The Impact of Mayo v. Prometheus: Three Weeks In

By Dennis Crouch

It has been three weeks since the Supreme Court decided Mayo v. Prometheus, and in that time four additional decisions have been released that rely on the Supreme Court opinion.

  1. In Association for Molecular Pathology (AMP) v. Myriad Genetics, Inc., the Supreme Court granted certiorari, vacated the Federal Circuit decision and remanded for further consideration of patentability of Myriad’s claims to isolated DNA strands based upon the outcome of Mayo v. Prometheus.
  2. In SmartGene v. Advanced Biological Laboratories, a DC District Court relied upon Mayo v. Prometheus to invalidate a patent claiming a system and method using a computer program to guide the selection of therapeutic treatments. In that case, the court noted that the steps of the claims were invalid because they added nothing “specific” to the abstract idea of choosing a therapy “other than what is well-understood, routine, conventional activity, previously engaged in by those in the field.”
  3. In Nazomi Communications, Inc. v. Samsung Telecommunications, the patent claimed a method of “executing an instruction” that resolves a reference when needed and updates a data structure to indicate that the reference has been resolved. The N.D. California district court found that the claims do not violate the patentable subject matter limitation of Section 101 because they “do more than recite an abstract idea and say ‘apply it.'”
  4. In L.A. Printex Industries, Inc. v. Aeropostale, the Court of Appeals for the 9th Circuit was asked to determine whether a lower court had correctly dismissed a copyright infringement lawsuit over a floral fabric design. In a footnote, the court cited the Mayo decision in support of the notion that “ideas, first expressed by nature, are the common heritage of humankind” and not protectable as intellectual property rights.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

113 thoughts on “The Impact of Mayo v. Prometheus: Three Weeks In

  1. It’s not taboo.

    Likely it’s just inane (if it makes it up to that level). But that meets the rather low expectations that you have established in the past.

  2. Likely it’s taboo for me to say this on a blog for patent lawyers, but I’m glad the Supreme Court ruled as it did in Prometheus. It will be interesting to see how the Myriad patent litigation fares in light of the high court’s ruling.

  3. I am surprised to see little to no discussion of the Nozomi case. Not only does Nozomi apply the principles of 101 statutory subject matter correctly it provides a template for overcoming any abuses by anti-patent and IP obstructionists that may be in positions of power to do grave harm to the patent community.

    Here is a breakdown of a couple of well timed lessons we can learn and apply from this case.

    LESSON ONE: Force the identification of the abstract idea itself.

    This is very important to remember in the event an examiner or judge my try to use a preemption analysis to deny or invalidate a claim. Hold your opponents feet to the fire and force him or her to identify on the record, in a concrete and objective manner, the abstract idea your claim is accused of being. Nine times out of ten they will fail and you will prevail. Also, for the record, I have personally never encountered any examiner that could state for the record exactly how an abstract idea prevented all current and future use of the idea itself.

    “Moreover, Kyocera has not clearly identified the abstract idea that the ‘160 Patent claims 19 allegedly pre-empt.” (Nazomi Communications, Inc. v. Samsung Telecommunications, )

    LESSON TWO: Make them read the claims in light of the specification, every time.

    This can’t be stressed enough. In this era when BRI is so freely bandied about as a basis of rejection or invalidation without even a mention of the specification a well written and strategically detailed spec can be kryptonite to even the must staunch an anti patent judge or examiner. So every time they put forth some ethereal and unreal imaginative interpretation of your claims bring them back down to earth with the spec.

    “Like the claim in Benson, Kyocera argues, the claims are so abstract and 9 sweeping that they cover both known and unknown uses through existing or future-devised
    10 machinery, or without any apparatus. Nazomi responds that the ‘160 Patent claims, when read in 11 light of the specification, are clearly directed toward execution of computer instructions and thus are 12 not abstract. However, as discussed above, the ‘160 9 Patent claims recite what appear to be fairly specific steps, and the specification distinguishes the 10 invention from a prior art technique that operates on the same principle of not resolving a reference 11 more than once” (Nazomi Communications, Inc. v. Samsung Telecommunications, )

    Conclusion:

    And on one last concluding note, while the MOT may or may not be dead, the application analysis is still alive and quite well, despite what Prometheus supporters may spin in their post analysis of the case.

