Punishing Prometheus: Part IV – Machine or Transformation, We Hardly Knew Thee…

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

It seems like only yesterday the Court told us that the “machine or transformation” test was “a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101.” The Court’s reasoning suggested that while passing MoT was not necessary, it was still a sufficient condition for patent eligibility, and if nothing else indicated that the invention was not an abstract idea, law of nature, or natural phenomena.

Now, less than two years later, the Court diminishes the test further: “we have neither said nor implied that the [machine-or-transformation] test trumps the ‘law of nature’ exclusion.” What this means in practice is that even if a claim satisfies the MoT test, it could still be deemed unpatentable subject matter, especially by a fact which follows this Court’s method of a) stripping claims down to ”instruction manual” glosses, and b) finding the presence of “natural relations” to be dispositive evidence of a “natural law” in the claim.

In short, before Prometheus, you could assert that your claim was patentable subject matter because it satisfied MoT.  Now MoT does you little if any good—it’s gone from a sufficient condition to a mildly interesting one.

Standing Up for the Patent Bar

For some reason the Court seems to delight in denigrating the role of patent counsel in drafting claims, treating patent attorneys as either mere scriveners or crafty manipulators of words and phrases, clauses and conjunctions. “Those cases warn us against interpreting patent statutes in ways that make patent eligibility depend simply on the draftsman’s art.”  Indeed, in calling patent attorneys draftmen, apparently the Court believes that all we do is make fancy pictures.   Name me another legal discipline in which there is a special bar exam, not to mention to a requirement of an engineering or science degree.  What is it about patent law that makes the Court think we’re not lawyers

Second, I ask you: what’s wrong with making patent eligibility depend on our skill?  The patent is a contract, a quid quo pro:  disclose the invention and in exchange obtain the exclusive right.  The patent act requires patents to recite claims that define the invention, the USPTO examines the claims, and infringement is based on the claims. The validity of every other legal document depends on the “draftsman’s art,” upon the skill of the lawyer—just ask any licensing attorney, securities lawyer, or trusts and estate attorney.  Why are patent attorneys somehow not given the same level of recognition by the Court, that what we do is a legal activity, that claims are first and foremost legal definitions? That we are charged not just with describing the implementation of an invention to meet the legal test of an enabling disclosure—but with defining by way of a claim the “metes and bounds” of the invention.  We are trusted with carefully carving out a space for the broadest yet most precise statement of the invention, surrounded on all sides by the prior art, using nothing more than a single sentence.  Where other legal writers suffer no consequence for employing laundry lists of verbs, nouns, adjectives—to throw in the kitchen sink of do not fold, spindle, mutilate, tear, shred, distort, etc.—we are compelled by case law to consider every word as critical.  A misplaced comma, the use of “the” instead of “a,” “at least one” instead of “each,” can spell the difference between a patent worth millions and patent worth less than wallpaper.  The California Civil Code includes a section of codified Maxims of Jurisprudence; my favorite is “Superfluidity does not vitiate.”  True for every attorney but patent attorneys.  Show me another area of legal drafting that is as highly constrained in both form and substance as patent claim writing.

The Court also seems to think that inventors arrive at the patent attorney’s door step with their inventions fully formed, fully understood, and fully explained and explainable. In some cases, in some fields, that may be true—say for those funny hats with fans, beer cans, and scrolling LEDs. But for the majority of technologies, the patent attorney is an active and necessary participant in the creation of the patent and its value. Many inventors simply do not know what they have invented, they lack the framework for understanding their inventions, first in the context of the prior art, and second in the context of how the USPTO and the courts analyze inventions under the law.  Senior patent attorneys often have significantly more exposure and breadth of experience in their particularly technology areas than the inventors that they advise. They combine their understanding of the patent law, the technology, and the business goals of the inventor to create something that did not previously exist: an intellectual property right. This is no mere scrivener’s recording, from the inventor’s lips to the patent examiner’s ear to the court’s gavel.  This is legal counseling and crafting at its best. 

263 thoughts on “Punishing Prometheus: Part IV – Machine or Transformation, We Hardly Knew Thee…

  1. the claim is really a product by process

    Only if it actually is a product by process.

    The one really has nothing to do with the discussion here.

  2. Continuing:

    “This may be illustrated by several inventions or discoveries,
    for which patents have been granted, and which have
    been the subjects of litigation. One of the most striking
    of these cases is that already mentioned, of the application
    of a hot-air blast to the production of a particular effect in
    the manufacture of iron. It is very easy to say, in general
    terms, that no man can appropriate to himself the use of
    caloric, which is a substance, or element, or force in nature,
    bountifully supplied, as the common property of mankind.
    But if any man has discovered that the use of caloric in a
    particular manner, never before observed, will, asa univer-.
    sal fact, produce a particular effect of a new character upon
    matter, what reason can exist why he should not appropriate
    to himself the production of that effect by the use of that particular agent? His appropriation, in such a
    case, would embrace strictly what he has invented. It
    may be more or less meritorious; it may have been more
    or less difficult or easy of discovery; it is still his invention,
    and anyone else who does the same thing after the
    inventor, however he may vary the particular means or
    apparatus, practises that invention which the inventor was
    the first to discover and announce to the world. If the
    patent law were to say, in this case, that the invention or
    discovery could not be appropriated by him who had made
    it, because caloric is the common property of all men, it
    would be obliged, in consistency, to say that a certain arrangement of wood and iron, constituting a new machine,
    could not be appropriated by the inventor, because cohesion,
    gravitation, and the laws of motion; which are all applied
    by the inventor to the accomplishing a certain effect,
    are the common property of every man. But the patent law
    does not come to such determinations. It proceeds upon
    the truth, that while the properties of matter, the forces or
    elements of nature are common property, any man who
    applies them to the production of a new and useful effect
    in matter may rightfully claim to have been the inventor
    of that application to the purpose of that effect. The effect
    itself is what is commonly regarded as the patentable
    subject; but as that particular effect must always be produced
    by the application of the same properties of matter,
    or the same forces or elements in nature, it is correct to
    say that the appropriation rightfully includes their application
    to the production of the effect, and that to this extent
    they may be appropriated.”

  3. I thought it might be useful to quote a relevant portion of Curtis, which I believe informed the thinking of the Court in Prometheus (and for that matter, Funk Bros. and Benson):

    Curtis, Preliminary Observatons, at xxviii

    “It is apparent, then, that the mere novel arrangement
    of matter, irrespective of the purpose and effect accomplished
    by such arrangement through the agency of natural
    forces or laws, or the properties of matter, is not the
    whole of invention; but that the purpose; effect, or result,
    and the application of the law, force, or property by menns
    of which it is produced, are embraced in the complex idea
    of invention, and give the subject of the invention its peculiar
    character or essence. And if this is true, it is easy,and
    as correct as it is easy, – to advance to the position
    that the discovery and application of a new force or law of
    nature,as a means of producing an effect or result in matter
    never before produced, may in some cases be the subject
    of a patentable invention. When it has been laid down that a “principle,” – meaning by this use of the term
    a law of nature, or a general property of matter, or rule of
    abstract science, – cannot be the subject of a patent, the
    doctrine, rightly understood, asserts only that a law, property,
    or rule cannot, in the abstract, be appropriated by
    any man; but if an inventor or discoverer for the first time
    produces an effect or result, practically, by the application
    of a law, he may so far appropriate that law, as to be entitled
    to say, that whoever applies the same law to produce
    the same effect or result, however the means, apparatus,
    forms, or arrangements of matter may be varied, practises
    or makes use of his invention, unless the variation of means,
    apparatus, method, fo·rm, or arrangement of matter introduces
    some new law, or creates some new characteristic,
    which produces or constitutes a substantially different result.
    For, in all such cases, the peculiarity of the invention
    consists in the effect produced by the application of the
    natural law, as an agent; and this effect is not changed by
    the use of different vehicles for the action of the agent,
    provided there is still the same agent operating substantially
    in the same way, to produce substantially the same
    effect or result.

  4. Slaps, thanks for your post.

    What you say sound OK, but only if it is actually true that one cannot claim an product of nature in an unmodified form.

    BTW, if I claim “purified” compound X, the claim is really a product by process. It is not a claim to the compound per se.

    What I am still struggling with is the notion that one cannot claim a discovered compound per se. Why is that I have to claim “isolated” or “purified” so that claimed compound is not to the composition per se, but to a product by process?

