Punishing Prometheus: The Supreme Court’s Blunders in Mayo v. Prometheus

Guest Post by Robert R. Sachs of Fenwick & West LLP

“Not even wrong.” So said Wolfgang Pauli about a proposed analysis by a young physicist, meaning that the arguments were not subject to falsification, the basic tool of scientific analysis. So too it can be said about the Supreme Court’s decision in Mayo v. Prometheus. The Court’s analysis creates a framework for patent eligibility in which almost any method claim can be invalidated. Like so many pseudo-sciences in which every phenomenon can be rationalized and in which there is no test that can show the theory to be incorrect, under Prometheus seemingly anything can be “explained” as being unpatentable subject matter.

Let me say at the outset that I’ve been a student of patent law, and patent eligibility in particular, since 1993. My clients have frequently been those whose inventions bumped up against the boundaries of patentable subject matter—in software, e-commerce, finance, business operations, user interfaces, and bio-informatics to name a few—so I have become intimately acquainted with both the legal and practical implications of this question. As such my personal reaction to this decision is very strong, and I will be quite blunt in what follows.

Over the next several days I will address just some of the logical and legal errors in the Court’s decision.

What’s a Law of Nature?

The first critical mistake is the Court’s assumption that Prometheus’ claims recited a “law of nature:” “The claims purport to apply natural laws describing the relationships between the concentration in the blood of certain thiopurine metabolites and the likelihood that the drug dosage will be ineffective or induce harmful side-effects.” The facile assumption that this relationship is a “law of nature” is incorrect, and potentially the most damaging misstep by the Court.

First, let us assume for the moment that there are in fact such things as “laws of nature.” What would their characteristics be? A first approximation would suggest that a law of nature is immutable and universal, that it is not subject to change, and it applies in all circumstances. See, Evidence Based Science. Thus, gravity and the speed light apply to you and me equally, and under all conditions. (I’m purposely using these two examples, for reasons that will become clear.)  However, this is not the case with the toxicity of any drug, including thiopurines, as acknowledged by the Court: the amount of a toxic dose varies between individuals for two reasons. First, different people metabolize at different rates, thereby producing different metabolite levels for a given dose. Second, individuals have differential responses to a given amount of the metabolites; a given level of the metabolites may be toxic in one person and not toxic in another. Thus, while the patent sets forth metabolite levels for toxicity and effectiveness, these levels are necessarily probabilistic, as some patients could experience toxicity at levels below or above those specified in the patent claims. This is inherent in the way toxicity is determined using a median lethal dose, LD50. This is exactly the same reason that one person can be drop dead drunk after five drinks and another can be stone cold sober at the same level. Indeed, Mayo’s test used a higher threshold for toxicity—evidence that there is no “law of nature” as to what is a toxic dose of thiopurine in all humans.

The “natural relation” that Prometheus claims is, itself, not immutable in an even deeper sense. This relationship is a byproduct of human (or perhaps more generally mammalian) biology, which from a logical point of view is a contingent relationship that could have been otherwise: we could have evolved in such a way that the toxicity range was higher or lower, or the drug was entirely ineffective. That is, it’s an arbitrary and contingent fact that humans evolved so that thiopurine drugs were effective at all for treating immune-mediated gastrointestinal disorders, or that we metabolize them in a manner that makes them toxic at specific dosing ranges. Indeed, given that humans are not exposed to thiopurine in nature, it is hard to understand how it can even be argued that it is a “natural law” that these drugs have a specific range of toxic or effective dosages at all. That these drugs are effective (or toxic) is a classic discovery in the truest sense of the term.

At best, the relationship between the dosage and toxicity level may be a “natural phenomenon.” Let us assume that is the case. Natural phenomena are a different class of things than laws of nature. Lightning, mirages, tornadoes, superconductivity, rainbows, these are natural phenomena: events that take place in nature (or in the lab) under specific and contingent conditions. While these events are of course dependent on the laws of nature, they are different from them in kind. The prohibition of patent claims in this regard is for claims on the phenomenon itself, not on the specific application of a phenomenon. Indeed, most patents in the chemical, biological, and electrical arts are based precisely on this distinction, being able to induce, apply, or control a natural phenomenon for a particular purpose. For example, there are thousands of patents that expressly claim a particular use of the Hall effect, natural phenomena discovered in 1879. The Court’s failure to appreciate this distinction puts many patents that harness natural phenomena at risk.

In short, the relationship of thiopurine dosage to toxicity is a contingent, empirical fact and subject to discovery. Like other empirical facts, it is precisely the type of subject matter that has been patented in this country since the very first patent issued by the USPTO: Samuel Hopkins’ patent on an improved method for making potash, based on the discovery that burning the raw ashes a second time increased their carbonate production. Hopkins’ discovery is no different in kind from Prometheus’ discovery: in both cases empirical “scientific” facts about the world.

But let us return to the core assumption: that there are laws of nature in the first instance. The Court makes the obvious reference to Einstein’s E=mc2 equation as an example. But the great scientist would have readily dismissed this appellation, knowing full well that what he set forth was a theory, a model, a description that was subject to falsification. Indeed, Einstein’s work has been criticized as being incomplete, or valid only in limited circumstances.

The view that there are laws of nature reflects an 18th century view of the world, based no doubt upon the classical, Newtonian view of a reality of absolute space and time governed by the three “laws of motion”—laws that were thought to be immutable and universal—and which Einstein among others showed not to be “laws” at all.

Most modern scientists do not view reality as defined by “laws”—indeed, the very idea that we could “know” what the “laws” are itself begs the very questions that philosophers since Plato have struggled with, the questions of epistemology (what is knowledge, what can we know) and ontology (what exists).

