Punishing Prometheus: Part V – The Long Punt and the Improbable Return

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

The Bilksi decision punted on the question of what is an abstract idea, leaving it the Federal Circuit to devise a test. Judge Rader and Judge Dyk proposed different versions of an “I know it when I see it” test. Sadly, the Prometheus decision is of a piece with Judge Dyk’s approach—boiling the claim down to a point where the court can say it’s nothing more than _____  [pick at least one: abstract idea, law of nature, natural phenomena].

But interestingly the Court punted even more deeply in Prometheus—and perhaps, just perhaps, gave inventors and us crafty patent attorneys an out, a chance for a long return. A key premise of the Court’s analysis is that all of the claim elements, apart from the alleged law of nature, were “well­ understood, routine, conventional activity.” This not the normal state of affairs, either before the USPTO or before a court in patent litigation. The Court thus held out for another day:

We need not, and do not, now decide whether were the steps at issue here less conventional, these features of the claims would prove sufficient to invalidate them.

This sentence, a model of clarity, not it is.  It seems to suggest that had the other steps been “unconventional,” that is non-obvious, the claim would have stood a chance. This is how the Court rationalized the Diehr decision, noting that the steps of “installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly re- calculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time” were “nowhere suggested” as being “obvious, already in use, or purely conventional.” But of course the Diehr court never “suggested” that because the novelty and obviousness of that process was not before the Court then, and it (wisely) did not frame the discussion in that way, no less because it has already stated that it was not going to dissect the claim into old and new parts.  To position Diehr in this way is highly disingenuous of the Court.  Moreover, I have a very strong feeling that even 54 years ago in 1968, putting rubber in mold, putting the mold in the oven, and taking it out of the oven when it was done was pretty well known in the art. 

In any event, if this hint is correct, then there remains a path to patent eligibility, one that seems both relatively straight forward and fraught with complexity, much like any long punt return: just run the ball all the way down the field.  On our playing field, you need only (!) make sure that there are at least some elements that “apply” whatever law of nature is in your claim in an “unconventional” manner.  

Surely, good advice. Alas, there are several problems with such a facile rule. First, once you start dissecting a claim and evaluating each element by itself, it becomes very easy to map each element onto some prior art. That is after all, what many patent examiners do; I’m just sayin’.

Second, some claims, like those in Prometheus, are by designed to reflect the business operation of the inventor and his company, and avoid problems such as multi-actor infringement. For example, had Prometheus added more “unconventional” limitations to the claims, in particular reciting steps relating to the manner of treating the patient based upon the thiopurine level, the claim would have had significantly less commercial value, if any, since Prometheus was in the business of testing for diseases, not in the business of treating them.

This is, of course, something for which the Court does not evidence an understanding or a concern. But it is something that the Court should both understand and care about—since the entire purpose of the patent law is to encourage innovation through economic incentives.  If that is the theory, then the incentives to patent must be aligned with the value proposition that the innovator seeks to exploit.  It follows that reducing the value of the incentive should reduce the level of innovation. (I’m not saying here that in fact this is true; I’m merely stating this as hypothesis).

What is the Law?

The Court has spliced together disparate, essentially contrary opinions into a legal virus, a self-validating meme that cannot be defeated by logic or example. I said earlier that the Court’s analysis was “not even wrong.”  The Court’s reliance on claim dissection, on hand waving rules of “is it enough?” and “does it add something significant?”; its confusing of statistical relationships with “natural laws;” and its shear daftness in believing that Section 101 must lord over Sections 112, 102 and 103 all combine to create a powerful “means for” invalidating any patent, now extant or in the future.  Give me any patent claim, and I can craft an argument using the Court’s Prometheus analysis that it is invalid. And like any theory that is not falsifiable—that is not even wrong—you could not logically defeat my argument: for I could always say: “it’s not enough.” 

Zeus punished Prometheus for stealing fire—knowledge—from the gods of Mount Olympus and giving it to Man: chaining him to a rock so his innards may be eaten by a bird of prey. So too has the Court sat in judgment of the modern Prometheus, for “stealing” a small bit of knowledge from the equivalent—and equivalently false—god, the laws of nature. Like their namesake, this Prometheus has had its innards exposed for the taking, and its discovery is now available for anyone to feast upon.

There may or may not be laws of nature. Even Einstein’s theory of relativity is not immune to criticism. But there is a law which is universal, immutable and everlasting, a law that will be confirmed yet again by this decision: The law of unintended consequences. 


 

163 thoughts on “Punishing Prometheus: Part V – The Long Punt and the Improbable Return

  1. IBP, I personally think claim 4, "written directions" skates as close to the edge as possible. 

    I'd like to hear from Malcolm on this one.

    Sent from iPhone

  2. Ned violates his own canons of Supreme Court logic.

    Prometheus was a medical method patent.

    Prometheus was denied to be patent eligible subject matter as a law of nature.

    All medical method patents are categorically not patent eligible as laws of nature.

    Why is he wasting his time writing claims that according to his logic are not patent eligible?

  3. JCD–

    Either you are most certainly missing something, or your last comment was very funny in a self-deprecating sort of way!

    Unless I’m missing something…

  4. 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 process itself, is of no relevance

    Because Diehr is still the law of the land, it is worth repeating that there is no point of novelty test for 101.

  5. Looks like Ned may have learned his lesson seeing how he has cut and run from the Dicta Vs Holding discussion up thread.

    Although I am quite certain he will try and conflate the two, I hope the patent community beats him relentlessly on that issue the way he was beaten on the MOT and Business Methods.

  6. fish scales said in reply to MM…
    To which cases are you referring, MM?

    Ha Ha Ha..MM does not refer to court cases lest he be made to discuss one on the merits,

  7. There is a battle in the Fed. Cir. over software patents as you call them. Prometheus clearly does not help. Probably the way to think about this is that information processing suffer when this law of nature and abstract idea judicial exception is applied broadly. Benson tries to make all information processing methods laws of nature.

  8. Newbe:” All you did was scoff, swear and “run away.”

    Loks like MM has found his new NAL!

    Puts some underwear on this Moonie, no one needs to see that sight as you run up the hill in your skirt.

  9. MM: ” [oldstep]+[newthought] are effectively claims to the [newthought] themselves, at least as far as those practicing the prior art are concerned.”

    AI: When did this become the law? Proper pin-cites please?

    ::Usual silence::

  10. Ned: “AI, please educate us humble attorneys as to the correct distinction between holding and dicta.”

    AI: “We?? No, you mean “I” as in “Ned” all by yourself. ”

    Your fellow commenters, which I presumed to be comprised of at least some attorneys have wiped the floor with you.

    They already know what the distinction is and I have no doubt you do as well.

    However, you like to muddy the difference so that you can conflate the law and twist it like the nose of wax to suit whatever agenda you are paid to shill for at the moment.

    This way you can make your outrageous claims such as..

    Bilski held business method patents ineligible and ruled the MOT was the exclusive test.

    And now, your personal waterloo, Prometheus overruled Diehr’s claims as a whole approach and held MM’s wet dream of a mental steps test as legal precedent!

    Even though you know d am well those were not the binding Court holdings in those cases.

    It’s the height of intellectually dishonest and just st inks to high heaven!

    It tactics like this that make the public h ate attorneys and so called attorneys like you that give the legal profession a bad name.

    If I were your professor I would flunk you.

    And if I were you client, I would fire you.

  11. GAC,

    May I introduce to you the chief “yahoo” who yells (and whines) the loudest their ignorance?

    Meet MM.

  12. AI, please educate us humble attorneys as to the correct distinction between holding and dicta.  We wait, with baited breadth.  Inform us, Mr. Inventor, that we may know.

  13. Ned: Cry baby, again, if you have something of substance to say, do so.

    AI: Well, obviously I am catching up to the well deserved beating you have taken thus far in this thread. But I must add that “I Cried” did score a telling point. You preach about the difference of dicta and a holding ( at least to me) then completely ignore that difference when discussing this case and Diehr.

    This makes you a hypocrite and adds further credence to your growing reputation as an intellectually dishonest, and ethically challenged commenter on this blog

  14. Ned: “Malcolm, you are to be congratulated as the only person here who consistently advocated that the claims were invalid under 101 because they added a mental step to an otherwise old process.”

    AI: Ned, I just read the entire decision and no where did I see the Court express this opinion. Can you please cite an exact reference? Or is this just more of your Ned troll BS?