    “Thus, it appears that the claims are directed to a specific application and implementation of general 25 principles, rather than broadly pre-empting the use of an abstract idea. ” (Nazomi Communications, Inc. v. Samsung Telecommunications, )

  4. Is it “Things in nature cannot be patented;”

    or

    is it “Things of nature cannot be patented?”

    If the latter, then anything that sexually reproduces is a thing “OF nature” and cannot be patented.

  5. Pardon the double posting. But I felt this important enough to edit out the obvious typos.

    ___________

    As a Whole said ..”It means that the claim is dissected and those steps that are not liked are analyzed step-by-step and dismissed as irrelevant (it’s not the right kind of transformation, or even machine at that) and then what’s left is put back together to mouth the words “as a whole.” so that the true inventive elements (pieces) of a claim can be evaluated under judge-made patent law.
    As a whole meets claim dissection.”
    ~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~
    AI: From an Actual Inventors perspective, the problem with this approach is it takes away any objectivity in the patent prosecution process.

    6 can’t establish a prima facie case for his phoney pre-emption doctrine because he can’t objectively demonstrate with factual evidence that a process can preempt an abstract idea.

    MM, can’t establish a prima facie case for his mental steps dissection policy because he can’t objectively demonstrate with factual evidence that anyone can be successfully sued for thinking a new thought, and thus prevented from thinking the thought.

    
Yet, under these new abstract concepts for patent law and prosecution anyone can reject or invalidate anything that is not some solid object, as non statutory subject mater. Which in this complex information processing age means 99.9% of all innovations can and will be excluded.

    And of course this makes the anti patent crowd very pleased. But this is not the law. We just had passe of the AIA, and surely with all the lobbyist out there Congress could have been persuaded to eliminate processes as an independent category from the statute.

    Congress could have flat out said software is not patentable.

    Congress could have flat out said business methods are not patentable.

    Congress could have flat out said, only the things you hold in your hand and drop on your foot are statutory subject matter.

    Congress could have even eliminated the separate categories all together and just mixed it all up under one big subjective morass of a 101 analysis.

    But they chose not to make any such laws.

    Now we have judges legislating from the bench and anti patent crusaders mucking up the system to the detriment of us all. ( U.S. A., )

  6. “It means that the claim is dissected and those steps that are not liked are analyzed step-by-step and dismissed as irrelevant (it’s not the right kind of transformation, or even machine at that) and then what’s left is put back together to mouth the words “as a whole.” so that the true inventive elements (pieces) of a claim can be evaluated under judge-made patent law.

    As a whole meets claim dissection.”

    ~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~

    AI: From an Actual Inventors perspective, the problem with this approach is it takes away any objectivity in the patent prosecution process.

    6 can’t establish a prima facie case for his phoney pre-emption doctrine because he can’t objectively demonstrate with factual evidence that a process can preempt an abstract idea.

    MM, can’t establish a prima facie case for his mental steps dissection policy because he can’t 6 can’t objectively demonstrate with factual evidence that anyone can be successfully sued for thinking a new thought, and thus prevented from thinking the thought.

    Yet, under these new abstract concepts for patent law and prosecution anyone can reject or invalidate anything that is not some solid object, as non statutory subject mater.

    Which in this complex information processing age means 99.9% of all innovations can and will be excluded.

    And of course this make the anti patent crowd very pleased.

    But this is not the law. We just had the AIA, and surely with all the lobbyist out there Congress could have been persuaded to eliminate processes as an independent category from the statute.

    Congress could have flat out said software is not patentable.

    Congress could have flat out said business methods are not patentable.

    Congress could have flat out said, only the things you hold in your hand and drop on your foot are statutory subject matter.

    Congress could have even eliminated the separate categories all together and just mixed it all up under one big subjective morass of a 101 analysis.

    But they chose not to make any such laws.

    Now we have judges legislating from the bench and anti patent crusaders mucking up the system to the detriment of us all. ( U.S. A., )

  7. what part of is _(A)_ and what is _(B)_

    (A) is law of nature (or other Judicial pigeonhole)
    (B) whatever can be parsed out

    All you need scientist is (C), the part that can be labeled “extra“-solution.