In several places, the Court lumps laws of nature together with “abstract ideas,” for example by leaning on the analysis in Bilski and Benson. But again, this is a category error: abstract ideas are very different from laws of nature, and must be treated separately. “Ideas,” classically speaking, are the “impressions in your head” when you think about something—the thing you think about is a “concept.” When you think about concepts that have instances in the world—cats, dogs, and thiopurine—you are thinking of “concrete” concepts, and your ideas are “concrete.”  Even when you think of a unicorn or a flying purple people eater, you are thinking of a concrete concept because it could have an instance in the world. However, when you think about concepts that do not (or could not) have instances in the world—justice, eternity, infinitesimal, invisible green four sided triangles—or metaphors—All the world’s a stage, and all the men and women merely players—the “idea” in your head is “abstract.” (Of course, I know that this is (1) a gloss, and (2) subject to debate as much as anything else in philosophy. Arguably, there are no “abstract” concepts at all. I’ll leave that debate for another day).

To wit: the abstract idea of say, immortality, is clearly not a “law of nature,” describing something that by definition cannot have examples in the world, since nothing can be immortal (there could be unicorns however, thus the concept of “unicorn” is concrete). Conversely, Ohm’s Law—that the current through a conductor between two points is directly proportional to the potential difference across the two points—describes something inherently and entirely physical and real. Ohm’s Law is a description of the world (and it turns out, not always correct). That the Court attempts to put these two square pegs in the same round hole reveals just how little the Court understands the nuances of science, philosophy and language—let alone the patent law itself.

Tomorrow:  What’s a Claim? and Patent-Eligibility vs. Patentability

 

 

109 thoughts on “Punishing Prometheus: The Supreme Court’s Blunders in Mayo v. Prometheus

  1. Not impressed with the “analysis” by Mr. Sachs which borders on gibberish (e.g laws of nature and e=mc2)

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

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

    Can a law of nature be a trade secret?

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

  3. Sorry for the delay. Here’s my quick take, in English (you’ll have to use an online translator if you want the Latin version):

    1) The piece suffers from the typical Examiner’s error of characterizing the claim as a phrase, and then examining the phrase. In this case, the piece goes off on what is and what is not a “law of nature”, including questioning whether laws of nature exist, and also asserting that this law of nature is in fact in error. Straw men.

    2) And then it begs the question. The author asserts that the claims at issue are directed to an application of a law of nature just like others that were patented (burning potash) because it is not any different.

    I’ll have a look at part II when I muster the will.

  4. Well said, MM.

    I think this post also fails to acknowledge the ‘observable fact’ that granting too many monopolies stifles progress. SCOTUS has been trying to draw the line on that issue for a long time. On the other hand, this post is blinded by bias derived from past experience with clients who found their niche at the expense of the larger public.

    The broad field of Economics may or may not be sufficiently subject to falsification for Mr. Sachs’ taste, but it is at least slightly helpful in understanding the consequences of our laws.

  5. Arthur–

    You overestimate many patent attorneys, who seem to have difficulty thinking for themselves.

    Also, the response you received from your prof is all too typical of a wanna-be academic who has abdicated his duties to rationally inquire, and then to educate by sharing knowledge, experience, and insight.

    I’m curious, did you then proceed to ask him about his “understanding of the concepts established by SCOTUS regarding what is patentable, and what is not”?

  6. I agree, simply attacking the minor flaws in SCOTUS rhetoric does absolutely nothing to clarify the direction that patent law is headed as a result of this decision. Nor does it get at the core of the problems in this area. Being pretty new to the field, (I certainly haven’t been a student of patent law for such an unbelievable length of time as 19 years) I’ll just offer my humble opinion that most of us should have realized the absurdity of the ‘abstract ideas / laws of nature / natural phenomenon’ distinctions the first time we encountered them.

    I remember seeking out my patent law professor (a student of patent law since 1951) for a better understanding of some real differences between the three. He just laughed and told me to come back and teach him when I’d figured it out. His point was that the semantics were less important than understanding the concept established by SCOTUS regarding what is patentable, and what is not.

    I invite Mr. Sachs to give us a little more insight in this regard, perhaps a little more concisely.

  7. Ned,

    Your circlejerk affirmation of anything MM is rather disgusting.

  8. ” What other uses are there.”

    Well, let’s see. Perhaps an apparatus that performs all the steps for a persons/doctor and adjusts the dosage automatically. Or perhaps a use where, when the recited method is finished you give the patient some stomach medicine. Or, perhaps a method where when the recited method is finished you give the patient something that helps to level out the levels of that stuff that is in the claim. Or perhaps a method where, when the recited method is finished you give the patient something that counteracts the toxicity if the reading is right at 400.

    The possibilities are endless my man.

    ” And if so, is permitting them so important to invalidate this claim?”

    Meh, what is the downside to invalidating this overreaching claim that didn’t even bother to claim an invention? Any possible upside to permitting the other uses outweighs the big ol’ fat 0 downside to invalidating the claim. Especially when, as this decision shows us, the court can take this opportunity to hold tard’s hands through the abstract idea/natural phen/lawl of nature analysis so that people like you freak the f out because your already invalid claims look like they’ll finally be invalidated in court.

    Good times. What is the downside?

  9. Winner of the going in circles award: Smitty for his darling tail chase of recognition and reason why.

  10. I’ve been addressing those interpretations for several days now

    LOLZ. No, you have not. You’ve been doing your usual dance and dodge and strawman routine.

  11. (but the government proposed a legally unprecedented solution and Breyer didn’t buy it).

    Since when is non-conflation and following the law a legally unprecedented solution?

  12. Let me guess, Article 1 Section 8?

    That’s not an argument for why discoveries of natural phenomena should be patentable; that’s merely a recognition that the Constitution enables such discoveries to be patentable. And besides, how does making discoveries of natural phenomena patentable “promote the Progress of Science and useful Arts”?

