Enhanced Damages: The Seagate Objectively Reckless Standard is Now a Question of Law to be Decided by a Judge and Reviewed De Novo on Appeal

By Dennis Crouch

Bard Peripheral v. W.L.Gore (Fed. Cir. 2012) (on rehearing)

In an important decision, the Federal Circuit has ruled that the “objective prong” of the test for willful patent infringement is a separate question of law. Moving forward, it will be the trial court’s duty to determine whether the defendant’s actions were objectively reckless. Further, the objective prong will now be subject to de novo review on appeal.

This new system somewhat parallels the judge-determined claim construction that must occur before a jury can determine infringement. As with claim construction, this new judge-focused sub-test will likely drive results in most cases. Because it will be prior-in-time, the judicial decision on objective recklessness will filter-out many willfulness allegations before they reach the jury. And the jury, once it is told that the judge has determined the behavior objectively reckless, is likely to find any infringed patent to be willfully infringed.

Right to Jury: The right to a jury decision on the issue of willfulness already stood on shaky foundation because, by statute, the judge decides the monetary award. The changes in the law brought about here in Bard coupled with those outlined in Seagate suggest that right may now be fully eroded. Further, the decision suggests that it may be proper to treat the entire issue of willfulness as a question of law.

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Treble Damages: The text of the Patent Act appears to provide courts with broad power to treble any damages awarded. The statute reads that “the court may increase the damages up to three times the amount found or assessed.” Although the text offers no limitation on that power, the Federal Circuit has limited the use of enhanced damages to only apply when the adjudged infringement is found to be willful. In Seagate, the Federal Circuit defined a two-prong test for willfulness that requires clear and convincing evidence (1) “that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent” and (2) that the infringer had knowledge (or should have known) of this risk.

Willfulness is a question of fact that has been traditionally decided by a jury. However, as the statute suggests, it is the judge who determines the extent of any enhanced damages (with the limit of three-times the compensatory damage award). Here, the infringer argued that a court (rather than a jury) should first decide the sub-question of whether there existed (at the time of the infringement) an objectively high-likelihood that the infringer’s action’s constituted infringement. The appellate court agreed:

After reviewing the Supreme Court’s precedent in similar contexts, as well as our own, we conclude that simply stating that willfulness is a question of fact over-simplifies the issue. While the ultimate question of willfulness based on an assessment of the second prong of Seagate may be a question of fact, Seagate also requires a threshold determination of objective recklessness. That determination entails an objective assessment of potential defenses based on the risk presented by the patent. Those defenses may include questions of infringement but also can be expected in almost every case to entail questions of validity that are not necessarily dependent on the factual circumstances of the particular party accused of infringement.

In considering the standard applicable to the objective prong of Seagate, it can be appreciated that “the decision to label an issue a ‘question of law,’ a ‘question of fact,’ or a ‘mixed question of law and fact’ is sometimes as much a matter of allocation as it is of analysis.” Miller v. Fenton, 474 U.S. 104, 113-14 (1985). When an “issue falls some-where between a pristine legal standard and a simple historical fact, the fact/law distinction at times has turned on a determination that, as a matter of sound administration of justice, one judicial actor is better positioned than another to decide the issue in question.” Id. at 114; see also Markman v. Westview Instruments, Inc., 517 U.S. 370, 388 (1996) (applying this test to determine that claim construction is best left to the judge). We believe that the court is in the best position for making the determination of reasonableness. This court therefore holds that the objective determination of recklessness, even though predicated on underlying mixed questions of law and fact, is best decided by the judge as a question of law subject to de novo review.

On remand, the district court will be required to specifically consider the question of objective recklessness.

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Clear and Convincing Evidence Standard for a Question of Law?: Seagate requires that objective recklessness be proven with clear and convincing evidence. As the en banc court wrote in 2007 “to establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” Normally, clear-and-convincing evidence is a standard for proving facts. Here in Bard, however, the court now holds that the objective recklessness prong is a question of law. Since the panel here has no power to modify Seagate, the odd joining of these decisions is that the issue of law must still be proven by clear and convincing evidence. In a concurring opinion to the i4i decision, Supreme Court Justice Breyer wrote on this topic – noting that the clear and convincing evidence standard of proof “applies to questions of fact and not to questions of law.” The panel opinion here in Bard either did not recognize this problem or chose to ignore it. The tension here between Seagate and Bard is genuine.

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The majority opinion was written Judge Gajarsa (Senior Judge) and joined by Judge Linn. Judge Newman wrote in dissent and argued that there was no need for a remand because the jury willfulness determination was clearly wrong.

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This case has been brewing for 38 years! Initially it was an inventorship dispute that took 28 years to settle at the PTO, followed by a litigation battle for the past 8 years. The patent covers a prosthetic vascular graft used in bypass surgeries and was originally filed as an application in 1974. U.S. Patent No. 6,436,135.

529 thoughts on “Enhanced Damages: The Seagate Objectively Reckless Standard is Now a Question of Law to be Decided by a Judge and Reviewed De Novo on Appeal

  1. Mr. Nature, please explain why a law of nature, such as E=MC*2, is not universally true regardless of time and place. The proposition that it is not, and that it may depend upon location in the universe, or the date of determination is what is interesting. Please explain yourself.

  2. Malcolm, because being man made is not the only problem.  If the exception exists so that one cannot patent a product of nature regardless of whether the it was known, one must then ask whether a claim that practically preempts that product is patentable.  One only has to look at the government brief.  That is the position they take there.

    It therefore becomes necessary to attack the very premise of the argument to guarantee a win here.

    I see no historical justification for the exception in the case law.  None.  If one patents a newly discovered composition of matter, the patent statute says the subject matter is patentable.  Expressly.  Discovered means that the composition existed and that the discoverer found it.   

    The constitution and the laws of the US from 1793 on have expressly allowed patenting of discovered (previously unknown) compositions of matter.  We are not talking here about an exception.  We are talking instead about the act being unconstitutional is some respect — and it clearly is not unconstitutional, as the 1793 act was authored by Thomas Jefferson and passed by a Congress that included many of our founding fathers.

  3. Mr. Lincoln, assume for the moment math or a principle in the abstract were the subject of patents.  This would make every practical application an infringement.  Every one.  

    How does this provide any incentive for the public to develop and invest in useful applications?

    I think the SC in O'Reilly v. Morse recognized the problem and drew the line they did for a good reason.

  4. How do you tell progeny from parent?

    That’s a question of fact for the factfinders.

    What has “isolated” and “purified” have to do with my posts? What do you think I believe about those terms? What are babbling about?

  5. if it is a simple typing of a few words that you desire, just add the negative disclaimer of not claiming progeny.

    How do you tell progeny from parent?

    And let me guess: in spite of the power of this non-structural “negative disclaimer”, you believe the terms “isolated” or “purified” are insufficient to distinguish a man-made nucleic acid fragment from an identical sequence of nucleotides in a genome.

  6. until you get caught with a question you can’t answer

    Huh? There isn’t a question I have left unanswered.

    There is a task I had declined.

    I hope you understand the difference.

    And if it is a simple typing of a few words that you desire, just add the negative disclaimer of not claiming progeny. Or, for example, lose claim 122 of RE39,247E.

    This really is not that complicated, notwithstanding the additional nonsense that is being pumped into the discussion. Bottom line: don’t overreach.

    Are you really that tightly wound on this?

    Relax.

    Here enjoy the link: link to techdirt.com

  7. 1974 yup the year I had my trioge talebone surgury they made a mess of me so I was looking for rebuilding methods and this devise was my conception I dont know if the name is the right person I talked to probably the looser of the patent battle is the one

  8. While there is little doubt that you meant that as a slam,

    In reality I also meant it to illustrate that you have no problem with “working” for free in these comment threads, until you get caught with a question you can’t answer.