    Ned: Essentially, Stern was arguing that Diehr was wrong to prohibit dissection. Both you and he were right in the end.

    AI: Ned, I also did not see the Court express this opinion that “Diehr was wrong to prohibit dissection”. Again, can you please cite an exact reference? Or is this too just more of your Ned troll, lying POS, BS?

  15. Take, for example, the most recent opinion authored in the Therasense remand.

    What about it? Judge Alsup believes he understands the CAFC en banc opinion. I wonder if Abbott shares that understanding.

  16. JCD, I think the change is immaterial from a 101 point of view. The change may, though, help under 102, as you point out.

    This is probably why the SC was unconvinced with the government’s argument that 102 was the proper vehicle for handling claims such as Prometheus’s.

  17. I was being generous. The opinion, like 101 jurisprudence in general, is all over the place. And yes, I believe this is not always the case. Take, for example, the most recent opinion authored in the Therasense remand.

  18. FYI, your post in response to my 6 response clarified your position on this vis-a-vis using 101 to foreclose claims potentially resulting in infringement from practicing of a prior method + a mental comparison to a magic number. No need to type another response out unless you just have further thoughts or comments.

  19. That’s why people are upset.

    LOL. “Some people” are “upset”. Notably it’s the same people who are “upset” by EVERY court opinion that doesn’t uphold the eligibility, validity or enforceability of any patent. Notably, that group of people includes a large number of sockpuppets and trolls of this blog.

    Go figure.

  20. I’m pretty sure I said that in general a claim that discloses a process for generating a signal does recite patent-eligible subject matter. Am I missing something?

    Yes, you forgot to include a “not” in your initial comment, which led to me pretending that one was there. ;)

    Sorry. My bad.

  21. Overall, I think my feeling would be that it is, in general, possible to construe the opinion to mean what you appear to be taking it to mean, but the opinion itself is not quite so definite that there will not be alternative constructions. That is most unfortunate.

    Boo hoo hoo.

    The highlighted text is true of virtually every court’s opinion, particularly in patent law. Have you just started practicing or what?

  22. I’m not disagreeing (or agreeing) with any of that, but I’m not sure how that was something I was missing. :) I was asked about the patent-eligibility of a process for generating a signal. I wasn’t asked about the signal itself.

    I was more curious as to why MM thought I had said that such a process would be patent-ineligible. I suspect it was simply an oversight caused by reading too quickly – no biggie.

  23. You understand, of course, that this is exactly why the claim was held to be ineligible under 101

    The long version: conflation.

    The short version: What-Ev

  24. Yes.

    The signal may not be patent-eligible, but the process of generating (or generating and using) may be patent eligible.

    Different classes, different aims, different effects, different scope, and on and on.

  25. What matters is that the Court has created a mess.

    That’s what matters.

    That’s why people are upset.

    And yet, you have yahoos whoo think that the Court has been consistent, and that the matter is simple.

    And that’s why those people who so claim are yelling out their ignorance so loudly that they cannot, will not be ignored.

  26. Thus, I’m not arguing whether it should or shouldn’t be patentable under 101

    That’s the beauty of conflation. It just doesn’t matter.

    Join the Chorus: What-Ev

  27. I’m pretty sure I said that in general a claim that discloses a process for generating a signal does recite patent-eligible subject matter. Am I missing something?

  28. That rationale makes perfect sense – notably, it does not mean that the claim would be anticipated or obvious – but it is a perfectly acceptable policy rationale for why the claim should be invalid under 101.

    That is why I thought the exemplary proposed claim would have been much more interesting – it would have allowed for a clearer articulation of a standard one way or another. I have no idea how the court would have come down, and it may indeed be the way that you believe they would, but I still would have preferred to see an opinion based on a claim like that, as opposed to the strange claim language the Court dealt with.

    Overall, I think my feeling would be that it is, in general, possible to construe the opinion to mean what you appear to be taking it to mean, but the opinion itself is not quite so definite that there will not be alternative constructions. That is most unfortunate.

  29. JCD [Yes, generally speaking,] a claim that discloses a process for generating a signal recite[s] patent-eligible subject-matter under 101?

    I would love to hear you explain why a novel, non-obvious process for generating, say, a laser beam (let’s say it’s ten times more powerful than any existing laser beam) is “generally speaking” a patent-ineligible process.

    [grabs popcorn]

  30. MM, you assert that the offered alternative recitation of “determining whether the level of 6-thioguanine in said subject having said immune-mediated gastrointesti­nal disorder is less than about 230 pmol per 8×108 red blood cells” is “no different [than] the claim that was tanked [and] surely anticipated and/or obvious in the view of the prior art, which taught detecting metabolite levels for the purposes of calibrating drug dosage.”

    You further query, “[d]oes anyone believe that a level of metabolite ‘less than about 230 pmol per 8×108 red blood cells’ was never measured in any patient in the past?”

    I think this is the wrong question. The exemplary language I offered didn’t say “determining a level of x that is less than y”, it said “determining whether the level of x is less than y”.

    As I noted above in responding to 6, technically, determining a value of “x” is different than determining whether “x” is less than “y”. If you were going to write out the steps for each of these methodologies, the latter methodology would have an extra step comprising “comparing x to y”. Would this step be trivial? Sure. But anticipation analysis doesn’t let you exclude trivial steps – that’s what obviousness is for. However, I’m not sure how you can say it would be obvious to compare x to y if you don’t know the import of the value y.

    You close by alleging that “[I] seem to be arguing that thinking specifically about the magic number (230 pmol per 8×108 red blood cells) should be enough to impart patentability to an otherwise anticipated claim.”

    However, I’m not saying that “thinking specifically about [a] magic number (230 pmol per 8×108 red blood cells) should be enough to impart patentability to an otherwise anticipated claim”, instead I am simply noting that I don’t believe a method of determining a value of x anticipates a method of determining whether x is less than y. I do not have a firm opinion on whether such a claim would have been held to satisfy 101, thus why I was curious as to how the Court would have come out.

    Thus, I’m not arguing whether it should or shouldn’t be patentable under 101, I was simply wondering if the Court’s opinion would have changed had the claim language been slightly different. It’s my understanding that you believe that it would not have been, and I would welcome any thoughts or explanation as to why that is the case, but I don’t think it’s helpful to simply assert that the Court’s opinion is obviously equally applicable to different language without explaining why that is the case.

    Cheers!

  31. JCD anticipation analysis doesn’t let you exclude trivial steps – that’s what obviousness is for. However, I’m not sure how you can say it would be obvious to compare x to y if you don’t know the import of the value y.

    You understand, of course, that this is exactly why the claim was held to be ineligible under 101. Your hypothetical claim effectively turns practitioners of the prior art into literal infringers when they think about the relationship between a first number (the measured levels, obtained by an old conventional technique) and a second (patent ineligible) number with non-obvious “meaning.”

    It’s dead in the water, JCD. Let me know if you need further explanation. I hope not.

  32. I’m going to elaborate on the substantive issue without dignifying your comment with a response.

    I’m not saying that the argument would be a winner or that it would not, but I can definitely see the argument.

    Technically, determining a value of “x” is different than determining whether “x” is less than “y”. If you were going to write out the steps for each of these methodologies, the latter methodology would have an extra step comprising “comparing x to y”. Would this step be trivial? Sure. But anticipation analysis doesn’t let you exclude trivial steps – that’s what obviousness is for. However, I’m not sure how you can say it would be obvious to compare x to y if you don’t know the import of the value y.

  33. In general, I suspect my answer would be yes, although it’s impossible to say for sure in the abstract without seeing a particular claim. Obviously, though, it’s not my opinion that matters.

  34. Get a Clue, Diehr said the novelty of the claim elements was irrelevant. Obviously, dissection was afoot in Prometheus. So, when the Court in Prometheus give positive approval to Diehr, one tends to think the court is approving of the result in that case if not the entirety of the legal reasoning.

    I think MM approves of the result of Diehr as well, but I am not sure. What is clear, though, is that the SC continues to believe the result in Diehr was correct.

    However, and you must admit this, that the SC now seems to suggest that adding “conventional” steps that add nothing to the correlations, even if those conventional steps involve transformations, is insufficient. But, what is this but dissection?