  13. Of course, my reply to your hypothetical “txxbxgger”, as always, would involve things like the grammatical form of a claim, sentence structure, subject vs object, everything in a claim being limiting including but not limited to the preamble, and the generalized form of a defined process as consisting of a beginning, middle, and an end.

    Easy. It’s all there. It’s nothing new.

    It requires only 2 things: 1) a modicum of intelligence, and 2) a willingness to consider the text of a voluntarily drafted and submitted claim to be of paramount importance in scope and validity determinations.

    Yes, I know about the quid pro quo. The court ultimately decides precisely what was disclosed, but the single best evidence to be found should be the claim itself, and for reasons already stated, absolutely nothing in the claim should be disregarded under any circumstances.

    If the “txxbxggers” don’t like it, too bad. They can draft claims differently. They will find that it will be impossible to disclose patent-eligible subject-matter for many inventions. They will also find that the scope of many claims actually disclosing patent-eligible subject-matter will end up being so narrow in scope as to be practically worthless.

  14. The Court seems to be waiting for patent claims for subject matter that does NOT obey laws of nature. Then we could have some real fun. Get rid of those persnickety laws of nature. Yes, they are the root of the problem. All that predictability, science, etc. Alternatively, claim something that is remotely, at best, related to natural law. I have not seen many patent claims that don’t rely on some laws of physics or laws of nature. BTW, doesn’t e=mc^2 need to be relativistic to be complete?

  15. “In the end, the failure of Prometheus was in not applying the correlations to produce a new result.”

    The legal version of this sentiment is that the applicant failed to disclose any specific, substantial, and credible utility of his claim as required by judicial interpretation of 35 USC 101.

    “B-b-b-ut the new r-r-r-esult is the improved thought in the practioners b-b-brain!!! How is that not useful, smarty p-p-pants???”

    /patent txxbxgger off

  16. DKN–

    I agree with your expressed sentiment, and I have tried to be smart enough to stay away from invoking any sort of philosophical criticism, and to confine myself to the pragmatic and the legal.

    I felt that somebody who presumably knows more than I do about such things would say pretty much exactly that which you just said.

  17. “In the end, the failure of Prometheus was in not applying the correlations to produce a new result.”

    The legal version of this sentiment is that the applicant failed to disclose any specific, substantial, and credible utility of his claim as required by judicial interpretation of 35 USC 101.

    The claim is therefore invalid.

  18. Ned The SC holding in this case that 101 is not a threshold issue, but was an issue to be decided after novelty was addressed, was somewhat as a surprise.

    No surprise to me. The Supreme Court never said that one was forbidden to address 101 issues *after* a 102 analysis. Why on earth would they issue such a restriction? If the claims prevent an otherwise non-infringing practitioner of the prior art from thinking about ANYTHING, there is a 101 issue. Period. The only way the 101 issue can be squarely presented is if the non-mental steps are admitted to be old by the patentee (as was the case in Prometheus), or if the non-mental steps are determined to be old during a 102 analysis. Again, if there was any question that the non-mental steps in Prometheus were not new, the 101 issue could not have been properly raised.

    It’s no different from standing, which is also a “threshold” issue. Facts come out during a court case. The facts make a difference.

    Look at it another way: in any patent case, at ANY time, when it becomes clear that an actor practicing the prior art is liable for infringement merely because he/she has begun thinking a new thought while he/she is practicing the prior art, that case is OVER, at least with respect to the claim alleged to be infringed. The claim is dead in the water.

    Rich’s views (In re Bergey)

    Rich reached the wrong conclusion in Bergey because (as I’ve previously noted) the great genius failed to recognize that claims in the form [oldstep]+[newthought] are effectively claims to the [newthought] itself. So there is a incredibly important difference between such claims (which necessarily implicate 101) and claims reciting [newstep]+[oldthought], which do not necessarily implicate 101.

    Rest assured that the Supreme Court is very much aware of this problem (their clerks can read this blog, after all). Breyer recognized the issue clearly during oral argument, and the government recognized the issue in their brief (but the government proposed a legally unprecedented solution and Breyer didn’t buy it).

    Novelty of the elements, and a determination of what was invented, if anything, becomes a critical precursor issue, it appears.

    Completely false. There are a million trillion claims that can instantly be deemed ineligible without dissection of the elements. As for the rest, it’s only “critical” in [transformingstep]+[newthought] claims where there is an actual reasonable dispute about the novelty of [transformingstep]. For the vast majority of claims, there is no such dispute.

    Lastly, because it apparently cannot be repeated often enough, the alternative to all these alleged “surprises” in Prometheus (none of which I found surprising, btw) is a situation where one can patent methods of thinking any useful thought merely by tossing in some old “transforming” step. I think that result would have “surprised” a lot more people (to put it mildly … and led to an instant amendment of the patent statute. So please stop mentioning how “surprised” you are about this or that in the Prometheus decision when in fact you appear to have not thought about the issues at all.

  19. There is a huge philosophical literature on these issues and pretty much none of it lines up with Sach’s confused views. The idea that something can’t be a law of nature because it “could have been otherwise” is absurd. Sure humans could have evolved differently. But that doesn’t mean that there are no laws governing human biology.

    If Sach’s wants to dip his toe in the philosophical literature he is pretending to understand he could start here:

    link to plato.stanford.edu
    link to plato.stanford.edu

    fwiw I’m fairly sympathetic to his criticism of Prometheus – but there’s no need to present it using such confused philosophical ramblings.

  20. Malcolm,  I don't have the District Court opinion.  It would be interesting if he considered the issue of whether the physical steps were new or old.  I had been under the impression, with many other it appears, that novelty issues were to be considered only after 101.  The SC holding in this case that 101 is not a threshold issue, but was an issue to be decided after novelty was addressed, was somewhat as a surprise.

    I would just like to point out that the SC seemed to side with Rich's views (In re Bergey) on 101 being a threshold issue in Diehr. 

