Book Discussion: Frischmann Predicts Prometheus

Guest post by Professor Michael Burstein.  This review is cross-posted on the Concurring-Opinions blog.

In his new book Infrastructure: The Social Value of Shared Resources (OUP 2012), Brett Frischmann explores how infrastructural resources contribute to social welfare. He defines a set of resources — infrastructure — in terms of the manner in which they create value and then examines the conditions under which such resources ought to be managed as a commons. He develops a framework for understanding the demand for infrastructure and the advantages and disadvantages of managing infrastructure in a nondiscriminatory manner. Prof. Frischmann then applies this framework to a variety of infrastructural resources — roads, telecommunications networks, the environment, and, of particular interest to readers of this blog, cultural resources including those which are protected by patent and copyright law.

I'm going to focus my comments on Frischmann's theory of intellectual infrastructure and how it relates to the structure of intellectual property law. Just a few days after the release of Infrastructure, the Supreme Court handed down its decision in Mayo Collaborative Services v. Prometheus Laboratories. That case presented the question whether certain diagnostic claims were within the scope of patentable subject matter under section 101 of the Patent Act. The Court held that they were not, in a manner that is strikingly consistent with Frischmann's theory. Hence the title of my post. But Frischmann's theory may also go a long way toward bringing some order to an area of patent law that has long been confused.

Let's start with the concept of intellectual infrastructure. Frischmann explains that intellectual or cultural resources can be infrastructural in the same manner as physical goods. So long as the resource is a "nonrival input into a wide variety of outputs" (275), it satisfies the characteristics of infrastructure that Frischmann so richly describes. In turn, that suggests that the case for managing the resource as a commons is strong. Frischmann then explains how this concept applies to ideas. Ideas, he writes, often are infrastructure (subject to a number of complications that I'll put to the side). So in his view, intellectual property should protect implementations of ideas but not the ideas themselves (286). To sort one from the other, Frischmann turns to the concept of abstraction in copyright law and argues that patent law should follow a similar path.

Now consider Prometheus. The inventors in that case discovered a correlation between the effectiveness of a drug and the amount of certain metabolites of that drug in a patient's blood. Their patent claimed a method of optimizing the dosage of the drug based on that correlation. The method was simple: (1) administer the drug; (2) determine the amount of metabolites in the patient's blood; (3) make an inference about drug dosage based on the correlation. Doctrinally, the question before the Court was whether this amounted to a claim on a "natural law" – the correlation between drug dosage and metabolism that happens in the human body – which would be unpatentable under a long-standing exception to the scope of patentable subject matter, or a patentable application of that law.

Substitute "idea" for "natural law" and the analogy to Frischmann's analysis becomes clear. Indeed, there is no reason why a "natural law" cannot be an "idea" as Frischmann describes it. A natural law is the articulation of a principle; whether that principle is an infrastructural idea turns on its characteristics, not its origins. In Prometheus, the Court, with Justice Breyer authoring the unanimous decision, held that the patent claimed the natural law itself and not an application of that law. The Court held that the the patent claims did not "add enough to their statements of the correlations . . . to qualify as patent-eligible processes that apply" those correlations (slip op. 8). The "administering" and "determining" steps, in the Court's view, comprised "well-understood, routine, conventional activity already engaged in by the scientific community" and so were "not sufficient to transform unpatentable natural correlations into patentable application of those regularities" (slip op. 11). Or, in Frischmann's terms, the patent claims did not amount to an implementation of an idea; they claimed the idea itself.

The rationale underlying the Court's decision also resonates with Frischmann's argument. Justice Breyer cast the decision in expressly functional terms. The danger, he wrote, is that because natural laws are "the basic tools of scientific and technological work," patents on natural laws "foreclose[] more future invention than the underlying discovery could reasonably justify" (slip op. 17). So too, the rationale for managing infrastructural resources as commons turns on the demand-side benefits: the spillovers and externalities that non-rival consumption of infrastructure resources enables. In this way, Prometheus is quite consistent with Frischmann's injunction against propertizing ideas.

Frischmann's theory also suggests some provocative solutions to problems that have long plagued the doctrine of patentable subject matter. Section 101 of the Patent Act defines as patentable any "new and useful process, machine, manufacture, or composition of matter." But the Supreme Court has long carved out from those categories several broad exceptions. They are usually described by the terms "laws of nature, natural phenomena, and abstract ideas," but at times appear also to encompass "products of nature," "mental processes," "mathematical formulae," "algorithms," and the like. Infrastructure may offer a unifying principle for choosing to exclude these things from the scope of patentable subject matter. Frischmann writes that "[t]he Supreme Court should stop referring to abstract ideas" in its patentable subject matter jurisprudence and should instead "make clear that ideas are not patentable" (300). Viewed through the lens of infrastructure, Prometheus is a step in this direction. The correlations at issue in that case were actually quite narrow. At the very least, they were not "abstract" in the sense that the "concept of hedging risk" found to be unpatentable in Bilski v. Kappos was abstract. Yet the correlations in Prometheus and the concept of hedging in Bilski are both ideas. And they are ideas that have the characteristics of infrastructure — nonrival inputs into a wide range of outputs. The Court's functional analysis suggests that the problem in both cases was that granting exclusive rights to ideas that have the characteristics of infrastructure might foreclose future innovation.

I would go even further. The next big patentable subject matter case is likely going to be the Public Patent Foundation's ongoing challenge to gene patents held by Myriad Genetics. Doctrinally, the question raised in that case — whether the patents claim "products of nature" – is different than the question whether a patent claims an idea. But to the extent that genes can be characterized as infrastructure — and I think there is a reasonable case that they can be — the functional analysis described above should apply. The exclusion of products of nature from the scope of patentable subject matter may therefore be consistent with the exclusion of ideas from the scope of patentable subject matter.

It has also been a matter of debate among academics and practitioners whether and to what extent the inquiry into patentable subject matter serves a function different from other requirements of patentability like novelty or nonobviousness. To the extent that infrastructural resources ought to lie beyond the scope of patent protection for functional reasons, the patentable subject matter screen will capture this insight in a way that other patentability doctrines will not. But this is a topic for further exploration.

Frischmann's book is an important contribution across a wide range of fields. It is a terrific achievement and I think its influence will continue to grow as we grapple with the implications of its analysis.

Concurring Opinions has been hosting a symposium to discuss Prof. Frischmann's book and includes posts by Marvin Ammori, Adam Thierer, Barbara A. Cherry, Frank Pasquale, Michael Burstein, Timothy B. Lee, Tim Wu, Laura DeNardisAndrew OdlyzkoDeven Desai, and Brett Frischmann himself.

447 thoughts on “Book Discussion: Frischmann Predicts Prometheus

  1. A signal is made and sent into outer space.

    How transient is it?

    A desk is made and is detroyed by natural forces within 10 years. Transient?

    Chemical consituents have been shownto be present in a process, yet later consumed. Transient?

    Transience is relative and everything is transient.

    That anyone believes this line of argument is an afront on intelligence.

  2. These considerations lead us to decline the Govern­ ment’s invitation to substitute §§102, 103, and 112 inquir­ies for the better established inquiry under §101. “

    LOL. Suckie attempts to kick up some dust but instead just puts his dusty foot in his mouth.

    Yes, the claim was found ineligible under 101, not 102. But the decision is crystal clear that the relationship of the recited non-mental steps to the prior art must be considered. In this case, those steps were admitted by all parties to be old, conventional steps. In that situation, the claim is effectively a claim to the mental step itself (i.e., the step of thinking about the so-called “law of nature”) and therefore is ineligible.

    This is a simple straightforward case. The correct result was reached. The sky is not falling. The trolls are crying. Nothing new.

  3. Nowhere in that decision is novelty under 101 explicated.

    The relevance, for 101 purposes, of the relationship of the claimed invention to the prior art was expressly discussed in the decision, suckie. You may remember that the government had proposed tanking the claim under 102 by ignoring the mental step. The Supremes did not approve, favoring an approach whereby the claim would be rendered ineligible under 101 if the non-mental steps were merely old, conventional steps.

    Please find another blog to troll, suckie. Your ignorance and inability to discuss legal topics without dissembling was well-documented before the Prometheus decision. You’ve jumped the shark.

  4. The jokes keep writing themselves.

    This thread contains discussion of the decision that MM implores others to read. Nowhere in that decision is novelty under 101 explicated.

    Yet, MM (or Hans Blix) or sockpuppet of the month cannot be bothered to actually discuss the real caselaw in any detail or explain how it is an abomination that seeks to rest on precedent while ignoring not only precedent, but the self-identified best precedent. All he can do is mouth the obvious “It was a 9-0 decision” and vacuously “claim victory.” Denying just how bad this decision is in terms of real law is something Malcolm owns.

    Egotistical and shallow at the same time. At least he meets the expectations that are generally held for him.

  5. suckie Therein lies the rub. Exactly how is novelty under the 101 analysis?

    LOL. The Mayo Nays are the most pathetic deniers on the planet.

    Read the decision, suckie. 9-0.

  6. That is not the question at all.

    Then why did you try to foist that off as the question? Your post at May 05, 2012 at 09:49 PM is witness.

  7. Paul: “The real invention was a blood test.”

    Rubbish.