    What matters, it seems to me, is whether the claim as a whole produces a new result. This seems to suggest that old transformations are not the kind of transformation the SC was talking about in Diehr. There has to be a new transformation, a new result, caused by the otherwise unpatentable law of nature.

  35. I guess I’m a conflationist, but here’s my restatement of the rule:

    A claim does not become patent eligible if the only difference between the claim and that which is known is one of the exception to patentable subject matter.

    I think that this rule is actually a relatively common sense rule and not difficult to apply.

    Yup.

    Only the Mayo Nays are too stxpxd to understand this. Or too invested in The Game to admit that they understand it (Paul Cole, Robert Sachs, Gene Quinn, Kevin Noonan etc.).

  36. I guess I’m a conflationist, but here’s my restatement of the rule:

    A claim does not become patent eligible if the only difference between the claim and that which is known is one of the exception to patentable subject matter.

    I think that this rule is actually a relatively common sense rule and not difficult to apply.

  37. IBP, yes.
     
    I think this might do the trick:
     
                1.  A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:
    (a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and
    (b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,
    (c)  providing a first output indicium, said first output indicium a physical signal, when said level of 6-thioguanine is less than about 230 pmol per 8×108 red blood cells; and
    (d) providing a second output indicium, said second output indicium a physical signal, when said level of 6-thioguanine is greater than about 400 pmol per 8×108 red blood cells.
     
                2.  The method of claim 1 further including the step of increasing the dosage of said drug in a next administration according to step (a) if said level of 6-thioguanine is less than about 230 pmol per 8×108 red blood cells.
     
                3.  The method of claim 1 further including the step of decreasing the dosage of said drug in a next administration according to step (a) if said level of 6-thioguanine is greater than about 400 pmol per 8×108 red blood cells..
     
                4.  The method of claim 1 where said first physical signal and said second physical signal are each selected from the group consisting of written directions, audible sounds, electronic messages, visually perceptible signals, and control signals.

     

  38. JCD–

    In your opinion, does a claim that discloses a process for generating a signal recite patent-eligible subject-matter under 101?

  39. Ned–

    I see people are still throwing around undefined, and ill-defined terms as though they had an understood definition.

    Ned, in your opinion, would a claim in the form “A process of generating a signal, said process comprising…”, recite patent-eligible S-M under 101, assuming that all other statutory requirements were met?

  40. And claims to old element + new element are supposed to be dealt with using 103 where he fact finder determines whether or not it would have been obvious to add the new element.

  41. AI,

    Whether it pleases you or not, you should note that this is familiar floor that Ned is being used to wipe up with: 101. He just cannot seem to get it right.

    It is no small irony that “101″ is often synonomous with “basic” and that Ned is beaten like a red-haired step child on the most basic of patent law.

    If medical methods were not just categorically excluded by the Supreme Court in Prometheus, I would suggest that someone invent a medical method to take Ned’s body parts that have been scattered to the four corners and mend him back together again.

  42. This is similar to Funk where the bacteria were known

    Actually that is not true.

    Reread the facts of the two cases again. In one instance a livingthing was created by the hands of man that had never been there in nature before. In the other, the bacteria were not changed in kind from what did exist in nature before. The court results follow the line of thoguht that you keep on fighting.

  43. WOW!

    Just goes to prove that I don’t even have to be here in order for Ned to get beat down.

    Well, I have a real patent case to over see.

    But I do check in from time to time to watch the ritual wiping of the floor with Ned.

  44. 101 embraced the whole statutory scheme defined in 101/102/103/112.

    Now Ned, try on Chakrabarty.

    Hmmm, Ned saying “something must be wrong” (and sayign so with no quotes to law, not even paraphrases to law) against what he Supreme Court clearly states in Chakrabarty can only mean one thing.

    Ned is a liar.

  45. In context:

    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 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

    12 It is argued that the procedure of dissecting a claim into old and new elements is mandated by our decision in Flook which noted that a mathematical algorithm must be assumed to be within the “prior art.” It is from this language that the petitioner premises his argument that if everything other than the algorithm is determined to be old in the art, then the claim cannot recite statutory subject matter. The fallacy in this argument is that we did not hold in Flook that the mathematical algorithm could not be considered at all when making the § 101 determination. To accept the analysis proffered by the petitioner would, if carried to its extreme, make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. The analysis suggested by the petitioner would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility of a process for patent protection. See, e. g., Gottschalk v. Benson, supra; and Cochrane v. Deener, 94 U.S. 780 (1877).

    Emphasis added. – the point is that there is no “point of novelty” under 101 and that for 101, a claim only of old elements can still be patent eligible. This section of the law has nothing at all to do with the ban on products of nature, which as Ned has sworn a blue moon to is not dictated by 101.

    Another beatdown on Ned because he just doesn’t get it.

  46. FN 12 of Diehr is the last word on this topic, as far as I know.

    Leave it to Ned to want to cite as controlling a portion of Diehr that he has also said has been overruled.

    Ned, you do realize what paragraph footnote 12 goes to, right?

    You are an Fn fxxl.

  47. Ned’s lack of legal reasoning can be seen in his bouncing from one latest reading to the next: it’s 101, no its 102, no its 103, it’s Learned Hand (it’s not) In re Bergstrom (it’s not), no in re Bergstrom was expresly overruled, no In re Bergstrom is controlling, Chakrabatray says nothing about it, Chalrabarty merely says it in dicta, Chakrabatry is about manufactures, Chakrabarty is not on point, it’s products by process, its footnote 12….

    The incessant goal post moving makes it more than clear that Ned is just lost and beyond his knowledge level.

    It’s so very sad.

  48. Is Leopold prescient? How can he be talking about my comment before I make it?

    Must be part of the special gift that makes reading Supreme Court decisions and holdings not so broad and sweeping (and knowing which to pick and choose from). Must be nice to know which big picture applies and which does not, especially as multiple big pictures are now in play.

    While you did not say anything directly about a comparison between Prometheus and Diehr, you did say “And it’s not that radical a departure from the law that came before” which no matter how prescient you are, is simply BS (you need a different godly power to deal with that).

    As for my characterizations, all I have doen is shown what the court has provided, therefore they are the Court’s, not mine.

    I’m pretty sure that it is NOT OK to ignore those, even if they are conflicting.

  49. I believe Diehr and fn. 12 are after Chakrabarty.
     
    Moreover, in Chakrabarty, the plasmids were known.  The inventors just put them into a single bacteria.  This is similar to Funk where the bacteria were known, and Parke-Davis where unpure Adrenalin was known.
     
    FN 12 of Diehr is the last word on this topic, as far as I know.

  50. seemed to

    If you are going to overrule a Supreme Court case, you better show me an actual legal citation that says that.

  51. Actually they did a pretty good job of cleaning up the mess they made in Diehr.

    Comments like this tend to keep MM’s credibility at negative levels.

    Given that Breyer stated he was enforcing existing precedent, that Diehr was the best case on point and that NO precedent was changing, (and yet he completely missed on the very precedent he was “enforcing”) only means that the “mess” is even worse because nothing in Diehr can be said to be overruled.

    MM has been invited to actually discuss the legal ramifications, and the fact that not only can he NOT see any, but somehow thinks that a mess in Diehr is cleaned up by a later case only speaking positively about Diehr shows his utter lack of legal acumen.

  52. “(i) a method of determining a level of 6-thioguanine is not the same thing as determining whether the level is less than a specific value, thus no anticipation,”

    Sometimes I can’t believe the people posting here are really attorneys.

  53. JCD The problem is that the Court’s decision, whether intentionally or unintentionally, goes too far with some of its language. In doing so, it makes a further mess of the quagmire that is 101 jurisprudence

    Actually they did a pretty good job of cleaning up the mess they made in Diehr.

    To me, a much more interesting claim would have included the following limitation:

    “determining whether the level of 6-thioguanine in said subject having said immune-mediated gastrointesti­nal disorder is less than about 230 pmol per 8×108 red blood cells”.

    That’s no different the claim that was tanked. Also, it’s surely anticipated and/or obvious in the view of the prior art, which taught detecting metabolite levels for the purposes of calibrating drug dosage. Does anyone believe that a level of metabolite “less than about 230 pmol per 8×108 red blood cells” was never measured in any patient in the past? I’m sure that very low dosages of 6-TG were administered to patients in the prior art, just as very dosages of 6-TG were administered to patients in the prior art.