  8. thanks but the question ofcourse is what part of is novel and what is old & coventional in your opinion in the above claim.

  9. When the Supreme Court themselves warn that the application can eviscerate patent law, and then proceed to do just that, is it any wonder that other courts will apply the evisceration anyhow they feel?

    It’s patent hunting season.

  10. will not answer questions that undermine his occasionally bizarre interpretations of the law

    Sort of like Malcolm Mooney.

  11. Been through that with him numerous times.

    NEVER seen MM or Malcolm Mooney ever make a post at Gene Quinn’s blog.

    G_A_S_P, we have an admission of sxckie use by the one that accuses everyone of sxckie use.

  12. The Prometheus view:

    Step 1) The quantem well is a law of nature. Addition to patent eligibility: 0.

    Step 2) Everything before is mere prepatory , old in the art, or should be open to all practitioners of the art and thus irrelevant. Addition to patent eligibility: 0.

    Step 3) Everything after is post-solution attempts that do not qualify. Addition to patent eligibility: 0.

    Looking at the claim as a whole, we see patent eligibility as 0 + 0 + 0 = 0.

    Therefore, not patent eligibile.

    Thank you.

  13. Ned, why is it that every time some commenter on this blog gets the better of you in a debate, you accuse them of being me?

    Force of habit from the number of times of being beaten to a pulp by an admitted non-lawyer?

  14. I just punched in at random 7566898 on google patent.

    A method comprising:

    forming a dislocation filtering buffer formed over a silicon (Si) substrate, the dislocation filtering buffer including a first buffer layer including a gallium arsenide (GaAs) nucleation layer and a GaAs buffer layer and a second buffer layer formed on the first buffer layer, the second buffer layer comprising a graded indium aluminium arsenide (InAlAs) buffer layer;

    forming a lower barrier layer on the second buffer layer of the dislocation filtering buffer, the lower barrier layer formed of InAlAs, and forming the second buffer layer of aluminium arsenide (AlAs) at an interface with the first buffer layer and increasing concentration of indium (In) to obtain an In concentration of at least approximately 60%, and then inverse grading the second buffer layer with decreasing concentration of In to attain an In concentration of less than approximately 55% at an interface with the lower barrier layer; and

    forming a quantum well (QW) layer on the lower barrier layer, wherein the quantum well layer comprises a strained layer formed of indium gallium arsenide (InGaAs);

    forming a spacer layer over the quantum well layer;
    forming a delta-doped layer over the spacer layer; and
    forming an upper barrier layer over the delta-doped layer, the upper barrier layer formed of InAlAs and having an In concentration substantially equal to the In concentration of the lower barrier layer.

    Bam, a patent eligible method claim.

    link to google.com

  15. I really have no idea in reexam. However, from what little I know about reexam, I would say it would have to be 102/103 only.

    “Prometheus seems to raise the interesting possibility that §101 is now proper in re-examinations because it is also now clearly based on prior art.”

    Not really. Although, if you raised a substantial new question of patentability by showing that actually all that was new was a judicial exception you might get away with that.

  16. Ned, why is it that every time some commenter on this blog gets the better of you in a debate, you accuse them of being me?

    Hmmm….maybe you are still suffering PTSD from being forced to concede business methods are patentable subject matter, and the MOT is not the sole test?

    Regardless, I do note how you cut and run after selling all those woof tickets about wanting to debate dicta vs. holding.

    Oh, I am going to see your movie this weekend.

  17. Gene can be found quite readily at his own blog. If you really want an answer from Gene, you might actually ask him on his own blog.

    The Mighty Quinnbo will not answer questions that undermine his occasionally bizarre interpretations of the law. Been through that with him numerous times.

  18. Prometheus seems to raise the interesting possibility that §101 is now proper in re-examinations because it is also now clearly based on prior art.

    True enough.

  19. 6, but what about a claim in re-examination.  If the only subject matter in a claim that is novel is nonstatutory, what is the form of your rejection?  §102?  §101?  §§102/101?

    Prometheus seems to raise the interesting possibility that §101 is now proper in re-examinations because it is also now clearly based on prior art.