    Back to Bergstrom, the CCPA seemed to indicate that there was no prior art problem with claiming the compounds at issue in that case without any limitation to a purification process: the CCPA said that any rejection had to be based in 102, not in some 101 product of nature exclusion. That means, to me, that the claim compound would have to be publicly known, described in a printed publication, etc., etc.,

    Malcolm suggested the now repealed 102(f) as a basis for rejection. If that was the only basis for excluding a claim to the compound per se that may exist in nature, is there any basis for the exclusion remaining?

  5. IBP, reading between the lines, it just may be that Sachs clients were heavily invested in patents that are adversely impacted by Prometheus. These pieces would then not be an academic issue for him, as they are for some, if not most of us. (My own practice is very remote from medicine, chemistry or the like.)

    If this is true, we ought to cut Sachs a bit of slack. But it also illustrates one of the reasons why lawyers should never represent themselves.

  6. Ned,

    Criminy, how many different ways do you need to be abused on such a simple concept?

    A change is required to impart patent eligibility on an item of nature. That change must be substantial enough to effect a change IN KIND .

    If your little half-@ssed question on “cultured” is such a change as to effect “kind” and meet the patent requirement of “new”, then it meets the requirement NOT to be something that belongs to all men.

  7. anon, it would be nice if everyone were required to have a consistent nickname and the forum a filter for posters or readers to ignore posters of one’s choice.

    Now, anon, you may not like the views of Malcolm, but even so, I would suspect that you would not filter him out.

    But I, in contrast would really like to filter out those who just want to attack the likes of Malcolm, me, or 6.

    As Malcolm often says, don’t feed the troll. It is a warning I often ignore to my regret.

  8. Decent explanation.  But the claims are not limited to the use, or to the method of obtaining the pure product, but to the pure product itself which are the legs of diatoms.

    Now, please help me understand why the legs of diatoms not products of nature?

  9. The claim was the chemical composition of the legs of the diatoms. It was not limited to isolated legs. It was to the chemical composition itself.

    Now, what is this “product of nature” exclusion if one is allowed to claim that composition and not some structural variant?

  10. My poor boy, no wonder why you are having such a difficult time of this. “Use”

    “Use” as in you get to have a method claim to your discovered use, but to the item of nature, to the warehouse that belongs to all men, you do not get to have a patent that existed before you found it.

    Much like Prometheus requires more than just “apply it”, so too one must do more than just “find it”.

  11. I’m pretty sure that real estate agents don’t draft contracts. They have form agreements that they use that were drafted by attorneys. If this is how you draft and prosecute patents, you should double check your malpractice insurance and probably find stop.

  12. Mountains, you obviously are confusing a discussion of Marine Polymer with Bergstrom.  

    Bergstrom was a case decided in 1970.  Marine Polymer, just this year.  The CCPA opined that purified compositions did not exist in nature (at least according to the record.)  In Marine Polymer, it was admitted that the claimed composition did exist in nature.

    And,  even so, no one raised or even suggested that the claims were in any way invalid because the claim composition was a product of nature.

  13. MM, but you are assuming that one cannot claim your own discovery because it is somehow prior art to you.    

    In contrast, I think the patent statute specifically allows one to claim discovered compositions of matter.  How can the discovery itself be prior art to one's discovery?  That makes no sense.  In fact, that whole issue was addressed in Pennock.  One's discovery is not prior art to oneself.

    Now, if one completely writes out of the statute "discovery" and limits patents on compositions to man-made variations, then I might agree with you.  But there does not appear to be anything in the term discovery that requires that the inventor actually make anything to obtain a patent.  He must, instead, discover or know of a practical use for the composition.

    Note, for the record, that 102(f) has been repealed.

  14. Did not exist”

    “In the sea.. exposed to the same contaminants

    inventors developed [NOT IN NATURE] a carefully controlled”

  15. given the admission that the purified compound was found in nature

    OBVIOUSLY that admission was not accepted by the court.

  16. The inventors developed a carefully controlled method of culturing diatoms and isolating p-GlcNAc fibers from them that reproducibly yielded, for the first time, biocompatible p-GlcNAc – a polymer composition so reproducibly pure that it could
    be used for biomedical purposes. When cultured under the carefully controlled conditions developed by the inventors, the fibers made by the diatoms are composed of pure p-GlcNAc -their purity and uniformity making them an excellent source of the p-GlcNAc polymer incomparable to material sourced from the ocean.

    The term biocompatible is key in the claims of the ’245 patent, distinguishing biocompatible p-GlcNAc from chitin and chitosan compositions of the prior art. While chitin and chitosan were known, the purified p-GlcNAc polymers, i.e., the claimed biocompatible p-GlcNAc, was, at the time of filing of the patent application in 1993, a brand new composition.

    Okay. So why the hxll are you hung up on this case again?

  17. Anon, the court in Marine Polymer v. Hemcon was concerned only with biocompatible.  From the reexamination, it was made clear that the chemical formula, let's call it X, being claimed was identical with the prior art save the term biocompatible.  The applicant admitted that the legs of the diatoms were biocompatible X.  What more does one need but see that the claim itself was to a product of nature?

     

  18. Ned,

    You already supplied the quote: “Those compounds, as far as the record establishes, do not exist in nature in pure form”

  19. Ned: But in general, if I discover a compound from a plant or animal that has benefit X , isolate or purify it, and also determine its chemical composition, what legal doctrine prevents me from simply claiming its chemical composition?

    Well, 102(f) would prevent you from claiming the composition in a way that encompassed the naturally occuring product.

    Duh?

  20. Mountains, given the admission that the purified compound was found in nature, namely the legs of the diatoms, I am surprised the court would even consider a finding that they were not found in nature.  See the post to Malcolm from the reexamination.

  21. Malcolm, this from the amendment filed in the reexam.  The diatoms are not treated as prior art.

    "[A]lthough extremely desirable, true, purified preparations of chitin and chitosan,
    whose properties are highly reproducible" did not exist. See '245 patent, col. 4, fl. 3-6. That was the problem the inventors of the '245 patent addressed.

    The solution arrived at by the inventors emerged from their experimentation with diatoms -microalgal organisms which contribute to the foam of the sea and diatomaceous earth. The diatom cell body is encased in a silicon glass shell and has fibers composed ofp-GlcNAc attached to the casing. In the sea, however, diatoms are exposed to the same contaminants that plagued the shellfish sources of chitin. The inventors developed a carefully controlled method of culturing diatoms and isolating p-GlcNAc fibers from them that reproducibly yielded, for the first time, biocompatible p-GlcNAc – a polymer composition so reproducibly pure that it could
    be used for biomedical purposes. When cultured under the carefully controlled conditions developed by the inventors, the fibers made by the diatoms are composed of pure p-GlcNAc -their purity and uniformity making them an excellent source of the p-GlcNAc polymer incomparable to material sourced from the ocean.

    The term biocompatible is key in the claims of the '245 patent, distinguishing biocompatible p-GlcNAc from chitin and chitosan compositions of the prior art. While chitin and chitosan were known, the purified p-GlcNAc polymers, i.e., the claimed biocompatible p-GlcNAc, was, at the time of filing of the patent application in 1993, a brand new composition. Thus, the Patent Owner is entitled not only to a patent on the process for making the composition, but also to a patent on the brand new composition itself. Indeed, the claims of the '245 patent cover biocompatible p-GlcNAc as a composition of matter regardless of source. See Invitrogen Corp.
    v. Clonetech Labs., Inc., 429 F.3d 1052, 1071 (Fed. Cir. 2005) (composition claims are enabled if the description enables at least one mode of making and using the invention); see also Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,1335 (Fed. Cir. 2003) ("the law makes clear that the specification need teach only one mode of making and using a claimed composition.")."

  22. “So in those cases, I think the patent attorney arguably is the true inventor of the meaningless claims.”

    I see that all the time.

  23. Mountains, really?  I don't recall that at all.  You ARE talking about the same case as I am, Marine Polymer v. Hemcon?

    I am now checking the court's claim construction just to make sure.

  24. Yawn.

    No one objected because the court declared that the purified item was NOT found in nature.

  25. Malcolm, claim construction was a major issue in the 5-5 split in Marine Polymer v. Hemcon.  The focus was solely on "biocompatible."

    But in general, if I discover a compound from a plant or animal that has benefit X , isolate or purify it, and also determine its chemical composition, what legal doctrine prevents me from simply claiming its chemical composition?

    I think that is what the inventors did here, and, it appears, that absolutely no one objected at any time.  I think this result is commanded by Berstrom to the extent the PTO must rely on 102 evidence beyond an admission that the compound was found in nature.

  26. I think I understand what you’re trying to say, but some of this phrasing really bothers me: “Many inventors simply do not know what they have invented … [and] lack the framework for understanding their invention”.

    Could an inventor who doesn’t know what he has invented and doesn’t understand his invention properly sign an inventor declaration?