    I’m not asking you to draft a spec or even a formal claim. Just tell me the claim limitation that covers “the initial product only”, that’s so obvious Monsanto “had every capability of claiming”. You seem to have thought of it already, so it’s just a question of typing out a few words. Simple, right? Lucky if you can even bill 0.1 for that, which I’m sure I could afford even at your exalted rates.

  9. Is that why we hear your constant whining MM?

    Seriously, no one whines on this blog more than you and Ned.

    (and I’m not buying the “I’m not the least bit concerned’ crrp – your eplectic rants tell a much different story).

  10. suckie: B-b-b-ut, it’s my backyard this time.

    Svck it dude, what goes around and all that

    Huh? I’m not the least bit concerned about Myriad’s composition claims being invalidated under 101, at least not under a “product of nature” test.

    As I’ve noted before, trolls like you do serve a purpose. They repeat the d-mbest arguments endlessly, allowing those arguments to be endlessly decimated. Interested parties read the blog and voila! the trolls end up with the short end of the stick. Pretty much every time. Or haven’t you been paying attention?

  11. e absolutely correct (this time)

    QQ QQ

    B-b-b-ut, it’s my backyard this time.

    Svck it dude, what goes around and all that.

  12. If MM thought the comments raised in this thread were extreme, check out the coniption from the industry leaders as reported on PatentDocs

    Those “industry leaders” are absolutely correct (this time).

    It’s too bad Noonan and Co. wasted so much pretending not to to understand why Prometheus’ claims were so goddawful. They were given every opportunity to understand. The could have helped Mayo and they could have helped Prometheus by urging a more accurate and narrow framing of the issue. Then they wouldn’t be wasting so much time with this “product of nature” horsesh-t argument.

    Live and learn, Noonan. Live and learn.

  13. While there is little doubt that you meant that as a slam, in reality it is a compliment and you cannot afford my rate.

  14. I think the Myriad case is an excellent to test the product of nature exception.

    Why? Nobody disputes the fact that the claimed compositions are man-made and are never produced “naturally.”

    Even our trolls do not dispute this fact.

    Why is such a case an “excellent” one to test the exception?

  15. Sliding, but the whole point of a patent is to allow a short period of exclusivity in exchange for the disclosure of new technology

    Amen I say.

    My thoughts on this in connection with the alleged “preempt the future inventions of others and positively harm innovation“:

    1) Laws of Nature deserve promotion too

    Pure math, being equated to “law of nature” is forbidden from patent protection.

    Wouldn’t the fuel of interest promote rather than inhibit future invention? Think about it. Such things along the math frontier are not “known” in the exact same sense as products of nature. Future invention cannot happen until that work is “discovered.” Why should we be parsimonious with items of this sort? It makes no sense. It’s not like the requirement of enablement matching claim scope has disappeared.

    Standing on the shoulders of giants, with the dual nature of the fuel of interest (that of reward and of instigation to “design around” or improve), why not allow patents on laws of nature? Are these laws of nature not subject to improvements thereof?

    Anyone with any knowledge of scientific thought or appreciation of scientific history can attest that the “laws of nature” are made by men as tools of approximation. These tools are subject to betterment. These tools have even been discarded when better tools were invented. Phlogiston, anyone? Aether, anyone? Away with the charlatan’s theory that these tools are forever.

    2) Any musings of what will happen in the future are pure conjecture

    Any such prognostications are of necessity pure conjecture. Just because some judge thought that the future would be harmed does not make it so. That empty rhetoric is the same sound that the anti-patent crowd makes against any patent, verily, against the patent system itself! The logic used is identical. And the logic that defeats the anti-patentists should be identical as well.

    Besides, even given the whole allow a short period of exclusivity, wouldn’t any such item meriting a patent be deserving of this short period?

    And look at the wild success brought about by opening up the patent world to academia through the Bayh-Dohl act! Therein is the best model of waht would happen by removing the artificial limits that the Court has installed.

  16. IANAE, Congress seemed to suggest in the plant act regarding sexually reproduced plants that the the patentee did not have the right to tell the farmer he could not plant seed from his crop.
     
    The SC in authorizing patents on plants made the comment that the farmer would get seed from the patentee.
     
    Something is amiss here.

  17. Pay me and I would gladly do it.

    Charge me the same hourly rate I pay for your opinion work on this blog. You’re worth it.

  18. Pay me and I would gladly do it.

    How “smart” are you?

    The comment about “smart-@ss” certainly applies to you.

  19. The applicant had every capability of claiming the initial product (and the intial product only).

    Okay, smart guy. Draft that claim.

  20. so explain how that particular patent “should never have been granted”.

    It is clear as I stated above, the problem is with the over reach of the claim. The applicant had every capability of claiming the initial product (and the intial product only). By over reaching into trying to claim something the applicant has no right to (a naturally occurring progeny), the applicant’s patent is invalid.

    This is not complicated.

    The rest of your post is nonsense. Are you trying to bait someone?

  21. You don’t see the fundamental problem with that?

    The patentee doesn’t have the right to make the seed and sell it himself. The patent does not give him that right.

    There is no fundamental problem – nature is just doing its thing.

    Besides, I thought you were not talking about the second generation…?

    You certainly are avoiding talking about the fact that such patents are not valid to begin with. The fact that a natural occurance falls within the scope of the claim clearly indicates the claim is invalid.

    I too am confused by your unseemly pro-patent stance on this matter.

  22. More OT,

    If MM thought the comments raised in this thread were extreme, check out the coniption from the industry leaders as reported on PatentDocs (and no, the coniption is not from PatentDocs, so put away the Drs. Noonan and Zuhn h_ate arrows, as they are but messengers):

    link to patentdocs.org

    Prometheus fall-out coming to a neighborhood near you soon.

  23. that the patentee’s only real rights are to make the seed in purified form and sell it himself. He should not be able to treat as infringement seed planted from seed naturally produced.

    You don’t see the fundamental problem with that?

    The patentee doesn’t have the right to make the seed and sell it himself. The patent does not give him that right.

    If the patentee has any right at all, it is the right to stop other people from planting seed and making more and selling it. That’s what patents do. It’s the only thing that patents do.

    If the “naturally produced” seed is not prior art but is within the patent claims, then the act of copying it is as much as infringement as the act of copying the patentee’s own product. It is not a defense to infringement that the patentee doesn’t own or control the thing you copied.

  24. What happens if the patented compound asexually reproduces and returns to nature?

    Another not-so-hypothetical question. What about crystals or other nonliving compounds that can’t be produced in nature until they are seeded by a novel man-made composition, but suddenly turn up everywhere a few years after the patentee has begun selling the stuff?

  25. A patent is being determined to be invalid because it should never have been granted.

    What about the Roundup-Ready patent? Is it ineligible now that nature can reproduce what Monsanto invented? Nature couldn’t have produced it before Monsanto invented it, so explain how that particular patent “should never have been granted”.

    What do you think should happen to that patent when its validity is challenged in court? I’ll pretend nobody has had a chance to challenge it yet, because it’s probably not one of the most litigated patents in history, and I’m sure no defendant had a business reason to dredge up this “product of nature” exception that is apparently so well-established in our law, even though nobody here can even apply it wrong.

    None of your “this argument has not yet been given its due” nonsense, I’m asking for your opinion. I know you have opinions. Eligible under 101 or not, and why.

  26. Silence! Nobody cares about Dennis’s post, when there’s 101 to argue about.

  27. 6 getting legally B-slapped six ways to Sunday on the Survey Response thread (6 simple points for simple 6) was simply priceless.

  28. “How does the sophist square that with his crusade against business method patents?”

    Maybe Ned will tell us at the Ball! Providing his Fairy God MMother helps him out.