    The “real invention” was what was disclosed, and HOW it was disclosed, in the claims, as informed by the spec and extrinsic sources as required.

    Comments like Paul’s illustrate well the problem, not the solution.

  8. continuously monitoring the temperature and updating the Arrhenius equation was new.

    But this is an abstract thought, and merely using the computer to do so was extra solution assitance.

  9. Shuffling, you really like talking to yourself don’t you?

    Have you noticed in my discussions with Night, he never seems to grasp the essential point that merely calculating a number from a number cannot be patented. He argues that it generates heat if the numbers calculated in a computer. Indeed it does. But is the generation of heat in a computer by calculating numbers the stuff of patents?

    He will then argue that processing information should be patentable. But then he will not discuss what he means by information. If information actually is measured from the real and transformed mathematically and then restored to the real world with an output signal, then we have are not talking about something abstract. But he never will concede the point that information has to be tied to the real world. He seems to suggest that one can simply calculate numbers in the abstract without regard to any particular use. Even go so far as to suggest that one should be able to do this without machines and all and still be able to obtain a patent. And then he goes on to say that it is we are the ones who do not understand.

    If information per se were patentable, simply publishing it in a book would be an infringement.

  10. Red Herring spotter: Obviously the patent eligibility of the streetlight do not depend upon whether it was old or new. That is not the question at all.

  11. He knew that if only four compartments were flooding the ship would float and that if five compartments flooded it would inevitably sink. Neither the ship’s carpenter nor Captain Smith knew that.

    That’s true enough, and I can see it being useful information if the crew had to decide between, say, a low-probability desperate attempt to limit flooding to three compartments or a surer way to confine the flooding to four compartments.

    But once you phrase the Andrews contribution to the art as “check how many compartments are flooded, and if it’s more than four, you’re on the RMS Sinkytowne”, you run into problems. The crew already knew that they were doomed if the entire ship was flooded, but the claim would prevent them from continuing to know it, let alone use that knowledge to their advantage. Similarly, the crew already knew that zero flooding meant the ship was fine.

    I disagree with you that the actual invention was a blood test. The actual invention was maintaining a measurable parameter within a newly-discovered result-effective range. Something more like “in the event of flooding, prevent the flooding from extending into a fifth compartment”.

    Sure, it wouldn’t be infringed by a ship sustaining minor damage to only a single compartment, or by ships having an uneventful safe passage, but they’re not using your invention anyway. No matter how many lower deck passengers commend them on the complete absence of any flooding at all. Just as the Prometheus claims should not be infringed by the doctor who happens upon the perfect dosage on the first try, even if that is confirmed by Mayo’s test.

    Drafting to capture the maximum number of infringers is not an inherent right, it’s simply a factor that must (should) be optimized within the confines of the existing patent system. If a claim capturing everybody doing the test isn’t valid and enforceable, maybe the invention didn’t have as much value as you’d think.

    As an aside, Sir Humphrey would have loved a good patent thicket. Every patent neatly prevents the entire country from doing something novel and useful. Many things must be done, but nothing must be done for the first time.

  12. Waiting, continuously monitoring the temperature and updating the Arrhenius equation was new.

    From the decision:
    “Because the temperature inside the press has heretofore been viewed as an uncontrollable variable, the conventional industry practice has been to calculate the cure time as the shortest time in which all parts of the product will definitely be cured, assuming a reasonable amount of mold-opening time during loading and unloading. But the shortcoming of this practice is that operating with an uncontrollable variable inevitably led in some instances to overestimating the mold-opening time and overcuring the rubber, and in other instances to underestimating that time and undercuring the product.[4]
    Respondents characterize their contribution to the art to reside in the process of constantly measuring the actual temperature inside the mold. These temperature measurements are then automatically fed into a computer which repeatedly recalculates the cure time by use of the Arrhenius equation.”

  13. Diehr, you really really need to read Diehr once more as your premise is that no element of Diehr was new is not true. I’d rather not get side tracked on the facts of Diehr, rather than it’s holding.

  14. It has been shown time and again that inventions patentable (and patent eligible) can be made completely of individual elements that are old in the art.

    The 102 and 101 conflation is simply legal error.

  15. “Nearly as much damage is done by a good decision for the wrong reasons as by a decision that is wholly wrong.”

    Excellent piece Paul. Just excellent.

    But of course you can’t expect this to be rebutted by the likes of a troll like MM or his sycophant shill of a mouth piece, Ned.

  16. “Humor me then Ned, what element of the Diehr claim was new?”

    LOL!

    This is Ned Heller you are talking to.

    And we know Ned Heller doesn’t answer questions, especially when he has lost a debate.

    And that my friend IS the humor :-D

  17. I think your ship at sea is very interesting and illuminating, though not quite apt.

    Consider the situation on-board Titanic shortly after it had hit the iceberg. The ship’s carpenter and Captain Smith knew how to test for the risk of sinking. If compartments were flooding, there was a risk of sinking and they both knew to test water levels in the compartments to see what was happening. But the ship’s designer Thomas Andrews know more. He knew that if only four compartments were flooding the ship would float and that if five compartments flooded it would inevitably sink. Neither the ship’s carpenter nor Captain Smith knew that. Although they knew to make measurements they did not know what the measurements meant. What the inventors did in terms of the administration of thiopurine drugs was to take knowledge from the Captain Smith level to the Thomas Andrews level.

    What the inventors had done before they applied for a patent, however, was to say that it was necessary to know what was the link between compartments flooding and the risk of sinking, that it was tied in with the number of compartments flooding and bulkhead heights, and that before the ship went to sea a study should be made to determine sinking likelihood as a function of number of flooded compartments. Effectively that was what was done and the critical number was determined.

    If you read the briefs you will find that this was indeed an invention of great value. Unfortunately so much had been published beforehand that the invention was clearly obvious. Unfortunately that was not the way the opinion could have been written and it was decided under section 101. Nearly as much damage is done by a good decision for the wrong reasons as by a decision that is wholly wrong.

  18. Humor me then Ned, what element of the Diehr claim was new?

    the rubber?
    the auoclave?
    the Ahrenious equation?
    the computer (and its GREAT COMPUTER MIND)?

    There were no new elements. Under Prometheus each element could have been dissected and set aside for being old or extra-soluton steps or both.

  19. “There is nothing new under the sun” meets “Anything under the sun that is made by man.”

  20. Ugh!” is right. Ned is bastardizing both the government brief and the Court decision by trying to meld the two together.

    However, the reality of the situation is that the Court rejected the government brief and took it out of the available rationale. One may not afterwards attempt to reinsert it to try to make sense of the Court’s decision.

    Yet another reason why the Prometheus decision is such a piece of g_arbage. And the anti-Mayo Nays people need to realize that the decision being 9-0 only makes it worse as the entire bench slept through this one to appease the Breyer rabbit.

  21. the trick answer reveals itself if you have to say ‘Refer to section 102′

    Ned falls for the trick and is not even aware of it.

    Ned, are you obtuse? Is it deliberate?

  22. f the traffic light is new, then the claim may not have a 101 problem.

    The conflation fallout is obvious from this statement. Or at least it should be to those, who at a threshold level, are willing to think.

    We magically move from patent eligibility to patent ineligibility based on whether something is new or not.

    Clearly, this is not correct.

    Clearly, the state of “new,” or here the state of “not new” moves from patentable to not patentable. Given the foundation of an item passing the threshhold eligibility test, that item subsequently failing the novelty test does NOT regress and fail the eligibility test.

    Thus the meaning of threshhold (and not, as some would have it, locked to when the threshhold test is applied). That is a different topic altogether.

  23. Let’s try this a different way start from the underlying assumptions and build our way up to conclusion.

    Ned is lost without his pre-ordained conclusions. He has long forgotten how to walk that path. He would sooner congratulate 1d1ots with like-minded results orientations than apply critical thinking for himself. It takes a sledgehammer to smash that defense (and even then that only works once in a blue moon, and that often only temporary).

  24. Niujten is clearly incorrectly decided.

    By the hand of man, something new was created.

    The “transient” argument is easily dispatched. The “physicality” argument has no legal foundation.

  25. That is not an answer. You, Ned Heller wrote the following:

    “If after determining whether the claim elements in a claim are novel (vis-à-vis the prior art using 102 prior art), and that the only novelty left is ineligible subject matter, at least according to the Supreme Court, the claim is invalid under section 101, not under section 102. ”

    So how you reconcile this with the fact that no element in Diehr was new?

    Now answer the question please.

  26. “…… §§102 and 103 say nothing about treating laws of nature as if they were part of the prior art when applying those sections. Cf. Diehr, 450 U. S., at 188 (patent claims “must be consid­ ered as a whole”). And studiously ignoring all laws of nature when evaluating a patent application under §§102 and 103 would “make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious.” Id., at 189, n. 12. See also Eisenberg, Wisdom of the Ages or Dead-Hand Control? Patentable Subject Matter for Diagnostic Methods After In re Bilski, 3 Case W. Res. J. L. Tech. & Internet 1, ___ (forthcoming, 2012) (manuscript, at 85–86, online at link to patentlyo.com files/eisenberg.wisdomordeadhand.patentlyo.pdf (as vis­ ited Mar. 16, 2012, and available in Clerk of Court’s case file)); 2 D. Chisum, Patents §5.03[3] (2005)……

    These considerations lead us to decline the Govern­ ment’s invitation to substitute §§102, 103, and 112 inquir­ ies for the better established inquiry under §101. ”

    /media/docs/2012/03/10-1150.pdf

    DONE

  27. OK, Night, what you do not seem to get is that calculating numbers and transforming information are not the same thing.  Information in the sense I speak of is a transformation of the real into a different state.  Real, physical inputs and outputs.  It requires measurement and a physical output.  You seem to suggest that calculating numbers that represent nothing at all, just numbers in and numbers out, is transformative because it generate heat in computers.  That is not the kind of transformation that would impress the Supreme Court.