  27. I’ve already spent it. It’s going towards a patent application claiming a process for optimizing the efficacy of a laxative comprising administering a poop-inducing laxative, then measuring the amount of the induced poop, wherein lots of poop indicates a need to not take more laxative, and not so much poop indicates a need to take more. I plan to sue everyone.

  28. By that logic, real estate agents are lawyers. They advise clients of “legal rights and obligations,” they draft contracts and agreements, they are regulated by the state, and they have to take a special exam… (heck even police officers practice law when they advise those they arrest of their rights).

    Yet I somehow think Mr. Sachs would take offense if I equated patent agents with real estate agents! Seems to me that patent agents are more like real estate agents (or draftmen) than they are like lawyers.

  29. Of course the patentee isolated the compound from the rest of the animal. But he did not claim the compound so processed. He claimed the compound per se.

    Assuming these are the facts, then the claim appears to have been inartfully drafted. But how was the claim construed, Ned? Wouldn’t your personal preference for claim construction necessitate a construction that did not cover diatom legs?

  30. Ned,

    Pay attention to what the court said. It is obvious that the court did not say the same thing as you say the applicant said. I think this is where you are confusing yourself.

  31. Jeff–

    “A professional art”?

    Really? What are the standards, who sets them and how, and how are those standards measured and maintained?

  32. anon, perhaps.  But in Hemcon, "pure" meant lack of pollutants such a pollutant-free compound was found in the legs of diatoms.  That is what the patentee claimed when he claim biocomatible.  He did not claim "isolated, biocompatible" compounds.  He claimed biocompatible, the exact form found in nature from the record.   
     
    Of course the patentee isolated the compound from the rest of the animal.  But he did not claim the compound so processed.  He claimed the compound per se.
     
     

  33. Ned,

    He does. He also uses ad hominems with you. Quite often.

    Why you fail to see this is a mystery, but frankly, one I am not too interested in.

  34. Ned,

    Exactly what it says: The record shows that the compounds are not things of nature. Making them pure takes the hand of man.

  35. sockie: Denying such mismatch is what needs to be explained

    There’s that Debbie Dilbert 8th grade syntax again.

    Man, this blog as the dumbest trolls.

  36. Anon, fortunately there are enough posters here who do engage in substantive discussions without using ad hominems.

    Regarding Malcolm, why do you think he doesn't play games with me?

  37. Let me repeat for the “sockie”-MM:

    I too am intersted in any analysis of substance from the Hans Blix/MM/Malcolm Mooney caricature.

    I just won’t be holding my breadth waiting for it.

  38. then go ahead and write a coherent comment explaining exactly why that is the case

    MM, under which rock have you been hiding?

    There are plenty of comments (and one hilarious, if not slightly offtaaste video) posted on Patently-O that explains the fact that Prometheus cannot square with the law before.

    Denying such mismatch is what needs to be explained.

  39. Malcolm, perhaps I do misunderstand something. This is not my field. I urge you to look up the prosecution history of the re-examination at the patent office and take a look at the response of the office action filed by the patent owner. They give a good summary of the background of the invention, how the prior art compound was unsatisfactory because it was filled with pollutants. The prior art compound, they said, was harvested from crustaceans in general. The discovery was that the legs of diatoms contained pure forms of the compound. The claims of the patent at issue were directed at this pure form of the compound.   The only claim element distinguishing over the prior art that I know of was the word biocompatible. Biocompatible was defined in the specification as having a low reactivity on four defined tests, and the claimed compound scored zero on the enumerated tests thereby showing a high degree of purity.

    But what becomes apparent from the discussion in the re-examination is that no one had ever considered the diatoms to be prior art.

  40. Ned,

    Your confusion begets more confusion (for you).

    103 was not on the table in that decision because the parties had not put it on the table.

    There is no admitted “purification” from nature – you are very, very confused on this point, hence the CCPA “assumption” that such was not in nature. There is no way to get from this to your wah (wild _ss hair) idea that the court was leaving opentht epossibility of the purified compound existing in nature. That is complete and total unfounded speculation, made up out of whole clothe BS.

    Your reading of Marine Polymer is likewise distressed.

    Please stay real if you wish to be relevant.

  41. Sorry Ned, not seeing your concern.

    Perhaps I have been blinded by your (and your side of the GD War’s) own ad hominems.

    The fact of the matter is that ad hominems are present and that there is nothing you can do about it, except address the actual points (and point up to the scoreboard). Malcolm, especially, is susceptible to the “scoreboard” move, as his posts are exceptionally vapid and vacuous.

  42. Jack, just one more point I think it's quite important. The CCPA in Bergstrom noted that the issue of obviousness under section 103 was not on the table. This is an important consideration because it magnifies their discussion that there was no separate section 101 novelty requirement imposed by the law of nature doctrine. Any citation to prior art had to be under section 102. They simply could not take an admission by the inventor himself and use that against him.

    So what apparently happened after Bergstrom was at the patent office began to allow claims to purified compositions of matter even when the applicant may have admitted that the compounds were purified from nature.  Without any separate references other than the admission of the applicant, the patent office had no prior art basis for rejecting the claims under section 103.

    Also note one more time that CCPA said that they were assuming that the purified compounds were not naturally occurring, leaving open the possibility that some naturally occurring purified compound could exist in nature.

    Both seems there prophecy was correct, because the purified compound claimed in Marine Polymer v. Hemcon was found in nature in the legs of diatoms.

  43. anon, well at least you understand why I refuse to discuss anything with sock puppets.  It makes no difference at all if they make substantive points.  The problem is that they combine them with ad hominems…. 
     

     

  44. You do realize that what is being asked for is YOUR explanation — not the Court’s.

    Actually, axxhole, you’re asking for Hans to explain a strawman that you erected, i.e., “deal with the fact that Prometheus cannot square with the law before.”

    If you think Prometheus “cannot square with the law before,” then go ahead and write a coherent comment explaining exactly why that is the case. Try to remember, too, that the Supreme Court is not bound to its previous holdings if it becomes clear that those holdings were based on erroneous facts or failed to take into account changed circumstances (e.g., applicants trying to claim methods of thinking about “new” facts by including some old conventional prior step).

    If you can’t handles a discussion at that level, sockie, then go back to Gene Quinn’s playground and pound sand with the Guttag brothers.

  45. No. That claim is not patentable. However, it is not patentable because it is not NOVEL. Not because it is not a method.

    Drinking a cup of coffee and thinking a novel, non-obvious, useful, clearly described thought has been done before. Not by YOU perhaps, but it has been done before.

  46. I think you meant “superfluity does not vitiate.”

    I agree that crafting *precise* language to set forth a claim of right is what any lawyer does, that patent agents and attorneys are held to an especially high standard in that regard when drafting claims, and that claim drafting should therefore be respected as a professional art.

  47. Any real filter should focus on content and eliminate the cleearly paid-for views

    Hey Hans, did you get your check on Friday?

  48. sockie: I keep seeing you say Prometheus was appropriately reasoned, but I don’t see anything backing it up.

    Man, this blog has the dxmbest trolls.

  49. I don’t think anyone thought the diatoms were prior art.

    Ummm… horseshxt.

    Something is missing from your understanding of the facts, Ned.

  50. It’s a new day, with a new outlook…

    …and I stand by what I said last night.

    What an incredibly unfortunate post by Sachs.

    Even though Breyer’s steaming pile of an opinion doesn’t deserve the time of day, IT DID NOT SAY that the patent-eligibility of the s-m disclosed in a claim should not depend to some extent on the skill of the drafter–it said that it should not depend EXCLUSIVELY on the skill of the drafter.

    And the patent document is NOT a contract, it is simply a disclosure of s-m for which the applicant seeks an official grant of patent rights from the state. It MAY form PART of a broader social contract, but is in no way an entire contract, or any contract at all, for obvious reasons.

    A grant of patent rights from the state is SOME evidence of eligible s-m, but is of course not dispositive of the issue. A patent attorney or agent has a duty to the client to NOT submit that which they know will be rejected–and, to inform the client as to his or her estimation of the likelihood of rejection of particular claims that ARE submitted (Canons 10.61, 10.76, and possibly 10.110); whether that duty applies to all claims, or is triggered at some point along the continuum of likelihood of rejection, is really the only issue, and is a deeply factual one having nothing to do with the immediate issue under discussion.

    So the attorney or agent submits claims disclosing s-m that they believe to some degree of likelihood to be patent-eligible…….if, IF that degree was in practice anything less than zero or de minimis, courts and the PTO would be justified in according SOME degree of deference to the implied representation of eligible s-m.