  20. After reading Prometheus and now SmartGene it appears that the pattern here is to perversely twist 100 ( b) by in effect saying all the individual steps are for an old use.

    The Prometheus decision in itself is just awful especially for medical methods, with its thinly cloaked and highly impermissible dissection and worse, conflation of the categories.

    It just wreaks of the backwards thinking of the “if you can’t drop it on your foot it’s not patentable club.”

    Now it appears that the DC is trying to extrapolate the findings of the Court to the realm of abstract idea analysis.

    And while the three Sto oges of the Anti Patent Crowd are giddy with excitement they need be reminded the the fight ain’t over yet.

    People need jobs and inventors need patents to create the companies that provide those jobs.

    And if those that have never started a company, created a job, and invented a thing in their life keep treading on the Constitutional Intellectual Property rights of the American inventor there is going to be a real revolution in this country!

  21. You are wrong again: the SCOTUS specifically discussed information processing and that it was before Congress then as it was during the AIA passing process.

    Just face it. The SCOTUS just legislated. They are going back to their flash of genius mode when nothing seems good enough for them. They are ignorant of modern science and modern inventive processes. They appear to working off the late night movie version of invention when Bell invents the telephone after staying up for weeks and starts screaming the undulating current.

  22. Lolz at Ned Heller and his “credentials”.

    He uses his real name and has one of the worst reputations on this blog.

    How are those “credentials” working for you, Ned?

  23. Mr. Meritritious Animaversistic Interloper, you have been citing your absolutely superior knowledge of the law to lecture use mere lawyers and examiners on what is dicta and what is not dicta for a few years now. You are a sock puppet, thus who you are is not known. We suspect that you are Mr. Actual Inventor, but we are not sure. However, since you have arrogated yourself into the podium of a law professor who deigns to lecture us mere ordinary laborers in the fields of law on this topic, we should ask you to kindly identify yourself so that we may check your credentials.

  24. any example of valid process (not machine, manufacture or composition) claim? both in benson & in prometheus, they are practicing the novel aspects but they are not valid. can you please give a valid process claim please?

  25. Also, Breyer’s writings on the 102 matter are really just dicta. He was never fully briefed on those matters.

  26. Ned I reject Prom under 101/102/103 and probably 112. Possibly just for kicks I would reject under my cawk, that is, if it is a female inventor.

    101, they’re preempting on a natural lawl/abstract idea depending on what you want to consider a correlation to be.

    102, there is no novelty, all the old literature describing the first two steps inherently has the “wherein”.

    103, even if the prior art did not have the wherein inherently it is obvious to do trials to determine toxicity.

    112, the claim is amenable to two or more interpretations. One where the doctor need do nothing more than the old steps and do some thinking. One where the doctor needs to actually say/write “this level indicates we need to lower the dosage” or “this level indicates we need to raise the dosage”. One where the doctor actually had to follow through and do a dosage adjustment. Miyazaki.

    Then I just wine and dine the female inventor and convince her to run away with me and the app goes abandoned for failure to reply.

  27. To be clear, anyone “spending money and time” to, oh, I don’t know, actually reduce something to pratice is nearly certainly inventing something patent eligible. It is just that they may not get the claim scope that they would desire.

    I will bet dollars to doughnuts that Prom did in fact have patent eligible claims in their apps.

    It is just that if they try to claim the entirety of judicially excepted subject matter then that claim will be invalid. If they do not, np bro.

  28. I note that the new “technological test” proposed by the PTO contains a novelty test, i.e., that the claim must disclose novel and unobvious subject matter that, considered as a whole, is directed to a technical solution. The IPO has objected to using novelty in 101 analysis, and suggest substituting “insignificant” pre- or post- solution activity.

    6, your views? You might consider my post just now concerning Breyer’s observation that if the point of novelty in the claim is non statutory subject matter, that the analysis shifts to 101.

    link to ipo.org

  29. Most inventors, scientists and investors would like to know what is patentable subject matter before spending money & time.

    Any examples of claims which are “any new and useful process”, but not “machine, manufacture, or composition of matter,” would be helpful.

  30. 6, consider that one determined that all the steps in the claim are old but the wherein clause directed to information, perhaps being a law of nature.

    Do you reject under 102, 101, or a combination of 102/101?