    You seem to be arguing that thinking specifically about the magic number (230 pmol per 8×108 red blood cells) should be enough to impart patentability to an otherwise anticipated claim. Guess what? That’s exactly the problem that the Supreme Court just solved in its 9-0 opinion.

  54. The problem is that the claim made no sense. The wherein clauses didn’t say anything about any of the steps that were actually recited – I can’t figure out how they limited the process in any way, shape, or form.

    In one sense, the court’s opinion maybe even makes sense, although they did a terrible job explaining it. Imagine you’ve just discovered that falling objects accelerate at around 9.8 m/s^2, could you claim “dropping an object, wherein the object accelerates at around 9.8 m/s^2″, of course not. This the same sort of nonsense.

    The problem is that the Court’s decision, whether intentionally or unintentionally, goes too far with some of its language. In doing so, it makes a further mess of the quagmire that is 101 jurisprudence. It would have been way easier to simply say that this claim is anticipated under 102, and that the “wherein” clauses don’t actually limit the scope of the process claimed (if anyone thinks they do, I would love to hear an explanation of what narrowing effect they have, e.g., it would be useful to detail a process that would infringe the claim without the “wherein” clauses but does not infringe the claim with the “wherein” clauses).

    To me, a much more interesting claim would have included the following limitation:

    “determining whether the level of 6-thioguanine in said subject having said immune-mediated gastrointesti­nal disorder is less than about 230 pmol per 8×108 red blood cells”.

    Sure you could argue whether known techniques of determining a level of 6-thioguanine anticipate or render obvious a claim including this limitation, but I think there is at least a pretty decent argument that (i) a method of determining a level of 6-thioguanine is not the same thing as determining whether the level is less than a specific value, thus no anticipation, and (ii) known methods of determining a level of 6-thioguanine don’t teach determination of whether a level falls below that specific value, thus no obviousness.

    Overall, I’ll be the first to admit that I don’t have any knowledge of this particular area, but I can’t believe the type of claim presented in this case was ever commonly accepted. The problem is that we all have to deal with precedent established while Courts are dealing with claims like this (and like those presented in Bilski). I can only speak for myself, but I am not surprised or upset that the Court struck down this claim, instead I am simply disheartened by a lot of the language contained in the opinion.

  55. IBP, I don’t get your dismay. Really. While I was surprised that the Court abandoned Diehr’s prohibition of dissection, even without dissection, the government still supported the unpatentability of the claimed subject matter, but under 102 and not under 101.

    In the end, if the only thing new in a claim is a law of nature (or abstract idea) presented as just information such that the information, the correlations, can be published in a book making any practicer of the old and commonplace physical steps (administer drug, test for metabolite level) an infringer simply by knowing of the correlations, then there has to be something radically, and I mean radically, wrong with the claim.

  56. Shocked, Diehr heavily relied on In re Bergey (Rich, J.) for its statement that novelty was not to be considered under 101, primarily because 101 was to be considered before 102 and was the reason, according to Rich, that Congress separated 101 and 102 in the '52 Act.  

    The question therefore of whether a particular invention is novel is "wholly apart from whether the invention falls into a category of statutory subject matter." In re Bergy,596 F. 2d 952, 961 (CCPA 1979) (emphasis deleted).   Diehr, 450 US, 175 at 190.

    Diehr seemed to endorse this analysis from Bergey:

    "The first door which must be opened on the difficult path to patentability is § 101 (augmented by the § 100 definitions), quoted supra p. 956.[4] 

    [4]The Supreme Court has directed that the determination that statutory subject matter under § 101 exists "must precede" the inquiries under §§ 102-103. Parker v. Flook, supra, 437 U.S. at 593, 98 S.Ct. 2522, 198 USPQ at 198-199.

    In re Bergy596 F.2d 952, at 960.

  57. “and for any who disagree, I invite them to post a concise statement of such a test.”

    Determine whether or not the claim is an attempt to claim judicially excepted subject matter. If so, they lose.

  58. “Too bad they haven’t figured out information processing.”

    If only they’d “figure it out”! They just have a hard time “figuring” it! They need to learn to do figures!

  59. Ned said: “The shock in this case is the overruling of Diehr’s prohibition on dissection of a claim into old and new. That prohibition all but forced the Federal Circuit to come out on the wrong side in its own analysis of this case.”
    You’re shocked? I’m shocked shocked that it took all the bozos so long to figure out to ask, “Where in section 101 does it say anything about the claim as a whole?” Breyer and Scalia figured out that in Diehr Burger had been reading section 103 and mistaking it for section 101. Then Breyer as a copyright guy just used analytic dissection — that’s what you patent guys call “point of novelty.”

  60. don’t forget the exceptions to the printed matter doctrine.

    Don’t forget to wipe your xxx.

    Any other non-sequiturs we need to discuss?

  61. Ned said, “The shock in this case is the overruling of Diehr’s prohibition on dissection of a claim into old and new. That prohibition all but forced the Federal Circuit to come out on the wrong side in its own analysis of this case.”
    You’re shocked? Where in section 101 does it say to consider the claim as a whole? Were you reading section 103 and thinking it was 101? Breyer and Scalia must have figured out that Burger had been reading the wrong section of the statute when he complained about dissection.

  62. You seem to just want to trxll.

    Hmmm. Not really.

    It appears more to be the usual case that MM accuses others of what he does. He wants to troll with his soundbyte and avoid any discussion of the mental steps doctrine, even with self-professed newbies.

    How sad.

  63. So, too, does the printed matter doctrine

    lolz ON MM – don’t forget the exceptions to the printed matter doctrine.

    But it is important for the rest of us to appreciate how incredibly childish they are.

    Like your posts?

  64. newsock Except

    There is no “except” newsock. I’ve stated the workable rule. No claim in the form I described ([oldstep]+[newthought]) is patent eligible in the US.

    Are there prior Federal Circuit cases inconsistent with that holding? Yes. Prometheus for starters. The CAFC decision was overturned. Are there other CAFC cases that contradict the holding in Prometheus? I don’t really care. I’m not sure why you care. You seem to just want to trxll.

  65. I am delighted to be numbered as as a Mayo Nay (what a superb phrase – it deserves more widespread use). And to be called childiish at my age is not unwelcome – if I was 30 I would feel differently. Or perhaps it is second childhood.

    So thanks MM!

  66. Sachs It seems to suggest that had the other steps been “unconventional,” that is non-obvious, the claim would have stood a chance.

    Rest assured, Mr. Sachs, we wouldn’t be having this conversation if the other steps (the non-mental process steps) in Prometheus’ claim were non-obvious.

    Again, I can only imagine why Mr. Sachs would express any doubt whatsoever about that fact.

    Another mystery is why Mayo Nays like Sachs and Paul Cole insist on ignoring the fact that, in the wake of the (mythical) absolutist Diehr decision, the Supreme Court in Bilski (and likely other cases) and the Federal Circuit routinely engaged in claim dissection without any great controversy. As I’ve noted before a billion times, even the CAFC in its now-overturned Prometheus decision engaged in claim dissection. They just reached the wrong conclusion.

    Phrases like “mere data gathering” and “insignificant post-solution activity” have teeth. They always did. So, too, does the printed matter doctrine. The exclusion of “intended use” limitations. And the exclusion of certain “whereby” clauses according to Hoffer. Those are ALL examples of claim dissection. They are all relevant to the analysis of claims for both eligibility and validity considerations for the same reason: applicants cannot be allowed to obtain claims that effectively protect ineligible subject matter, or that skirt around anticipation/obviousness by adding spurious language that neither limits a step in a process or the structure of a composition.

    I realize the Mayo Nays will never stop shrieking. But it is important for the rest of us to appreciate how incredibly childish they are.

  67. Claims in the form [oldstep]+[newthought] are ineligible.

    Not. Too. Difficult.

    Except it seems that it is difficult for you to go beyond the soundbyte and apply that to the case law presented several times to you.

    Why is that?

  68. PC if you read the patent, look into the background in relation to the thiopurine drugs,

    Yes, that’s where they admit that all the tranforming steps and the general method of looking at metabolites to determine dosage levels is old in the art.

    look at the CVs of the inventors

    Um, what?

    study what the CAFC has said … in similar case

    Did you happen to read In re Grams (CAFC 1989)? That was certainly the most similar case, where the claims were found ineligible under 101 for effectively claiming an ineligible algorithm related to disease treatment. The facts in In re Grams are not plausibly distinguishable from those in Prometheus, which is why the CAFC glossed over them. I’m SHOCKED (SHOCKED!!!!) that you haven’t mentioned this case, Paul, in your musings about the decision.

    it is difficult to extract a workable rule of law from the Mayo decision.

