When listed as a potential survey response, Princeton University School of Law regularly ranks as a top-ten law school. Although Princeton actually has no law school, the Ivy League university does have a set of world class thinkers in areas of public policy, political science, and political economics. Several years after I graduated from Princeton's School of Engineering, the University founded its Center for Information Technology Policy (CITP) with Professor Ed Felton as its leader.
On Friday, May 11, 2012 I'll be returning to by alma mater for a CITP conference on patent law and policy titled: Patent Success or Failure? The America Invents Act and Beyond. Speakers include USPTO Director Kappos; CAFC Chief Judge Rader and former Chief Judge Michel; Professors Arti Rai, Colleen Chien, Jason Schultz, and myself; Joe Matel from the Senate Judiciary Committee; Dan Ravicher from PubPat; and industry leaders from industry (IBM, Google, J&J) and practice.
Later this month, I'll be speaking at the 10th Annual Rocky Mountain IP & Tech Institute in Denver. Speakers there include 9th Circuit Chief Judge Alex Kozinski, Professors Lemley & Hricik, David Donoghue, Michael Smith, Chris Mirick (my brother-in-law) and many other excellent speakers. Register here: http://ip.annualcle.com/
In June & July I'll be presenting a series of lectures at UCL-London on changes to US Patent Law and how they integrate with UK & European practice. The Rt Hon Prof. Sir Robin Jacob is chairing the event.
June 18 – Changes to the way patents are prosecuted in the US under the AIA and other case law.
June 28 – New issues in US patent litigation; damages; settlement processes; and the rise of "international litigation."
July 4 – A two-part session on (1) the new administrative structure for challenging US patents and the new scope of patentable subject matter.
Oracle and Google are battling over whether Google improperly relied on Java OS code when developing its Android operating system. The intellectual property rights associated with Java are now owned by Oracle, who purchased Sun Microsystems in 2009. Although there are some factual disputes, a jury recently concluded that Google did indeed copy and use portions the Java code. However, the jury could not decide whether the use was improper or whether it instead should be considered an appropriate fair use.
In addition to being protected by copyright, the same Java code is also (allegedly) protected by patents owned by Oracle. Thus, Oracle has argued that Google’s actions constitute both copyright and patent infringement.
Although pre-software, the Supreme Court has written some about the overlap between various intellectual property rights. In Mazer v. Stein, 347 U.S. 201 (1954), the Supreme Court stated refused to hold that mere patentability of a lamp structure did not preclude the creator from obtaining copyright protection. Mazer focused on potential protectability and does not address whether an entity can properly claim and/or assert both copyright and patent rights over the same subject matter as Oracle appears to be doing here. In addition, there is some suggestion from the case that the Supreme Court was talking about design patents rather than utility patents. In other contexts, the Supreme Court has been hostile to overlapping IP rights. See, most recently, Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) and TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001).
In the Oracle v. Google litigation, the jury found that Google had copied the Oracle’s protected Java software. However, the jury was hung on whether or not Google’s actions were excused by the fair use doctrine found in Section 107 of the Copyright Act. 17 U.S.C. 107. While the judge considers whether to declare a mistrial (or else to rule on fair use as a matter of law), the second phase of the trial will focus on patent infringement.
The quote of the day came from Oracle’s lawyer Michael Jacobs who indicated to the court “I think you’ll be pleased to know that fair use is not an issue in the patent case.” Jacobs is right – unlike copyright, US patent law does not (yet or currently?) contain a fair use exception beyond the extremely narrow experimental use and de minimis defenses to patent infringement.
Otsuka Pharmaceutical Co., Ltd. v. Sandoz, Inc. (Fed. Cir. 2012) Download 11-1126 Panel: Lourie (author), Moore, Reyna
This opinion addresses the appropriateness of using a "lead compound" analytical framework for evaluating the obviousness of chemical compounds, reaffirming and refining the approach taken in Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350 (Fed. Cir. 2007).
The defendants in Otsuka consist of a group of ANDA applicants who contended that the compound claimed in Patent No. 5,006,528, aripiprazole (marketed under the brand name Abilify®), was obvious in light of three prior art carbostyril derivative compounds. Prior to aripiprazole (itself a carbostyril derivative), the only atypical antipsychotic compounds approved by the FDA for the treament of schizophrenia were those that possessed structures related to the antipsychotics clozapine and risperidone, neither of which were the basis for the obviousness challenge. Following a bench trial, the district court concluded that the asserted claims were not obvious in light of the three "lead compounds" identified by defendants, nor was the patent invalid due to nonstatutory double patenting.