    I reference Breyer’s rejection of the government theory that if the point of novelty were such information, that the problem was not 102, but 101.

  31. “then they just had that opportunity and had all these issues before them.”

    I think you mean they didn’t have anyone presenting these issues to them and even if they did then they would have tons of lobbyists spewin’ about it derailing the whole thing.

  32. Spudd86, you are a lemming, lapping up what Big Software spoons out and thinking that you are so avante gard as to have this disdain for intellectual property.

    You are a stooge, playing right into the hands of Big Software.

    Think i4i and the ability of patents to lock out the Big Co from next generation style advances. They play both sides of the war on patents and in reality would love to see patents be eviscerated completely or made to be such a sport of kings that the little guys are priced out.

    They don’t care too much which, as the bottom lin ein eaither case will be the ability to plunder the IP of others.

  33. Rejections under 35 U.S.C 101.

    The following is a quote of 35 U.S.C 101:

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    Claims are rejected as being directed to judicially excepted subject matter. See Mayo 2012.

    ^ that should do the trick lol.

  34. Spudd86,

    What is not copyrightable:

    Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, devices and functional objects

    Works consisting entirely of information that is common property and containing no original authorship

    If, as postulated, software is math amd math is a law of nature, software fails to be something that can be copyrighted.

    Be careful of what you ask for.

  35. Yes, a paper describing mathematics is copyrightable, as is software. But Copyright does NOT cover the case where you read a paper and use the math in a program. It also does not cover the case where you figure out how the software works by observing what it does and write your own software that does the same thing. And it most decidedly does not cover independently coming to the same solution to a problem.

  36. NWPA: “why they should not hold ineligible for patentability large swaths of inventions”

    Here we go again.

    It’s a narrow exception, it just happens to be a narrow exception that lots and lots of people are trying to circumvent at the moment. If all their claims have the same problem, that problem doesn’t cease to be a narrow exception.

    If five million people filed patent applications tomorrow claiming equations they thought of, that wouldn’t be a valid reason to casually overlook section 101. Patent eligibility is not a popularity contest.

  37. WHAT? “Big Software” is PRO patents because they allow them to lock smaller competitors out of the market… except Google because they never bothered with patenting and don’t have many.

  38. This is definitely legislation.

    See Diehr where the SCOTUS actually discusses why they should not hold ineligible for patentability large swaths of inventions with their judicially created exceptions that should be narrowly applied and not applied to inventions that Congress has considered.

    What is the most outrageous is that Congress just passed the AIA. If Congress wanted to exclude large areas from patentability, then they just had that opportunity and had all these issues before them.

  39. What kind of reply is this?

    Unless you think ruby slippers are things of nature you do not understand the concept that things of nature belong to all men and cannot be patented, thus disclosure is actually moot.

    I am pretty sure that even in Oz ruby slippers were created by sentient beings and would be something of which a legitimate patent could be obtained, and a requirement of disclosure eminently justified.

    Thanks for proving my point AGAIN.

  40. But you still did not answer my question Gene — I wanted to know if you liked the Prometheus decision. Well Gene? Gene?

    Maybe your question remains unanswered because some people feel it rude to answer questions directed specifically at other people.

    Gene can be found quite readily at his own blog. If you really want an answer from Gene, you might actually ask him on his own blog. On the other hand, if you merely want to prove how much of an @_ss you are, please continue your current posting style. You are doing a magnificent job at the latter.

  41. Respectfully disagree. Adams’s pictures are patterns of light and dark arranged in a formal manner which is certainly copyrightable. If the company is copying the specific patterns which light hitting the vegeforms makes, that is different from rendering similar patterns or for example copying countless Roman Byzantine and Islamic artists who did it for thousands of years.

  42. Keep on repeating what Big Software feeds you Scott.

    Now back to your pod, my little disposable battery.

  43. or even machine at that

    From Smartgene, page 35:
    Furthermore, the computing device references in the defendants’ patents may be “programmed to perform very different tasks in very different ways,” and therefore cannot serve as a significant limitation or constraint on the claimed invention.

    Machine Or Transformation…

    Transformation? Nah, that one is irrelevant.
    Machine? Nah, that one is too ubiquitous.