    Claims in the form [oldstep]+[newthought] are ineligible.

    Not. Too. Difficult.

  69. Comments like these and the “birther” comments are neither fun nor funny.

    All they do is show the ignorance and bias of the poster making the comments.

    Time to grow up.

  70. In private correspondence I have had very detailed and cogent arguments to that effect, pointint to a passage in Diehr which states that the claim must be considered as a whole.

    But did you find the long-form birth certificate?

    LOL.

  71. IBP, one cannot claim a principle in the abstract. One must claim a useful application that produces a new result.

    See, e.g., Curtis and his preliminary observations discussion cases such as Le Roy v. Tatham.

  72. U.S. District Court for the District of Columbia (SmartGene Inc. v. Advanced Biological Laboratories SA, D.D.C., No. 1:08-cv-00642-BAH, 3/30/12. Claims for method and computer-based system for encoding and using medical knowledge found patent ineligible under Section 101 using Prometheus

  73. The trouble with the Supreme Court is that although they have a pretty good intuition of what should and shouldn’t be patentable, they have a habit of taking factually perverse cases to review and failing to give careful guidance for the future. I think there’s a certain laziness or unwillingness to engage with the established framework. Instead, they provide these oracle-like prophesies that we have to untangle for years. But once the dust settles, seems like they do tend to kick things in the right direction more often than not.

  74. It’s really a drag that Prometheus came around the same time as Obamacare.

    Yes, I know orals were heard last year, but Obamacare has been on the court’s mind for some time, and it is one of the historic USSC giants, maybe up there with things like Bush v Gore, Citizens United, Roe v Wade, Brown v Board of Ed, etc..

    I would bet that the court was spending all their time preparing for orals in Obamacare rather than researching, thinking about, and deciding Prometheus, and that Prometheus therefore got less than short schrift.

  75. I too find this opinion from SCOTUS devoid of “predictive power”. Is it over-simple to say that the “quality” of a Supreme Court decision is directly proportional to its predictive power?

  76. There is no nuancing here. First, it was only Breyer’s opinion–none of the other justices who signed on gave any indication whatsoever that they paid any attention at all to the case. And when Breyer’s opinion is examined as has been done on other threads here on patently-o, it can be seen to be confused, contradictory, potentially irrational, and inarticulate rather than being “nuanced”.

    +1

  77. I’m in essentially complete agreement with Paul Cole on this one.

    Leopold, your use in your opening sentence of the word “formalistic” taints the remainder of your post with bias. You could have used the word “formal” instead, but you chose not to.

    “Formalistic” is impliedly disparaging, as if the adherence to available forms is inappropriately excessive–and by its usage you have revealed the result of your value judgment concerning 101 analysis, that in your opinion, “engineers who have been turned into lawyers” tend to prefer an inappropriately overly-formal 101 approach.

    In response to that suggestion, I would ask you precisely what the formalism is of the current 101 “test”, post-Prometheus.

    IMHO there is no formal legal basis for any such test.

    The legal way of saying that “it is entirely appropriate to determine what the claim is fundamentally about before addressing the question of patentable subject matter” is to say that the claim must be construed before it can be analyzed.

    Fine…but how is a claim construed? There is currently no accepted form for claim construction. Is the preamble limiting? Maybe, it depends on the subjective assessment of the court. Is the subject of the claim a process, an article, or something else? It depends on the subjective assessment of the court. What is the precise scope of the claim? It depends on which so-called “doctrine” of claim construction the court subjectively decides should have primacy.

    To the extent that there is any formal structure to claim construction whatsoever, it is so minimal as to vary on a case-by-case basis–and I’m not talking about the actual claim construction exercise undertaken in any particular case, I’m talking about the principles and methodology underlying that particular exercise.

    “Reasonable to conclude that the claim is “”really”” about the content? Reasonable as judged by what criteria?

    This is why I advocate for stricter rules of, in particular, claim construction. I don’t know how much opinion work or litigation support you do, but claim construction is EVERYTHING (apart from IC)–once the claim is construed, it is all over. Rules like the preamble is always limiting; no claim language or phrasing can be ignored; assertions of utility are always limiting; etc..

    This addresses the political rather than legal conversion of process claims to article claims and vice-versa, the unlawful ignorance of express statements of utility, the unlawful ignorance of express limitations expressed in terms of field of use, the shuffling for convenience of the hierarchy of doctrines such as that of claim differentiation, etc..

    There must be SOME formalism, unless you are a complete post-modernist.

    Po-mo is fine in a philosophic sense, but for a practical application like patenting, where decisions must be made PROSPECTIVELY, it makes no sense whatsoever to anybody besides patent litigators–and they are not the primary object of the patent statutes.

    Rather than being disparagingly “formalistic”, a “formal” legal approach is what is needed, as per Paul Cole. This is law, not philosophy. You try to shift the “essence” of the “test” to what the claim is “about”, but when defined legally as “claim construction”, it is clear that that “essence” has a formal basis that is entirely inadequate for it to be admitted to the arena of “law”.

    The requirement of formalism is why we have lawyers, otherwise we would have philosophers, politicians, clergy, industry lobbyists, economists, and all sorts of other advocates who analyze and advocate from different perspectives, relying on different premises. Lawyers are supposed to argue and advocate from legal perspectives, to assist the secular and disinterested courts, NOT to debate in class, appeal to an ecclesiastical or rabbinical court, lobby or testify before congress, etc.–and those legal perspectives require formalism, for it is that formalism alone that defines what is legal, and what is not.

    As per Paul Cole that there is no workable rule of law articulated in Prometheus.

    And I notice that “nuanced” has become a euphemism for “inarticulate” or “incoherent”. It is all too easy to be inarticulate or incoherent when you are not required to address challenges to that inarticulation, as is the case with the USSC, and to have your acolytes and apologists spin it as “nuance”.

    There is no nuancing here. First, it was only Breyer’s opinion–none of the other justices who signed on gave any indication whatsoever that they paid any attention at all to the case. And when Breyer’s opinion is examined as has been done on other threads here on patently-o, it can be seen to be confused, contradictory, potentially irrational, and inarticulate rather than being “nuanced”.

    And no, we don’t have judges to do what they want and then try to justify their decisions after the fact–we have judges to conduct dispute resolution and decide cases by applying the law–be it substantive or procedural–and application of the law is the application of the formal constructs of the law, which are there PRECISELY to frame the limits of the judge’s decision-making.

    Leopold, think about what the basis is for 35 USC, and then think of how best to achieve those objectives. It is readily apparent that “patent law” must have some predictive power for the private parties that will need to prospectively apply it to their CURRENT decision-making, in order for it to have any value…and the more predictive it is, the more value it will have.

    This decision permits only a very weak, if any, predictive power, and is thus of very little value, if any, to future patent applicants, and therefore to the broader society.

  78. the ugliest claim language comes from the pharma/biotech attorneys.

    Isn’t that MM’s neck of the woods? The grown-up arts? The same arts withthe worst quality ratings per D. Crouch studies (which of course makes the general practitioners inteh area even worse, since MM’s picture claims achieve near perfect pass rates).

  79. +1

    And yet, the conflationists repeatedly state that this is so easy (and yet cannot do so).

  80. “But whether that is right or wrong, it is difficult to [rationally] extract a workable rule of law from the Mayo decision.”

    So difficult that it is in fact impossible.

    Here I am in complete agreement with Paul…and for any who disagree, I invite them to post a concise statement of such a test.

  81. Actual humor from MM.

    I’m impressed.

    Now if we could get him to actully discuss case law with his soundbytes.

  82. Your judgment is a crock. Clearly you have no clue as to what is dicta and what is holding.

    And the ironic thing is that it is you that clamors tha tothers get the dicta/holding thing right on other threads.

    You cannot get it right yourself, yet you preach to others.

  83. Not the only person. I have been saying this for years“:

    Like what was said: the only person

  84. Really good point there about Scalia and Breyer. Those two are also together on the concurrence in Bilsky. Looks like Scalia and Breyer see eye-to-eye on most these section 101 issues.