    "We think this statement in Mackay takes us a long way toward the correct answer in this case. Arrhenius' equation is not patentable in isolation, but when a process for curing rubber is devised which incorporates in it a more efficient solution of the equation, that process is at the very least not barred at the threshold by § 101.
    In determining the eligibility of respondents' claimed process for patent protection under § 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The "novelty" of any element or steps in a process, or even of the 189*189 process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.[12]"

     Kennedy in Bilski, Section A II, said this as well.  

    "The § 101 patent-eligibility inquiry is only a threshold test. Even if an invention qualifies as a process, machine, manufacture, or composition of matter, in order to receive the Patent Act's protection the claimed invention must also satisfy "the conditions and requirements of this title." § 101. "

    Now, even Kennedy has reversed himself.  Novelty of the elements, and a determination of what was invented, if anything, becomes a critical precursor issue, it appears.  Only once the invention is identified, can a determination be made whether that invention is eligible under 101.

  21. sockietool Still haven’t seen MM comment to the question about whether he reasonably buys into all of The Supreme’s arguments.

    You mean your interpretation of the SC’s “arguments”, don’t you sockie? I’ve been addressing those interpretations for several days now. If there’s a particular “interpretation” you want me to address, please articulate the passage of interest to you, please state your interpretation of that passage, please give a specific example of a claim (written in claim form) that you believe will be negatively impacted, and please state why anyone should care that such a claim is negatively impacted.

    That will save a lot of our time, sockie, and a lot of bandwidth. If that’s not good enough for you, sockie, then GFY. Thanks.

  22. All nine of them picked Answer A.

    And a lot more than that.

    Still haven’t seen MM comment to the question about whether he reasonably buys into all of The Supreme’s arguments.

    Gee, I wonder why that is (mayhaps becuase he will be seeing thoe very arguments reflected in another case)…?

  23. Ned Thus, just as the District Court originally held, the other steps were mere data gathering for a mental step that considered the law of nature in the abstract. The Supreme Court went a bit further and relied on the fact that the other steps were not themselves inventive, but conventional.

    Let’s be perfectly clear: there is absolutely positively NO DOUBT that if the data-gathering steps reciting in Prometheus’ claim were NOT “old and conventional” there would be no Prometheus case. The District Court would have found the case to be eligible under 101, period.

    I, for one, thought the government’s position quite well taken, that claims were invalid because the physical steps were all old.

    That would have been a perfectly fine way to crush Prometheus’ claims — ignore the mental steps for 102/103 purposes.

    Too bad the issue wasn’t briefed that way and too bad there isn’t well-reasoned controlling precedent setting forth why mental steps should be ignored when considering validity under 102/103 (the answer: because if you allow the mental steps to determine validity, you create 101 problems for those people who are otherwise legally practicing the data-gathering steps in the prior art). But rest assured we’d be hearing the same howling from the same crowd … because the result is virtually identical.

  24. Move the goalposts back when you are done with them please.

    Also, it might help you to read the question asked.

    T O O L

  25. How Bilski was ultimately decided.

    LOL

    LOL

    LOLOLOLOLOLOLOLOL

    The equivalent of saying “boo”: Diehr

  26. Agreed. Virtually every case discussing natural phenomena and laws of nature have allowed patents that described and claimed useful applications. Funk Bros did not, but that is because the SC in that case said there was no new result, no synergy.

    The vice in Prometheus claims was, it appears, simply that the claims did not require anything to be done with the new information, they just ended in a mental step. No new result was obtained. Thus, just as the District Court originally held, the other steps were mere data gathering for a mental step that considered the law of nature in the abstract. The Supreme Court went a bit further and relied on the fact that the other steps were not themselves inventive, but conventional.

    This case is not all that remarkable. It is a wonder that so few of us predicted this result although many of us predicted that the claims would be held invalid. I, for one, thought the government’s position quite well taken, that claims were invalid because the physical steps were all old.

  27. In other words, the district court judge got it nearly exactly right:

    the inventors merely observed the relationship between these naturally produced metabolites and therapeutic efficacy and toxicity.”

    Correct, because that’s all that the claimed invention recites: performing the old, conventional step, and thinking about the “new” correlation.

    “[b]ecause the claims cover the correlations themselves, it follows that the claims `wholly pre-empt’ the correlations.” Id. at *11. “

    Absolutely correct from the perspective of the litigation targets of the claim, i.e., the practitioners of the prior art. They were pre-empted from thinking about what they are doing … while they are practicing the prior art! If your claims have such an effect on practitioners of the prior art, they will always be ineligible/invalid/unenforceable. Take your pick. The Supreme Court did. All nine of them picked Answer A.

    I’m still loving it.

  28. sockie what questions can MM answer?

    How KSR was ultimately decided.
    How Njutgen was ultimately decided.
    How Abbott v. Sandoz was ultimately decided.
    How Bilski was ultimately decided.
    How Prometheus was ultimately decided.
    How Myriad will ultimately be decided.

    Seems like a pretty good track record to me. I can’t wait for Beauregard claims to hit the fan. Anyone still want to bet against that? LOL.

  29. This from Lourie’s remand opinion,

    “Second, the district court found that those correlations were natural phenomena, not patent-eligible inventions because the correlations resulted from a natural body process. The court stated that the inventors did not “invent” the claimed correlation; rather, “6-TG and 6-MMP are products of the natural metabolizing of thiopurine drugs, and the inventors merely observed the relationship between these naturally produced metabolites and therapeutic efficacy and toxicity.” Id. at *7. Finally, the court determined that “[b]ecause the claims cover the correlations themselves, it follows that the claims `wholly pre-empt’ the correlations.” Id. at *11. ”

    link to scholar.google.com

  30. sockie: Let me guess, Article 1 Section 8?

