Dr. Sheppard is an Assistant Professor of Law at the University of Nebraska Lincoln College of Law. Prior to joining the University of Nebraska, Dr. Sheppard was Chief Counsel on Patents and Trademarks and Courts and Competition policy for the United States House of Representatives Commmittee on the Judiciary. – Jason
By A. Christal Sheppard
Just over a week ago, Dennis Crouch stated on Patently-O that “[i]t is simply ridiculous that after 40 years of debate, we still do not have an answer to the simple question of whether (or when) software is patentable.” The confusion on what is and what is not patentable is not a new debate but has come to a head in the last few years with the Supreme Court taking on certiorari multiple cases on the matter of patentable subject matter and the Court of Appeals for the Federal Circuit, arguably, disregarding Supreme Court precedent.
We all understand the problem[1], but what is the solution? The question of what should be patentable is fundamentally a public policy decision. This public policy decision is one that the framers of the Constitution contemplated and specifically tasked one specific entity with balancing the equities. The Constitution states “The Congress shall have Power…[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Congress not the Courts was tasked to determine what should be eligible for the “embarrassment of a patent.” However, the Courts, led by the Court of Appeals for the Federal Circuit, not the Congress, have driven the expansion of Patentable Subject Matter to “anything under the sun made by man.”
Case law dictates that the intent of Congress was 1) that patentable subject matter is a requirement separate from that of the other requirements of the patent laws and 2) that Congress intended for anything under the sun made by man to be potentially patentable with the exception of laws of nature, natural phenomena and abstract ideas. Thus, the Courts have, by a stepwise expansion of patentable subject matter to software and business methods, created a situation whereby the high tech industry has been legally encouraged to tie itself into a Gordian knot. A knot that, without overruling prior precedent, or creative interpretation of precedent, the Courts cannot resolve.
This blog post is to propose that the United States Congress immediately take an active role in the creation of the parameters for patentable subject matter.[2] Congress is the only entity that has the ability and the resources to resolve this conflict in a reasonable and responsible manner. It is also the entity charged by the Constitution with doing so.
I’m not unaware that using the terms “reasonable” and “responsible” in the same sentence with the United States Congress during an election year will globally elicit sound effects from chortles to foul language questioning my mental facilities. However, below are a few points that are worth considering regarding who is best positioned to advance a solution to what most of the intellectual property community would consider a mess.
- The Constitution does not require patents to be granted and while our international agreements do require minimum patent rights, software and business methods are not among them.[3] Currently we have a Court created expansion of the definition of what is eligible for patent. Congress has yet to wade into this morass of what should be eligible for a patent except to provide for exceptions to the Court-created expansion. Congress has created exceptions in piecemeal “fixes”, specific individual carve-outs, instead of addressing the broader issue head-on.[4]
- History shows that Congress once before stepped in when the Supreme Court and the predecessor to the Court of Appeals for the Federal Circuit were in discordance. In the 1940s, the country was then also wrestling to establish a standard of invention. The Administration appointed a Commission and the patent bar was up in arms. As a result, section 103 – nonobviousness – was added to the statute by Congress in 1952 to inject a stabilizing effect that the Courts and general practice had not been able to accomplish over decades. What is needed in the current situation is stabilization. Today, the Courts are destabilizing the law of patentable subject matter rather than stabilizing it.
- Businesses need certainty to operate and to plan effectively. Only Congress can be prospective in its resolution. For instance, if Congress decides that software and business methods are not patentable subject matter ONLY the Congress can make this prospective to not conflict with settled expectations. If the Supreme Court narrows patentable subject matter, or patentability more generally, trillions of dollars of company valuation evaporate from the balance sheets with one Supreme Court decision.[5] However, Congress can decide that starting on a date certain in the future that all patents granted or applications filed before that date are under the “old” common law rules and all patents post-implementation are under the new law. Congress can provide finality on this issue without gutting company value.[6]
- Only Congress can create an alternative method of protection, apart from patent, for items that they determine do not meet the test for “promoting the process of science.” For example, concurrent with the delayed implementation of a narrower definition of patentable subject matter, Congress can provide sui generis protection for those fields they decide to carve-out. Many such ideas have been proposed, such as shorter exclusivity duration and limited remedies.
- A Congress, unlike the Courts whose precedent binds future judges, cannot bind a future Congress. Should the law of patentability need to expand for unknown advancements, Congress can do that in a way that is much less disingenuous than the Courts. The framers of the Constitution contemplated this in their directive to Congress. The language in the Constitutional defining what should be eligible for the monopoly is malleable so that patent law can adjust as technology and the need for promotion for the advance of science changes over time.