Obviousness: In rejecting defendants' appeal of the district court's determination of nonobviousness, the CAFC endorsed the two-step framework of Takeda (also authored by Judge Lourie). In Takeda, the CAFC addressed the defendant's argument that "the prior art would have led one of ordinary skill in the art to select compound b as a lead compound," with "lead compound" referring "to a compound in the prior art that would be most promising to modify in order to improve upon its antidiabetic activity and obtain a compound with better activity." Takeda, 492 F.3d at 1357. The court then analyzed whether a PHOSITA would have both selected and modified the prior art compounds identified by the defendant, an approach applied by the district court in Otsuka and challenged by the defendants on appeal as the type of rigid analysis precluded by KSR.
The CAFC disagreed, holding that the Takeda approach was permissible:
Our case law demonstrates that whether a new chemical compound would have been prima facie obvious over particular prior art compounds ordinarily follows a two-part inquiry. First, the court determines whether a chemist of ordinary skill would have selected the asserted prior art compounds as lead compounds, or starting points, for further development efforts….The second inquiry in the analysis is whether the prior art would have supplied one of ordinary skill in the art with a reason or motivation to modify a lead com-pound to make the claimed compound with a reasonable expectation of success.
Slip Op. at 17, 19.
Of course, aspects of KSR do impact this conclusion. For example, the reason or motivation for a PHOSITA to modify a lead compound may come from a variety of sources, or not even be explicit in the prior art. Slip Op. at 19-20. And the CAFC's approval of the Takeda approach may have been guided in part by the parties' decision to focus their arguments on selecting and modifying particular prior art compounds, rather than approaching obviousness from another direction. Id. at 17.
Examining the two steps, the CAFC concluded that the district court did not err when it found that a PHOSITA would not have selected the prior art compounds for use as lead compounds for further antipsychotic research or made the modifications necessary to arrive at the claimed compound.
Obviousness-type double patenting: The CAFC also rejected defendants' nonstatutory obviousness-type double patenting argument, using the opportunity to clear up an apparent ambiguity about the differences between obviousness and obviousness-type double patenting. Although analogous, the two differ in several respects. The patent principally underlying the double patenting rejection need not be prior art (which makes sense given that the purpose of the double patenting doctrine is to prevent one person from obtaining more than one valid patent for the same invention or an obvious modification of the same invention). More notably, "when analyzing obviousness-type double patenting in cases involving claimed chemical compounds, the issue is not whether a skilled artisan would have selected the earlier compound as a lead compound." Slip Op. at 28 (emphasis added). Rather, selection of the earlier compound as a lead compound is presumably automatic under the court's language. However, it is still necessary to identify some reason that would have led the PHOSITA "to modify the earlier compound to make the later compound with a reasonable expectation of success." Id. at 29. This is mandatory: "There is no other way to consider the obviousness of compound B over compound A without considering whether one of ordinary skill would have had reason to modify A to make B. That is traditional obviousness analysis." Id. at 30 (emphasis added).
As with the obviousness inquiry generally, the CAFC declined to find clear error in the district court's determination that no such reason existed in this case.
WARNING: Appellate lawyers often feel compelled to make sub-arguments in footnotes, as Otsuka's counsel did here in contending that a PHOSITA would not have consulted an unindexed file history of a patent. Although Otsuka ultimately prevailed, this practice is strongly discouraged by the court: "Arguments raised only in footnotes, however, are waived…Although we may exercise our discretion to consider improperly raised arguments, we decline to do so here." Slip Op. at 22.
In yet another malpractice action, the Federal Circuit has granted itself jurisdiction and ruled in favor of the law firm defendant (here, Gibbons). Attorney malpractice is normally a state-law cause of action brought in state court. However, the Federal Circuit has increasingly claimed appellate jurisdiction over these cases based upon its arising under jurisdiction.
Federal Circuit Appellate Jurisdiction. As amended in the AIA, 28 U.S.C. § 1295 defines the Federal Circuit's appellate jurisdiction to include “exclusive jurisdiction” over “an appeal from a final decision” in “a civil action arising under . . . any Act of Congress relating to patents.”