    Article 1, section 8 says only that the United States Government has the power to promote progress in science and the useful arts by granting patents . The patent statutes and court decisions interpreting those statutes have legally and constitutionally restricted what “discoveries” may be protected.

    For example, if I “discover” a useful equation for figuring out how much tax to pay, I can’t patent the equation. It doesn’t matter that I “discovered” it. Likewise, if I “discover” a method of thinking about cancer that yields incredibly useful cures for cancer, I can’t patent that method of thinking. It doesn’t matter that I “discovered” it.

    Pretty much everyone who has studied patent law for a couple years understands this. There’s nothing at all controversial about it. A far more interesting question is: where do our dxmbxss trolls come from? Why don’t comment over at IP Watchdog where such inane gxrbxge is regularly applauded?

  31. In the end, the failure of Prometheus was in not applying the correlations to produce a new result.

    The best discussion of the “law of nature” exclusion that I can find occurs in the dissent in LE ROY ET AL. v. TATHAM ET AL., 55 US 156 – Supreme Court 1852, link to scholar.google.com

    The dissent, by Justice Nelson, traces the discussion of the exclusion to a 1795 English case of Boult v. Bull involving a steam engine patent of Watt.

    In essence, the cases state that a principle (law of nature) in the abstract cannot be claimed, but a practical application that produces a new result, and the inventor will be protected (at least according to Nelson, which I think is the law now), against any who apply the principle to achieve the result regardless of the specific machinery. Indeed, this principle is the prevailing view in such cases as Corning v. Burden, decided just two years later, and in Cochrane v. Deener.

    The following from Corning v. Burden is interesting on the topic:

    “A process, eo nomine, is not made the subject of a patent in our act of Congress. It is included under the general term “useful art.” An art may require one or more processes or machines in order to produce a certain result or manufacture. The term machine includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result. But where the result or effect is produced by chemical action, by the operation or application of some element or power of nature, or of one substance to another, such modes, methods, or operations are called “processes.”

    A new process is usually the result of discovery; a machine, of invention.

    The arts of tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores, and numerous others are usually carried on by processes, as distinguished from machines. One may discover a new and useful improvement in the process of tanning, dyeing &c., irrespective of any particular form of machinery or mechanical device. And another may invent a labor-saving machine by which this operation or process may be performed, and each may be entitled to his patent. As, for instance, A has discovered that by exposing India rubber to a certain degree of heat in mixture or connection with certain metallic salts he can produce a valuable product or manufacture; he is entitled to a patent for his discovery as a process or improvement in the art, irrespective of any machine or mechanical device. B, on the contrary, may invent a new furnace or stove or steam apparatus by which this process may be carried on with much saving of labor and expense of fuel, and he will be entitled to a patent for his machine as an improvement in the art. Yet A could not have a patent for a machine or B for a process, but each would have a patent for the means or method of producing a certain result or effect, and not for the result or effect produced. It is for the discovery or invention of some practicable method or means of producing a beneficial result or effect that a patent is granted, and not for the result or effect itself. It is when the term process is used to represent the means or method of producing a result that it is patentable, and it will include all methods or means which are not effected by mechanism or mechanical combinations.”

  32. You simply cannot answer those questions

    H_ate to nit pick, but what questions can MM answer?

    (Other than strawman questions, that is)

  33. Other than the fact that discoveries require effort, do you have another reason why they should be patentable?

    Let me guess, Article 1 Section 8?

  34. $$$$MM$$$$, that was unresponsive and supersilious. In other words, every bit the quintessential $$$MM$$$.

    You simply cannot answer those questions. And, those questions were not answered in the “scholarship.”

  35. $$$MMM$$$, dollar boy, what the other uses?

    Shorter NWPA: “I read at daycare level so you might as well not have bothered responding.”

  36. Since rehashing this issue appears to be your goal, let’s continue.

    There are two issues: (1) are equations patentable? and (2) should equations be patentable?

    As for (1), the Supreme Court has said, “No.” Right or wrong, that is the current state of the law.

    As for (2), you position is that “discovered” means patentable. Other than the fact that discoveries require effort, do you have another reason why they should be patentable?

  37. Which they probably got from paperback novels and serials in newspapers.

    …or patent h_ating academics

  38. Not really so simple. What other uses are there.

    What are they? In Benson, what was invented by invalidating Benson’s patent?

    In Haliburton, it is fairly easy to think about. Here, one has to ask, are there really other uses? And if so, is permitting them so important to invalidate this claim? This has simply not been addressed. We got a late night movie version of this just as the SCOTUS decided that inventions occured with a “flash of genius.” Which they probably got from paperback novels and serials in newspapers.

  39. $$$MMM$$$, dollar boy, what the other uses? Name some. In Benson, name some. In Haliburton, it was fairly straightforward. Here, not so. There is a presumption that there are other uses, but what are they? How can one evaluate whether the public policy of invalidating a patent is justified without any examples. If there was an administering step, would there be other uses?

  40. Sachs: “The first critical mistake is the Court’s assumption that Prometheus’ claims recited a ‘law of nature:’”

    Small point, but it was a District Court that held that the correlations were a “law of nature.” I do not recall that this finding was challenged either at the Federal Circuit level or at the Supreme Court level on the basis that the findings were clearly erroneous.

    So I do not believe that it is strictly true that the Supreme Court merely assumed that the correlations were a law of nature. I think it was rather true that the Supreme Court was operating under the District Court finding that the correlations were a law of nature.

    But correct me if I’m wrong in this.

    If the above is correct, I would like to know the basis for the District Court’s holding that the correlations were a law of nature. Does anybody have a link to the district court decision?

    But once we have the reasoning of the District Court before us, we can not only understand the District Court’s reasoning, but understand better when something discovered is a law of nature or the invention of man.