    MoT = positively useless.

  44. Maybe he wants a patent on the process of measuring one’s foot, selecting a pair of slippers that correlates with that measurement, and (optionally) slipping on the ruby slippers.

  45. Great, you are in Mental Munchkinland.

    Let’s say you venture forth and take the lesser known indigo brick road that leads you by a forest of ruby slippers.

    What a great discovery!

    Now tell me, should I give you a patent on the ruby slippers themselves? (I don’t mind giving you a patent on a new and useful process with the ruby slippers).

  46. Tell me Dorothy, how useful were those ruby slippers you possessed, before their nature and operation were disclosed to you? Good luck getting back to Kansas.

  47. What part of “I am not Gene” confused you?

    They are all one syllable words.

    Last I checked, your reading comprehension is quite poor. I just checked again for you, yep, still low. Oh wait, I just checked again, still low. Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.

  48. Couldn’t they just say “software is math, math is a law of nature, therefore the claims in this patent application are excluded by 101”?

  49. “the court noted that the steps of the claims were invalid because they added nothing “specific” to the abstract idea of choosing a therapy “other than what is well-understood, routine, conventional activity, previously engaged in by those in the field.”

    What about 100 (b) ?

    “b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.”

    Does it even matter anymore?

    Amazing how quiet the anti patent crowd is regarding this huge statutory elephant in the room

  50. So let me get this right, you’re not Gene? OK, I stand corrected. But you still did not answer my question Gene — I wanted to know if you liked the Prometheus decision. Well Gene? Gene?

  51. Very true for anything that belongs to nature, since the only aim of disclosure is to acquire a right over something AND no such right should be granted.

    Quite on the other hand, for something of which a legitimate patent can be obtained ( something the “public” does NOT already posses; even unknowingly) then requirement of disclosure is eminently justified.

    Thank you for proving my point.

  52. Ok, since it is already the public’s, nobody ever needs to disclose anything again – the public already has it.

  53. I really ha te the patent protectionism that permeates the courts. They should just go ahead and swallow the bitter pill and save us all a lot of trouble.

    But that is good that Smartgene made that argument. It only took someone like 50 years to just come out and say it. Eventually a court will address it.

    And on that day I will be there. To lulz.

  54. Gene, so what you’re saying is that you don’t like Prometheus, right? Because I was a little confused about that. Maybe if you just came out and said it, oh, 1000 times or so, then I might get the idea.

  55. MM, OK.

    I suggested that a claim that ended in written directions my be patentable eligible. But, after reading SmartGene’s analysis of Abele, I am no longer sure. The court seem to suggest that the display in Abele was physically transformed. This would seem to suggest that an output comprising written directions, although physical, may not be enough.

  56. It means that the claim is dissected and those steps that are not liked are analyzed step-by-step and dismissed as irrelevant (it’s not the right kind of transformation, or even machine at that) and then what’s left is put back together to mouth the words “as a whole.” so that the true inventive elements (pieces) of a claim can be evaluated under judge-made patent law.

    As a whole meets claim dissection.

  57. A patent, with the legal presumption of validity is dismissed on summary judgement.

    I guess this answers the question in Prometheus if patent eligibility would havebeen saved with an additional “do something” step.

    Then again, this court found “The issue before this Court is whether the patents-in-dispute are abstract

    So it’s a double whammy for medical methods.

    Medical methods are not patent eligible because they are laws of nature.

    Medical methods are not patent eligible because they are abstract.

    No more medical method patents.

  58. When the court says, “…since no part of the so-called “transformation” required the claimed process,” does it mean

    “no part of the claimed process required the transformation?”

  59. It will be interesting to see what variant CAFC panels do when they get D.C. decisions that are “Mayo sandwitches” [mixed 101, 103, and maybe 112 claim rejections being called just 101 decisions]?
    [E.g, years ago they got real persnicity about reversing 102 rejections because the should have been called 103 rejections, in spite of being valid rejections.]