    The problem is that, in practice, the degree of likelihood IS zero or de minimis. Patent attorneys and agents DO demonstrate, through their passing of the patent bar exam, that their belief would have some legal foundation, but there is no reason to suspect that it would have any FACTUAL foundation.

    An attorney or agent is under no duty to be an expert in what constitutes patent-eligible s-m in any particular field of endeavor–heck, there is not even any duty to perform a SEARCH! So in the first instance, deference would find no rational basis in fact.

    Deference is not made on the basis of arguments made in prosecution on issues of law, but the facts supporting those arguments can be admitted as evidence. TO THE EXTENT that said facts support the drafting choices evidenced in the claim, the drafting choices are vindicated–but NOT because they are supported by the opinion of the attorney or agent, but because they are supported by admitted facts.

    There is a world of difference between the two, and there is again no reason to suspect in the first instance that such facts are necessarily incorporated into the s-m disclosure. Again, there is not even a duty to search, and the duties mentioned above are mediated by the duty to zealously represent in Canon 10.83, and to thereby seek the broadest protection that the client approves and is willing to pay for.

    Because of this, there is no cost of failure. When was the last time an attorney or agent was sanctioned by the PTO for submitting a claim disclosing ineligible s-m? Never. When was the last time an attorney or agent was held liable by a client for damages resulting from the submission of a claim disclosing ineligible s-m? Never. (do not confuse this with the reciprocal non-submission of a claim disclosing likely eligible s-m). When there is no cost of failure, substantive expectations of the disclosure of eligible s-m are logically unjustifiable.

    Sachs, in order to be treated like an attorney, you have to act like an attorney. A job, an engraved name plate, and a nice pen set just won’t cut it. Not only do you misunderstand what the USSC said in the first place, your subsequent “analysis” doesn’t rise to anywhere near a legal level.

    Very disappointing, IMHO.

  51. homey ???

    You do realize that what is being asked for is YOUR explanation — not the Court’s.

  52. 9-0 homey. If you want to know what the opinion says, read it. It’s in English. And what does “Thumbs At The Ready” mean? Does it mean what I think it means?

  53. “I didn’t realize that SCOTUS’ job was to help anybody. I thought it’s constitutional mandate was to interpret the law.”

    Interpret the law = help people understand the law. It is the job of SCOTUS to provide guidance to the lower courts so that they can also properly interpret the law. I hope you are not an attorney because if you are, you should have never gotten past your first year of law school. What an f’n idi-ot.

  54. anon, (I like the pseudonym)

    No doubt there is an over-abundance of ad hominem. I take a slightly different view on it though. As long as the baseless and vacuous agendas of the vocal minority are mindlessly and repetitiously blasted on the comment sections (the 60%), ther will be the counterviews (the 30%).

    Any real filter should focus on content and eliminate the cleearly paid-for views that are so common.

    Of course, the option to not read the comments is within your control.

  55. I too am intersted in any analysis of substance from the Hans Blix/MM/Malcolm Mooney caricature.

    I just won’t be holding my breadth waiting for it.

  56. Ned,

    Your posts on this case make me laugh, but it is a sad laugh for you. You now reach for dicta when the holding is clear. On top of that, your reach still comes up short.

    A perfect example of your futility in the position you espouse.

  57. Ned,

    Your characterization of “engaging in every form of disengenuous argument conceivable” cannot be reached.

    Sure the ad hominem flowed freely (from both sides), but actual points of law and cases were discussed. You came up well short of defending a position, and lashing out with such false characterizations only harms you, leaving the other side not only correct in their points, but giving them as well the high(er) moral ground.

    I do enjoy our discussions (when you stick to the legal points and acknowledge those points properly made against your position – which sometimes is very much like pulling teeth from a crocodile), but you have a tendency to become unreasonable in your logic and entrenched in an indefensible position.

    Those things belonging to the storehouse of nature not being patent eligible is one such fortress you cannot overcome.

  58. “To an anti-patent, patent examiner, it sure does. ”

    Just to be clear, in the areas in which I work, I’m very “pro-patenting” of things that were actually invented, i.e. reduced to actual practice and which were plainly invented by the person doing the work. The ones that come in that are pie in the sky I’m somewhat less than enthused about. Imagine that.

  59. “And the value of a patent would drop to virtually nil because the claims would be so narrow. ”

    I know. But the question is … does creating “valuelol” in some way justify the shinanigans that go on? Nah. Not really. It’s just part of the corruption of our government where the avg citizen picks up the bill for this “value” when the costs of these patents in court or in licensing are masked in the market.

    But, to be sure, I personally am not so averse to this sort of a thing, because essentially we are supporting nothing more than the writing of *usually* technical documents, that, if they were written in better language would be insanely valueable. As is, we over pay for people (mostly lawyers, but some inventors) to pontificate on the useful arts in more cases than someone is actually inventing something.

    ” You don’t seem to understand that if our claims are overly narrow, our competitors can easily design around them (while effectively stealing our ideas). So what would the point of getting a patent be? We’d be better off holding everything as a trade secret.”

    No, I assure you, I know all about why the game is played how it is. The question is, is that a game that should have ever been allowed for the price people are wanting to make this kind of “disclosure”? And the answer is an obvious no.

    “It’s more like getting the inventor to realize what he has.”

    I’ve done it. I’m well aware. Again, the question is, why should this be allowed? Let the inventors invent. Jebus. It really is that simple. If attorneys wish to invent, let them invent on their own.

    “I just had an inventor go and add another two pages to an invention disclosure due to such a question.”

    Alright, and be honest, considering the questions you posed to him, could you have simply written that extra disclosure for him? And let’s be clear, I’m not talking about highly technical cases where there is legitimate “invention” that can only be done by the inventor or someone in the lab. So if you’re citing those kind of inventions then plainly we’re not even talking about the same things. I’m all for technical disclosures and the old school patent drafting does an excellent job in getting that out. The issue of course is that we aren’t just talking about technical disclosures. We’re talking about bs “inventions” that everybody just goes along with as being an invention.

    I don’t have all day, to end us off, I’ll note that JD once asked me in a thread about a case where it was argued (backed by pretty strong evidence/admission) that the attorney invented the entirety of the claimed invention rather than the ostensible “inventor”, his client, whether I would be satisfied if the attorney put his name down as an inventor. I told him, iirc, no, not really, but it would be a start, because if all attorneys started doing that, and everyone started seeing how much attorneys were “inventing” the whole system would get blown to f.

    The judge, btw, ruled in that case, if I recall correctly, that inventors as a whole were literally to stu pid to invent, so even if the attorney did invent the invention entirely it was justified. It was too bad that case never went to the CAFC.

    Bottom line, we should be honest about what we’re paying for and pay accordingly. And we should recognize that while the old school patent questioning of inventors to get the whole invention out of them borders ever more so in our modern times on having the attorney invent for the client. Finally, we should be very aware that if the public knew the full extent of the tomchicanery going on they wouldn’t tolerate it at all.

  60. I concur with the thoughts provided by NT.

    Ned, how do you figure that NT has his left and rights mixed up?

    Clearly, a socialistic (communistic) view of property is traditionally thought of as “left,” while a pro-business leaning is traditionally thought of as “right.” In the extreme, at least on the business side, “right” does skew towards the multi-national conglomerates. While not a perfect description (as “right” also usually carries with it a “religious” overtone, the left vs. right portrayal is largely accurate.

    If, on the other hand, you are questioning your placement in the comment, then that is not a question of left and rights mixed up.

  61. As pointed out in Judge Mayer’s dissent in the Federal Circuit’s decision in Bilski, the first patent involves a transformation: “the sedentary cat becomes a fit feline.

  62. Malcolm, no one actually cares how many sock puppets you have or when you use them.

    Your MM gives you no more credibility than your apprentice Ned Hellers alleged use of his real name.

    Your trademark faulty logic, backwards reasoning, and out of the closet anti patent agenda exposes you time and time again, no matter what moniker you use.

  63. Sachs has finally gone off the rails and now rolled over in the ditch, wheels up

    Not nearly as fun to watch as Ned’s runaway truck through the mountain pass guardrail and fireball excursion.

  64. “Like using more than one device “proves” anything.”

    It’s goes beyond funny to kind of sad when you realize Malcolm actually thinks this is fooling anyone.

  65. Learn something from the Newbe’s.

    Where did those laurels go? You were just sitting on them a moment ago. Wait. I don’t want to know.

  66. Translation:

    Dennis, WAAAAAHHH, WAHHHHHHHHH.

    Hans, where’s the exposition? I keep seeing you say Prometheus was appropriately reasoned, but I don’t see anything backing it up.