    United States Patent and Trademark Office Notification of 2012 Business Methods Partnership Meeting

    The United States Patent and Trademark Office (USPTO) announces the 2012 Business Methods Partnership Meeting to be hosted by the director and managers of the Business Methods workgroup. Members of the public are invited to attend. The Partnership Meeting is an opportunity to bring stakeholders together to share ideas, experiences and insights and to provide a forum for an informal discussion of many topics specific to the business methods community. The meeting will include a Business Methods operational briefing, presentations on the Cooperative Patent Classification effort, the America Invents Act, and recent court decisions; as well as a panel discussion offering perspectives on best practices in advancing prosecution and interviewing. While public attendees will have the opportunity to provide their individual input, group consensus advice will not be sought.

    DATES AND LOCATION: The Partnership Meeting will be held on Thursday, July 26, 2012, from 1:00 P.M.-5:00 P.M. at the USPTO MADISON AUDITORIUM (North), Concourse Level, Madison Building, 600 Dulany Street, Alexandria, VA 22313.

    Requests for Attendance at the Partnership Meeting:

    Requests for attendance will be honored on a first-come, first-served basis according to the time and date of receipt of each request. In order to ensure a broad cross-section of attendees, the USPTO reserves the right to limit the number of attendees from any single organization or law firm. Therefore, organizations and law firms must designate their official representatives. Individuals will be notified of accepted requests for attendance by the USPTO no later than one week prior to the date of the meeting. Non-accepted requesters will also be notified by the USPTO. No one will be permitted to attend without an accepted request.

    Requests for attendance to the Partnership Meeting should be submitted to the attention of Jeff Smith via facsimile at (571) 273-6763, or by electronic mail through the Internet to jeff.smith4@uspto.gov. Requests for attendance must include the attendee’s name, affiliation, title, mailing address, and telephone number. Facsimile number and Internet mail address, if available, should also be provided. Requests must be received by July 12, 2012.

    FOR FURTHER INFORMATION, PLEASE CONTACT: Jeff Smith by telephone at (571) 272-6763 (in addition to the facsimile number and e-mail address given above).

  29. “MM got schooled hard in this thread”

    As did 6, in the Diehr novelty thread.

    And Ned in the….. well, every thread he posts on.

  30. laws of nature exist everywhere on the planet at the same time, and presumably exist everywhere in the universe without beginning and without end

    Your ignorance is astounding.

  31. suckie the attempt by MM to not use 101 at all

    I don’t care if 101 is used to render claims to “products of nature” invalid, provided that “products of nature” are defined in a reasonably strict way, i.e., such that non-willfully occurring events leading to a composition X do NOT render ineligible an earlier filed patent which first described and enabled composition X.

    A 101 “product of nature” rule without that caveat would be r-tarded beyond belief, for reasons that are too obvious to explain.

  32. The Court in O’Reilly v. Morse was wrong.

    It is pure guess work to say that future innovation would be harmed (there is no such thing as “positively” as you state in your answer).

    Besides, your little mantra of “short period of exclusivity” still applies (and yes, there is nothing preventing a law of nature from being treated as a trade secret either).

  33. Ned,

    Your “response” at 8:02 PM is a complete dodge to the points that SIFT raised at 7:46 PM.

    - Lack of effective legal difference
    - Do you propose to ban Trade Secrets

    You don’t even have to “answer,” but at least can you supply a response that is on point?

  34. Ned Heller, you are assuming there is not a product of nature exclusion.

    There clearly is one, whatever you think of its roots, it exists. It is the current law.

  35. IANAE,

    You really should pay attention to your arguments before you hit the post button:

    I’m not talking about whether the patents cover the second generation. I’m talking about what we were talking about, i.e. do the gene patents suddenly become ineligible under 101 once nature makes a copy of the gene?

    I’m not talking about…second generation. I’m talking about… nature makes a copy…

    Um, nature making a copy IS second generation.

    [Eye roll]

  36. Mr. Forbidden, you again are assuming the is a product of nature exclusion.

    Regarding laws of nature, O'Reilly v. Morse explained what the vice is in allowing such broad claims to the principle rather than to a specific application.  They preempt the future inventions of others and positively harm innovation.

  37. Mr. Forbidden, however, the early cases contained no mention of products of nature as an exception.  The early cases were focused on laws and phenomena of nature, and said that practical application of these were the stuff of patents.  These cases had nothing at all to do with any product of nature exclusion.

    As late as 1910, the courts had not even heard of the exception as witnessed by L. Hand's statement that to his knowledge there was no doctrine against patenting extracted adrenaline.  

    You assume too much from the early cases.

    The SC in Chak. traced the doctrine to the PTO!!!!  It went substantially unchallenged as a doctrine ever since.  

    Think about that.

    Unchallenged.  100years and on one single challenge.

  38. I included Composition twice. I meant to include manufacture in place of one of the compositions.

  39. The principle should not apply because, like any other principle enunciated by the Court, the patent system’s reach is not all-encompassing. It has limits.

    If you do not want to stop at products of nature, then why stop at all? The same rationals apply to all of the judicial exceptions. The same “but it’s only a short period of exclusivity” can be used for all of the judicial exceptions. And while any concern about overbreadth, novelty and the like do have their legal guardians, the Court in Prometheus has given you the answer to your unasked question at 7:40 PM. The exceptions apply to each of the enumerated categories, whether that category is a process or a composition or a machine or a composition of matter or even any new and useful improvement thereof.

    The Court has clearly stated that the exceptions apply to all. What possible rational could exist for making the enumerated category of compositions special such that exceptions do not apply? There is no basis for such preferential treatment. You are quite litterally sliding into forbidden territory with such unwarranted views.

  40. Mr. Forbidden, however laws of nature know no borders, and are not confined in time or place. Compositions are local, and their utility subject to discovery by man. There is a major difference between the two.

    There is no effective LEGAL difference between the two. Both affect and belong to all men. This is a foundational view of the Court (and always has been) Look at any Court decision and notice the language they use to preface their introduction of the judicial exceptions. Your attempt at making boundaries of time and space a material point have no validity in the argument that such belong to all men, everywhere and for all time.

    You other arguments sound in Trade Secrets being bad because the “public does not benefit.” Would you be willing to ban Trade Secrets then? I think this points out an underlying flaw in the argument you are attempting to make. You also do not comment on any of the comments I made about Trade Secrets. You have not addressed them enough to create a cogent position.

  41. Sliding, but the whole point of a patent is to allow a short period of exclusivity in exchange for the disclosure of new technology.  I am not sure why this principle should not apply to newly discovered, hitherto unknown compositions found in nature that have utility.  Disclose it, and in exchange, receive a short period of exclusivity.

  42. Mr. Forbidden, however laws of nature know no borders, and are not confined in time or place.  Compositions are local, and their utility subject to discovery by man.  There is a major difference between the two.    

    A law of nature is truly the property of all mankind.  Perhaps it can be kept as a trade secret, but for how long?  

    Not so a compound.  The formula for Coke has been a secret for 100years.  What if the Coke founders originally found the compound in a plant in the jungles of New Guinea by a lost explorer whose footsteps were never recorded?  Coke brought the compound to  the public weal, not the forests of New Guinea.  Are we to say that Coke cannot be patented just because of its original discovery in a New Guinea forest?

    Myriad patented the BRCA genes (isolated form.)  The presence of the gene in women provides useful information.  Suppose that instead of patenting the gene, the discoverers had kept it secret and simply provided a diagnostic service?  How would then the public have been better benefited?  It is not apparent at all that they would be.

  43. He can try to keep anything so discovered a Trade Secret.

    There is no law against that.

    Of course, he runs the risk of someone reverse engineering that Trade Secret, of finding out what the product of nature is and then openly engaging in commerce with that item, with constraints of no kind.

    As it should be, unencumbered by any restrictive right.

    There is no logical reason to have patents on such a thing. It rightfully belongs to no one person.

  44. IANAE, you do raise a very interesting point. If it is the presence in nature that is the sine qua non of the exclusion, the escape from captivity into the wild should invalidate the patent.