    Sent from iPhone

  85. It all goes back to the fact that Benson was and is wrong.

    Also, Leopold, by saying it is a good post does not mean I agree with it, but rather that you have expressed the views of your side well. The SCOTUS has and should not be using a judicial exception to exclude large swaths of patentability. It is not for Congress to include them, but to exclude them, and not for the SCOTUS to include, but only exclude in extrondinary circumstances. That is the way it is supposed to work by all our jurisprudence.

    Perhaps, Diehr can be thought of as a way the justices were trying to get around Benson which they knew was bad law.

    Oh well…writing this has put in mind a good paper that I think I am actually going to write about this. It will be focused on reality and not the psychotic machinations of abstract terms that goes on here and in the SCOTUS brains.

    Too bad they haven’t figured out information processing.

  86. Cry baby, you are of course asserting that Diehr  was unsupportable except when considering the dicta regarding "claim has a whole."

    Now that is, in my judgment, a crock.  All one has to recognize is that the Diehr  process produce a new result to understand that the claimed subject matter was eligible subject matter.

    Sent from iPhone

  87. Good post Leopold. I think it highlights that the controversy that we have with Prometheus is holding that the correlation is a law of nature, which it is most certainly not. So, perhaps we have become unfocused in what was an attempt to hold onto to Diehr, but now must be an attempt to reform the SCOTUS. This again is a battle to bring the court out of the 19th century to understand that those correlations are the goal that information is the goal–that it is invention. The SCOTUS just does not understand that inventors are now more sophisticated so rather than inventing a method of treatment they get to the nub of what is important and realize that once this is done that all else has been done.

    But, get it, there is no more. I don’t have time…..

  88. They didn’t say anything about that. But, it might have been, since I think they used open ended “comprising” language.

  89. On a point of explanation (and this must be my last word on this subject).

    I have no clients with assay-type claims like those in issue in Mayo. So I write just as a matter of legal interest. What I DO remember is an over-reaction to KSR which I have long contended was a cautious decision to which there was a gross over-reaction. It would be sad if Mayo brings about the same result.

    However, US colleagues who DO have clients in this kind of field have expressed great concern about this decision, and also if the analysis is extended its knock-on effects in other areas such as software, and I have listened.

    I completely understand Leopold Bloom’s approach, and where he is coming from. When I first read the CAFC decision last year and looked at the patent, my first impression was that this was a rubbish patent, and that the claims were a try-on. It is only too easy to say that they should have been better contrived. If you look at some earlier postings of mine, you will see suggestions in that regard. But if you read the patent, look into the background in relation to the thiopurine drugs, look at the CVs of the inventors and study what the CAFC has said and what the EPO says in similar says in similar cases, you can find another story, and I have put that forward in postings because it needs to be put.

    I have come to appreciate that the clinically significant interpretation of a blood test is a technical feature and should not be dismissed as mere information or a mere rule of nature. That is the position that the EPO has taken in the patent it has issued and on the in my submission it is the better approach. But whether that is right or wrong, it is difficult to extract a workable rule of law from the Mayo decision.

    I do not know whether the personal attacks on Dave Kappos will be moderated out. But they do not describe the person I have met.

  90. In private correspondence I have had very detailed and cogent arguments to that effect, pointint to a passage in Diehr which states that the claim must be considered as a whole.

  91. 6, may I ask, was the new movie an artistically creative one? Was it a thriller with a surprising and unexpected storyline?

  92. Not the only person. I have been saying this for years. All of this should have ended back with LabCorp v. Metabolite, but for some weird reason a majority bought the solicitor’s argument that the writ should be dismissed since the 101 issue had not been fully fleshed out by the CAFC. Breyer was rightly mystified by this because it was clear that the issue had been addressed, just not specifically under 101. So the Metabolites of the world got a reprieve, but I knew it would be brief. All you have to do is go back and read the transcript of the oral argument in LabCorp. It was clear that the two most hostile to the patent in that case were Breyer and Scalia. If those two agree on an issue, you can pretty much bank on their position being the ultimate holding. Remember in Breyer’s dissent when he said that the claim at issue wasn’t even at the boundary of eligibility? The claims in Prometheus are no different than the claim in LabCorp. Orly Taitz and her followers will never believe Obama was born in the United States, no matter what evidence is presented to them. It’s the same story with the patent birthers here. To them this is all a matter of belief. To the uneducated or uninitiated the statements of the patent birthers seem to make sense. I mean, they use impressive-sounding words like “facile.” It’s enough to make one want to touch the hem of their garments. Fortunately our Supreme Court knows BS when it smells it. And these patents were quite stinky.

  93. Leopold contradicts himself with the notion of applying the law and comparing Prometheus and Diehr which are contradictory.

    The Dierhbots were shot in the head nine times. They didn’t die. They turned into P-Zombies. Meet … The Mayo Nays!

    LOLOLOLOLOLOLOLOL!!!

  94. Leopold contradicts himself with the notion of applying the law and comparing Prometheus and Diehr which are contradictory.

    Leopold doesn’t recall saying anything about a comparison between Prometheus and Diehr.

    1) it is radical

    So I have heard.

    2) you do not get to ignore sweepingly overbroad characterizations when you apply the law. Pick and choose is just as bad as conflation .

    I wasn’t talking about the Court’s characterizations. I was talking about yours. Such as item (1) above.

    I’m pretty sure that it’s OK to ignore those.

  95. “That would be a miracle and a direct cancelation of the words in Diehr.”

    Or it would be reading in context. Either or. You know.

    Maybe the fact that such which you feel was discussed in that paragraph was literally never even at issue might have been a small context clue to informed readers.

  96. Leopold contradicts himself with the notion of applying the law and comparing Prometheus and Diehr which are contradictory.

    Prometheus is now part of that law. And it’s not that radical a departure from the law that came before, when you look at the actual facts of the case and don’t get carried away with sweepingly overbroad characterizations of the Court’s holdings.

    1) it is radical
    2) you do not get to ignore sweepingly overbroad characterizations when you apply the law. Pick and choose is just as bad as conflation .

  97. little more than dicta

    How clueless are you with a case holding and dicta?

    Seriously, that has got to be the most ignorant thing I have ever read on a blog in the last ten years.

  98. Good point. From my experience, the ugliest claim language comes from the pharma/biotech attorneys. Not surprising since many of them do little more than claim compounds so they are inexperienced with the nuances of claim drafting.

  99. “and old video player plus a new movie on a generic and old disc gets a 101 rejection. ”

    I just did a 103 for this and they cancelled the claim. :/

  100. “gave inventors and us crafty patent attorneys an out”

    Maybe “crafty” is the problem. The Prometheus claims didn’t write themselves. It looks like someone went out of his or her way to come up with weird language.

    Is it time to set up a parallel patent system for pharma and biotech arts, so that the entire patent system isn’t ruined for other industries which are less psychotic and ubercompetitive?

  101. Any ideas of what Prometheus might mean for software patents? As a non-lawyer, Prometheus seems like a burst of sunshine and hope, but it’s hard for a non-expert to draw any conclusions from either the articles or the commentary.

  102. Leo, I don’t think this was so much a slap to the patent bar as wake up call to the Federal Circuit. The source of the problem in the Federal Circuit was the “claims as whole” prohibition on dissection. This from Diehr. But that came from In re Bergey and Judge Rich, who insisted that 101 was a threshold issue, to be decided prior to novelty, obviousness and support/clarity. Judge Rich seem to claim some special knowledge regarding the intent of Congress in dividing 101 from 102 in the ’52 Act, he himself having been part of the drafting process. The Supreme Court apparently gave him deference in Diehr. But that was a mistake, it seems.

    But, supporting your view that this was a slap at the patent bar was the Court’s observation about dressing up claims with insubstantial limitations that masked the truth about the subject matter being claimed. But this was the ultimate problem with the approach Rich introduced in Bergey: It was prone to easy evasion by elevating form over substance.

    Further supporting your view that this was a slap at the bar is Judge Rich himself: a patent attorney prominent in the NYPLA, and picked by the president of the APLA to be part of the patent bar’s review of Federico’s draft patent statute. He was placed on the court in ’54 largely as a result of bar’s efforts; and, according to the NYPLA’s encomium about Rich, Judge Rich was the very first patent attorney in the history of the United States to be appointed to a Circuit Court.

    That may be or may not be true.