  28. You have dodged what I am saying to such an extent that I can only conclude that you have no interest in a real discussion.

    I asked about an method that transforms information and you side stepped the question with signals and SCOTUS case law. I clearly want to discuss science not SCOTUS case law.

    Information is a fundamental property of nature. Information takes time, space, and energy to transform. A method of transforming information represented by a machine can be measured by the transformation of information, the space required, the time require, and the energy required.

    Now do you agree with that? If not, what part don’t you agree with.

  29. “If after determining whether the claim elements in a claim are novel (vis-à-vis the prior art using 102 prior art), and that the only novelty left is ineligible subject matter, at least according to the Supreme Court, the claim is invalid under section 101, not under section 102. ”

    How you you reconcile this with the fact that no element in Diehr was new?

  30. I will give you a hint: this has to do with the difference between patent-eligibility and pantentabiliry.

  31. No Ned I am not agreeing with you. Why would you think that? Read again my posts. They are clear that you do not understand what the Court has said vis-à-vis the distinction between 101 and 102. “Both” is simply wrong. The court explicitly did not use the government’s argument and explicitly did not use 102 to dispose of the “novelty” as “novelty” was not a part of the holding.

    You need to dive deeper than the surface in your understanding.

  32. Red light, I don't know if you are purposely ignoring what I'm saying or disagreeing with me solely for the purposes of argument or otherwise, but you are agreeing with me while saying you are disagreeing with me.

    If after determining whether the claim elements in a claim are novel (vis-à-vis the prior art using 102 prior art), and that the only novelty left is ineligible subject matter, at least according to the Supreme Court, the claim is invalid under section 101, not under section 102.  Obviously, the government would disagree with that, and would probably also say the claim is invalid under section 102 because that was the argument they made the Supreme Court.  I don't think that the government argument is wrong.  What surprised everyone was the fact that the Supreme Court said the question of eligibility was one the be determined under section 101.

  33. for the data to result in an output signal, it must also be used

    If I understand NWPA’s position, transformation IS the use.

    You are dodging what he is saying.

  34. Novelty is part of 101 analysis.

    Therein lies the rub. Exactly how is novelty under the 101 analysis? What are its requirements (the trick answer reveals itself if you have to say “Refer to section 102″)?

    As noted herein, you are misreading the Prometheus decision (granted this is easy to do as the decision is written poorly). The confusion of what the statutes say, and which statutes are under review by the Court is evident in your “answers.”

    Dig deeper Mr. Heller, a surface response will not do.

  35. “prior art” is a dodge. It does not address the patent eligibility topic. Pretend for example that street lights are not prior art. All you have is somethign that creates an abstract signal. “Red,” “yellow,” and “green” have no meaning on their own accord. Their only meaning comes from abstraction.

  36. Measurement may create a signal. But what if the measurement is only done in the mind? What then?

  37. Better question: is the traffic light itself patentable? All it does is create an abstract signal.

  38. Read the decision again. The court denied that 102 was in play. They only answered the 101 question. The “trick” of dismissing certain steps was not done under the law of 102 in and of itself.

    Your position here only shows that you do not understand what the Court said. Re read pages 20 and 21 and note the distinction between 101 and 102 that the Court is making. Read carefully. Note what the holding actually is. Note it verbatim. (note too how Risch has come out and said that the Supremes have misquoted him).

  39. Prior art:  traffic signals are green or red. 
     
    Invention: wherein if the interval between green and red is greater than a particular number, traffic is heavy and one needs to choose a different route.
     
    Is this a patentable invention?

  40. To the extent one operates on signals, transformations of signals from one state to another to then modify time space is a physical transformation.
     
    However, we do have the Fed. Cir. doctrine that a transformed signal is not eligible for patenting as an article of manufacture.  One must state the claim in terms of a process that has physical inputs and outputs.

  41. I’m driving in my car.

    I approach an intersection.

    The signal is red. Is that just an abstraction? Without more, is it real? If I do not drive up, is it any less real?

    (btw, Ned still has not answered your question NWPA)

  42. Could it be that you, in the words of the president, are a bitter clinger? 
     
    Truly, if the novelty of a claim is only in ineligible subject matter that is not used to modify any physical step (the government's position), the problem is a 101 problem, not a 102 problem, at least according to the Prometheus court.  I think the PTO is going to have to start issuing combined 102/101 rejections in such cases.

     

  43. Isn’t transforming (that same transforming that takes up time, uses energy, etc.,) “using in some fashion?” Isn’t NWPA’s point the fact that the one necesssarily coincides with the other and you don’t need more? The fact that you do one is conclusive proof that the other has been achieved.

  44. You obviously are misunderstand just what the Court did say. They expressly said this was NOT a 102 answer.

    The fact that they denied such and still conflated just shows that the action by the Court was poor at best, and quote possibly simply wrong.

    Wake up.

  45. Data in the form of signals, even digital signals, is real.  Still, signals originate in the real world and for the data to result in an output signal, it must also be used. 

  46. You, obviously, you just woke up from a very long sleep.  Let me tell you something that you need to know.  Prometheus discarded any notion that novelty was not part of 101 analysis.  Furthermore, they also stated, in response to the government position the the problem of Prometheus' claims was a 102 problem, that it was not.  When the novelty is in the ineligiblie, that is a 101 problem.

  47. would that knowledge alone

    You mean, like parse the claim and get rid of the parts you don’t want to talk about?

    why Prometheus was 9-0

    You have not established any correlation that you seem to be implying.

    You also have never commented back onthe multiple questions cand points made as to the obvious faults of the Prometheus decision. How very much like Malcolm to ignore actual questions, wait awhile and then pop up again with the same drivel. I can’t wait for you to ignore and disappear yet again.

    Do you folks even know what you are talking about?

    Do you?

    (and their various pseudonyms

    How do you choose which of your pseudonyms to use?

  48. I want to ask a question to peeps like NWPA and Paul Cole and Gene and Dale and EG and Actual Inventor (and their various pseudonyms) that I think I asked on this board many years ago: if you were on a ship at sea, and you knew that the ship was sinking, would that knowledge alone enable you to avoid drowning? Now do you see why Prometheus was 9-0? Forget about the fact that every active step in the claim was old, and ask yourself what was actually accomplished by performing the steps. “Indicates a need?” How was “therapeutic efficacy for treatment…” optimized? Do you folks even know what you are talking about?

  49. And, it has occurred to me Ned, to ask you directly whether or not you agree that information takes time, energy, and space to transform. Well, do you?

    Are you medieval or not? Let’s try this a different way start from the underlying assumptions and build our way up to conclusion.

  50. Transforming data is the same as making a new alloy. A transformation of data is as much a transformation as the alloy. The algorithm is the method just a the method of processing grain in Deener and the SCOTUS prior to our current insanity understood that the process in Deener should be patentable for all grains.

    The application of the algorithm should not matter. Algorithms to transform information just as in Deener should be eligible for patentability. Perhpas they are not, but that is a fiction of law and does not reflect modern science. If you doubt that, you are an ignorant of modern science.

  51. No, NWPA stands for Night Writer Patent Attorney. I use a pseudonym because some of our clients take extreme positions on these issues and may not be inclined to use our services if I take a position opposite to theirs. So, in other words not to lose business.

    I would like to join the North Wales Photographic Association.

  52. simple questions said in reply to Ned Heller…”Why does Ned consistently celebrate the inane posts?”

    Because 6 is a genius and Malcolm is always right?

  53. Sorry, no it cannot be a problem under both. Something that fails 101 cannot fail 102, as it doesn’t reach that question. If it can fail 102, it must necessarily not fail 101.

    The “invention” discussed under 102 is only one that qualifies as an invention, that is, only something that passes 101. Also, the entitled unless portion dictates that the sole cause of failing 102 is within 102. It is clear legal error to conflate the two sections.

  54. You, it is a problem both under 101 and under 102.  Everything that is eligible is old: 102.  Everything that is new is ineligible: 101.

  55. The “problem,” as you put it Ned, would be a 102 or 103 problem rather than a 101 problem.

    Since the Court adjudged this as a 101 problem, you cannot be correct.

    Unless, that is, the Court has made a fundamental legal mistake.

  56. While Paul is not an avowed paid lobbyist, he is still a shill.

    Witness his methodology: mis-statements of law in support of an established agenda.

  57. Cynic, what Fleishman has done is equivalent to re-patenting the typewriter. At least from cases such as Le Roy v. Tathum (1852), the Supreme Court has made it clear that laws of nature and principles in the abstract cannot be patented. Prometheus reestablished this principle in spades in overruling the Federal Circuit that was trying to follow the Supreme Court command not to dissect claims into old or new in determining patentable subject matter. This rule against dissection was a problem all along because it tended to mask the real question of whether the claim considered as a whole was directed to an application of the new principal or law of nature to useful end.