    But, as I argue, the Supreme Court precedent has nothing to do with a product of nature exclusion, but rather with the fact that the compounds, albeit extracted from nature, were known. Thus the compounds were prior art in all prior Supreme Court cases alleged to be on point. Even with Chakrabarty, the base compositions were known. If this is the case, the subsequent natural spread of the patented seed or animal into the wild should not affect the patent. However, it does suggest that the patentee’s only real rights are to make the seed in purified form and sell it himself. He should not be able to treat as infringement seed planted from seed naturally produced.

  45. Do you know that Trade Secrets, while valuable and having a spot under patent law, do not have exclusive rights that would conflict directly with what the public has a right to?

    The warehouse concept benefits the public because no one should have a patent on anything found, now or in the future, in the warehouse.

    You just cannot give exclusive rights to something that belongs to everyone.

    Do you recognize the parallel (especially in the Government’s brief) between the right of everyone to abide by laws of nature with the right of everyone to partake in products of nature, no matter where those products may be or when they may be discovered?

    Be careful of the line you seem to be drawing. Having a patent to a leaf plucked from a (now currently unknown) Brazilian rainforest shrub is right around the corner (and immediately down the slippery slope) of this idea that the first discoverer can patent the actual product of nature.

  46. Warehouse?

    If the inventor is the first to discover that a product of nature has a certain benefit and he cannot obtain a patent on it, what if he keeps it a trade secret? How does the warehouse concept benefit the public?

  47. Hey comic, Mother Nature has widely copied patented Monsanto seeds and planted them far and wide by her own hand.

    Let’s sue, shall we?

    BTW, will the court appoint Mother Nature an attorney? Anon perhaps?

    I can see it all now, anon will represent Mother Nature and claim the patent now invalid because the patented genes have returned to nature.

  48. anon, as I noted, the SC traced the doctrine to In re Latimer.  That decision has never been examined by any court.  The Supremes simply assume that the doctrine existed in Chakbrabarty.  I suggest that in a proper case, they would be willing to examine whether the doctrine exists at all, and if so, its scope.

    Actually, I think the Myriad case is an excellent to test the product of nature exception.  The Federal Circuit would be well put to challenge it validity as it was not recognized by none other than L. Hand in Parke-Davis.  That will prepare the Supreme Court to take a close look.

  49. anon, you and Malcolm are both making solid points and not simply engaging in bashing. I would ask you to treat Malcolm with a tad more respect and listen to what he has to say.

    I have asked him before to not treat you a a troll because I believe you are not a troll. You are willing to argue the substance of an issue; and, even if you do not always agree with Malcolm and me on an issue, the mere fact that our conversations can at times be on substance is something we need nourish.

  50. Ned,

    Lectures from you on the proper legal support of arguments is an affront to every able-minded individual that reads this blog.

    You have no room to make such chastisements.

    Further, I am surprised that you do not recognize the precedent used by CatChbC. It is a quote directly from Chakrabarty, in fact, it is the part in which the Court is directly mentioning Congress (a double authority boost).

    So not only shouldn’t you be the one making any chastisements, you are chastistizing incorrectly because authority is being used.

    A sure-fire way for you to earn the very contempt you mention.

  51. MM,

    Not sure if you think you have done anything other than ramble on incoherently.

    Relax, take a deep breath, gather your wits, then attempt to write*

    *given the low level of wits thought to be possessed by Malcolm to begin, with, no improvement of results is guaranteed.

  52. suckie: If nature can provide the product, there is no exclusive rights to be had.

    It’s as simple as that. It’s axiomatic to patent law.

    You are mistaken or very confused. Unless of course you’ve got a very special definition of “nature.” Do you have a very special definition of “nature”? You must have one. Please share it with us so we can understand how “simple” this issue is. A Supreme Court cite in support of your definition and its proper application would also be greatly appreciated.

    Here’s a hypothetical to try (LOL! as if) to get you thinking at a more advanced level than the kindergarten approach you are currently taking: Professor Honeydew synthesizes composition X in year 0. It’s useful for flavoring dog food. In year 2 Professor Honeydew files and receives a US patent on a methylated derivative of X that cures leukemia in children. In year 15, BioTroll shows that South American raccoons who eat composition X under a full moon naturally produce the methylated derivative of X in their anal glands.

    Is the patent on the methylated derivative of composition X now directed to ineligible subject matter? Let us know, suckie.

    . If it is found in nature after, it is just as likely to have been available to be found before.

    Man, this blog has the dumbest trolls. It’s as if they migrated here after being banned for being too st-p-d to post coments at Answers in Genesis.

  53. M. Dorothy, If a an exception applies it matters not about ….. it is unclear how you might end this sentence.  What are you talking about?

    However, in order to determine what invention is being claimed, one really has to know what is new.  There is a real difference between the player piano as a new machine where music is listed as what the player piano does, and a player piano as a old machine where the only thing new is the music.''

  54. Mr. Congess, such confidence do we have in a theory without cited precedent….

    [Obviously, we are dealing here with one more incidence where a sock puppet's word is deemed to be law and need not be supported by logic or by authority.]  

    Even if in the end you might be right, sir, the way you proceed here is with contempt of the public forum in which you are graciously allowed to participate.

  55. Far too much w_hining on this matter.

    You cannot have a patent and exclusive rights on something that nature can provide. If nature can provide the product, there is no exclusive rights to be had.

    It’s as simple as that. It’s axiomatic to patent law.

    You found a way of getting a product that nature provides? Great, claim it properly and you have a patent on a solid method.

    if prior art or some other invalidating event

    IANAE, you are acting like the little school girl MM. You are aware that 101 is invalidating every bit as 102, correct? That’s all that is being discussed here. A patent is being determined to be invalid because it should never have been granted. Unwind your p_anties.

    I’m talking about something that didn’t exist in nature until it was too late to be prior art

    That’s a naked assumption that it did not exist prior. If it is found in nature after, it is just as likely to have been available to be found before. Just because it wasn’t found does not mean it wasn’t there. You are buying into the dust cloud that MM has kicked up. Besides the whole conflation of 101/102/103 on this very point was already addressed on the parke davis thread. Your whining didn’t fare too well there either.

    Yes, I do assume that the patent was initially perfectly valid and enforceable.

    Fine. No problem. Assume away – until the assumption is gone under 101. Or do you have some unforseen reason to cry over 101 invalidated patents that you do not share over 102 or 103 invalidated patents? Is a patent that should not have been granted under 101 somehow more dear than one that should not have been granted under 102/103?

    As for the Monsanto case, give it time, the litigation is not over – and this argument has not yet been given its due in court. The amount of litigation is immaterial if the sum total of that litigation never used the argument under discussion.

  56. If nature started copying those genes, and presumably this is willful, will it need to pay triple damages ?

  57. “And the jury, once it is told that the judge has determined the behavior objectively reckless, is likely to find any infringed patent to be willfully infringed.”

    Could someone help me out here? Why would a jury be told that the judge decided a threshold question? I would think this would be grounds for a mistrial.

  58. no matter when that verification arrives,

    I’m not talking about the verification. Obviously if prior art or some other invalidating event is only discovered after the fact, it’s just as invalidating (subject to the presumption of validity).

    I’m talking about something that didn’t exist in nature until it was too late to be prior art, but was “produced” by nature after the fact and now satisfies whatever fluid definition of “product of nature” we’re using.

    Yes, I do assume that the patent was initially perfectly valid and enforceable. This is something I like to call a “hypothetical example”. Only, not very hypothetical, as it fits perfectly with the Monsanto case, and for some reason it hasn’t invalidated their patents yet, despite copious litigation.

  59. We’re still waiting for your answer

    The royal we?

    Malcolm, the rest of “we” have realized that this question was asked and answered quite some time ago. See Chakrabarty

  60. Basic Patent Law Principles and Newly Uncovered Mock Concern From IANAE, Who Was Thought To H_ate All Patents says:

    You assume the patent is “perfectly valid and enforceable.”

    Clearly, if a patent is awarded for something that is a product of nature, no matter when that verification arrives, the patent was NOT perfectly valid and enforceable.