    But it is apparent that Rich was a patent attorney first and always, and never forgot his roots.

  103. One more thing. I have been wondering why these Prometheus claims were written with only the one or two conventional steps explicitly claimed followed by the wherein clauses expressing the “mental step” or [oldstep]+[newthought] as MM puts it. The wherein clauses could have been expressed as further “increasing the dosage if . . ” and “decreasing the dosage if . . .” steps, and the claims would have at least the appearance of satisfying 101, 102, and 103. And infringement could still have been proven if a dosage were changed as a result of the test.

    But as Leopold Bloom expresses his analogy to these claims, it seems clear that the intent of the drafter was to transform the prior art testing step into an infringing royalty bearing step simply because the results would necessarily have to be inside or outside the claimed upper and lower limits. Like transforming a prior art CD player into an infringing CD player when the novel CD is played. A far easier infringement proof, but too clever by half.

    Has the drafter of these Prometheus claims spoken out defending them outside of the litigation?

  104. The comments of Leopold Bloom explaining the SCOTUS point of view expressed in the Prometheus and Bilski decisions are the most coherent, concise and compelling that I have read. They should be more widely disseminated.

  105. Ned, I think you’ve figured it out. Malcolm is actually a sockpuppet of a Supreme Court justice. The question now is which one:

    He’s not one of the four conservatives or Stevens. His prior political postings here are evidence of that.

    He’s not Sotomayor or Kagan, who haven’t been on the court for very long. I doubt MM would have been able to suppress his enthusiasm at being confirmed, and he’d have given it away.

    Breyer is easily the Court’s funniest jurist, so MM can’t be him.

    That just leaves one conclusion.

    Malcolm Mooney is actually Ruth Bader Ginsburg.

  106. But,  it begs the fact that Diehr's "claim as a whole" is now little more than dicta, confined to the facts of that case.  When seeking to determine whether a claim to the new video player where the only thing new is the video, courts will follow Prometheous and not Diehr.

  107. That would be a miracle and a direct cancelation of the words in Diehr.

    There are better rationales than to accept the :it never stood for that” mind-numbing inconprehensibility.

  108. Unfortunately attorneys cannot just rely on a big picture and have to apply the law.

    Prometheus is now part of that law. And it’s not that radical a departure from the law that came before, when you look at the actual facts of the case and don’t get carried away with sweepingly overbroad characterizations of the Court’s holdings.

    In the video player example, when the player is empty the objection is that it is not novel under 35 USC 102. When it has the disc in it with the novel film, the objection becomes 35 USC 101. When you take it out again, it reverts to 102. Have we entered Bedlam?

    A claim drawn to a generic and old video player gets a 102 rejection. A different claim drawn to a generic and old video player plus a new movie on a generic and old disc gets a 101 rejection. In both cases, the claim is unpatentable. Sorry, but I don’t find that to be mind-boggling chaos. I don’t think it is very confusing at all, really.

    In this case we have a patent-eligible method of medical treatment, and a patent-eligible metabolite test. Both are processes falling straightforwardly into 35 USC 101. You don’t even need a machine or transformation test to decide that – such subject-matter has been considered patent-eligible for many decades. If this is to be undone by an explanatory final clause, we are entitled to ask: By what logic?

    I gave you some logic – it was undone in these cases because the claims weren’t really about the nominally recited processes at all. With your approach, Section 101 has no meaning , since it can be easily avoided by draping unpatentable subject matter with the trappings of an entirely conventional process. The idea that a provision of the Patent Act shouldn’t be entirely undone by formalistic, “clever” drafting is not new, and it is not at all surprising that the Court rejected a formalistic approach to this statute.

    And the attitude to the “information content” is cavalier. It makes the difference between a useful procedure and a useless procedure.

    I don’t have any doubt that the information content is incredibly important. But according to the Court, Congress has not yet authorized patent claims that are drawn so as to effectively claim all uses of a particular bit of information. As a policy matter, I think that’s a good thing, but my opinion on the policy (or the value of this particular information) isn’t really relevant.

    As an attorney, I’m for formalism. Within that, I’m for straightforward and easily applied rules. You don’t get that from Mayo and a “big-picture” approach in a specialised area of the law is not a good way forward.

    I’m for formalism, too, Paul. But formalism and formalistic are different words. The latter implies an excessive concern with formal matters. As my earlier comment suggests, I don’t think the Court’s “big-picture” approach will apply very well to all, or even most, claims. But I also think it’s helpful for the Court to slap the bar back when it has gone too far, as it did here and in Bilski. I don’t need to know precisely where the boundary line is to know that these two cases went way past it.

    If you were hoping that the Court would provide a high-resolution map that highlighted every detail of the contour between patentable and unpatentable subject matter, then of course you are disappointed by this decision. But this is not a nuanced opinion dealing with a close case. And it shouldn’t be treated as such.

  109. The most interesting take away from Prometheus therefor seems to be the flat-out rejection of Diehr’s “claims a whole” analysis that refused to dissect the claims between old and new. I think we can all agree that Diehr has been overruled, at least on this point.

    The Supreme Court seems to think that Diehr never stood for that point. Maybe it’s time to consider the possibility that they might be right about that?

  110. I think we can all agree that Diehr has been overruled, at least on this point.

    Except we can’t because Bonehead Breyer explicitly sought NOT to overrule any precedents. In fact, he called the Diehr decision the best case on point, and made it a point that the temptation to change precedent was expressly denied.

    Face it – the Prometheus decision not only did not overrule ANY precedent, it muddled averything together and created a paradox.

  111. I think we can all agree that Diehr has been overruled, at least on this point.

    Except we can’t because Bonehead Breyer explicitly sought NOT to overrule any precedents. In fact, he called the Diehr decision the best case on point, and made it a point that the temptation to change precedent was expressly denied.

    Face it – the Prometheus decision not only did not overrule ANY precedent, it muddled averything together and created a paradox.

  112. I think we can all agree that Diehr has been overruled, at least on this point.

    Except we can’t because Bonehead Breyer explicitly sought NOT to overrule any precedents. In fact, he called the Diehr decision the best case on point, and made it a point that the temptation to change precedent was expressly denied.

    Face it – the Prometheus decision not only did not overrule ANY precedent, it muddled averything together and created a paradox.

  113. Malcolm, you are to be congratulated as the only person here who consistently advocated that the claims were invalid under 101 because they added a mental step to an otherwise old process.

    I don’t know if you influenced the court in coming to the conclusion it did, but I think you might have.

    Also, I would just like to point out that “Stern’s” amicus brief also argued that 101 embraced the whole statutory scheme defined in 101/102/103/112. Essentially, Stern was arguing that Diehr was wrong to prohibit dissection. Both you and he were right in the end.

    My congratulations, once more.

  114. Thumbs, I agree that even though MM was right in the end, the reasoning of Breyer is so far afield of Diehr that one would not have expected it. I had argued with Malcolm for quite some time that his approach was better taken under 102, this even before the government filed its brief arguing that very approach.

    The shock in this case is the overruling of Diehr’s prohibition on dissection of a claim into old and new. That prohibition all but forced the Federal Circuit to come out on the wrong side in its own analysis of this case.

    Perhaps the Federal Circuit could have changed the course of events had it sua sponte held the Prometheus claims eligible under 101, but invalid under 102 given the admission that the only thing new in the claims were the correlations, which is, after all, simply information that is invariant from patient to patient and which essentially is in the public domain once the patent was published describing the correlations.

  115. Paul, the EPO approach seems to look at patentable subject matter formalistically, which I fully understand. A claim to a video player/disk, where the only thing new is the video, formally is a claim to an apparatus, a machine, which on the surface appears to be directed to patentable subject matter. This is why I thought the government approach suggested in its amicus brief had some merit in that one would look to the formalistic claim elements to determine whether the subject matter was directed to patentable subject matter, and then would handle the ineligible matter in terms of novelty analysis. If the only thing different between the old video player/disk the claimednew video player/disk was the video, ineligible subject matter, the claim was not novel.

    However Supreme Court emphatically declared in this case that the government’s preferred approach was not adequate, and that one had actually to look to the novel subject matter in the first place determine to whether that subject matter was patent eligible. It’s the same analysis, but under section 101 and not under section 102.

    The most interesting take away from Prometheus therefor seems to be the flat-out rejection of Diehr’s “claims a whole” analysis that refused to dissect the claims between old and new. I think we can all agree that Diehr has been overruled, at least on this point.