The new statute overrules Holmes Group, Inc., v. Vornado Air Circulation Systems, Inc. 535 U.S. 826 (2002). In that decision, the Supreme Court held that the existence of a patent law issue in a counterclaim is insufficient to create Federal Circuit jurisdiction. The revised statute makes clear that the Federal Circuit has exclusive jurisdiction over appeals that only raise patent issues in “a compulsory counterclaim.”
The new statute does not change the “arising under” language itself. The Supreme Court interpreted that language in Christianson v. Colt Industries Operating Corp., 486 U.S. 800 (1988). In Christianson, the court wrote that the Federal Circuit's jurisdiction extended only to those cases in which a well-pleaded complaint established either (1) that the federal patent law created the cause of action or (2) that the plaintiff's right to relief necessarily depended upon resolution of a “substantial question of federal patent law.” (New statute is no longer bound by a “complaint.”).
In non-patent cases, the Supreme Court has placed some limitations on the exercise of arising under jurisdiction when the underlying cause of action is – as here – a state law claim. In Grable & Sons Metal Products v. Darue Eng'g, 545 U.S. 308 (2005), the court explained that the exercise of jurisdiction over state-law claims with an embedded issue of federal law should occur only when the state-law claim contains a federal issue that is “disputed” and “substantial,” and when the exercise of federal jurisdiction is “consistent with congressional judgment about the sound division of labor between state and federal courts.” Grable made clear that the mere presence of a disputed federal question is insufficient to create federal jurisdiction. Rather, a court must also assess “any disruptive portent in exercising federal jurisdiction.” This sentiment was repeated by the Court in the later case of Empire Healthchoice Assur., Inc. v. McVeigh, 547 U.S. 677, 701 (2006) (“it takes more than a federal element ‘to open the ‘arising under’ door”).
In this case, the Gibbons firm handled prosecution of Minkin's U.S. Patent No. 6,012,363 (Extended Reach Pliers). Soon after Minkin went to market, one of his customers designed its own version of the device that avoided Minkin's patent claim. Minkin then sued Gibbons for negligence – arguing that the claims offered no meaningful protection for Minkin's invention. At trial expert witness Richard Gearhart presented an alternative claim that was arguably patentable. Because Gearhart did not present a patentability analysis under Section 103(a), the district court rejected the evidence as insufficient and awarded summary judgment for the law firm. On appeal, the Federal Circuit affirmed that finding. “We find that the 37-page Gearhart report contains nothing to assist the trier of fact with respect to the unique tests and proofs of § 103(a), and provides no insight into the question of whether the alternate claims would ultimately have been allowed by the PTO.”
Regarding Jurisdiction, the Federal Circuit noted that the malpractice claim (under N.J. Law) requires that the plaintiff prove that better representation would have resulted in a better outcome. Here, that proof requires analysis of patentability of a hypothetical claim and thus raises substantial a question of Patent Law and therefore the case falls within the exclusive jurisdiction of the Federal Circuit.
Writing in concurrence, Judge O'Malley again repeated her call for an en banc rehearing on the issue of jurisdiction.
Earlier this year, the USPTO mailed a survey to the last known address to all US patent practitioners with a registration number of less than 25,000. This represents about 2,600 practitioners. Responses to those letters have been due for some time and practitioners who have not responded are now at risk of being removed from the rolls of active attorneys. In the O.G., the USPTO has posted a list of 1,200+ practitioners who have not responded. To avoid being removed from the rolls, the practitioner must submit a response by Monday, May 7. A practitioner removed from the rolls can be reinstated with the payment of a fee.
For info, contact the Office of Enrollment and Discipline (OED@uspto.gov) or call (571) 272-4097.
The USPTO also states that that “Practitioners who may know that a former colleague whose name appears on the list below is deceased are encouraged to contact OED.”
A common mistake made by folks in business is to think of any patent issued in the past 20 years as being in-force. In fact, there are a number of ways that a patent can expire prior to that 20-year date. A patent that has expired no longer carries any rights of exclusivity for its holder.
By my calculations, there are about 2.1 million US patents in-force (as of May 1, 2012). To arrive at this number, I tallied the number of patents issued during the past twenty years (about 2.6 million) and then looked to see which of those patents had expired – either through completion of their term or through failure to pay a post-issuance renewal fee. The chart below provides an accounting of these results grouped by year of patent issuance. The older patents in my sample have all expired due to completion of the (then) 17-year term. More recently expired patents are typically associated with failure to pay a renewal fee. The most recent patents are essentially all still in-force because they have not yet had any post-issuance fees due.