  41. “Natural phenomenon” versus “laws of nature” is a distinction without a difference. “Laws of nature” are a compilation of many observations of “natural phenomena.” Neither is patentable. The post acknowledges that only uses of laws or phenomena are patentable, but fails to identify the use claimed by Prometheus. What exactly are the Prometheus claims doing? They claim a method of understanding an observation.

    This posting also states that “empirical facts” are patentable, but all of the examples contradict that contention. For example, the Samuel Hopkins patent was an improved method for making potash. The discovery that enabled this method itself was not patented.

    I get that the poster disagrees with the Supreme Court, but identifying a possible mischacterization to support a logical fallacy isn’t useful.

  42. With due respect, you are WAY behind. This has already been unraveled and described here on patently-o:

    Actually, my equation was not existing at the time I “discovered” it.

    My equation is not a “law” of nature, because it is not an actual fact. It is a man made (by me) emperical tool and a representation of how I believe nature to act.

    It is a map.

    A map is not the real world.

    There have been other maps on this very same territory.

    Those maps have been shown to be wrong. Did nature change? Did she rewrite her laws to make these other maps incorrect?

    No.

    This fact alone, when properly understood, would show to anyone with a quarter of my intellect that the maps I create are merely that: maps.

    Only the truly ignorant elevate that which they do not understand to some godly level and try to treat such as unassailable.

    While I enjoyed the spotlight from my efforts, I truly was concerned about the deification of those efforts. To read my name taken in vain by Justice Breyer just makes me spin.

    Reply Mar 21, 2012 at 06:47 AM

  43. I don’t agree with much Noonan says on this topic, because Kev only says things in order to patent protect, but I can assure you that there is nothing new in this decision. All of the BFDBP caseline flows directly from Benson. Technically it also flows directly from ancient court cases as well, but Benson was the kicker in the modern era.

    The bottom line is still the same as it has always been. Do not patent the judicial exceptions. And don’t try to use your drafting to patent judicial exceptions in effect. Period.

    That is literally all that all of these decisions are about. Which I’ve been saying for like, 3 years.

  44. that cannot be invalidated under Prom

    You are not trying hard enough.

    You need to dissect the claim a little more and label the non-Law-of-Nature portions as mere extra-step steps.

  45. “In Haliburton, there was a method and the court held that they wanted other machines that implemented the method.”

    Here there is a lawl of nature and the court wants other methods that implement that lawl of nature.

    This is pretty simple stuff NWPA.

  46. “In Haliburton, there was a method and the court held that they wanted other machines that implemented the method.”

    Here there is a lawl of nature and the court wants other methods that implement that lawl of nature.

    This is pretty simple stuff NWPA.

  47. “So too it can be said about the Supreme Court’s decision in Mayo v. Prometheus. The Court’s analysis creates a framework for patent eligibility in which almost any method claim can be invalidated. “

    The level of arrogance and rxtxrdation of the above statement is beyond description.

    Reminds me of the reaction to KSR. Remember how everything was “obvious” after that? My gob, does any other legal niche have more whiny rubes in it than patent law?

  48. “The Court’s failure to appreciate this distinction puts many patents that harness natural phenomena at risk.”

    No, it does not. Not even one of those Hall Effect patents is threatened in any way. I will bet my bottom dollar on it. And you know why? Because the practicioners in that art learned long ago how to draft valid claims while you bsers in other arts decided to throw the lawl to the wind.

    “Most modern scientists do not view reality as defined by “laws”—indeed, the very idea that we could “know” what the “laws” are itself begs the very questions that philosophers since Plato have struggled with, the questions of epistemology (what is knowledge, what can we know) and ontology (what exists).”

    I loled. Perhaps my citation of Dr. Degrassi stating such a thing like a million times would st you the f up but I doubt it.

    “In several places, the Court lumps laws of nature together with “abstract ideas,” for example by leaning on the analysis in Bilski and Benson.”

    Well at least you’re finally getting to the one error the court did make. But, regardless of what you want to call it, that sht is excepted.

  49. I think the colloquial phrase is “red herring” or “sideshow.”

    From one who knows…

    T O O L

  50. Night Wiper What is preempted?

    As you’ve been informed many dozens of times, Night Wiper, what is literally “pre-empted” by the claim is thinking about a (alleged) fact. Let me know if you don’t understand why that is the case and I’ll explain it to you. Hint: you have to be able to undertsand the legal difference between “the past” and “the future” and the terms “old” and “new.” Let me know if you need those terms to be defined.

  51. Nice. But completely off target, as the claims did not remove (and thus disclaim) anything.

    Please return to your normal habit of evading answers.

    T O O L

  52. The best characterization of this opinion: The SCOTUS has gone off the deep end again. They need to be corrected with legislation like the 1952 act did with the “flash of genius.”

    The SCOTUS are really quite the geniuses that they know so much about patents and inventions by watching movies about great inventors.

  53. Miles: This is a puzzling rejoinder. In essence, it appears to say, “let us take the debate from the legal domain with its recognized jargon (“laws of nature”, “abstract idea”) to a scientific or epistemological one, where I can assert imprecision or confusion amongst the concepts that I employ”.

    I think the colloquial phrase is “red herring” or “sideshow.”

    But we’ve been seeing this for years now when it comes to this topic.

    Assuming for the sake of argument Prometheus’ broadest claim is patent eligible, valid, and enforceable, then why isn’t a method of drinking coffee and thinking a new, non-obvious useful thought also patent eligible, valid and enforceable?

    The defenders of Prometheus’ never seem to want to discuss this problem because, in their view, 101 is nothing more than guidance about the words you should use in a preamble (of course, these same patent bulls are the first in line to file claims to “systems” and “paradigms”). Or maybe it’s because they don’t believe such claims would be a problem. Maybe they believe such claims would be a windfall of sorts. You know, an opportunity to exploit. And what possible harm could come of that?