    These types of things happen all the time through litigation and Office procedures. It is more than a bit odd to see IANAE crying crocodile tears because a patent that should not be is wiped out. Normally IANAE is for wiping out even valid patents.

  61. suckie MM reads the quote “clear and logical” as mysterious and confounding.

    What’s mysterious and confounding is why you believe that a trivial distinction between a “mineral made only by nature without man” and a “plant made by man that couldn’t be made by nature” is helpful or relevant in the general case of determining of whether a given patented composition is rendered ineligible, e.g., by a subsequently identified similar chemical whose final structure was created “naturally” (I guess in your simple mind that would mean it was created in a virgin forest or something? — let us know, suckie!).

  62. With one post, we should see the end of two lines of Errant-Nedisms:
    1) the ultra-dependence on Bilski for his crusade against business method patents
    2) his fluffing off of Chakrabarty on the prohibition against patents for products of nature.

    I predict that this moment of lucidity will last at least five hours and twenty-five minutes from the 10:03 AM post.

  63. Why does this time factor keep getting interjected into the conversation?

    Because without it you have a situation where a perfectly valid and enforceable patent can be invalidated based on something that happens long after filing. Or even, in the very non-hypothetical Monsanto case I mentioned earlier, based on the invention itself.

  64. suckie: Why does this time factor keep getting interjected into the conversation?

    Because nature is always creating compositions of matter. Sometimes the compositions are new. Sometimes nature was beaten to the punch by “man.” Sometimes nature acts on man’s compositions to create compositions that weren’t previously described by man. Sometimes nature acts on man’s compositions to create compositions that were previously described by man. Are all such compositions “products of nature” and thereby eligibility-destroying? We’re still waiting for your answer, suckie. Well, not really. More accurately, we’re still watching you fail to answer. Or more accurately, flail to answer.

    LOL.

    Man, this blog has the dumbest trolls.

  65. MM reads the quote “clear and logical” as mysterious and confounding.

    What are the chances this this is MM being MM (given his awe-inspiring ability to stick his foot in his moouth when it comes to making comments about other people’s reading skills and not actually doing the reading himself)?

    What a Fn T O O L

  66. What’s even better is the attempt by MM to not use 101 at all and pin his entire hopes on a 102/103 timing stance.

  67. IF” we are going to have a product of nature test?

    We have a product of nature test.

    This all was discussed less than a month ago on link to patentlyo.com Your search for some higher level of clarity is quixotic. This is one of the more clear 101 tests out there.

    MM, you really need some new material.

  68. Projection on your part, suckie. Nothing new.

    From Malcolm, the original perpetrator of the “accuse others of what you do” game.

    Who is this clown?

    T O O L

  69. And does it matter… until after the filing date

    Why does this time factor keep getting interjected into the conversation?

  70. suckie The Court has always been clear: if an exception applies

    The discussion we’re having, suckie, is about how one determines if “the exception” applies.

    a rather pitiful attempt at redirecting the conversation.

    Projection on your part, suckie. Nothing new.

  71. suckie, everyone can understand that there is a “distinction” between “mineral[s] created wholly by nature unassisted by man” and “a plant discovery resulting from cultivation”.

    The issue at play here is how to determine if/when a particular composition has been created “wholly by nature unassisted by man.” What does it mean for a composition to form “unassisted by man”? Must the composition be formed “unassisted by man” from scratch? Or is it just the final form that must be “unassisted”? And does it matter if the final form of the composition at issue was not formed “unassisted by man” until after the filing date of a patent describing the composition for the first time and its synthesis using a combination of “assisted” and “natural” processes?

    These are very ovious, very basic and non-hypothetical questions that must be answered if we are going to have a “product of nature” test for subject matter eligibility.

  72. “What happens” is not a Y/N type of question.

    The highlighted section does answer the question. If you don’t understand the answer, that’s a different matter.

    Your second question follows from the answer to the first question. I answered that too.

    Spend less time trying to be a smart-@ss. You are not achieving the “smart.”

  73. Please read the highlighted section of my post IANAE.

    I did read it. Not only is it way longer than the Y/N I asked you for, it doesn’t answer my question. Unless you think Roundup-Ready crops can’t reproduce by nature unaided by man, in which case a lot of defendant farmers would like a word.

  74. As Monsanto’s patent in any second generation seed clearly fails the Court’s teachings, it is clear that such fail to have any patent protection.

    I’m not talking about whether the patents cover the second generation. I’m talking about what we were talking about, i.e. do the gene patents suddenly become ineligible under 101 once nature makes a copy of the gene? Because nature doesn’t care what sequence it’s copying, it just copies what’s there.

  75. The mention of straw brings the master strawman forth who cannot resist the urge to throw straw about.

    Monsanto’s dilemma has nothing to do with the lack of time-dependency in the product of nature discussion.

  76. You might want to check out the “actual words” so carefully chosen by the Court:

    There is a clear and logical distinction between the discovery of a new variety of plant and of certain inanimate things, such, for example, as a new and useful natural mineral. The mineral is created wholly by nature unassisted by man. . . . On the other hand, a plant discovery resulting from cultivation is UNIQUE, ISOLATED, AND IS NOT REPEATED BY NATURE, NOR CAN IT BE REPRODUCED BY NATURE UNAIDED BY MAN. . . .

    S.Rep. No. 315, supra at 6; H.R.Rep. No. 1129, supra at 7 (emphasis added). Congress thus recognized that the relevant distinction was not between living and inanimate things, but between products of nature, whether living or not, and human-made inventions

    As Monsanto’s patent in any second generation seed clearly fails the Court’s teachings, it is clear that such fail to have any patent protection. If you think about it, the isolation and ability to propagate outside of the direct control of man is a clean clear and simple dividing line.

  77. What matters is that the thing is a product of nature.

    Period.

    There is no “time” aspect to the product of nature exclusion.

    There is no “but was discovered prior” requirement.

    What happens to Monsanto’s Roundup-Ready gene patents once nature produces more of the gene?

  78. determine what one is claiming

    More straw upon straw. Your point has nothing to do with how the exception applies. You have not addressed my comment at 9:17 at all, except in a rather pitiful attempt at redirecting the conversation.

    Whether novel or not, the judicial exception takes the matter out of the patent game.

    Court has always been clear: if an exception applies it matters not what else may be.

    You have to deal with this.

  79. In contrast, things of nature are not universally present everywhere and at all times.

    Immaterial.

    What matters is that the thing is a product of nature.

    Period.

    There is no “time” aspect to the product of nature exclusion.

    There is no “but was discovered prior” requirement.

    If you want to put one into the exclusion, you had better be able to provide clear legal authority for doing so.

    All we have seen so far is dust-kicking from MM and you on trying to make this a 102/103 issue.

  80. Mdm., your post on its surface seem reasonable.  I am not quite certain though that you understand Malcolm's position, or for that matter my position, on section 101.

    Regardless, one has to determine what one is claiming before one can consider the exceptions.  That is the point of the claim analysis conducted by Malcolm, and now by the Supreme Court after Prometheus.

  81. Mr. duplicity, good point there about Bilski.  The actual holding the case was that the claims were abstract.  The discussion about a business method exclusion was in response to the Stevens "dissent".

  82. Mr. what, I don't quite understand your "time element" importation statement.  Please explain.

    However, Judge Learned Hand in Parke-Davis observed that there was no rule against patenting extracted adrenaline, which was prior art to the purified adrenalin that was the subject matter of the patent before him.  At least as of that case, there was no known product-of-nature exclusion except perhaps in the patent office in the form of the commissioners opinion.  See In re Latimer.

    We should also note that the Supreme Court and Chakrabarty traced the product of nature's collusion to that commissioners opinion.

