural” is the frog’s leg that Galvani shocked, all those years ago? Is that a transducer?

  109. “electrical impulses are converted to mechanical movement [are] entirely natural processes”

    How so? A transducer is natural? I don’t understand this assumption.

  110. Is it really an accident that a professor of biochemestry who captured the imagination of generations of people by writing about robots and their nascent evolution of “humanity”, may be setting in motion the very beliefs that he envisioned? Shades of Psychohistory…?

    and perhaps all human behavior could be explained if we truly could model the regularities that govern the behavior of all fundamental particles, and as result we divorced ourselves from a persistent macro-phenomenon as free will and consciousness. If we get that far

    link to en.wikipedia.org

  111. This is a good example of how the SCOTUS is just using their own abstract words to try and characterize some inventions when the methodology cannot be consistantly applied.

    It has turned into a Lemley world. A psychotic recessitation of abstract words that somehow apply to some things and not others. Off with their head says the Lemless. And the SCOTUS executes diagnostic patents.

  112. >>The CAFC will do as it wishes…after all, what >>is the cost of failure? Another granted cert? Big >>deal.

    Oh I think you underestimate how much this bothers the judges on the Federal Circuit. I don’t think they are going to risk another 9-0 head slam. I stick by my prediction above. It is going to be a shocker.

  113. NWPA–

    The CAFC will do as it wishes…after all, what is the cost of failure? Another granted cert? Big deal.

    CAFC decisions are the more dangerous ones, because the CAFC takes itself seriously.

    The opinion in Myriad will have more practical effect upon patent law than will the Prometheus opinion, because we will actually have to pay attention to it…

    …because most cases don’t go to the USSC, and because the CAFC thinks very highly of itself, as an institution, as voting blocks on certain issues, and as individual jurists.

    Myriad will be where the action will be, if another case doesn’t present itself as a good vehicle in the interim.

  114. When you see how lousy a job the Supremes did here, in an area of the law you are familiar with, does it scare the hell out of you when you consider what they are doing in other areas of the law? It does me.

  115. I see their various opinions as providing mere guidance to the real patent court

    That’s part of the problem, in more than one way.

    In actuality, it simply is false, exasperating the p1ssing match between the CAFC and SC.

    In practice, it emboldens the Office to apply the nonsensical views in untold permutations. Witness 6 and his “reading” on law (lawl?).

  116. Big deal, that’s the province of adolescents.

    and 99.99999% of the vocal minority on patent blogs.

    IBP, you expect too much.

  117. Inviting: No. It was a head slam. And vacating and remanding Myriad with a per curium after a 9-0 head slam is sending a clear message. We want vast swaths of patents to now be ineligible for patentability.

    The Fed. Cir. is going to have to behave. Myriad is going to be a shocker to the patent bar. The Fed. Cir. is going to hold that the information part of DNA is a natural law, and dissect the claims to see if there is something more added to warrant eligibility.

  118. Look, the bottom line is that the Supreme Court knows next to nothing about patent law, and furthermore, they either don’t care, or can’t afford to care given whatever else they have to do.

    I see their various opinions as providing mere guidance to the real patent court, the CAFC–and that guidance is provided in the most confusing and coarse fashion, leaving the CAFC essentially free to do as it pleases.

    In essence, the USSC uses these opinions to give the CAFC some ideas about how to proceed. Who knows, maybe the CAFC can use those ideas profitably.

    What irks me is that this use of the tremendous public resources expended on the USSC represents a wasted opportunity, and we got very little value from the USSC for our money. What the CAFC will see will be the reversal of one of their decisions, with some suggestions that they can use as they wish.

  119. Is it? I’ve personally seen rejections from the PTO saying “an amplifier” and “a transceiver” were not particular machines.

    And under Benson, a reentrant shift register was not a particular machine.

    A method of alerting a person comprising administering a time-varying electric signal to a loudspeaker; monitoring the volume and quality of the sound emitted to ensure the person is alerted.

    It is a natural law that the coils will vibrate the core which will vibrate the cone. Monitoring the volume and quality will not transform anything.

    All the components are well known in the art.

    Fails 101.

  120. Still waiting for anything interesting or useful from Mr. Sachs…

    Robert, you’re stalled at the No $hit $herlock phase. You have made some basic observations and used them as the basis for some hyperbole. Big deal, that’s the province of adolescents.

    This was a very disappointing post.

  121. I think the biggest weakness of Prometheus is the public policy argument that they attempt to use. Again, I have said it many times and received no other uses other than exactly what the invention is in machine form.

    The public policy for abstract idea is that there are other applications that cannot be developed if given a patent. See Haliburton. There are no other applications here.

    I am not sure why others are not getting this. But, even in Benson there are no other applicaions. There is the invention in Benson without another application. Which means that it was not a law of nature or abstract idea and that it was an application of an information processing method.

    This is weak point of the SCOTUS argument. Lemless destroyed us by providing the justification in this paper.

    I’d put money on that the fact that the information part of the DNA is going to be held to be a law of nature and the claims are going to be dissected piecemeal.

    The paid interactive advertisment MM will be screaming his little furry toes off.

  122. Knee-jerk reaction to the espoused test of the patentability of business methods: “If you can sell it, it’s patent-eligible”.

    I can sell a loudspeaker but I’m not sure I can in the same way “sell” a business method. I can keep it a secret, or I can license rights under a patent that I take to issue on my new, useful, enabled and non-obvious business method. But if licensing is the sort of selling you mean, you strike me there as pulling yourself up by your own 101 bootstraps.

    But coreect me if I’m wrong, please.

  123. >>it is my view that a method used in a business is not an >>abstract idea. If you can sell it, it’s patent-eligible

    You need flesh out “abstract idea.” Abstract idea seems to be used in Prometheus differently than it was in Haliburton and as described in Bilski dissent by Newman.

  124. a loudspeaker is a specific machine. nobody is patenting the sounds emitted by the loudspeaker.

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