    If you have been following Patently-O for sometime, you would have seen that our own Malcolm Mooney had correctly predicted the result in Prometheus, even if not that the result depended upon the law of nature aspect of the case. He correctly analyzed that the claim was directed to the correlations themselves as everything else in the claims old and conventional and was therefore mere data-gathering as inputs to the correlation. But the correlations themselves are simply the law of nature or the principal in the abstract and are not subject to patents.

  58. Paul, Malcolm is all along argued that the claim would be just fine if the blood test were in fact novel and nonobvious. The problem we have with your statement is that Prometheus conceded that everything in the claim but for the correlation was old and conventional. I suspect they had to say that because of their prior published paper.

  59. And, Night, what you do not seem to get is that the vice in the claim is that it ends with mental steps or thoughts.  One infringes simply by doing the prior art, and no more.  This was the central problem in Prometheus, and in the 9th Circuit Halliburton v. Walker case that started the whole mental steps line of cases.
     
    Now, if the claim required the use of the new information in some fashion, as in alloy example, the claims would not end in mental steps, but in an act that produces a new result, a new alloy.
     
    You constantaly speak of irrelevancies on conversations with everyone here, about information processing, transforming data, and the like.  But one cannot patent informaton or mental processes.  Nor can one simply add to such a claim old data gathering steps that simply practice the prior art processes of gathering data. 
     
    Applications of new information processing invention are the grist of patents.  Do something with the algorithm, correlation or information and you have patentable subject matter. 

  60. I Googled NWPA and got the North Wales Photographic Association. Are you a member by any chance?

    For the avoidance of doubt I post in my own name and am not a paid lobyist.

  61. The only real problem occurs when an innocent infringer enters the picture.

    Except infringement is not a matter of “innocence.”

    There is no such thing as an innocent infringer.

  62. What does “making” mean with patented bulls?

    It would depend on what is claimed, but think about your hypothetical for a second. You have a farmer who acquires a stud bull that has been genetically modified to produce better offspring for some agricultural purpose. The farmer deliberately introduces the bull, in pertinent part, to his herd of cows. That’s a lot of deliberate human intervention that has to take place before a new calf containing the patented gene can be produced. It’s an even clearer case of “making” than a farmer planting Roundup-ready seed in acres and acres of neat little rows.

    Even ignoring the fact that the farmer would surely have explicitly licensed the genes for the express purpose of producing calves for profit, it’s very clear that he will not be infringing by accident.

    The only real problem occurs when an innocent infringer enters the picture. And by “innocent” I mean someone who can’t possibly know whether he’s practicing the invention or not, because he’s planting commodity seed and not spraying roundup, or because he can’t tell one stud bull from another on a genetic level.

    I do think that there should be some very low level of knowledge requirement to make a case for infringement against someone who has no way of knowing whether or not he is practicing the prior art. He should have to be aware of or make use of the utility of the invention in some way, and there should be some practical way for him to avoid infringement, e.g. some commercial source of seed that is known to be free of the patented gene.

  63. Being “paid” is not required to shill.

    An agenda to be pushed based on pure philosophy that refuses to acknowledge the veracity of opposing points of view is just as culpable as the prostitution that comes from being “paid.”

  64. And, let’s all not forget that some of the people here are being paid by lobby groups to post.

  65. Ned, they are infringers if they infringe the claims of the patent during the short span of the patent.

    The new information processing algorithm would not exist but for the time, capital, and innovation of me–in your hypothetical. You seem to want to have exceptions swallow the rules. Yes, there is a problem with the human brain being an information processor and our machines of the 21st century (where most of the innovation is ocurring) also being information processing machines. This same tension was present when machines began to replace poeple for physical labor and now we are seeing the same for mental labor albeit it has been cleverly used by the medieval minds.

    So, what exactly is your point Ned? No one should get a patent for processing information which takes time, space, and energy to transform? Read that last sentence again and again. It is true and the fact that it is true negates every argument that is made by the other side. All that is left is that narrow exceptions need to be made for allowing people to use their noggins on some things. But, let’s really think about this and ask whether or not we don’t prevent lots of thinking in patent law. If I am mixing up an alloy in my factory and I happen to know that if I add just another few ounces of an ingredient am I prevented from doing so? Or am I prevented form thinking that I should add it and then using my mind to think to move my body to add the ingredient.

    Let’s face it. You are ridiculous. Your arguments do not reflect 21st century science, our understanding of the mind, or our understanding of incentives for innovation–modern business.

  66. MM:” I haven’t made any false statements, suckie. Please GFY.

    is itself a prima facia false statement, a classic lie told to cover other lies.

    Malcom just doesn’t get it that once credibility is lost, it is difficult to re-obtain it, especially if the posts are merely more of the same BS that he has been spouting for years.

  67. MM:” I haven’t made any false statements, suckie. Please GFY.”

    Ummm the following is a false statement:

    “”MM, In contrast, there is indisputably something inherently illegal about a claim that turns someone practicing the prior art into an infringer because they are thinking about an abstraction (i.e., a fact, an idea, a law of nature, etc.), which is indisputably what the claims at issue Mayo did.”

    Why is that false? Because you can’t describe in clear and objective language how anyone could possibly infringe Mayo’s claim by mere thought alone.

  68. Reading the last three posts, I see at least one contributer who is not the least bit confused, one who is well-informed, unprejudiced and rational.

    But equal thanks to you both, for providing us readers with your stimulating thoughts. I hope that the interesting and educational dialogue will continue, undiluted.

  69. Malcolm: The real invention was indeed a blood test. That is why the claim was written the way it was (although it could have been done better). If you visit the Prometheus website you can download the brochure for the Prometheus blood test and read all about it. That is the business that they are in, and that is also the business that Mayo want to be in.

    Without the new fact the blood test was aimless. With the new fact it was purposeful. With the new fact (plus a genetic test) doctors could safely administer thiopurine drugs to colitis sufferers instead of having to rely on steroids which in the long run were more harmful. Prometheus said in their brief that it made a big difference to patients’ lives, and there is no reason to doubt that what tey said was true. For this kind of reason the new fact was arguably a technical feature, although the claim could have been better presented.

    But the fact was an obvious development. It was the result of preliminary research that had been published and further research that the inventors concluded and recommended should be done. Obvious to try: yes. Reasonable expectation of success: yes. Prometheus bought into the research.

    And the people practising the prior art are a figment of your imagination. The blood test was not in use prior to the invention because its correct interpretation was not known. The nearest approach was the inventors’ published paper. Mayo’s people said that metabolite testing was still developmental. If the correct interpretation was not transformative, there would have been no commercial success and no controversy worth thking to the Supreme Court.

    Dont misunderestimate the importance and value of the research (even if it was obvious to carry out)

  70. Malcolm, I was thinking more along the line of the patented bull (the bull having been acquired without any contract restriction from the patent owner or his licensee) in the herd of unpatented cows producing for years offspring, some of which have the modified gene, some of which do not.  Does the farmer infringe each time the bull produces new offspring?  Do the offspring of his offspring that have the patented gene infringe when they themselves breed?  What does "making" mean with patented bulls? 

    Regarding your example, we do have Hemcon as an example of precisely what you describe.  The diatoms there were raised in a pure environment thereby producing a purified product.  I see the purified diatoms here to be a product of man, not of nature.

  71. I think the problem also has to do with the fact that nature produces the product.

    What if the ineligible-izing “natural” chemical is produced only in circumstances where man has altered the natural environment, i.e., where some other chemical has been intentionally introduced into the soil or water by human beings? Is the ineligible-izing non-isolated chemical still “produced by nature”?

    Yet another obvious problem with trying to render novel non-obvious useful compositions ineligible by reference to impure compositions found in “nature.”

  72. PC The real invention was a blood test.

    No, that wasn’t the “real invention,” Paul. Better obfuscators, please.

    Blood tests involve patient samples, centrifuges, HPLC machines and they like. They are not abstract ideas.

    Fantastic observation. Unfortunately, the claimed method turned people practicing the prior art into infringers when they learned a new fact. i.e., the claim turned those engaged in a perfectly legal and unpatentable (i.e., old) activity into infringers merely because they learned about a patent-ineligible and publically dedicated abstraction, i.e., an alleged fact.

    Let me know if you are confused about any of this, Paul, and I’ll straighten you out even further. Again.

  73. I think the problem also has to do with the fact that nature produces the product.  

    Hypo: If I discover the bark of a particular tree when chewed prevents aging and then patent the bark,  may I sue the local lumberjack who harvests the particular trees and sells them with bark attached to lumber mills?

    When man produces the product, we have a different answer.

    The above also serves to illustrate the problem with patenting sexually reproduced plants and animals.  Nature, not man, produces the offspring.  

  74. “I have may not have fully understood 6′s preemption argument heretofore, but I now begin to see the light”

    And it only took several years.

    Ned now that you understand it know this also, Kevin Noonan assures me that in the case of gene’s claimed in this fashion there are still other uses for the natural gene which are not covered. He claims that there are a substantial number of uses not claimed. If he is correct, then perhaps they win out. It was at the point where he informed me of this that I pretty much stopped caring about Myriad because the issue boils down to precisely that, and if he’s right then the claims are in the clear. And I didn’t know the art well enough to know if Kev was lying, misleading, confused or simply telling the truth and was also correct.