    You act more and more like Malcolm. Should we be calling you Sockie-Hans?

  67. What kind of “interpetation” is it that does not help anybody understand what you just said?

    It’s very clear what the law is after Prometheus. It’s the same as it was before Prometheus.

    Still waiting for your actual exposition. The one where you actually deal with the fact that Prometheus cannot square with the law before.

    When will the circus be over?

  68. Ned,

    Your statement is errant and misleading. What they rejected was the application of the “in nature” label to the pure results. Clearly it was the pure results, the work of the hand of man, that distinguished. This does not support your position. It supports your antagonists.

    Are you doing that on purpose?

  69. Hans Blix, where are you?

    I am eagerly awaiting your exposition on the Prometheus case.

    You have all of Yale Harvard and Columbia law rooting for you to showcase this oh so easy to grasp patent law knowledge of yours.

    Don’t let them down.

  70. Ned, the lobbying was by the Bio Indiustry Association in a case at the UK Supreme Court on utility of a chunk of DNA protected by a claim belonging to an outfit called Human Genome Sciences.

    The High Court and the Court of Appeal thought the patent filing was premature, because the spec merely hypothesised about uses for the isolated DNA. The Supreme Court reversed. Not sure whether the lobbying is correctly characterized as “a great deal” or whether it was actually a makeweight and a comfort to the SC deciders. They were also minded to harmonise with mainland Europe, and so to concur with the just-issued EPO Board of Appeal decision on the same claim. I suspect that was the greater factor.

    Now let’s see what happens in Myriad.

  71. Unfortunately, I’ve occasionally seen a spec that describes a real invention from the inventor. Then the prosecutor, who apparently is out of his element and doesn’t actually understand what’s in the spec, claims something different that makes no sense and that wasn’t described. So in those cases, I think the patent attorney arguably is the true inventor of the meaningless claims.

    On a side note, I love when the claims directly read onto what was described in the background section. I’m guessing (hopefully) that these are the minority of patents and applications out there though.

  72. Rusty –

    The Merriam-Webster definition of “lawyer” is “one whose profession is to conduct lawsuits for clients or to advise as to legal rights and obligations in other matters.” Patent agents indeed satisfy the second portion of that definition. For state law reasons, you cannot call or hold yourself out to be a “lawyer” but you do indeed practice law, although only in a limited field. In fact, the Supreme Court has recognized that patent agents practice law. See Sperry v. Florida, 373 U.S. 379 (1963).

    I highly recommend that patent agents actually read Sperry v. Florida (Google it). I’ve heard too often patent agents and attorneys make assertions that patent prosecution isn’t the practice of law. Yes, indeed it is. Typically, to practice law in a state, one must be registered as a “lawyer” before the Supreme Court of the state. The practice of law before the USPTO is an exception, however, under federal law. The States cannot prohibit such practice of law by patent agents because of the Supremacy Clause of the Constitution (which is what Florida attempted to do and lost before the Supreme Court on).

    So perhaps Mr. Sachs was a little lose on his language but those prosecuting patents are practicing law and not merely draftsmen.

  73. Translation: Dennis, please shut down the comments section because I want to live in a bubble and I don’t want anyone saying bubble-bursting things like eBay, KSR, Bilski and Prometheus were appropriately reasoned and decided.

  74. Dear Dennis:

    The posts you provide every day are great; thank you for doing it. However the regular commenters seem to be more invested in their ad hominem attacks on one other than on illuminating or discussing the post. Foolishly many days I scroll down looking for good stuff and find more nastiness and, it seems, less and less on point discussion. What value do comments add these days? I recognize that you don’t want to play nanny but it’s just an ugly display of the low end of human nature anymore. Maybe you should shut down the comment section for a while?

  75. Sachs has finally gone off the rails and now rolled over in the ditch, wheels up.

    People here know I’m a mouthpiece, but I can’t even bring myself to respond to this post.

    All I can say is that I would regret having my name attached to such a series of posts.

    Sachs, with your juvenile style of expression quite possibly belying a juvenile mentality, you are now the poster child for why patent attorneys get no respect.

    Your posts evoke images of suspenders, hair parted at the side, model trains, getting terrorized at school by the jocks, an inability to handle alcohol, sensible shoes, electronics club, and floods.

    For you, the title “patent attorney” probably refers more to a personality than to a profession. You sound like you were a patent attorney long before you were admitted to the bar. Your image is that of an Erkel, or of a Les Nessman.

    To be sure, there are many of you out there, and you’re still getting beaten up–only now it is by litigators and judges.

    It’s a personality you’re likely trapped within, that you had before, during, and after law school. You should be used to the lack of respect by now.

  76. Ned: The only claim element that distinguished the claim from the prior art compound was “biocompatible.” However, the compound was biocompatible because it was found in legs of diatoms.

    If your analysis is taken at face value, the claim is anticipated, no questions asked.

    Was anticipation not addressed by the Federal Circuit?

  77. “SCOTUS didn’t like Bilski and came up with meaningless decision that hasn’t helped anybody, in the least, determine whether a claim is directed to an abstract idea or not.”

    I didn’t realize that SCOTUS’ job was to help anybody. I thought it’s constitutional mandate was to interpret the law. It’s very clear what the law is after Prometheus. It’s the same as it was before Prometheus. A law of nature (or whatever term or phrase you want to use) is not itself patent-eligible. If your process takes advantage of a law of nature, great. But it better consist of more than just generically applying the law of nature in such a way that the patent effectively monopolizes it.

    Folks, this is easy stuff. It does not harm innovation, it helps it. If you don’t get it, you just don’t want to get it. As I said before, yes, a black man is President, and yes, Prometheus’ patents are invalid. Move along.

  78. Jack, the CCPA specifically rejected the theory that the naturally occuring compounds were prior art because they were in nature.
     
    Further, look at the "as far as the record establishes" statement.  In Marine Polymer, the PO stated that the purified form was found in diatoms.  The issue then is squarely presented.  The claimed compound was found in nature.  Its use was known from the prior art unpurified compound.
     
     
    From Bergstron: "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."

  79. MM, here is the claim discussed in the en banc case:
     
    A biocompatible poly-β-1→4-N-acetylglucosamine comprising up to about 150,000 N-acetylglucosamine monosaccharides covalently at-
    tached in a β-1→4 conformation and having a mo-lecular weight of up to about 30 million daltons in which at least one N-acetylglucosamine monosac-charide has been deacetylated.
     
    The only claim element that distinguished the claim from the prior art compound was "biocompatible."  However, the compound was biocompatible because it was found in legs of diatoms.  See, e.g., the response to the OA in the reexamination proceedings that discuss the discovery that the legs of biatom contained the uncontaiminated, biocompatible compound.
     
    /media/docs/2012/03/10-1548.pdf

     

  80. Very nicely said.

    Although somewhat to your point and somewhat to the point made by others, I think the problem with SCOTUS is that they don’t understand claims and what it takes to draft good claims.

    Claims don’t enable the invention. The claims are there to help someone practice the invention. As such, there may be things that are part of the invention but not part of the claims. The claims are there to draw a line (i.e., distinguish) between the invention and everything else (i.e., the prior art).

    Also, every word is important (or should be treated as being important). As such, if the addition of a word or two somehow transforms an abstract idea into a machine or method, then that is because those additional words have meaning and should not be ignored.

    The problem with SCOTUS is that they first decide not to like an invention and then determine (after deciding that the invention isn’t patentable) how to invalidate it. What we get are the myriad of decisions that strain logic. One need only look at the case law regarding claim construction to see this in action. Whether one is impermissibly importing limitations from the specification into the claim or properly interpreting the claim language in view of the specification likely depends upon whether the judge likes your claim or not.

    SCOTUS didn’t like Bilski and came up with meaningless decision that hasn’t helped anybody, in the least, determine whether a claim is directed to an abstract idea or not. MOT? Well, its an important clue, except when it is not.

    I think the problem SCOTUS has with setting form a blight line is that they fear us ‘scriveners’ will always be able to draft claims that fall on the correct side of the line — even on inventions that SCOTUS doesn’t like. As such, they want to keep things ambiguous enough to give them flexibility to do what they will with the claims.

    The Federal Circuit, on the other hand, likes bright lines (e.g., the MOT test and the TSM test) because they are the ones that are forced to decide most cases and it makes it a lot easier for them to develop some jurisprudence on some straight forward tests and move on.

  81. Jack: Why would the fact that the compound was purified raise an issue that the claims were unpatentable because of that fact?