    Now you speak of a "warehouse of nature" concept undergirding every Supreme Court opinion on the topic.  I am not quite certain the scope of this warehouse.  All we know is that it extends a laws of nature, and perhaps to mathematical algorithms.  But beyond that, the scope has no certainty.  As Malcolm explained so cogently in a recent post, the public is not inconvenienced by a patent on a novel composition of matter if later it is discovered that that composition exists in the liver of some obscure mammal or creature that exists only under the icepack in Antarctica.  In contrast to such a hypothetical animal or creature that exists only one location, laws of nature exist everywhere on the planet at the same time, and presumably exist everywhere in the universe without beginning and without end.  They are universal truths.  In contrast, things of nature are not universally present everywhere and at all times.

    As I have pointed out numbers of times in other posts, the Commissioner in In re Latimer believed to prior Supreme Court cases were based upon laws of nature exclusions.  In fact, those cases were not based upon laws of nature exclusions, but upon the compounds being known.  See especially the Wood-Paper patent case.

  83. Nice strawman MM and Ned. The only problem with it ( OK not the only problem, but a devastating one) is that we are talking about a judicial exception. The judicial exception applies regardless of novelty. You try to introduce a distinction that simply makes no difference. Whether novel or not, the judicial exception takes the matter out of the patent game. The Court has always been clear: if an exception applies it matters not what else may be. If an exception applies, even if the item passes all other laws made by Congress, the item is out of the patent game: Not Eligible.

  84. Why is it that Ned Heller clings so tightly to this imagined distinction between holding and dicta in Chakrabarty and yet ignores that very difference and places strict measure on the dicta from Bilski on the exact turn of phrase regarding eligibility?

    The holding in Bilski was clear and unequivocal: what Bilski claimed was abstract. Any discussion there on business method eligibility of that particular claim, any “carefully chosen wording,” was dicta, as once the holding of “abstract” was in place, all else could fall away.

    And yet Ned repeatedly demands an unholy allegiance to the exact turn of phrase in Bilski (and further, conflates the phrase from the singular to the entire group category; but that’s a tale already well told).

    And yet, here concerning Chakrabarty, where the turn of phrase is far less convoluted, Ned wants to clench his eyes tight, stick his fingers in his ears, and chant at the top of his lungs “Holding Holding Holding.”

    Admitting to the Court holding the very belief that dismisses his point of view, he clamors for a holding, as if what the Court clearly and steadfastly believed is somehow not good enough.

  85. Why is MM having such difficulty with this man/nature distinction?

    “There is a clear and logical distinction between the discovery of a new variety of plant and of certain inanimate things, such, for example, as a new and useful natural mineral. The mineral is created wholly by nature unassisted by man. . . . On the other hand, a plant discovery resulting from cultivation is unique, isolated, and is not repeated by nature, nor can it be reproduced by nature unaided by man. . . .”

    S.Rep. No. 315, supra at 6; H.R.Rep. No. 1129, supra at 7 (emphasis added). Congress thus recognized that the relevant distinction was not between living and inanimate things, but between products of nature, whether living or not, and human-made inventions

  86. That would certainly make sense

    Oh the irony of MM wanting not to conflate 101 and 102/103 in this instance when he is only too happy to conflate upon subject matter not in his own backyard.

  87. Mr. Goalpost, I am not the one arguing FOR a product of nature exclusion.

    Ned, you are the one arguing for a time element importation into the “warehouse of nature” argument that undergirds every Supreme Court discussion on the topic. Provide at least one such discussion that invokes a time element. Just one.

    You will not because you cannot.

  88. And your misquotes and butchering of case law would have you disbarred, you old fart.

  89. Combine this with Malcolm making a comment about someone else lack of reading while he himself does not catch the government position (because he did not read it) and Malcolm wins the tool of the night award.

    Well done you Fn T O O L

  90. No, I am the one who has supported my position by quoting chapter and verse as opposed to you, Mr. A Hole, and your ilk, who only make unsupported, conclusory statements that other people are wrong.  If you were a litigator or even a patent prosecution, the judge would find your brand of argument contemptuous.

  91. Hahahaha, you got owned hard by Ned AGAIN

    Nancy, your perception is wack.

  92. This is hilarious coming from Malcolm.

    Malcolm, you do realize that by “not at issue” it only means that it was not part of the immediate conversation, right?

  93. Blathering, and, sir, cite the case where the SC held unpatentable a claim due to a product of nature exclusion.

    That’s right.

    It does not exist.

    The assumption that a product of nature exclusion exists is like an urban legend. Everyone thinks it to be true, but no one can give us a real example. Ditto the belief in God.

  94. MM suckie refuses to acknowledge that the claims at issue in Myriad describe compositions of matter that plainly, explicitly and indisputably did not exist before the “hand of man” created them.

    suckie: this was not at issue

    What’s at issue suckie is your understanding of the “product of nature” test for subject matter eligiblity. Because you are a blogtroll, the operating assumption is that you have no coherent understanding whatsoever. We’re waiting for you to prove us wrong. By stating that the facts in Myriad case itself are “not at issue”, you are only providing additional confirmation of what everyone already knows: you are an intellectual and emotional midget incapable of making a non-trivial, accurate affirmative statement about anything, much less patent law.

  95. I have previously laid out all the relevant passages

    translation: I have previously gabbed in my usual incoherent manner, butchering case law like nobody’s business and ignoring anyone who had anything to say that simply and effectively refuted my delusional rants.

  96. I am not the one arguing FOR a product of nature exclusion.

    What has that got to do with the price of tea in China?

    The product of nature exclusion already exists. You are arguing for a change in law so that it does not exist. The onus is on you. Give the cite for your view or stfu.

  97. Meanwhile, suckie refuses to acknowledge that the claims at issue in Myriad describe compositions of matter that plainly, explicitly and indisputably did not exist before the “hand of man” created them.

    Meanwhile this was not at issue.

    Please move the goalposts back.

  98. suckie How about something not by the hand of man?

    Does that mean that the eligibility-destroying composition was never touched by the hand of a human being? Or that it was never willfully altered by a human being? Or both?

    What if some component of the eligibility-destroying composition was created by a human being in the past, but the eligibilty-destroying composition as a whole subsequently changed unwillfully? What if that change occurred after the priority date of the patent whose eligibility is at issue?

    Again, all these are really obvious and fundamental questions that must be answered if one intends to destroy eligibility for compositions of matter based on some yet-to-be-articulated “product of nature” rule. But suckie would rather run around in circles, citing one poorly defined phrase (“created by the hand of man”) to negatively define another (“product of nature”).

    Meanwhile, suckie refuses to acknowledge that the claims at issue in Myriad describe compositions of matter that plainly, explicitly and indisputably did not exist before the “hand of man” created them.

  99. Sure I am.  Golan supports the view I expressed.  I have previously laid out all the relevant passages from both cases in order so that one can see what was being discussed.  Graham, Golan observed, was not talking about what the Golan case was talking about.  They distinguished the case.

  100. Your reading of Golan is way, way, way off.

    You are not even close to understanding the case.

  101. Did I ask you to prove a negative or did I ask you to cite authority for your novel proposition?

    Move the goalposts back please.

  102. suckie: There is no effective difference between the “law of nature” and the “product of nature” exclusions

    Me: LOL. Says who, suckie?

    suckie: That would be the government [in their amicus brief].

    Me: LOL.

  103. Talk about “b–tfreaking st-p-d“.

    Not knowing what in nature means? How about something not by the hand of man?

    This is almost on the level of Ned not knowing what a medical method is.

    T O O L

  104. Interesting example of Ned Heller backtracking at 5:15 PM.

    So nice that Ned “agrees” with this much.

    T O O L

  105. No, Mr. Goalpost.  I cannot prove a negative and you, Mr. Goalpost, know that.  So when I ask that advancers of a proposition cite SC authority for the proposition, I expect them to be able to do so.  

  106. Mr. C, 

    Held?

    HELD?

    H E L D?

    Then, it is your position that the SC in C HELD that the claims before it were products of nature and were for that reason excluded from eligibility.