  75. Has anybody figured out yet that (a) the real objection to the Prometheus patent was clear and almost undeniable lack of inventive step over a paper that the inventors had published in 1996 well before the application date, and that (b) contrary to the remarks in Mayo about clever claim drafting, a better structured claim would not have provoked a section 101 dispute? These are what provoked the Supremes to interfere in a case which had a far simpler and better legal solution.

    The real invention was a blood test. Blood tests involve patient samples, centrifuges, HPLC machines and they like. They are not abstract ideas.

  76. Ned H writes, “Malcolm, you make a good point there. The mineral/plant is found everywhere on Earth, not just in the good old USA. Allowing a patent on such arguably exceeds the scope of authority of the US government.”

    Say what?

    The US gummint exceeds no scope despite the universal location of the mineral/plant, because the US gummint may GRANT only as to the limits of the US. The findability of the mineral/plant outside the US does not raise any additional issues.

  77. Malcolm, you make a good point there.  The mineral/plant is found everywhere on Earth, not just in the good old USA.  Allowing a patent on such arguably exceeds the scope of authority of the US government.  I think this is what the Commissioner may have had in mind when he penned Ex parte Latimer, observing that a patent on a particular tree where the tree was located outside the US made no sense.

  78. I beg to differ, glass.

    A little self-deprecation never hurt anyone.

    I wonder if his moniker runs afoul of the ethical restrictions on self-laudatory advertising?

    LOL, I’m still laughing inside.

  79. OK, smart-A**, cite the Supreme Court case where the Court held that the claims before it were not eligible for patenting because they were "products" of nature, albeit, newly discovered by the patentee.

  80. He just makes false statements as if they are fact.

    I haven’t made any false statements, suckie.

    Please GFY.

  81. Chakrabarty Thus, a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter.

    Nothing remotely controversial about this if you pay attention to the invention being claimed.

    Ineligible: “Mineral X, wherein X is found anywhere, including in the earth’s crust.”

    Ineligible: “A plant X, where X is growing anywhere, including the wild.”

    Eligible: “Isolated/purified novel, non-obvious useful chemical composition, wherein said chemical composition can be found in impure/non-fractionated form somewhere in the universe.”

  82. A case can be made that Charabarty got it wrong

    Not by you Ned Heller.

    You got pounded into oblivion trying to do so. We don’t need a repeat performance of that.

  83. Jon, I appreciate all that.  I think though, that ex parte Latimer, 1889, CD., 46 OG 1638, not a Supreme Court opinion but the opinion of the Commissioner, itself relied on cases where the Supreme Court was not clear in its holding,  particularly Cochrane v. Badische Anilin & Soda Fabrik, 111 US 293 – Supreme Court 1884, because the product of nature there being claimed in isolated form was both known and of nature.  Being known, it was prior art, and for this reason the claim to the same product, even a purified form of it, arguably was anticipated.  Thus the basis for its holding was ambiguous at best. 
     
    The lawyers prosecuting the case before Hand, and Hand himself, were not aware of any controlling Supreme Court authority that a product of nature could not be patented.   That doctrine first arguably appeared in Benson, where it cited Funk Brothers and Tatum for the proposition that "phenomena of nature" cannot be patented.  But those case only stood for the prosition that laws of nature or principles in the abstract could not be patented.  It was Chakrabarty that equated phenomena of nature to products of nature for the very first time at the Supreme Court level:   (It is odd, is it not, that the Supreme Court in Chakrabarty did not cite Cochran v. Badische.) 
     
     " This is not to suggest that § 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. See Parker v. Flook, 437 U. S. 584 (1978); Gottschalk v. Benson, 409 U. S. 63, 67 (1972); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U. S. 127, 130 (1948); O'Reilly v. Morse, 15 How. 62, 112-121 (1854); Le Roy v. Tatham, 14 How. 156, 175 (1853). Thus, a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law that E=mc[2]; nor could Newton have patented the law of gravity. Such discoveries are "manifestations of . . . nature, free to all men and reserved exclusively to none." Funk, supra, at 130."

    A case can be made that Charabarty got it wrong, and that one should be able to claim products of nature first discovered by the inventor, who also discovered a use for them.   If the product of nature was known, it is unpatentable under 102/103, not under 101.
     
     

  84. Jon Harkness,

    if he had understood it to be an isolated/purified product of nature (because of Ex parte Latimer).

    Not exactly true, and this misses the not so subtle nuance that isolated and/or purified products of nature can be patented if the process of isolating or purifying changes (kind not degree) the item so being isolated or purified. And even in Latimer, the change could be as sleight as the curling of hair (mere stress induced physical characteristic, much less chemical alteration).

    The notion that the argument was disingenuous completely misses the point and incorrectly reads Ex parte Latimer as holding that isolation/purification cannot by itself generate a patent eligible item.

    Such is simply not true.

    The argument worked because the argument was true. And to hint that the examiner, even (especially) being who he was, was somehow “worn down” is what is preposterous and perhaps disingenuous. That cannard does not fit today. It did not fit back then.

    AS I said above, I may have missed Ex parte Latimer, but my holding is still correct and it is you that have glommed unto and exagerated dicta in order to reach your pre-ordained conclusion.

    Now, let me rest.

  85. I’m, frankly, somewhat undecided on what the public policy with respect to this question should be. My major point is the following: we (patent attorneys, judges, Congress, etc.) should stop pretending that this was a tough question resolved by a legal genius in 1911, who was fully informed by litigants who vigorously argued the issue before him.

    For what it is worth, the Patent Commissioner said in 1889 (in Ex parte Latimer) that even a newly discovered isolated natural product should not be patentable (as discussed on p. 379 of my article). Here’s the relevant extract from his decision: “I am
    not aware of any instance in which it has
    been held that a natural product is the subject
    of a patent, although it may have existed
    from creation without being discovered.”

    My sense of Judge Moore’s policy rationale is that in somewhat circular (but perhaps valid) reasoning she argued that the “settled expectations” should not be upset because they are settled.

  86. Ned, thanks for reading my article (again, I’ll send it to anyone else who drops me an email at jon.harkness@comcast.net).

    The tricky part about leaning on Merck is that those judges leaned so heavily, I think, on Hand’s problematic 1911 dicta in finding B12 patentable in 1958. And, as I point out in my article (p. 396), the Merck opinion offers the following set up before they quote Learned Hand’s “magic” few sentences from Parke-Davis: “Adrenalin is a concentrate of the blood pressure raising principle in the suprarenal glands of living animals. It certainly IS A PRODUCT OF NATURE [emphasis added] in the sense the B12 active compositions here may be said to be products of nature.”

    Part of the problem is a linguistic one (and a cautionary tale about the disadvantages of granting a trademark that is similar to a generic term): “Adrenalin” (upper-case A; no final e) is the trademarked term for Parke-Davis’s medical product; “adrenaline” (lowercase a; with a final e) is the generic term for the hormone. Note that in 1958 the Merck judges said that “Adrenalin” (the trademarked medical product) was “a product of nature.” But, in 1903, Examiner Littlewood would not have granted a patent on “Adrenalin” if he had understood it to be an isolated/purified product of nature (because of Ex parte Latimer). The PTO only granted a patent in 1903 when the applicant succeeded in arguing (perhaps disingenuously) that “Adrenalin” was NOT a product of nature. The 1958 judges in Merck didn’t understand this, and neither did Learned Hand in 1911.

  87. NWPA,

    Why are you surprised? If a word like “Troll” can be fabricated from nothing and so clearly be brandished as a weapon against evident legally valid positions (the owner of property has a right to that property regardless of whether he was the original inventor or not), why would you be surprised that when Big Money is involved, that all sorts of deception and chicanery would be used? The users of such devices care not for “the system” or even the quaint notions of “societal advance” or “progress.” They care only for the win for their client at whatever cost, at whatever collateral damage.

  88. “Nor is the patent only for a degree of purity, and therefore not for a new “composition of matter.”

    “That was a distinction not in degree, but in kind.”

    While I do state “But, even if it were merely an extracted product without change, there is no rule that such products are not patentable.” It is that statement which is the dicta that is both errant and inconsequential, as I further note “it became for every practical purpose a new thing commercially and therapeutically. That was a good ground for a patent.”

    My error in not citing Latimer was indeed inconsequential to my holding on the case. The notion of change in kind not degree was clearly made and I do not appreciate the petty hindsight attack on my jurisprudence that is being attempted here.

  89. It occurred to me that if what you say is true that means that Microsoft and SAS and other software companies are hiring people to do basic research in discoverying new laws of nature and as such should fire them all.

    You guys are really medieval. It is scarey that ideas like this would not just surface but would win out. The few rational thinkers are terrified because we see the vast gulf between reality and these new bizarre abstractions that are being built in people’s minds to justify their behavior.

  90. Anyone practicing an art is required to think.

    Therefore denying claims that require thinking is to deny all process claims.

    Oh..and anytime spent time parsing MM might as well be spent parsing a carnival barker.

    Same substance.

    Same side show.