  54. “For example, there are thousands of patents that expressly claim a particular use of the Hall effect, ”

    And yet not one of those patents attempts to preempt the entirety of the Hall effect. Funny how those dastardly inventors in the useful arts tend to stay away from the Prom ruling so easily while people in your usefullol arts swear up and down all your methods are about to go up in smoke.

  55. And dollar boy, $$$MMM$$$$, I asked for some evidence of this public policy reason. What are teh other uses? What is preempted? Evidence. Facts. Not abstract legal reasoning that is a mere “abstract idea” and thus too broad,and thus should be voided by the Congress.

  56. “My clients have frequently been those whose inventions bumped up against the boundaries of patentable subject matter—in software, e-commerce, finance, business operations, user interfaces, and bio-informatics to name a few”

    Right. So, pretty much any one of your bs methods can be invalidated under Prom. Which is really just Benson in disquise. Yeah, we know. Stop drafting that horsesht.

  57. “So too it can be said about the Supreme Court’s decision in Mayo v. Prometheus. The Court’s analysis creates a framework for patent eligibility in which almost any method claim can be invalidated. ”

    I lulzed. I have a whole docket full of method claims that cannot be invalidated under Prom. Just as do many other examiners.

  58. Screenshot

    “and apparently disclaimed”

    ???? Not likely,

    The broadest claims at issue did not recite an adminstering step. None of the “transforming” steps recited in the claim were new. They were all old and admitted as such in the specification. The only new step in the claim was the step of thinking about what the metabolite levels “meant” in relation to an alleged magic number discovered by the inventors.

  59. …understanding patent law, has nothing to do with “fundamental forces” or “law of nature”, that an understanding of patent law makes them “fundamental forces” or “law of nature”, patentable.

    The SCOTUS decision is one looking forward, knowing that any change today by a decision based upon some wild guess or favor, while not knowing what lay ahead for the future, would be a mistake that would have the greatest impact beyond the SCOTUS and I, understanding patent law.

  60. To Robert Sachs,

    With due respect, you are WAY behind. This has already been unraveled and described here on patently-o:

    link to patentlyo.com

    Abstractness, natural phenomena, laws of nature, pre-emption, mental steps, it has all been considered, and use of those obfuscatory terms obviated.

    The Prometheus opinion is only the latest symptom of a longstanding problem that has already been specifically identified and addressed.

    The challenge now is not to develop a solution–the solution exists. The challenge now is to implement that solution at an institutional and judicial level.

    Congratulations, however, for being sufficiently perspicacious to recognize the difficulties. Recognition of the problem is the first step, right?

    Read through my comments on that other thread, they may help you.

    If not, I will be curious to see where your investigations lead, and then compare the outcome to my own.

  61. Night Wiper: Sach’s you should consider that their does not appear to be a public policy reason for the decision in Prometheus.

    LOL. Maybe not one that you agree with NWPA, but the policy reasons were certainly provided.

  62. RS But let us return to the core assumption: that there are laws of nature in the first instance.

    [eye roll]

    The deniers are really missing the point.

    But again, this is a category error: abstract ideas are very different from laws of nature, and must be treated separately.

    Nope, not in the case when you claim in like Prometheus’ claim, i.e., [oldstep]+[newthought]. It doesn’t matter what the [newthought] is about. Such a claim is effectively a claim to the [newthought], whether the [newthought] is a [newthought] about a law of nature, a correlation, a phenomonen, a basic fact, or an abstract idea.

    This is the reasoning underlying Breyer’s holding. Breyer expressly recognizes that “natural laws” and “phenomenon” and “abstractions” are implicated by every patent claim. The fact that Prometheus’ claim implicated a “natural law” (or whatever you want to call it) is now why Prometheus claim was deemed ineligible.

    When you think about concepts that have instances in the world—cats, dogs, and thiopurine—you are thinking of “concrete” concepts, and your ideas are “concrete.” Even when you think of a unicorn or a flying purple people eater, you are thinking of a concrete concept because it could have an instance in the world.

    You’re getting warmer.

    But again, this is a category error: abstract ideas are very different from laws of nature, and must be treated separately. “Ideas,” classically speaking, are the “impressions in your head” when you think about something—the thing you think about is a “concept.” When you think about concepts that have instances in the world—cats, dogs, and thiopurine—you are thinking of “concrete” concepts, and your ideas are “concrete.” Even when you think of a unicorn or a flying purple people eater, you are thinking of a concrete concept because it could have an instance in the world.

    Is a claim that recites only a step of thinking about a flying pink whale eater eligible under 101? If not, why not?

    What if I add a prior step of administering aspirin to a child? Surely not eligiblie under 101 under Prometheus (a correctly decided case, IMHO). But there are those that believe such a claim SHOULD be eligible under 101. According to these people, such a claim should be “dealt with” under 102/103. So tell me how exactly you deal with it under 102/103 and tell me what difference that approach makes to the patent applicant who really wants to claim his new “concrete” thought process.

  63. I think patent lawyers have a tendency to attempt to constrain categories of legal requirements

    Join the chorus: What-Ev

    No independent opinions necessary. Take what-ev and throw it against the wall.

  64. H_itler video, no. Bandwidth is terrible.

    “…apparently disclaimed”. The *step*. Not the claim containing it (amongst others).

    “…up to now, that was not a 101 question”. I think patent lawyers have a tendency to attempt to constrain categories of legal requirements to the extent they evacuate them of meaning and divorce them from their context. Sach’s post deploys the very language of “discovery” and “invention”.

    As to your last point, the idea of my initial post was obviously not to give currency to the published opinion of SCOTUS. I repeated its further arguments in response to a Reply to ensure we were still talking about Sach’s point… about which you evidently have no opinion.

  65. I’ve discovered rose petals cure epilepsy.

    I claimed adminstering them to a subject having epilipesy to cure it, all I’d be doing was applying a law of nature.

    Not patentable.