  107. Mr. Reality, no, I have it right.  Read Golan.  Then read the passage from Graham they cite.  Then read Golan again.  The point they made was a bit cryptic, but it was there.

    The Golan court distinguished Graham on the basis that Graham was concerned only with knowledge in the public domain that was there because of others and in which the public was vested due to use, not because it was put there by the author.   The Golan court relied on the number of patents that were "extended" by congress years after they had expired.  This was not, they held, what the SC was talking about in Graham.  So, by combination, we see that what Graham was talking about was knowledge in the public domain that was not that of the author or inventor, and in which the public was vested.
     

  108. “Please explain how one determines whether a given composition “exists independently of man.”"

    Simple: it’s found in nature.

    In your, um, “mind,” suckie, where exactly is “nature”? And after you show us where “nature” is, how does one go about “finding” what’s “in nature” and what isn’t “in nature”? From a patent law perspective, of course.

    I’m genuinely curious, suckie.

    Okay, I lied. I’m not curious. More like creeped out by how b–tfreaking st-p-d you are.

  109. That would be the government.

    You don’t get this “reading” thing at all do you MM?

    T O O L

  110. Mr. C, I note you are now spelling the case correctly, although I do see the joke in the incorrect spelling.

    I will agree with this much:  

    The Supreme Court believed there was a product of nature exclusion. 

    Do you agree with this much, or is it your position that the SC HELD in Chakrabarty itself that there was an exclusion?

  111. suckie There is no effective difference between the “law of nature” and the “product of nature” exclusions

    LOL. Says who, suckie?

  112. Read and Weap, the government brief assumes there is a product of nature exclusion; and 2) that the "marked differences" are required.  However, Chakrabarty draws its "authority" from congressional history regard plant patents, an Act that, as the Court itself, noted was based an erroneous assumption.*  Further, the court, assuming a product of nature exclusion, held the claims there remarkable different and eligible.  However, even here the pre-existing products of nature were known and therefor prior art.  Thus, "markedly different" was required for prior art reasons.  See, e.g., Hand's opinion in Parke-Davis.

    * "We reject this argument. Prior to 1930, two factors were thought to remove plants from patent protection. The first was the belief that plants … were products of nature for purposes of the patent law. This position appears to have derived from the decision of the Patent Office in Ex parte Latimer, 1889 Dec. Com. Pat. 123, in which a patent claim for fiber found in the needle of the Pinus australis was rejected. The Commissioner reasoned that a contrary result would permit "patents [to] be obtained upon the trees of the forest and the plants of the earth, which of course would be unreasonable and impossible." Id., at 126. The Latimer case, it seems, came to "se[t] forth the general stand taken in these matters" that plants were natural products not subject to patent protection. Thorne, Relation of Patent Law to Natural Products, 6 J. Pat. Off. Soc. 23, 24312*312 (1923)"

  113. You mean that Ned is not taking the carefully chosen words of the Supreme Court for what they said?

    How does the sophist square that with his crusade against business method patents?

  114. That’s certainly ture… But it’s not true… I think it’s quite obvious why.

    Because your theory backfires and works against you…?

  115. Cite authority for this proposition.

    Since you are advancing the “novel” theory here, it is up to you to cite proper authority.

  116. Cite one case where the SC held products of nature were excluded from eligibility.

    Chakrabarty

  117. Golan recently reaffirmed Graham that congress could not authorize patents on knowledge in the public domain

    Actually, you have Golan dead wrong.

  118. Ned, You are attempting to recast what was said in Chakrabarty, which was said clearly, regardless of it progeny.

    In essense, you are returning to the previous posts of being “a little bit pregnant” by selectively accepting some but not all of what the Supreme Court has said on this subject.

    You want the worst of all worlds.

  119. "Public Domanin" … "Never has."

    Cite authority for this proposition.

    Golan recently reaffirmed Graham that congress could not authorize patents on knowledge in the public domain.  Cite one case where the SC held products of nature were excluded from eligibility.  

    "Held" is the key word here.

  120. Ned,

    See the amicus brief written by the government (the link is available at the PatentDocs site).

    There is no effective difference between the “law of nature” and the “product of nature” exclusions, which all the more makes the irnoy of MM’s premature celebration of the Prometheus case delicious.

  121. Malcolm, the debate on whether a product of nature must be known to render a claim unpatentable or obvious is a very old debate that has never been directly addressed by the Supreme Court. It was addressed by the CCPA in Bergstrom, however.

    It is pertinent here that the SC in Golan reaffirmed it dicta in Graham that the basis for prior art is the withdrawal from the public domain of “knowledge.” That is the critical question on the table here.

    Second, there is no SC authority that one cannot patent newly discovered products of nature, not even Chakrabarty. Chakrabarty expresslly traced the doctrine to Latimer, which as I have previously discussed is not a Supreme Court case and for this reason is not binding on the Supreme Court even as as stare decisis. That “case,” Latimer, misconstrued two prior Supreme Court cases to erect a product of nature exclusion, where those two SC cases themselves relied on prior public use and knowledge of the compounds in question.

  122. Actually, Malcolm, either they do not know the difference between a law of nature and an product of nature, or they pretend not to know. Either way, they fully intend to derail the conversation.

  123. Please explain how one determines whether a given composition “exists independently of man.”

    Simple: it’s found in nature. That’s obvious.

    Next.

  124. Strawman.

    The topic under discussion is “product of nature.”

    You subtly shifted to “law of nature.” The two topics are not the same.

    However, you may not have known that. Correct?

  125. I am pretty sure that you have never “gone round the block on this issue with me” although I do recall your errant posts on the subject (and your aversion to the Supreme Court ruling [Chakrabarty] directly on this that clearly paints a very different picture).

    The point of the matter is that both you and MM are dead wrong on this. Prior art is NOT key. At all. Belonging to the nature’s warehouse and thus to all men has no time dimension to it. Never has. The law has always allowed a new use of something found in nature, but has always treated the per se item itself differently.

  126. Try, Malcolm is not the only one, b im bo.

    You might also read Application of Bergstrom.

    There the PTO argued,

    “…[T]here is no requirement that a naturally occurring compound must be known or in possession of the public to negate novelty under S101. Certainly, an unknown compound or composition of materials merely discovered from nature is not patentable.”

    To which the CCPA responded,

    “But quite apart from those considerations, the criteria for determining whether given subject matter is “new” within the meaning of § 101 are no different than the criteria for determining whether that subject matter possesses the “novelty” expressed in the title of § 102. The word “new” in § 101 is defined and is to be construed in accordance with the provisions of § 102.[8] Thus, that which possesses statutory novelty under the provisions of § 102 is also new within the intendment of § 101. We have found no evidence of Congressional intent to define the word “new” as used in § 101 in any different manner.”

  127. suckie: If it is a product of nature it exists independently of man

    Please explain how one determines whether a given composition “exists independently of man.”

    Please apply your answer to the composition claims at issue in Myriad and explain why those composition claims are eligible for patenting or not.

    Please also apply your answer to a previously undescribed chemical newly discovered in an oil pool in a long-abandoned toxic waste dump. If shown to be useful for curing leukemia, is the purified composition eligible for patenting? Alternately assuming the purified chemical and its laboratory synthesis was described in a patent application filed ten years ealier, is that patent now invalid for claiming ineligible subject matter (even if there is no evidence that the chemical existed in the oil pool prior to the filing of the patent)?

    These are really basic, obvious and fundamental questions inherent to any decision in this area. It takes some effort and skill to articulate them plainly which is one reason why the amicus briefs do

  128. Poster, actually, the question Malcolm raises is the question that is really pertinent. I have gone round the block on this issue with you for thread after thread myself. The original case holding a product of nature exclusion, Latimer, was a commissioner’s opinion that misinterpreted two prior SC cases, including the Wood Paper Case, link to scholar.google.com.

    In both these cases, the particular compound that was alleged to be a product of nature was known, and its utility was known. Both these cases stand for no more than that known compositions of matter are prior art.