  91. “Rather the point was made that knowledge of the procedure in the abstract was patent eligible. ”

    Umm….Who exactly made this point?

  92. Ned,

    It’s not more than three posts above.

    point was not that the patent covered practicing

    cf

    And consequently anyone practicing

    W

    T

    F

  93. “don’t you think that patenting knowledge in any form is just a bit much? ”

    But that’s what patents are.

    Temporary monopolies on applied and proceduralized knowledge.

    So to even asked such a question is to expose an underling anti patent mentality.

  94. But the point was not that the patent covered practicing.  Rather the point was made that knowledge of the procedure in the abstract was patent eligible.  

  95. Jon, I have finished your article. It does appear that Hand’s statements about product of nature are in fact dicta, and that he did not cite or appear to even know about In re Latimer, a case that had in fact held that a product of nature could not be patented, but that such a product, with changes and differences, could, citing the uses of hair where patents to modified hair had been granted.

    That leaves us with ambiguous Supreme Court cases (themselves dicta), In re Latimer, Hand’s dicta, and with Merck. Of all these cases, Merck (4th Cir.) did, I believe, squarely hold that vitamin B12, isolated from fermentates, was patentable as a compound because only when isolated did B12 have substantial utility from for example, the powdered bovine liver of the prior art that worked to a degree but also contained so much other matter that deleterious side effects were common.

    Back to Lourie’s opinion. I think it critical that isolated DNA is chemically different. That was the basis for Examiner’s Littlewood’s grant of the original Adrenalin patent. I think your article will go a long way give credit where credit is due to Dr. Littlewood, MD.

    But I also think that Merck was rightly decided. That opinion did not depend upon chemical differences of the active compound from the compound in nature. It depended on the purification of the active compound that gave it utility.

  96. Leave the strawman out Ned.

    Practicing is obviously a method. The “instrumentalities most likely articles of manufacture.

    Methods.

    Why is it that you constantly leave out this very valid category of patents? For some unknwon reason, you seem to always leave out this category.

  97. Just say, I assume you are correct in everything you say; but don't you think that patenting knowledge in any form is just a bit much?  I would politely ask you whether knowledge, albeit as useful as can possibly be, is a machine, article of manufacture or a composition of matter?

  98. “Clearly the patent makes infringers of doctors who practice the prior art if they simply keep up with the current state of medical knowledge in their field. How can this be?”

    Your question is loaded with a false assumption. No knowledge can advance the state of the art in any field unless the knowledge becomes proceduralized.

    proceduralized knowledge is the antithesis of abstract ideas, concepts, thoughts, thinking etc.

    proceduralized knowledge requires an application and often instrumentalities.

    Therefore proceduralized knowledge is patentable subject matter.

    And consequently anyone practicing a patented procedure is subject to infringement.

    Any Questions?

  99. Not, I think you are parsing Malcolm a little too finely.  He has said the basic problem is that one practicing the prior art is made an infringer.   While this is true, there is another component.  The practicer himself must be aware of the correlation.

  100. “Beat, in a sense you are right, but look closer.”

    Well, if the conclusion is right then there no need to take a closer look. MM has failed to prove the proposition that one can infringe a claim by mere thought alone. And MM’s implication that the SCOTUS held such in Prometheus is farcical at best.

    For you to align yourself with such flawed thinking is to only undermine your credibility for any subsequent arguments you wish to make.

  101. I should note, the other day an examiner “examining” a softwarelol application told me that he allowed the case because a “box” on a screen was bigger than the one he had. When asked, he admitted that he literally allowed the application because hypothetical photons (not even real ones) would be emitted differently. Remember, this was a product case.

    This is what is known as phoning it in and they’ve been doing it for decades. The PTO phoning it in does not count as them actually examining these applications.

  102. “Obviously, this is not “unpossible” as it is being done”

    Not really, they’re just going through the motions. You don’t know how easy it is to fake an examination do you?

  103. Beat, in a sense you are right, but look closer.  All  the doctor is doing is that which the doctor has always been doing — long before the discovery of the new correlation:  administering and testing.  What makes him an infringer is the knowledge of the correlation.

    I think this is what Malcolm has in fact been saying all along.

    Clearly the patent makes infringers of doctors who practice the prior art if they simply keep up with the current state of medical knowledge in their field.  How can this be?

    I have the same basic objection to Monsanto.  Farmers have been planting commodity seed from time immemorial.  They are now made to be infringers of Monsanto's soybean patent because Monsanto deliberately contaminated the environment with its patented soybean variety by exposing the plant to the environment where the patented soybean variety spread naturally, and by allowing farmers to sell seeds from the patented soybean crop to grain elevators where they mix it with seeds from all sources and sell it as commodity seed.

    What Monsanto has done is to make farmers infringers for doing only that which they have always done and which they should have the right to continue to do.  The fact that the patented plant seed is among seeds he is planting is the fault of Monsanto.

  104. suckie MM’s position that someone can infringe a claim because they are merely thinking

    How can you tell one of the Mayo Nays from an ordinary trxll? The Mayo Nays can’t stop dissembling. Here’s a tip, suckie: go find EG and give him a big kiss. You guys are two of a kind. Probably related.

  105. ” Once a doctor has read and understood the correlations, the patent owner says he is an infringer regardless that all he does is the prior art administer, and testing steps” He is infringer because he knows something.

    According to your own example the doctor is doing something more that just learning/knowing. According to you, in addition to reading and analyzing, he is:

    1. administering, ( presumably with the physical act of skill, and specific instrumentalities required for such an act.)

    2. testing, ( Again, presumably with the physical act of skill, and specific instrumentalities required for such an act.)

    Therefore using your own logic and examples there is more occurring than merely thinking. And MM’s position that someone can infringe a claim because they are merely thinking, is on it’s face, completely false.

  106. Sorry Jon, but your self-introduction reminds me of the Monty Python sketch where John Cleese was a self-important member of parliament or something, with an important statement to make in the House of Commons on Rhodesia, and his mum kept treating him like a 6-year-old.

    I hope to actually read your potentially interesting post, once I stop laughing inside.

  107. Ahem…IIRC, it was I who appropriately claimed victory in Prometheus, and in doing so, showed how my own claim was of a more fundamental nature than your own.

    link to patentlyo.com

    Especially on March 21, 2012.

    In a final demonstration of the absurdity of the opinion, I even granted to 6 the claim of victory.

    Nice try.

  108. Night, let us assume that you invent a new information processing algorithm that takes old data produced from seismic measurements and then accurately predicts just where an how much old is located in a particular area. You patent the algorithm and publish it in a book that is read by prospectors in the industry.

    Are oil prospectors who are aware of the algorithm from the book infringers when they measure seismic data using old measurement techniques?

  109. "Chemically different"?

    If that alone is sufficient, then isolated DNA is patent eligible.

    But, thanks, Jon.  The proceedings in the PTO where the purified adrenalin patent was granted on the basis that Takamine represented that purified adrenalin was chemically different than the natural hormone is, to say the least, fascinating.

    Your analysis of Hand's opinion is also largely spot on.  Hand also was concerned with whether purified adrenalin was (chemically) different from a known unpurified, but otherwise isolated, adrenalin.   The Supreme Court had, in prior cases, held that "isolated" compositions claiming the same compound known to be a product of nature were not patent eligible.  (To me, it is not clear that just how much those decisions rested on the fact that the compound and its use was "known" as opposed to it being a product of nature.)   The compound being claimed must be a different compound.  This is why Lourie in Myriad spent so much time on demonstrating that isolated DNA was in fact chemically different.  But note, Sweet in his opinion from the District Court, held that the differences were immaterial.

  110. do you think it’s reasonable to grant patents to “isolated”/pure/fractionated/extracted compositions of matter where those compositions are also found “in nature” (whatever that means) in an impure/non-isolated form?

    Just so I’m perfectly clear.

  111. Fascinating (if true).

    Curious about one thing, Jon: do you think it’s reasonable to grant patents to “isolated”/pure/fractionated/extracted compositions of matter where those compositions are also found “in nature” (whatever that means)? Should it matter whether the existence of those compositions was known prior to the discovery/filing of the patent application?

    Judge Moore acknowledged that her CAFC swing vote in Myriad was largely swung by the history of “settled expectations of the inventing community,”

    In your view, did Judge Moore suggest that those “expectations” were otherwise unreasonable, as a matter of public policy and rational interpretation of the patent laws (as opposed to ancient judge-penned bullcrxp)? Just curious.