  60. This from Smartgene, helps,

    “Most recently, in Prometheus, the Supreme Court rejected not the MOT test but the Federal Circuit’s application of that test. There, the Federal Circuit concluded that the transformation prong of the MOT test was satisfied because the claimed process involved “transforming the human body by administering a thiopurine drug and transforming the blood by analyzing it to determine the metabolite levels.” Prometheus, 132 S. Ct. at 1302. The Court described as “irrelevant” the transformation on which the Federal Circuit upheld the patent at issue since no part of the so-called “transformation” required the claimed process. Id. Accordingly, this Court employs the MOT test as a useful investigative tool.

    “The Supreme Court and Federal Circuit have offered some guidance in deciphering whether a process satisfies the transformation prong. First, the “transformation must be central to the purpose of the claimed process” see Bilski I, 545 F.3d at 962, and the “mere manipulation or reorganization of data . . . does not satisfy the transformation prong.” CyberSource, 654 F.3d
    at 1375. Second, “[p]urported transformations or manipulations simply of public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test
    because they are not physical objects or substances, and they are not representative of physical objects or substances.” Bilski I, 545 F.3d at 963. Finally, as noted, the Supreme Court in Prometheus recently rejected the Federal Circuit’s application of “transformation,” where the Federal Circuit concluded that claimed processes were patent eligible where they involved “transforming the human body.” Prometheus, 132 S. Ct. at 1302-1303. The Supreme Court in Prometheus, however, did not retreat from a transformation analysis as part of a subject matter patentability test under section 101.

    “Examining the Supreme Court and Federal Circuit precedent, as well as decisions in this Circuit, the Court concludes that, the ‘786 patent does not involve transformation. As in Bilski, Cyberspace, and CLS Bank Int’l, the alleged transformation performed in the defendants’ patents is more akin to a manual reorganization of treatment options. This does not satisfy the
    transformation prong of the MOT test. See, e.g., CLS Bank Int’l, 768 F. Supp. 2d at 234-35 (rejecting argument that “would convert almost any use of a computer, or other electronic device with memory, to a transformation under the MOT test simply because data would necessarily have to be manipulated . . . .”) (citations omitted).

    The defendants’ arguments to the contrary are not persuasive. Specifically, the defendants note that the Federal Circuit, in Bilski I, stated that “the transformation of . . . raw
    data into a particular visual depiction of a physical object on a display was sufficient to render that more narrowly-claimed process patent-eligible” and that “the electronic transformation of the data itself into a visual depiction . . . was sufficient.” See Defs.’ Mem. at 11 (quoting Bilski, 545 F.3d at 963 (referring to In re Abele, 684 F.2d 902 (C.C.P.A. 1982)). Defendants’ reliance on Abele is misplaced. In Abele, the patent applicant sought to patent a process for improving the accuracy and reliability of CAT scan imaging techniques, while simultaneously reducing the X-ray exposure of the patient. Abele, 684 F.2d 902, 903 (C.C.P.A. 1982). This process of improving imaging is very different than the data manipulation at issue here. Unlike in Abele, the patents here do not manifest any sort of physical transformation, and therefore do not satisfy the transformation prong of the MOT.

  61. Ned, do you need me to keep validating your miserable life? Do I have to keep throwing you a bone every so often?

    Just this one time more …. your draft claim shows an insight into the law that no one else appreciates. I commend you Ned.

  62. You shouldn’t have disclosed this to the public.”

    It already was the public’s.

  63. 6,

    Given the rebuttal was a specific case, it appears that your reading skills are quite poor.

    You might look into checking out how to improve them rather than checking out someone else’s skills.

    It might also help you with your (forever?) delayed law school career.

  64. In that case, the court noted that the steps of the claims were invalid because they added nothing “specific” to the abstract idea of choosing a therapy “other than what is well-understood, routine, conventional activity, previously engaged in by those in the field.” . . .

    And the court having inherent lifetime expertise in this field said it was so, and so it was done, the patent was undone. no disputed issue of fact here, move along .. move along.

  65. “We hereby dedicate your research and discovery to the public. You shouldn’t have disclosed this to the public.”

    Why don’t they just say what they mean?

  66. Either way, be clear, I’m in it for the lulz and nothing else at this point. My views on 101 were just recently vindicated in their entirety in case you didn’t notice. And so, in keeping with the rich tradition of the production of lulz I would like nothing better than for the courts to affirm some defendant simply arguing that the claim against them is nothing more than an attempt to circumvent the prohibition on patenting software per se.