    Prior Art is the key. Prior art requires public knowledge or public use.

    The first discoverer of a composition of matter and a use for it has a right to a patent it, or on at least non naturally occurring variations. The mere existence of the composition in nature is not prior art to manmade compositions.

    I am confident the Federal Circuit will view it this way as well even in spite of the CVR from the SC.

  129. MM’s logic would have me being able to patent special relativity since no one knew of it encore I thought it up.

    Your inability to read and comprehend has been previously noted, suckie. Thanks for reminding this blog’s readers of that fact once again.

  130. suckie: [MM] is the only one who has ever said that that is actually an issue.

    Thank you for acknowledging my contribution to the debate.

    The rest of your comment is g-rb-ge. Someone upthread suggested that a novel and useful man-made composition could be rendered ineligible for patenting if it “effectively precluded” a third party from using a “product of nature.” The point being that the term “product of nature” is necessarily in need of definition. What do you think it means, suckie? As already noted, the most straightforward definition of the term would suggest that Myriad’s composition claims remain eligible as there are no natural-occuring compositions of matter that are “effectively” covered by Myriad’s claims. In fact, they are literally excluded from the scope of the claim.

    You are urged (again) to contrast this fact pattern with the fact pattern in Prometheus, where practitioners of the prior art became literal infringers when they thought about an abstraction (i.e., a patent-ineligible fact). Here, you can think all you want about Myriad’s compositions. And you can study breast cancer and mutant genes in their natural state to your heart’s content, just like you can study little people or diabetes even if someone else has a patent on pure human growth hormone or pure insulin.

    None of this is to say that such composition patents (on compounds purified or derived from mixtures and or other compositions in the human body) should be granted, as a policy matter. But applying current US patent law reasonably, this “product of nature” argument is unworkable. It’s a dead letter, at least without a very clear definition of “product of nature.”

    Again, this is in stark contrast to Prometheus’ claims which, given the state of the art, explicitly (and therefore indisputably) protected ineligible subject matter (whether you or anyone else chooses to call [newthought] a “law of nature” or “abstractions” is irrelevant).

  131. But it’s not true of novel, non-obvious and useful compositions. I think it’s quite obvious why. I think it’s also obvious that no matter how many times I explain it to you, suckie, you will never “get it.”

    And you’ll never get that if the item is a product of nature then it isn’t a “novel, non-obvious composition,” no matter how useful it may be. That too is quite obvious. If it is a product of nature it exists indepently of man and CANNOT be invented as the legal term makes obviously clear (at least to those who have not buried their heads in nether-lands)

  132. MM’s logic would have me being able to patent special relativity since no one knew of it encore I thought it up.

  133. It really doesn’t matter whether it’s 101 or 102/103.

    That’s certainly true of claims in the form [oldstep]+[newthought], regardless of the transformative nature of the oldstep or the insightfulness of the newthought.

    But it’s not true of novel, non-obvious and useful compositions. I think it’s quite obvious why. I think it’s also obvious that no matter how many times I explain it to you, suckie, you will never “get it.”

    More importantly, I was right about Prometheus and I’m going to be proven right about Myriad as well. Perhaps you should start dealing with that reality now. It may minimize your weeping later.

  134. MM tries to make me new law from whole cloth by saying “one key issue is whether a “product of nature” need necessarily have existed prior to the filing of a composition patent in order for that “product of nature” to be considered as possibly rendering the composition patent ineligible.

    The problem for MM is that he is the only one who has ever said that that is actually an issue. It isn’t.

    You are assuming the premise you want to debate and assuming that it means something. It doesn’t.

    Try again.

  135. FIsh Scales “if the term “product of nature” has a meaning different from “known in the prior art”"

    So maybe “product of nature” claims should be judged under 102 or 103 instead of 101.

    DING DING DING

    That would certainly make sense, especially given the fact that nothing in 101 reasonably suggests that any useful man-made composition of matter should be ineligible for patenting, if properly claimed (i.e., described by objectively measurable non-functional physical characteristics).

  136. It really doesn’t matter whether it’s 101 or 102/103.

    Effectively repeat after me: WHAT-EV.

    What a bummer for you and your partying after Prometheus.

  137. suckie : “Product of nature” is a completely separate term than “known in the prior art.”

    I think we can agree that the two terms are “separate”, suckie. A key issue is whether there is any overlap. Specifically, one key issue is whether a “product of nature” need necessarily have existed prior to the filing of a composition patent in order for that “product of nature” to be considered as possibly rendering the composition patent ineligible. You should know the fact pattern by now, as I’ve stated it many, many times. But since you are a forgetful d–chebag, I’ll set it out again.

    Let’s say Linus Papling synthesizes and patents novel, non-obvious and childhood leukemia-curing isolated composition X in year 1. Ten years later Ernie Shickleford discovers a new species of squid underneath Antarctica. The liver of that “species” (in quotes because only a single specimen was found) includes a frothy mixture that comprises, 2 molecules of composition X per ounce of mixture.

    Is Linus patent invalid because it “effectively precludes the public from using a product of nature”, as your new heroes have apparently argued? Does the answer change if the composition in the mixture in the liver of the squid is very similar but non-identical (in addition to being non-isolated) relative to composition X? Please explain your answer. Note that I’m not asking you for “case cites”. I’m asking you for reason and logic. Good luck with that, suckie.

  138. “if the term “product of nature” has a meaning different from “known in the prior art”"

    So maybe “product of nature” claims should be judged under 102 or 103 instead of 101.

  139. How about products created by aliens, i.e., ET? Perhaps, it’s only a product of nature if not created by a sentient lifeform? Do we count products of nature if they are a product of a different universe with different laws of nature (assuming something like string theory, parallel universes, etc is true)?

  140. I’ll note for the hundredth time as well that if the term “product of nature” has a meaning different from “known in the prior art”, then the term needs to be carefully defined

    Scary when Malcolm attempts to delve into actual law.

    “Product of nature” is a completely separate term than “known in the prior art.”

    Get out of your mother’s basement once in while and you might learn a few things.

  141. NIMBY I note with no small I-told-you-so the use of the word “effectively”

    I note that if a composition claim effectively precludes the public from using a “product of nature” (or any other prior art composition), then the claim is invalid as anticipated.

    To the extent Mayo’s claimed compositions have a substantial utility and do not read on “naturally occuring” compositions (e.g., genes that are embedded in human chromosomes, or in the chromosomes of any animal), they do not “effectively” preclude anyone from using a “product of nature,” no more than a claim to baseball bat “effectively precludes” someone from chopping down a white ash tree.

    I’ll note for the hundredth time as well that if the term “product of nature” has a meaning different from “known in the prior art”, then the term needs to be carefully defined. As a matter of indisputable fact, everything “under the sun made by man” is a “product of nature”, as the universe and everything in it (including humans) is “natural” by definition. If the term is to have a narrower meaning for the purpose of excluding certain compositions from patent eligibility, it needs to be very carefully defined. For example, where do narrowly defined “natural” processes (which produce “natural” compositions) end and “engineered” processes begin? Are novel nucleic acid compositions “natural” when they are the result (directly or indirectly) of exposure of an organism to man-made chemicals that were introduced into the organisms environment? Not a hypothetical scenario, by the way (in case anyone was confused).

  142. The public has genes, including the BRCA gene, as part of their bodies. How is the public prevented from using their own genes when a member of the patent obtains a patent on an isolated gene?

  143. OT, but from the government amicus brief in the Myriad case:

    Mayo Implies That A Composition Claim Is Not Patent-Eligible If It Effectively Precludes The Public From Using A Product Of Nature.

    I note with no small I-told-you-so the use of the word “effectively” as a tool that MM was too early in his celebration of the Prometheus case.

    Say guh-bye effectively.

  144. Is this patent still of commercial importance, or have advances in prostheses during the last 38 years taken prosthetic devices out of the realm of this patent?

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