The bulk of in-force patents (~91%) are issued on patent applications filed after the June 8, 1995 patent term transition (Post-GATT). Patent applications filed after June 8, 1995 are given a term of 20-years from the application (priority) filing date. Patents issued prior to the changeover (Pre-GATT) have a term of 17-years from the patent issuance date. Applications pending on the changeover date are given the longer of the 17-years-from-issue and 20-years-from-filing terms. For original applications (i.e., those without a prior term-triggering priority filing), the new 20-year term typically benefits patent applicants because USPTO delays are generously credited to the applicant and added to the patent term. For applications that claim priority to PCT filings or US non-provisional applications, the filing-date approach tends to reduce the patent term. A few thousand patents eligible to claim the 20-year term have expired – they all exhibit the same properties of being filed after the 1995 changeover but claiming priority to a pre-1993 application.
There are several important caveats to my study here. (1) I did not include terminal or other disclaimers in the analysis and (2) I did not include term adjustments for USPTO or Governmental delay; and (3) I did not consider whether patents had been held invalid by a court or the USPTO. For several reasons, I do not believe that these issues would significantly impact the above conclusions. Terminal disclaimers are most important with regard to pre-GATT applications. However, most of those patents have already expired. In more recent applications, a terminal disclaimer tying the patent term to a family-member application typically does not change the 20-year term because all the family-member applications typically claim priority to the same original application that triggers running of the term. Term adjustments created for USPTO delay only apply to applications associated with a 20-year-from-filing term. Those adjustments will be important going forward for recently issued patents. However, term adjustments only have a minimal impact for this study because so few patents have expired due to conclusion of the 20-year-term and because the PTO backlog was not as serious in the mid 1990's. Finally, Court and USPTO decisions invalidating patents are few and far-between in comparison to the absolute number of patents in consideration here.
Update – Although it is fairly clear from the text, my reference to GATT is directed to the General Agreement on Tariffs and Trade (GATT) as modifed in 1994 by the Uruguay Round of negotiations and implemented in the US by the GATT Uruguay Round implementing legislation.
If you are filing a Federal Circuit appeal, beware that the court will soon require Electronic Case Filing. The initial filing (i.e., case initiating documents) will still be done on paper, but after May 17, 2012 any subsequent filings (such as responsive briefs and petitions) must be done electronically (with some exceptions).
Except as otherwise prescribed by Circuit rule or court order, all briefs, appendices, motions, petitions for rehearing, and other documents filed in cases assigned to the CM/ECF system, must be filed electronically using the CM/ECF system by a filer registered in accordance with ECF-2.
Comments on the new procedures are dues by May 8, 2012. [New Procedures]
Guest Post by Jennifer Furey of Cooley Manion Jones LLP and Anthony Miele of Miele Law Group PC. Furey and Miele represent Bear Creek in the JPML proceeding and in the associated actions discussed below.
Suppose a patentee determines that in order to enforce its patent rights, it must sue multiple, but unrelated, parties. An obstacle then presents itself. The patentee plaintiff may very well be forced to file separate actions in disparate jurisdictions, and now risks being overwhelmed by conflicting case schedules, duplicative discovery disputes, and especially, conflicting Markman claim construction rulings. SeeScott W. Burt et al., Intellectual Property Owners Associations Committee White Paper, Impact of the Misjoinder Provision of the America Invents Act 16 (2012). One mechanism for efficiently litigating the pre-trial phase of patent infringement lawsuits pending in different districts is multidistrict litigation ("MDL") under 28 U.S.C. § 1407 ("Section 1407"). In a recent opinion in In re Bear Creek Technologies, Inc., the Judicial Panel on Multidistrict Litigation ("JPML") unequivocally held that MDL remains a viable option for parties to transfer separate patent infringement actions pending in different districts for centralized pre-trial proceedings, and that the recently enacted Leahy-Smith America Invents Act ("AIA") "does not affect [the JPML's] authority" to transfer and centralize patent litigation under Section 1407. MDL No. 2344, at 3 (J.P.M.L. May 2, 2012). After Bear Creek, plaintiffs enforcing their patent rights across multiple jurisdictions may still consider MDL as a possible option to keep infringing defendants before one court up until trial. [Download JMPL Decision Bear Creek]
Enacted on September 16, 2011, the AIA's joinder provision states that accused infringers may not, "based solely on allegations that they each have infringed" the same patent(s):
be joined in one action as defendants or counterclaim defendants, or
have their actions consolidated for trial.