    No kidding. Remember when the same sockpuppets and ignorami who are now complaining that “Prometheus renders everything ineligible” were endlessly reciting the bizness about how inventions “shall not be negatived by the manner in which they were made” (in response to KSR)? Like that was the most important section of of the patent act ever for a while. Now it’s completely forgotten by sockie and his fellow patent txxbaggin luvvahs. How convenient. How predictable.

    Have Gene and Kevin recovered their marbles yet or are they still soiling themselves?

  82. Am I missing something?

    Why would the fact that the compound was purified raise an issue that the claims were unpatentable because of that fact?

    Purification is one of the recognized “hands of man” techniques that can create something “new” and different from that which is in nature.

    If anything, it is because of the purification (as long as it creates a newness in kind) that there was no issue.

    Ned, your question is discombobulated. The only reason to assume an answer is yes is to not assume and to show that there is no difference in kind with the purification.

    You are trying too hard to be too clever, while you end up just being reckless.

    Your consideration of In re Bergstrom is likewise off. You are ignoring the holding. The case does not say what you imply.

    Did you not read my post on the Part III thread at 7:26 PM?

  83. Where’s Newbe to bring out some case law and chase MM away when you need him?

  84. In Marine Products v Hemcon, the inventors discovered the purified compound in the legs of diatoms, a creature of the sea. As far as I know, neither the patent office nor the defendant in that case raised an issue that the claims were unpatentable because of that fact.

    My question: given Prometheus, in view of Chakrabarty, are the claims to the purified compound invalid under the product of nature exclusion?

    No. This has been another edition of short, simple answers to easy questions.

    Why not post the claims in the case for all of us to see, Ned?

  85. Hans Blix is an old alias of Malcolm Mooney A.K.A. MM going back many years. He sometimes talks to his other alias using the Hans Blix name. NAL busted Mooney for using this name among others during debates in which she had Mooney running all over the blog.

    LOL. Where to begin? Let’s wager. Dennis can settle this one easily. If you’re right, I’ll never comment here again. If you’re wrong, you can never comment here again.

  86. Sachs: It seems like only yesterday the Court told us that the “machine or transformation” test was “a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101.” The Court’s reasoning suggested that while passing MoT was not necessary, it was still a sufficient condition for patent eligibility, and if nothing else indicated that the invention was not an abstract idea, law of nature, or natural phenomena.

    1. A method comprising

    drinking a cup of coffee and

    thinking [a novel, non-obvious, useful, clearly described thought].

    Did you really believe that such a claim was eligible, valid and enforceable before or after Bilski (but before Prometheus), Mr. Sachs?

    Simple, straightforward question. Yes or no.

    If you can manage to explain your answer, that would be nice but my expectations are far lower.

    (Note: drinking coffee constitutes a bona fide transformation of the coffee.)

  87. In Marine Products v Hemcon, the inventors discovered the purified compound in the legs of diatoms, a creature of the sea. As far as I know, neither the patent office nor the defendant in that case raised an issue that the claims were unpatentable because of that fact.

    My question: given Prometheus, in view of Chakrabarty, are the claims to the purified compound invalid under the product of nature exclusion?

    And, assuming the answer is yes, could the losing infringer successfully invoke a re-examination citing the numerous admissions that the claimed compound was a product of nature? (Consider In re Bergstrom.)

    PS, I have to make this post here because the Gene Patents thread is broken.

  88. Of course, the Prometheus decision extends beyond this case. Your posting asserted a broad reach. You may have a basis, but you declined to share it. Therefore, I called you on your “argument.”

  89. Thank you for enlightening me. I assumed that the diagnostic industry produced patentable subject matter. I stand corrected.

  90. The Supreme Court held that the law of nature is the correlation between therapeutic effectiveness and metabolite level in the blood.

    The “should science develop” line suggests a new “use your imagination” test. That will be very problematic in the future. That being said, the passage had nothing to do with identifying a law of nature. It related to the Supreme Court’s cursory treatment of the machine-or-transformation test.

  91. I am not familiar with this industry

    No shtt.

    Yet you feel comfortable enough to provide a laundry list of assumptions.

    Don’t you feel stxpid?

  92. First, No, it is a given that patentable material is present and the primary focus of the comment was on the value(lessness) of the patent route. Your direction is misguided.

    Second, my argument does not presume that Prometheus claims are patentable subject matter. The Promethues decision extends beyond that case. You ASSume that it does not. Bad assumption.

    Third, my argument does not presume any such thing. See comment two above.

    Fourth, I am not assuming that the effort would not have occured but-for. Where do you get these ideas?

    Lastly, you have no clue what goes on in this art field, as is plainly evident from your various assumptions. I suggest you go back to your original posting name of IANAE and deal with your faux pas directly.

  93. What is your basis that most diagnostic testing products will be affected by Prometheus ? I am not familiar with this industry, but I really hope that Prometheus’ claims aren’t representative. If Prometheus’ claims are not representative, then there is no reason to change policies?

    How exactly would trade secret protection have helped Prometheus in this case? How would you keep a range secret?

  94. First, you appear to be focusing on the “time, money and effort to get a patent on the subject.” Perhaps, you are talking about the effort to develop “patentable” material. Obtaining a patent should be less of a concern

    Second, your argument presumes that the Prometheus claims should be patentable subject matter. You are entitled to your opinion, but that is far from fact.

    Third, you are assuming that the Prometheus claims are in any way representative of patents in the diagnostic area. For example, a new test is still patentable. Prometheus established that interpreting the results of a test is not patentable.

    Fourth, you are assuming that the effort in developing the therapeutic range of the drug would not have occurred but-for Prometheus’ research. Because not all medical research is privately founded, this is far from a safe assumption. Moreover, I assume this “discovery” was the result of trial-and-error. As such, the research cost was likely compilation of data because people were already generating the necessary data (dosage, metabolite level, and symptoms). Prior to the “discovery,” doctors they were winging the proper therapeutic range.

  95. “If we had a patent system that actually encouraged you to claim only that which the inventor brings to the patent attorney our allowance rate would skyrocket due to much narrower claims.”

    And the value of a patent would drop to virtually nil because the claims would be so narrow. You don’t seem to understand that if our claims are overly narrow, our competitors can easily design around them (while effectively stealing our ideas). So what would the point of getting a patent be? We’d be better off holding everything as a trade secret.

    “Yes I’m familiar with the method of presenting the inventor with leading questions to lead him to a broader invention or more specific embodiments.”

    It’s more like getting the inventor to realize what he has.

    “Yeah, leading questions. They brought an invention to you, and then you led them through broadening and more specifically laying it down. In other words, the inventor themselves did very little. The only person really doing much is you. “Backseat inventing” if you will.”

    Inventor did very little? I just had an inventor go and add another two pages to an invention disclosure due to such a question. I could never have come up with the additional details this inventor did — I am not an expert with 20+ years of experience designing things in his field. He is. The ONLY thing I did was make him think through what he could do with his invention a little more thoroughly.

    “Yes of course not, according to the religion of the patent attorney. To the outside observer it sure as f does.”

    To an anti-patent, patent examiner, it sure does. To a reasonable person understanding a company wanting to protect its millions of dollars in R&D, no, it doesn’t. Make no mistake, I’m not talking about amazon 1-click patents. I’m talking about complex tech areas that even you would never argue aren’t patentable subject matter, inventions that typically take masters of phd level engineers to design.

    “And you guys manage to wonder why the USSC, a court unconcerned with your patent religion, denigrates what you do. It is amazing how you can be so blind to this.”

    The court wasn’t denigrating what we do. They were complimenting us, saying that they aren’t going to let clever drafting by wily patent attorneys acquire a patent on something that shouldn’t be (to their twisted line of thinking) patentable subject matter.

    And btw, if they WERE denigrating what I do, well, I can denigrate what they do.

    How to decide most SCOTUS cases:
    1. read facts
    2. see which result coincides with my political views
    3. completely ignore the lawl, as well as my own precedent, so as to render a decision in line with my political views.

    They’re political hacks, skilled at twisting precedent and fact patterns so as to pursue their agenda. They’re not real judges in many cases.

    Teeheehee.

  96. Prometheus style = Medical method claim.

    As we all know, applying the famous Ned Heller logic of the Bilski Claim = business method = categorically denied claim style, we know that all medical method claims are categorically denied.

  97. Ned,
    Can we at least keep your daily beatings constrained to one topic per thread?
    This thread is dedicated to the dispatch of your “all-but” MOT requirement going the way of the dinosaur.