  116. Within that, I’m for straightforward and easily applied rules.

    Right. So if I go back and review the comments, Paul, I’ll find you totally agreeing with a rule that says that any claim in the form [oldstep]+[newthought] is ineligible under 101.

    Or I’ll find you advocating in the alternative that mental steps should omitted in a 102/103 analysis.

    Right, Paul? Because you’re all for “straightforward and easily applied rules.”

    In the video player example, when the player is empty the objection is that it is not novel under 35 USC 102. When it has the disc in it with the novel film, the objection becomes 35 USC 101

    BOOHOOHOOOHOHOOHOOHOOOOO!!!! What the fxxxx difference does it make, Paul, if you ignore the video content because otherwise you implicate 101 versus tanking the claim under 101 because its effectively a claim to the ineligible content? What difference does it make, Paul? Why is one “simple and straightforward” and the other not?

  117. Unfortunately attorneys cannot just rely on a big picture and have to apply the law.

    In the video player example, when the player is empty the objection is that it is not novel under 35 USC 102. When it has the disc in it with the novel film, the objection becomes 35 USC 101. When you take it out again, it reverts to 102. Have we entered Bedlam?

    In this case we have a patent-eligible method of medical treatment, and a patent-eligible metabolite test. Both are processes falling straightforwardly into 35 USC 101. You don’t even need a machine or transformation test to decide that – such subject-matter has been considered patent-eligible for many decades. If this is to be undone by an explanatory final clause, we are entitled to ask: By what logic?

    And the attitude to the “information content” is cavalier. It makes the difference between a useful procedure and a useless procedure.

    As an attorney, I’m for formalism. Within that, I’m for straightforward and easily applied rules. You don’t get that from Mayo and a “big-picture” approach in a specialised area of the law is not a good way forward

  118. Who is the new moderator and what are the moderation rules? I didn’t even say anything all that bad. Was it removed for being a potential troll? I’m pretty sure I wasn’t trolling, I just thought it was a nice little parody of this guy’s title to make a point about the repeating “work” itself.

  119. It is simply bizarre that anyone cannot get this stuff, or understand how and why SCOTUS did what it did

    I want to see the easy and not very complicated part that this squares with the existing 101 precedence that you promised several days ago.

    THAT’S the real issue.

  120. Leopold, this has been my reaction to this entire series by Sachs. Patent attorneys and agents are supposed to be technically or scientifically trained and literate, and knowledgeable about patent office rules and procedures. And sometimes this puts them at a disadvantage when it comes to the bigger picture of the law. The best patent litigators are invariably not registered patent attorneys. I don’t believe Morgan Chu or John Keker or Bill Lee have ever actually prosecuted a patent application. It is simply bizarre that anyone cannot get this stuff, or understand how and why SCOTUS did what it did. The only conclusion you can reach is that those who don’t get it don’t want to get it.

  121. Well put.

    I think that the patent bars’ focus on rigid application of 101/102/103/112 have completely set the wrong expectations and created a great deal of chaos by substituting legal formalism for “common sense”.

    Taking that which is known and simply adding something that is not patent eligible should not transform the former into something deserving of patent protection. E.g., Paul’s video example.

    I’d contribute my own example, awarding a patent for EVERYTHING to the discoverer of the Higgs Boson by claiming any substance + at least one Higgs Boson. Whether this is rejected as 101 or some longer 102/103 + inherency argument should be irrelevant.

  122. “On our playing field, you need only (!) make sure that there are at least some elements that “apply” whatever law of nature is in your claim in an “unconventional” manner.

    Surely, good advice.”

    I think you mean “surely bad advice from someone who still doesn’t understand the decision he just wrote 5 posts for PO on”.

    Seriously? The conventionality has dic to do with what we’re interested in: are you attempting to preempt the judicial exception at issue? If the answer is no, either because you have plenty of limitations preventing such (conventional or not) then you’re fine. If the answer is yes then you’re not.

    It really is that simple.

  123. I remain perfectly willing to discuss any “actual case law” with you or anyone else who uses a consistent pseudoynm here

    Except that you have consistently shown that you are not willing at all.

    My pseudonym is consistent. I asked you politely to discuss case law, and when someone else presented different case law, I asked you again.

    All you did was scoff, swear and “run away.”

    You keep on saying one thing and doing something completely different. All you want to do is parade around your soundbyte mantra. Yet when asked to explain that very mantra in light of governing case law, you will expend no effort, and put down those asking you.

    What kind of discussion is that?

    You are all show and no go.

  124. I think the unique combination of traits you get when you turn an engineer into a lawyer makes many of us lose sight of the big picture sometimes, resulting in too much dependency on formalistic approaches.

    Here, the Court is simply telling us that it is entirely appropriate to determine what the claim is fundamentally about before addressing the question of patentable subject matter. Paul’s video player claim is certainly patentable subject matter when the claim is really about the video player apparatus. But when the claim recites a video player structure in such general terms that it is abundantly clear that the claim is referring to all video players, and then includes a recitation to a (conventional) disc carrying ostensibly novel content, I think it is reasonable to conclude that the claim is really about the content, notwithstanding the fact that it is dressed up in apparatus or process language.

    That was the case in Bilski, and is also the case here. This claim was not about a novel method of administering a drug or monitoring chemical levels in the blood; it is about the information content inhering in the results of a conventional test. The inherency of that information in the results is simply a fact, regardless of the work that was needed to uncover it. And you can’t patent facts, at least not in the U.S.

    Given the above, the Court’s statement (highlighted in Mr. Sach’s post) makes sense. If the recitations to the information content were surrounded by less conventional steps, then it might be more challenging to conclude that the claim is simply about the information content. The Court can’t decide that case because it doesn’t have it, but I submit that the proper response in that situation would be to move on to 102 and 103.

    This is not a formalistic “point of novelty” test; it’s something a little simpler and more fundamental. Sure, this approach to the claims has to be applied judiciously (to avoid the horrors of “conflation”), but that’s why we have judges.

  125. newsockie Let the record show that Mr. MM never addressed the various actual case law brought up to be discussed with his soundbyte.

    I remain perfectly willing to discuss any “actual case law” with you or anyone else who uses a consistent pseudoynm here. But having wrestled enough peccaries like you before, I need to impose some ground rules before I discuss your “actual case law”. I provided those initial criteria to you already. They are perfectly fair and reasonable and not the least bit onerous (assuming that you actually know what you are talking about and aren’t simply trxlling).

    In the meantime, feel free to rebut the following:

    claims in the form [oldstep]+[newthought] are effectively claims to the [newthought] themselves, at least as far as those practicing the prior art are concerned.

    Nobody has succeeded doing so over the several years we’ve been discussing the issue. I predicted Prometheus’ claim would fail and Diehr’s alleged “absolute” prohibition on claim dissection would be proven to be a myth, for this very straightforward reason.

    Now, just as we did in the wake of KSR, we are forced to listen to elitist, self-proclaimed “experts” on patent law (who tend to be wrong about just about everything, particularly 101) tell us about how this is The Worst Decision Ever for Patents. Meanwhile, the rate of filings and grants keeps breaking historic records.

  126. Let the record show that Mr. MM never addressed the various actual case law brought up to be discussed with his soundbyte.

    As far as “doing the right thing,” that remains to be seen. What the Court did was more than just deny a patent (which may have been the right thing).

  127. I think we are singing from much the same hymn sheet.

    I put forward on my posting the concept of oscillating patent eligibility: a video player with/without a disc in it, the only novelty being the video on the disc. Your children can have endless fun switchng the player from non-eligibility to eligibility by fitting the disc into the player and taking it out again. I think you can do the same with the Prometheus blood test – no test criteria: patent eligible (but not novel); test with criteria: novel (but not patent eligible).

  128. Let the record show that Mr. Sachs never addressed the unfortunate, indisputable fact we’ve been discussing here for years: claims in the form [oldstep]+[newthought] are effectively claims to the [newthought] themselves, at least as far as those practicing the prior art are concerned.

    There really is only reason anyone would pretend that a method of thinking a new thought could be saved from patent ineligibility by adding some prior old “transforming” step (or less). We all know what that reason is.

    Thank you, Justice Breyer, your fellow members on the Supreme Court, and your clerks. You did the right thing.

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