35 U.S.C. § 299. In contrast, centralization in MDL under Section 1407 requires that:
actions are pending in different districts;
the actions involve "one or more common questions of fact;" and
transfer and consolidation of pretrial proceedings is convenient for the parties and witnesses, and promotes "the just and efficient conduct of such actions."
28 U.S.C. § 1407.
After the enactment of the AIA, Vonage in Bear Creek argued that the AIA's joinder restriction applied to Section 1407, to no avail. The JPML found the AIA "does not alter [its] authority to order pretrial centralization." MDL No. 2344 at 2. The JPML reasoned that there was "no overlap" between the AIA and Section 1407, emphasizing the different standards of the two statutes, and contrasting the AIA's focus on joinder and consolidation at trial with "Section 1407's express focus on transfer for pretrial proceedings." Id. at 2-3. Finding that both the plain language and legislative history of the AIA were "silent as to the conduct of pretrial proceedings" and did not "mention Section 1407," the JPML noted that if Congress intended the AIA to limit the JPML's authority under Section 1407, it would have "done so explicitly." Id.
After holding that the AIA did not apply, the JPML then concluded that transfer and centralization was appropriate in Bear Creek because the separate actions shared "substantial background questions of fact" concerning the "validity and enforceability" of the patent-in-suit, as well as "claim construction." Id. at 4. The JPML emphasized that "centralization offers substantial savings in terms of judicial economy by having a single judge become acquainted with the complex patented technology and construing the patent in a consistent fashion (as opposed to having six judges separately decide such issues)."
In light of the AIA's enactment, MDL can be an invaluable tool for patentee-plaintiffs to efficiently litigate their patent rights against multiple infringers with actions pending in different courts through Markman and summary judgment. Under Bear Creek, the AIA is not a magic bullet allowing patent defendants to escape multi-party litigation—they may be brought before one court up until trial in MDL under Section 1407.
Computer Architecture Software and Information Security
90%
2600
Communications
90%
2800
Semiconductors, Electrical and Optical Systems and Components
89%
3600
Transportation, Electronic Commerce, Construction, and Agriculture
82%
3700
Mechanical Engineering, Manufacturing and Products
84%
The table above reports the percentage of patents for which the first maintenance (renewal) fee was paid. The chart includes patents issued 2005-2007 and the results are grouped according to technology center. It is somewhat interesting to me that TC1600 has the lowest renewal rate.
Now that the new patent statute has put an end to qui tam actions and limited the joinder of defendants accused of infringement, we can once again take a meaningful count of patent suit filings, almost all of which are now infringement actions or DJs for noninfringement or invalidity. I ran a study of cases filed in the six-month window beginning October 1, 2011, shortly after the litigation parts of AIA became effective, through the end of March 2012.
There were 2,483 suits filed in that period, or at an annual rate of nearly 5,000 new cases. [Source: Lexis Courtlink.] The increase over earlier years, where the largest number of new patent case filings was just over 3,000, is undoubtedly due primarily to the AIA’s restraints on joining non-cooperating accused infringers in a single civil action. So there may not be more patent litigation going on, but only more files being opened with fewer defendants per action.
We should expect to see venue shifts over prior years, as accused infringers are able to move their cases to districts that are more convenient to them, generating considerably more work for the Judicial Panel On Multidistrict Litigation to sort out where the early proceedings should occur.
Perhaps for these reasons we now see Delaware approaching the top of the list for most new filings. Eastern Texas is still first with 407 filings in the six-month period, but Delaware is a close second with 388. Northern California is a distant third with 194. (The next three are Central California (169), Northern Illinois (142), and New Jersey (90). Delaware has always been a somewhat busy patent forum. However, its share of total national patent suit filings has moved up rather dramatically: in 1995 it had 3.69% of the national total of 1,626 cases; 4.53% in 2005; 6.11% in 2008; and now for the six-month window reported here its share has jumped to 15.63%. Several commentators have noticed in the past two or three years that results in Delaware are generally good for patentees. Litigants apparently agree.
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.
by Dennis Crouch 
by Dennis Crouch
(OUP 2012),