  98. “Your assertion that patent attorneys are the actual inventors of most inventions is ludicrous. ”

    To be clear, I’m going a little overboard to accommodate what the OP was talking about. Obviously there are plenty of “real inventions” that, at the least, have most of the claims spring directly from the applicant’s mind unbidden by an attorney. However, from as many attorneys that we hear that inventors themselves are helpless little babies when it comes to describing what they invented one must presume that they’re broadening out “what was invented” to suit their desire to obtain broad coverage for the client. And this can be readily seen in the cases on anyone’s docket where the claims just so happen to start out absurdly broad.

    If we had a patent system that actually encouraged you to claim only that which the inventor brings to the patent attorney our allowance rate would skyrocket due to much narrower claims.

    But you are right, I’m going a little overboard and I understand why the system is how it is. Even so, don’t be surprised when people outside the system look on in disdain at what appears from the outside to be absolute horsesht tomgammery.

    “What a patent attorney DOES do, when we’re talking about real technology anyway, is sometimes ask the inventor questions he hasn’t asked himself.”

    Yes I’m familiar with the method of presenting the inventor with leading questions to lead him to a broader invention or more specific embodiments.

    “In reviewing invention disclosures with my company’s engineers, numerous times I’ve asked a simple question that made them go back and add to the invention disclosure”

    Yeah, leading questions. They brought an invention to you, and then you led them through broadening and more specifically laying it down. In other words, the inventor themselves did very little. The only person really doing much is you. “Backseat inventing” if you will.

    “That doesn’t make me an inventor.”

    Yes of course not, according to the religion of the patent attorney. To the outside observer it sure as f does.

    And you guys manage to wonder why the USSC, a court unconcerned with your patent religion, denigrates what you do. It is amazing how you can be so blind to this.

  99. Malcolm and I agree that you sock puppets are disingenuous or st*pid or both.

    How very sweet of you two. I can assure you, the feeling is more than mutual (after all, it is a GD War out here). But Ned – It’s the same swagger! Your inability to recognize this marks your posts as empty and self-serving.

    As far as lack of honesty, though, you are the prize winner in that category.

    Bar none.

  100. Obviously not. Your laurels are squished from your resting.

    But go ahead and defend the Prometheus decision. While you are at it, please square that decision with the actual precedents that Breyer wishes to make sure stay in place against any temptation to change.

    The hungry crowds await the bread of your wisdom (and not the circuses of your usual banter).

    Try (for the first time).

  101. Malcolm and I agree that you sock puppets are disingenuous or st*pid or both.  We have our disagreements with each other, but have always treated each other with respect.  I think the problem largest problem we or at least I have with you sock puppets is your basic lack of honesty.
     

     

  102. I understand that you Franklin Pierce alumni have a difficult time understanding how a bunch of grads from Yale, Harvard, and Columbia law would not be able to grasp patent law, but I think they do OK.

  103. you will not keep ad hominem out of your prose.

    You have no complaint of this against your “friend” Malcolm. You admire his swagger.

    Must not like being on the receiving end of it though, Huh Big Ned.

  104. Meaning you and your multiple personalities?

    OH Noes, it’s the great sockie comspiracy gambit (originated by the original puppet master Hans (Malcolm) BLix.

    Anyone else notice the similarites in Ned and Malcolm: accuse others of what you do and claim that sockpuppets are running amuck?

    Don’t ask Don’t tell anyone?

  105. Hans (MM) BLix and Ned need to get a room.

    Oh wait, they already have.

    Well guys, at least close the door.

  106. This was such a non-controversial decision. People up in arms about it just don’t understand basic patent law.

    Now that’s a sign of not understanding basic patent law.

  107. they’re attacking SCOTUS for being crazy, intellectually deficient, contemptuous, and [insert insult here].

    You forgot the most important reson of all. The decision is brain-dead and cannot square withthe very precedent it says it wants to uphold.

    Just a minor thing.

    Try Again.

  108. Meaning you and your multiple personalities?

    No. I mean your utter humiliation and watching you spin case law, be shown to be completely false in your beliefs (adenaline) and your very own cited cases used against you (take that to the bank), have you state case law being overthrown (in re bergstrom), then retreating to that very same caselaw, only to find that tha case defeats you too, having you ignore the real principal case, have you deny what was even discussed in that case, you being corrected and then claiming that the “not discussed” material was discussed, but “only dicta,” then watching you claim that the case held for something that was undecided, watching you cling in vain to your arch rival (Rich) view and unable to deal with the Prometheus taking even that view away from you.

    All of this on your lonesome.

    Have I missed any of the other beatdown paths? Probably. There were so many of them.

  109. Prior comment didn’t get posted so I’ll try again: this was precisely my first reaction when I read that part of the opinion. It was really the highest compliment the Court could have paid to patent prosecutors. If anything, the Court was denigrating the patent office, not the agent that wrote the claims. Sachs is just looking to pick a fight. We all know that claim drafting is a skill, but there still has to be an invention to claim.

  110. Nihilistic, man have you got your left and rights mixed up.

    Actually, I thing politics largely has nothing to do with this. Malcolm and I do not see eye to eye on a lot of political issues, but we do agree on many if not most patent issues. Now why is that?

    As for aligning me with big companies, hardly. I agree that once upon a time I was totally on their side. But as I have seen the other side in my representation, I now have a much more balanced view. I am now decidedly more pro-patentee than ever, but I am still against the common abuses of the patent system we see coming from very agressive representation by patent attorneys who are not inspired as Sack suggests to carefully craft claims, but who try to capture all future equivalents through fuzzy claims, who patent obvious variations by festooning claims with insubstiatial additions, and by terminating method claims at arbitrary points in order to avoid the law of divided infringement.

    BTW, Akamai ought to be an interesting case when it comes out.

  111. Especially now given the Freerider benefits of PUR against anyone later foolish enough to expend the time, money and effort to get a patent on the subject.

    No liability, free use of the market clearing power of the sap that does volunteer to make public.

  112. Night, is that they way you read Prometheus?

    I hadn’t thought about it, but you might be right. Please amplify your thoughts here. I am intrigued.

  113. Hans, I don't know if they do not understand it so much as they do understand it and are trying to bully the courts into compliance with their commercial needs.  Recall that Max said that a great deal of lobbying got the courts in England, I believe,  to recognize very broad claims to something, I don't recall which, because of the argument that commercial needs required it.  That seems to be a compelling argument on the surface, until one digs deeper to find the real causes of the problem:  the divided infringement problem regarding method claims in the case of theraputic medicine.
     
    Recall that software makers created Beauregard claims simply to bypass the onerous requirements of contributory infringement law.  The program on a disk was clearly a contributory infringement or an inducement.  But the software makers wanted it to be direct infringment to ease their proofs.
     
    The Premetheus styled claims were the medical industry's equivalent of Beuregard claims.  They are a tribute to attorney skill, which the Supreme Court recognized in Prometheus as being part of the problem here.
     

     

  114. Ned, they know all that. There’s no way for them to NOT know all that. It’s just that adding the stuff at the end creates Muniauction/Akamai problems. Mayo was unique in the sense that those prescribing the thiopurines and those doing the measuring of the metabolites were at least arguably under common control even though they were different individuals. But that is generally not going to happen in the real world (although I understand that a trend in medicine is for doctors to become employees of hospitals, which of course often have their own clinical lab). Since there is no way to get around the joint infringement problem, they’re attacking SCOTUS for being crazy, intellectually deficient, contemptuous, and [insert insult here]. It’s quite amusing. By the way, many of the biomarker correlation patents do not involve administering a drug. Often it’s just “high homocysteine = low Vitamin B” (that’s from LabCorp v. Metabolite).

    This was such a non-controversial decision. People up in arms about it just don’t understand basic patent law.

  115. Massive beatdown?  Meaning you and your multiple personalities?  Why I or anyone with any common sense even tries to hold discussions with you is a question.  Collectively, you engage in every form of disengenuous argument conceivable.  But, this just illustrates more of the same.
     
    You have no real intention of discussing anything as you will not keep ad hominem out of your prose.

  116. but realistically, all Prometheus taught us is

    Nice try to salvage your MoT Ned.

    FAIL.

    Re-read Prometheus again to see why (hint, transformation is simply trashed, not “rearranged” to a different element).

    Face it dude, your cards are all over the place, your house of cards ran smack into a tsunami. You will never find them all (not that you were playing with all of them to begin with).

  117. Ned,

    Your continuous ability to misinterpret law is astonishing.

    Pray tell what happens (under Prometheus) when the new transformation is the law of nature (think Benson)? What happens in claims where there are only old transformations? You cannot be seriously advocating that all such claims are now not allowed. Only “new” transformations is an extremely limited universe.

    Your example of Flook/Diehr fails as has been pointed out to you on your massive beatdown thread. The door opening was not a “end with any new tranformation to produce new result,” as the new result WAS the law of nature applied (repeatedly – thus the overthrow of Benson, according to a consistent reading of Prometheus).