    Be honest, it would be totally worth it just to see Eugene enter a mental institution.

  67. It used to be the concensus, even amongst Eugene Quinious types, but now what with all the 101 business goings ons they’ll resist it.

  68. “Last I checked, being a mere component, a perfectly patent eligible component, just like any other hardware component, is much much closer to being PER SE patentable than per se NOT patentable.

    In other words, the opposite of what you implied.”

    Last I checked, your reading comprehension is quite poor. I just checked again for you, yep, still low. Oh wait, I just checked again, still low. Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.Oh wait, I just checked again, still low.

    Either way, Randy’s views on patent eligibility are plainly off kilter as the Mayo decision just now confirmed.

    /media/docs/2010/12/08-1403.pdf

    And they’re likely to get obliterated a bit more in Hulu here shortly.

  69. Last I checked, being a mere component, a perfectly patent eligible component, just like any other hardware component, is much much closer to being PER SE patentable than per se NOT patentable.

    In other words, the opposite of what you implied.

  70. “Even Rader in Ultramercial wherein software is merely a component (and every bit as patent eligible as firmware or hardware)?”

    In some claims it may be “merely a component”. In others it is the entirety of the claim. As is the case here.

  71. We commend the general proposition that our laws of intellectual property do not give strong protection to one who merely copies or recites what nature has provided.

    HANDS OFF

  72. which everyone agrees is ineligible when claimed per se due to being excluded, and thus their claims are invalid

    Everyone?

    Even Rader in Ultramercial wherein software is merely a component (and every bit as patent eligible as firmware or hardware)?

    Or are you just trolling?

  73. 2.In SmartGene v. Advanced Biological Laboratories, a DC District Court relied upon Mayo v. Prometheus to invalidate a patent claiming a system and method using a computer program to guide the selection of therapeutic treatments. In that case, the court noted that the steps of the claims were invalid because they added nothing “specific” to the abstract idea of choosing a therapy “other than what is well-understood, routine, conventional activity, previously engaged in by those in the field.”

    Sounds like In re Grams.

  74. “At the hearing, Kyocera likened the basic concept behind the ‘160 Patent to writing down the
    location of something, so that in the future the location is readily at hand. A bare claim on that
    concept might well be considered unpatentably abstract. However, as discussed above, the ‘160
    Patent claims recite what appear to be fairly specific steps, and the specification distinguishes the
    invention from a prior art technique that operates on the same principle of not resolving a reference
    more than once.”

    In other words, the technobabble of the patent claims has sufficiently confuzzled the judge.

    “The invention, a resolution data field”

    Hmmm, I didn’t see that being claimed. I saw a method.

  75. I note that the time is right, directly after Mayo, for someone to argue that a patentee has effectively claimed software, which everyone agrees is ineligible when claimed per se due to being excluded, and thus their claims are invalid. Ride the wave defendants.

  76. Looking at Nazomi Communications, Inc. v. Samsung Telecommunications more closely reveals it is not so much a determination that software passes 101 or anything of that sort, it is more a determination that the attorney/defendant are tards and are incapable of properly arguing the issue. They fail to take into account their audience who, while looking at the complicated looking claim will think there is more going on there than what the applicant is arguing in “technical person talk”.

    The decision also shows that the court is incapable of doing even rudimentary claim construction before the Markman.

    “Nazomi also argues that Kyocera’s motion is premature because the court has yet to construe the claims, and claim construction will clarify the subject matter involved.”

    What is funny is that Nazomi is correct, although they will not like the result in the case after claim construction clarifies the subject matter and the issues involved.

  77. Maybe i can’t read, but I don’t see where in the linked version of #4 that the quote language actually appears.

  78. No. 4 is an amazing leap. How can the court use that analysis in copyright? I haven’t seen the floral image, but too bad for Ansel Adams and others who take pictures of nature. Think I can cite this decision in a 12(b)6 on any nature photo in a copyright case?

  79. “California district court found that the claims do not violate the patentable subject matter limitation of Section 101 because they “do more than recite an abstract idea and say ‘apply it.'”

    If true, that needs to be appealed.

  80. Dennis, could you please provide links to these decisions? Thanks in advance.

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