  112. You (and others) might be interested to have a look at my detailed history of the 1911 Learned Hand adrenaline case in the most recent issue of the Journal of the Patent and Trademark Office Society (anyone can send an email to me at jon.harkness@comcast.net and I will provide a full pdf copy). Here is the very short version of the story:
    1. The policy of allowing patents on isolated/purified products of nature (such as the DNA sequences at stake in the Myriad “gene patent” suit) can largely be traced to a few sentences from Judge Learned Hand’s 1911 opinion in Parke-Davis v. Mulford, a patent dispute concerning a therapeutic version of the hormone “adrenaline” (with the trade name “Adrenalin”).
    2. A highly qualified patent examiner repeatedly rejected the original Adrenalin product patent application over the course of three years (1900–1903) on the grounds that it was only an isolated/purified product of nature and, therefore, unpatentable subject matter according to the relevant legal standards of the day (Ex parte Latimer, summarized on pp. 378–379 of my article).
    3. During patent prosecution, the applicant (Takamine) and his attorneys acknowledged Ex parte Latimer as providing the relevant legal standard and managed to convince the examiner that “Adrenalin” (the medical product) was chemically different than “adrenaline” (the hormone)—not just a purified version thereof. Only then did Takamine get his product patent.
    4. The patent litigation between Parke-Davis and Mulford had NOTHING to do with Adrenalin being an isolated product of nature; it was basically a protracted priority/novelty dispute. Here’s some striking evidence: each side had a top-notch expert witness, and during a combined total of 53 (!) days of depositions neither expert was asked a single question on the issue of whether Adrenalin was an unpatentable product of nature.
    5. Learned Hand’s (in)famous several sentences from this case were classic dicta—he had been on the bench only two years, and he got the law wrong because he didn’t know any better (and the lawyers in the case didn’t educate him on the topic because they were tangling over other issues).
    6. The isolated “holding” from Parke-Davis basically lay dormant until 1958, when some 4th Circuit judges used it to resolve a knotty question over the patentability of vitamin B12 (in Merck). Of course, during the intervening 47 years Learned Hand had emerged as a god-like figure. Indeed, one can almost sense the relief of the 1958 judges to have been rescued from a difficult call by Learned’s genius—they missed the fact that a 39-year-old Hand had made a rookie mistake (or, more accurately, a sophomoric mistake) in 1911.
    7. Similarly, a look at the 2001 USPTO Gene Patent Guidelines reveals that the Patent Office rebutted product-of-nature concerns largely by pointing to a misunderstanding of Parke-Davis.
    8. More recently, Judge Moore acknowledged that her CAFC swing vote in Myriad was largely swung by the history of “settled expectations of the inventing community,” and she pointed specifically to Parke-Davis, Merck, and the 2001 PTO Guidelines as the sources for these “settled expectations.” My basic argument is that this WHOLE edifice rests upon few sentences of highly flawed dicta from a century-old case.

  113. LB I agree that this is probably not something for the courts to resolve. Fortunately we have a dynamic Congress that’s always looking out for the public interest…

    LOL.

  114. I see the argument, too, LB, but I don’t think it’s a 101 argument.

    Fair enough. I agree that this is probably not something for the courts to resolve. Fortunately we have a dynamic Congress that’s always looking out for the public interest…

  115. I see the argument, too, LB, but I don’t think it’s a 101 argument.

    Since when has the distinction between 101 and ANY other portion of law mattered to you?

  116. Can you describe in clear and objective language how anyone could possibly infringe Mayo’s claim by mere thought alone?

    No. More importantly, it’s not necessary that I describe that to you since you seem to lack a basic understanding of the issues I raised and the issued addressed by the Supreme Court in their 9-0 decision. Maybe you should take a class in reading comprehension? Again?

  117. LB I’m by no means an expert, but I can see an agument that claims to (isolated) human genes that cause a certain form of breast cancer and/or claims to methods that effectively foreclose any and all techniques that utilize the information conveyed by those genes (isolated or not) are “infrastructural” and should be treated as part of the commons.

    I see the argument, too, LB, but I don’t think it’s a 101 argument.

    There is an interesting question lurking underneath this which we’ve touched upon before. What about the situation where no individual claim of a particular patentee “effectively forecloses any all techniques for future research/study/application”, but all of the claims (including those in separate patents) have this effect when taken together? Surely this is not a 101 problem. But from a policy perspective (health) it is interesting.

    Maybe it’s time for the government to start making noise about regularly asserting its march-in rights in such situations. Of course, other jurisdictions have taken more extreme measures to prevent methods of treating human diseases from becoming monopolized.

  118. Special, the correlations themselves are the discovery. They can be published in a book. Once a doctor has read and understood the correlations, the patent owner says he is an infringer regardless that all he does is the prior art administer, and testing steps. His an infringer regardless that he does nothing with the doseage in response to a report of the level of metabolites. He is infringer because he knows something.

  119. Leo, well put.

    I think in the case of Myriad, the infrastructure question boils down to preemption. The answer has to be that the claims are patent eligible or not based on some existing rule of law.

    I think a claim to the isolated form of a naturally occuring composition preempts all or virtually all man made uses of the naturally occuring form , but that is the whole point of claiming a composition rather than the use of a composition in the first place.

    I have may not have fully understood 6′s preemption argument heretofore, but I now begin to see the light. If preemption has teeth, Myriad’s claims are in trouble.

  120. Obviously, this is not “unpossible” as it is being done (albeit begrudgingly).

    What is “untenable” is you assuming your own conclusion when that conclusion has been shown to be false (both factually and legally).

    Nothing like making a post that proves you are an @_$$.

  121. “because it would be too difficult”

    is that code for “unpossible”? Because what you’re talking about is unpossible. It isn’t just “laziness” that is at play here. The office was designed to do one thing, examine statutory inventions, machines, products, arts, and compositions. They do that very well. Throwing written works, functionally defined on top of that is simply not tenable.

  122. It’s worse than that, as at least the Pope had a vested (if even rational basis) for his desire to suppress what to him was clearly heretical. The Office charged with Innovation has the opposite mandate – to encourage innovation.

    However, when a public service agency bases its desire to NOT examine a new new and burgeoning field of art (see the 1960′s government reports) because it would be too difficult, you have a rational of laziness supplanting the very basis for the existence of the Office, and this should be highly offensive to everyone.

  123. “It is like speaking to the pope about the earth revolving around the sun.”

    Which is exactly what happens whenever some examiner rejects a software or business method patent for being an abstract idea.

  124. One more thing: the degradation of information processing is strikes me as so odd in that information processing is somehow thought of as being easy or not having structure in the same way that say mechanical physical objects do. But, this is wrong. Information takes time, energy, and space to transform. And, figuring out how to process information is an invention.

    It is like speaking to the pope about the earth revolving around the sun.

  125. LOL, of course not.

    MM can’t answer logical questions that poke holes in his theories.

    He just makes false statements as if they are fact.

  126. If what you said is true, many inputs and few outputs, then how could it be that hundreds of thousands of these “ideas” are invented a year?

    In fact, by their structure–the large number the particularness of them—these things that are like Prometheus are inventions.

    This whole mess you wrote does not take into account information processing as an art. You just don’t get that modern science and engineering (and all of inventions now really) have to do with information processing. We have reached the point just like in Prometheus that inventions are not about some inexact method of applying a medicine but figuring out what processing are underlying the previous methods of therapy and then coming up with an optimum way of providing a method of therapy.

    You, Sir, are out of the medieval period. I doubt that you understand science or inventions, or that you have worked with inventors and funding inventions.

    What strikes as just unfathomably about responding to essays like this is that even the empirical facts are ignored by you. Are there really hundreds of thousands and millions of “new” ideas or law of nature that are inputs to other outputs each year? And, if they are, are they really laws of nature? Can that be? Can it be that the real problem is as I say above that we have reached a new age of information where the inventions are more sophisticated and the legal minds are unwilling or incapable of comprehending the inventions.

    Prometheus was an inventions. And, not just any invention, but the type of invention that I want encouraged. I want capital and people’s energy focused on figuring out how to optimize therapy. I guess what you don’t understand is that our minds process information and the new inventions are all about information.

    Empirically, all of these supposed non-inventions look like inventions. And, why is that? I know. And any modern thinker that understands information processing knows. That is because processing information is like learning to build a car. But, guess what, talk to people that are tops in their field in mechanical engineering and they understand this. They are not your friends.

    Oh well….it seems the nonsense is not going to stop. It is getting piled higher and higher by second to third rate minds.

  127. “MM, In contrast, there is indisputably something inherently illegal about a claim that turns someone practicing the prior art into an infringer because they are thinking about an abstraction (i.e., a fact, an idea, a law of nature, etc.), which is indisputably what the claims at issue Mayo did.”

    Can you describe in clear and objective language how anyone could possibly infringe Mayo’s claim by mere thought alone?

  128. I thought the article was interesting, notwithstanding that it is apparently derivative of MM’s prior scholarship.

    For what it’s worth, I don’t think Professor Burstein is proposing a “general rule [that] allows novel compositions of matter to be found ineligible based on their alleged similarity to compositions found ‘in nature’.” Nor do I understand that he is proposing that your cancer-curing chemical should becoming invalid upon the discovery of your rockfish liver. Rather, I think the proposal is more modest – that at least some genes (isolated or not) might qualify as “infrastructural” and thus should be unpatentable.
    I’m by no means an expert, but I can see an agument that claims to (isolated) human genes that cause a certain form of breast cancer and/or claims to methods that effectively foreclose any and all techniques that utilize the information conveyed by those genes (isolated or not) are “infrastructural” and should be treated as part of the commons.
    It might be fair to criticize Burstein’s suggestion for being impractical, as I’m not sure I can see a clear test for “infrastructural.” But I don’t think converting his position into something it’s not is fair.

  129. Malcolm, I believe there is a significant question as to the novelty of the 15mer claim.

    Gee, it seems to me that issue should be addressed before asking whether the claimed composition covers a “law of nature.”