    Le Roy is not the right case to go back to. Please do not pollute another thread and let’s keep your massive beatdown to a single thread.

    Try again (but at link to patentlyo.com ).

  118. Sachs, regarding the MOT,

    I too was somewhat surprised; but realistically, all Prometheus taught us is that old transformations do not count. A new transformation, caused by the law of nature or mental step, may well be all that is required. Compare Flook with Diehr. Flook output data as its final step, same as Prometheus. Diehr used the results of the dynamic calculation to open the mold and produce a new result.

    This thinking takes us back to the roots of the exclusion, Le Roy v. Tatham, where the court opinined that a application of a law of nature to produce an new and useful result would be patentable.

    Thus considered, the problem with Prometheus was that it did not end with any new tranformation to produce new result.

  119. The Prometheus decision has spawned a new era of diagnostic testing innovation:

    Diagnostic testing products that preserve the secrecy of the diagnostic methodology.

    With unbounded profit at stake, the motivation for scientific secrecy in health care diagnostics is now also unbounded.

    Perhaps the law of nature that best applies is the law of unintended consequences.

  120. Borderline insults are out of line, even if you believe the individual has misstated or misunderstood a point of law. Moreover, nothing is provided that helps one understand why you hew to a contrary view. If you are inclined to criticize, then at the very least you should provide something more than a mere naked criticism.

    It cannot be disputed that the Supreme Court declared the machine-or-transformation test much too narrow since it foreclosed further consideration of otherwise eligible subject matter. Thus, it is not unreasonable to interpret the majority holding as suggested by Mr. Sachs. If one can pass what is the most “restrictive” test, it can be argued that by definition one has thus “passed” less restrictive tests.

    Perhaps, beyond your inappropriate comments, you are correct, but as things now stand it is not possible, based upon your comments, why this is the case.

  121. “Anti-patent” comes in many flavors and is especially dangerous when the forces of the far left find common cause with the forces of the far right, each seeing a benefit to denigrating innovation, or rather, the rewards of innovation in the form of property.

    The far left, with its loathing of personal property, scorn the fact that government (its desired socialistic vehicle) actually has a hand in creating personal property that individuals can wield as those individuals see fit.

    The far right, the established large business concerns, currently most represented by the nihilistic multin-national conglomerats (and their paid stooges like Paul Roeder, Dan Lang, Malcolm Mooney and Ned Heller) would love nothing more to see one of the few remaining powers available to the small companies for disrupting the status quo market be eviscerated by any and all means possible.

    You are not paranoid if they really are out to get you.

    And out to get you they are, my pretty.

  122. This is at the core of the argument of not only the minions like 6, MM, and Ned, but also I think the SCOTUS which appears to be going back to their flash of genius standard albeit clothed in new closes of abstract idea and law of nature. The SCOTUS apparently watches late night TV where inventions are made in a flash of genius.

  123. 6,

    Your assertion that patent attorneys are the actual inventors of most inventions is ludicrous. You act as though the only patents out there are on things like amazon’s 1-click.

    What a patent attorney DOES do, when we’re talking about real technology anyway, is sometimes ask the inventor questions he hasn’t asked himself. In reviewing invention disclosures with my company’s engineers, numerous times I’ve asked a simple question that made them go back and add to the invention disclosure. Questions such as, “Would this work with only one widget instead of two?” or “Would this also apply to doohickies in addition to widgets?”

    That doesn’t make me an inventor. It makes me someone who has helped the inventor think what he’s invented through thoroughly.

  124. These posts by Sachs might be the worst series of guest posts ever on Patently-O. Dennis, why did you give this guy so much space to rant like an old woman?

  125. Exactly right AI. MM uses other aliases and has admitted it several times. It was fun watching NAL humiliate MM over and over again.

    The other thing that is funny is that he howls when people ask Dennis to stop him from being so abusive, but he is the one that whined and whined about his simian moniker.

  126. “James Clavell”

    Look, an actual attorney who isn’t a tard and a scofflaw! Amazing! Why don’t this breed speak out more often and curtail the ridiculous ones? Perhaps they could cleanse the bar a bit?

  127. “What this means in practice is that even if a claim satisfies the MoT test, it could still be deemed unpatentable subject matter,”

    Omg 6 was right for years! Heavens me! The sky! It’s falling! So many attorneytards were tards after Bilski! O my stars!

    “In short, before Prometheus, you could assert that your claim was patentable subject matter because it satisfied MoT. ”

    Tards do a lot of things. What’s more to say?

    “Now MoT does you little if any good—it’s gone from a sufficient condition to a mildly interesting one.”

    O rly? I wonder what good it was supposed to be doing you in the first place? Was that good based at all upon a tard reading of precedent?

    “Standing Up for the Patent Bar [scofflaw tards]”

    Well, please do, because somebody needs to stand up for that hodgepodge of scofflaws.

    “For some reason the Court seems to delight in denigrating the role of patent counsel in drafting claims”

    Hmm, so the court seems to delight in denigrating a group of people that sits and scoffs at their reading of the law, 50 years after they made it very clear what they were doing? While this same group of people likes to call themselves officers of the court?

    “Second, I ask you: what’s wrong with making patent eligibility depend on our skill? ”

    Well there is always this one little thing, the law.

    “True for every attorney but patent attorneys.”

    If you like being a normal attorney so much then why don’t you go be one and rid us of yet one more scofflaw?

    “The Court also seems to think that inventors arrive at the patent attorney’s door step with their inventions fully formed, fully understood, and fully explained and explainable.”

    They presume that because if the cat were let out of the bag that patent attorneys are the only “inventors” involved in most modern patents after the actual “inventor” brings the germ of an invention to them then the backlash might be rather severe.

    “But for the majority of technologies, the patent attorney is an active and necessary participant in the creation of the patent and its value.”

    Shout it from the rooftops brosensky. Watch as the backlash overwhelms.

    “Many inventors simply do not know what they have invented,”

    Right, because they haven’t invented jack squat until the attorney invents for them.

    “This is no mere scrivener’s recording, from the inventor’s lips to the patent examiner’s ear to the court’s gavel. This is legal counseling and crafting at its best.”

    Why not just call it what it is? Inventing at “it’s worst”.

  128. ” I have my doubts with the Malcolm-like comments and tone).”

    anon, Hans Blix is an old alias of Malcolm Mooney A.K.A. MM going back many years. He sometimes talks to his other alias using the Hans Blix name. NAL busted Mooney for using this name among others during debates in which she had Mooney running all over the blog. In fact this is why the “Sock Puppet” moniker was created. I still get a chuckle every time I see Mooney use the term on others when it was invented for him and his multiple user names.

  129. “The first of these transformations, however, is irrelevant….”

    “And the second step could be satisfied without transforming the blood, should science develop a totally different system for determining metabolite levels that did not involve such transformation.”

    Whatever, can someone please TELL ME what the LAW OF NATURE that the court has (evidently discovered on their own) actually is ????

  130. Hans,

    I find your comments “a joke.”

    Seriously, anytime I see the word “birthers” I wonder if the person using that term realizes just what they are saying about themselves.

    As for Rusty’s comment about patent agents, please try to remember that patent lawyers are also involved in the “scrivening.” and that even the patent agents have passed a bar exam (that, by the way, some 60% of real lawyers do not pass).

    Try holding your head up high (if you are a real applicants’ representative – I have my doubts with the Malcolm-like comments and tone).

  131. Rusty, couldn’t have said it better. This is just one of the many reasons why this series of his is a joke. He and all the other patent birthers need to move on with their lives. Yes, a black man is President, and yes, a patent claiming a process comprising an old step + new thought is invalid.

  132. Umm, it was my understanding that patent agents are *not* lawyers. Or at least not required to be lawyers. So I don’t think the Supreme Court is denigrating the role of patent counsel even if it is comparing patent drafters to scriveners. So to answer your question of “What is it about patent law that makes the Court think we’re not lawyers?” — it’s the fact that the “we” (that is the patent agents) are not required to be lawyers.

  133. James,

    Meet Ned Heller. Ned would like to have a word with you on the “Mot Is an All-But Requirement” speech he is developing.

    A side note, where the h_e11 have you been in making this comment, oh since Bilski came out?

  134. “The Court’s reasoning suggested that while passing MoT was not necessary, it was still a sufficient condition for patent eligibility.”

    It did no such thing, and to say so shows an utter inability to read and comprehend.

    “In short, before Prometheus, you could assert that your claim was patentable subject matter because it satisfied MoT.”

    No you couldn’t, and it again it shows an utter inability to read and comprehend.

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