  66. I have already done the analysis of the meanings of “abstract” insofar as patent law is concerned, and presented it here on patently-o. It was not difficult to unravel, and it is easy to understand.

  67. I am differing with SCOTUS. Once again, they have applied and obviousness test and called it a 101 based eligible subject matter ruling.

  68. The “administering” step of the test wasn’t inventive

    …up to now, that was not a 101 question.

    Did you not watch the H_itler video?

    and apparently disclaimed

    ???? Not likely, as it was used in the argument before the Court.

    Your engaging here in a mere repeating of the bogus arguments makes them no less bogus.

  69. what exactly are these other things

    The peculiar desire of any certain number of Justices to have the wax nose shaped just so.

    What? You want more?

    Sorry, as much as I squint, I cannot see any more to be pulled from this decision.

  70. If you’re differing with the SCOTUS interpretation, fine, if you’re saying I’m misstating it and you are correctly representing it, you’re incorrect. The “administering” step of the test wasn’t inventive and apparently disclaimed (see 9, at “First…”). The “wherein” step does not require any particular treatment (6, end of page). The “determining” step, likewise, did not depend on any particular process, inventive or otherwise (see 10, at “Third…”). The combination added nothing (10 at “Fourth…”).

  71. it was one of the best decisions from SCOTUS in some time.

    This statement nullifies any credibility on its own accord, and can only be made by someone who does not understand patent law.

  72. Sach’s you should consider that their does not appear to be a public policy reason for the decision in Prometheus. In Haliburton, there was a method and the court held that they wanted other machines that implemented the method. Fair enough in that case.

    But, here, what exactly are these other things? In Benson were their other uses that did occur that would not have? I don’t think so. What are these other public policy reasons?

  73. Nonesense. If the law of nature is x is the right amount of the metabolites of drug y, then claims were not to that law. Instead there were to a method for achieving x in a given patient. You would be free to use the “phenomenon” for any other purpose. Autopsies for example…

  74. The Court’s declaration leaves no doubt,
    Prometheus’ liver just fell out.
    Now Myriad’s next
    to determine the test
    “Does biochem have any clout?”

  75. With all respect to Mr.Sachs, it was one of the best decisions from SCOTUS in some time.

    Once in Human History Man didn’t understand the “forces” around him, that dictated *the way things work*. Forces, that years were spent trying to explain, that often Man just relied on good old “common sense”for, that later in time such explanations were shown to be worthless when applied to such matters.

    The late Richard Feynman said when talking about those “fundamental forces” (of nucleons and smaller),that, “it does violence to our common sense”. The understanding of what is being called “law of nature” by the SCOTUS, is that they are taking about the future knowledge of such things “law of nature”, that patents on those known today, will not further the understanding in the future, rather, will interfere.

  76. This is a puzzling rejoinder. In essence, it appears to say, “let us take the debate from the legal domain with its recognized jargon (“laws of nature”, “abstract idea”) to a scientific or epistemological one, where I can assert imprecision or confusion amongst the concepts that I employ”. Okay, in our post-Newtonian paradigm, it’s inapt to speak of anything being “invariant”, “immutable” or even a “law”. So what? Does that mean that the function of legal exclusion, “laws of nature” is now just outdated and should be abolished? I’m not sure it means that at all. Indeed, employing the same kind of logic, one could develop a radically anarchist proposition that law itself makes no sense, with no firm referents.

    The actual insight here seems to restate the problem: “The prohibition of patent claims in this regard is for claims on the phenomenon itself, not on the specific application of a phenomenon.” The Court was precisely concerned with what distinguished the “law of nature” from its “application”. The post doesn’t assist in drawing that distinction. Indeed, it elides it, by, in one paragraph asserting that one can claim means of “harnessing” a natural phenomenon, but in the next speaking to “discovery” of empirical scientific facts. SCOTUS noted that the Prometheus patent was not limited to employing a particular medical treatment–in essence, it said, if you employ known methods and something occurs *by itself* (not necessarily triggering any further human action)–you are infringing.

    I think fertile ground for the laws of nature/application analysis looking at, not the “discovery” aspect, but the “restraint” aspect (i.e. is that which you seek to claim something in respect of which human action to make, use, sell can actually be constrained…)

  77. Ahmen.

    Next time, could you maybe submit this sort of write up as a friend of the court brief BEFORE the decision?

  78. Pedro have you seen my claim proposal (and questions to MM) on the “video” thread since yesterday?

    Innumerable commentators chirrup that, even though Breyer got it appallingly wrong, the particular claim in issue deserved to go down. But, if the invention lies in the step of correlating (old steps + new idea), and if that sort of subject matter is perceived as unfit to be a basis for exclusive rights, then is there any correlating claim that is allowable?

    All those people who pour scorn on the Breyer reasoning; are they generally in favour of patents on mental acts?

    MM, the AMI and all the others who say Breyer got it right; what form of personalised medicine claims (if any) would they issue?

  79. Do you ever get the feeling the Court made the decision it did not entirely based on 101, but based more so upon the existence of an obvious relationship (administer, check, adjust) within the human (aka subject) body?

    The Court wanted to strike it down and so they did.

  80. I agree mainly with what you have written so far, but I think the abstract idea needs further development. The Bilski dissent by Newman is a very good explanation of how the word “abstract” is used in engineering, and the Haliburton case has a very good explanation of how “abstract” is a term of art and used in law.

    I think we are dealing with a word here that is overloaded with meanings. Probably only the sense of the abstract used in engineering is well understood.

  81. Pro Se then was correct.

    Either that or Crouch is a ninny.

    Nonetheless, a bit of notice would be in order.

  82. This is nothing more than a pretext for the SCOTUS legislating. Lemley laid the foundation for 101 expansion, and the SCOTUS just used it to legislate.

  83. OT (actually a realted topic), but perhaps the good Prof. Crouch can explain the deletion of the H_itler thread.

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