  130. Learned, regarding your requirement for "kind," what exactly do you mean.  In Hand's case itself, unpurified adrenalin was known.   Thus the purified form must have been inventive over the prior art form.  His case was far more about the novelty of purified adrenalin than about anything else.

    In the case of one's own discovery of a previously unknown composition of matter in nature, and its utility, one does not necessarily have to treat that composition as part of the prior art.  Simply because cannot claim the naturally occurring composition based on a law of nature exception, shouldn't one be able to claim the isolated version of it on the grounds that the isolated version is not in nature?  And, if not, why not?

    Now a claim to an isolated leaf is a bad example, as isolated leaves are know and do exist in nature.  Smelted iron, however, may not exist in nature, even assuming smelting was a well know process for copper and the like.   The question remains whether a claim to smelted iron should be denied just because iron in an unpurified state is part of nature.

  131. This is why practitioners look askance at lawprofs. This is jargon-laden fawning at its worst, and it’s difficult to figure out what the professor is trying to say other than that Brett Frischmann is awesome.

    I’ve read the post a few times and still can’t figure out how this book “predicted” Prometheus or how it “may also go a long way toward bringing some order to an area of patent law that has long been confused.”

    As far as I can tell, this is the crux of the post:

    Frischmann then explains how this concept applies to ideas. Ideas, he writes, often are infrastructure (subject to a number of complications that I’ll put to the side). So in his view, intellectual property should protect implementations of ideas but not the ideas themselves (286). To sort one from the other, Frischmann turns to the concept of abstraction in copyright law and argues that patent law should follow a similar path.

    ….

    Substitute “idea” for “natural law” and the analogy to Frischmann’s analysis becomes clear. Indeed, there is no reason why a “natural law” cannot be an “idea” as Frischmann describes it. A natural law is the articulation of a principle; whether that principle is an infrastructural idea turns on its characteristics, not its origins. In Prometheus, the Court, with Justice Breyer authoring the unanimous decision, held that the patent claimed the natural law itself and not an application of that law. The Court held that the the patent claims did not “add enough to their statements of the correlations . . . to qualify as patent-eligible processes that apply” those correlations (slip op. 8). The “administering” and “determining” steps, in the Court’s view, comprised “well-understood, routine, conventional activity already engaged in by the scientific community” and so were “not sufficient to transform unpatentable natural correlations into patentable application of those regularities” (slip op. 11). Or, in Frischmann’s terms, the patent claims did not amount to an implementation of an idea; they claimed the idea itself.

    The notion that ideas aren’t patentable is pretty basic. It’s not something new from Prometheus or from Frischmann’s book. The description of Prometheus above sounds a bit like the Federal Circuit’s “machine or transformation” test from en banc Bilski, which of course the Federal Circuit derived from the Supreme Court’s mid-20th Century cases.

    I’m sure it’s a great book, but I’m not sure what this post is trying to say.

  132. Malcolm, I believe there is a significant question as to the novelty of the 15mer claim.

  133. Elsewise, merely plucking a leaf from a tree (or plucking berries from a shrub) would grant patent eligibility to the isolated leaf (or plucked berries).

    Because “in nature”, leaves and berries are never found isolated from the tree or shrub which produced them.

  134. I would add a note that “isolation” must meet the requirement for making the thing isolated new in kind (and more than mere degree). Elsewise, merely plucking a leaf from a tree (or plucking berries from a shrub) would grant patent eligibility to the isolated leaf (or plucked berries). Clearly, without more, such should not be patented.

  135. Malcolm, I think this,

    1) Isolated compositions do not occur in nature and are presumptively patent eligible.

    2) If one discovers a non isolated composition in nature (and a use for it), it should not be prior art to the claim to the isolated composition on the basis that one’s own discovery is not prior art to one’s claims. Here, it makes no difference whether the discovery occurred before or after the creation of the isolated composition. The discovered composition should not be treated as prior art.

    3) The remaining issue is whether a claim to an isolated composition effectively preempts all uses of the non isolated composition found in nature. In your example, should the later discovery of a non isolated composition in natural render your patent invalid? Since it is not prior art, the invalidity must be on the basis of preemption. I think the answer preempt answer is no. But the issue is close.

  136. Of course ideas are not patentable. This is inherent in the utility requirement. An idea, by itself, is not useful. No amount of pondering E=mc^2 will lead to a nuclear reactor. No amount of pondering Newton’s laws of motion will cause anything to actually move. If a patent claims something useful, then it is claiming something more than a mere idea.

    Borrowing the idea-expression dichotomy from copyright is a terrible idea. The process of abstraction in copyright is an exercise in unprincipled, arbitrary line-drawing.

    Imagine Shakespeare wrote Romeo and Juliet today. What is the unprotectable idea and what is the copyrightable expression? The exact words of the play? The story of two young lovers from warring houses in Renaissance-era Italy who tragically commit suicide because the first wrongly believes the second to be dead and the second cannot live without the first? Or maybe the story of two lovers from warring factions who are ultimately torn apart by death (e.g. West Side Story)? Or maybe it’s any story involving star-crossed lovers? A judge could draw the line almost anywhere within that continuum.

    Anyway, the idea-expression dichotomy is a tool used in the copyright infringement analysis, not to determine copyrightable subject matter. Whatever the copyrightable expression in Romeo and Juliet would be, there is no doubt that the play is, in general, copyrightable subject matter.

    Patent law needs more certainty, not less. There are very few good ideas to be found in copyright law, which is a tangled mess built up over decades by special interests. What’s next, indefinite patent term extensions? Different treatment for different areas of technology (which is already creeping in)? Mechanical licensing? Criminal enforcement? Statutory damages?

  137. A couple comments:

    The merits of his positions notwithstanding, Brett Frischmann is a little late to the table, I think. The irrefutable reasoning underlying the Prometheus decision was articulated by yours truly in these comments quite a while ago, in very clear and unambiguous terms. Also repeated here hundreds of times was the fact that the eligibility of claims such as those at issue in Prometheus (i.e., [oldstep]+[newthought] claims) does not depend on the nature of the subject matter being thought about. It could be any idea, any fact, including (but not limited to) a thought about a “law of nature”. The problems with such claims were painfully obvious even before Breyer’s dissent in LabCorp.

    Also, regarding this:

    to the extent that genes can be characterized as infrastructure — and I think there is a reasonable case that they can be — the functional analysis described above should apply. The exclusion of products of nature from the scope of patentable subject matter may therefore be consistent with the exclusion of ideas from the scope of patentable subject matter.

    As I’ve noted here repeatedly — and will continue to do so until it sinks in, which may required another 9-0 smackdown — there is a massive philosophical/legal problem with creating a general rule (as opposed to an extremely narrow policy driven exclusion, similar to that already in place for so-called expressed sequence tag (EST) nucleic acid compositions) which allows novel compositions of matter to be found ineligible based on their alleged similarity to compositions found “in nature”. (Note: to my knowledge, there is no dispute as to the novelty of the isolated nucleic acid claims at issue in Myriad).

    The first problem is defining the scope of compositions that can be characterized as occuring “in nature.” There’s no need to dive deep into this issue now. Suffice it to say that the “natural world” includes the known universe and every objectively describeable and quantifiable object therein.

    The second problem is the known universe is continually changing so what does not exist “in nature” today may quite well exist “in nature” tomorrow. This brings us to the lethal hypothetical I’ve posed here before. Imagine a claim to a novel, non-obvious isolated chemical with unexpected and extraordinary cancer-healing properties. Now imagine that after the case is filed and granted, an identical compound is discovered in the liver of an Antarctic rockfish. What is the coherent policy which would justify destroying the patent on the isolated composition based on the subsequent discovery of the non-isolated composition “in nature”? Assuming that question can be answered (good luck), would it matter if there was no evidence that the compound existed in nature prior to the filing of the application (because the Antarctic starfish itself had never previously been documented)? Would it matter if the claimed composition, in addition to being non-identical because it is in isolated form, is further distinguished by the addition (through mundane, old technologies) of a single atom, thereby making a de facto “non-natural” compound? The bottom line being: all chemical compositions can be argued to be derived or related to “natural” compositions to some degree.

    Before the Mayo Nays get their knickers twisted up, let’s also recognize that properly drafted composition claims inherently do NOT implicate any of the statutory exclusions. There is nothing abstract about a composition and nothing inherently illegal (i.e., contra 101) about granting a patent to a novel, non-obvious, useful clearly described and enabled composition. In contrast, there is indisputably something inherently illegal about a claim that turns someone practicing the prior art into an infringer because they are thinking about an abstraction (i.e., a fact, an idea, a law of nature, etc.), which is indisputably what the claims at issue Mayo did.

  138. “Frischmann’s book is an important contribution across a wide range of fields. It is a terrific achievement and I think its influence will continue to grow as we grapple with the implications of its analysis.”

    There are no implications other than Frischman being unworthy of whatever title allows him to write in this field with an aura of authority.

    “Frischmann’s theory also suggests some provocative solutions to problems that have long plagued the doctrine of patentable subject matter.”

    Just fyi the only problem that has long plagued the doctrine of patentable subject matter is attorneys like yourself.

    STOP TRYING TO LEAD ATTORNEYS DOWN THE PATH OF EVIL AND WE WOULDN’T BE HAVING THESE “PROBLEMS” IN THE FIRST PLACE.

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