There are a multitude of very good reasons why calling on Congress is not a perfect solution. But with Myriad and the patentability of gene sequences and genetic testing on the horizon, does the intellectual property community want the Courts or Congress to decide this public policy issue? Businesses need certainty and only Congress can now provide that stabilizing influence without destabilizing entire industries. Whether Congress will or not, ought not prevent the assertion that they should.
Food for thought…
[1] The Supreme Court decisions have done nothing to clarify what is and what is not patentable. At this juncture, not only is the Federal Circuit in rebellion against the Supreme Court; an influential judge from another circuit dismissed an entire high-tech case with prejudice and promptly penned an article entitled “Why There Are Too Many Patents in America”; the International Trade Commission is under siege from an explosion of technology cases and recently sought comment from the public as to whether certain patents should have limited remedies; the Administration (United States Patent and Trademark Office and the Department of Justice) have differing opinions regarding the patentability of genes and genetic tests; thermonuclear patent warfare between high tech companies is overloading our courts; market based solutions are spawning Fortune 500 companies as the new patent troll; and a patent valuation bubble reminiscent of the real estate market before the crash is driven ever forward as companies amass patents as a shield of paper armor not as an instrument of innovation.
[2] One thing is certain, there will not be unanimous agreement on what should be patentable subject matter; however, someone should decide and should decide now. Moreover, that decision should not negatively affect those who have relied upon the law as the Court defined and expanded it over the last 40 years only to now sound the horns of retreat.
[3] I am not here advocating for any particular resolution, I am merely pointing out a fact.
[4] Prior user rights for business method patents in the 1999 American Inventors Protection Act; Human organisms, tax patents and creating a business method patent post-grant opposition procedure in the 2011 America Invents Act. The Congress did not address the latter three as patentable subject matter issues, but in carving them out the Congress is showing that there are additional areas that they have determined should not be entitled to patents where the Courts have determined otherwise.
[5] Of course patents are subject to case-by-case challenges but the Supreme Court seems to be signaling that whole categories of patents, while still technically eligible, would not meet the Courts inventiveness test as a practical matter.
[6] Congress can also provide some finality on the issue of whether patentable subject matter is a separate requirement from 102, 103 and 112.
You really do not have a clue, do you?
Necessary?
Upon whose word? Yours? Or better yet, necessary TO whom?
Sorry, but that flat out contradicts the exact words of the Court in the quote given.
Maybe that’s why you have not explained the quote given at all and only seek to interject your opinion of a discussion. Given the choice between direct words of the Court and your selective, biased, agenda-driven opinion, what do you think a reasonable and objective conclusion will be?
Necessary to the result my friend. Necessary.
And it was necessary.
Fix italics tag.
“The rest of the world agrees with me”
The rest of the world laughs AT you.
You are too clueless and lost in the “greatness of your mind” to notice. You must be so lonely there. No wonder why you are so bitter and caustic.
“Cripes, even Kevin “Stubbornest Man on Earth” Noonan knows the score now.”
Except he still thinks you are full of shtt and does not agree with you. You need (at least) two things:
1) Learn to read and comprehend what you are reading.
2) Learn to recognize when someone is too polite (and too refined) to tell you straight up that you are a mindless, rambling pr1ck.
WE?
No Ned, YOU.
Weren’t you the one that made a big deal about the difference between holding and dicta? Yet, you are the one blowing out of proportion the mention of the constitutional phrase (and laughingly calling it a holding) and you are the one ignoring the direct quote from Pennock which sets the actual authority as the Court itself laid down.
Tell me what the direct quote I provided means Ned. Do.
1. A method of diagnosing cancer in a patient, comprising: (1) determining the presence of a mutation at locus AC11842 in a blood sample taken from said patient, (2) wherein the presence of said mutation indicates a greater likelihood of cancer in said patient.
If, after reading the claims in light of the specification, and taking the claims as a whole, the Court could determine that the concept/LoN is “integrated” with the process, then the claims are an inventive application of the concept/LoN, and are therefore statutory subject matter. See (Prometheus relying on Diehr for “integration”.)
“”The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole. ”
sucktical [oldstep]+[newthought] is not a patent claim
I never said it was, supersuckie. It’s shorthand for the form of certain ineligible claims (this is what I mean by how you can sometimes be very helpful — maybe there was another incredibly ignorant stooge out there who was confused about this point, perhaps because he/she was in drug rehab like yourself or otherwise unconscious for the past two years).
Here’s an example of such a claim:
1. A method of diagnosing cancer in a patient, comprising: (1) determining the presence of a mutation at locus AC11842 in a blood sample taken from said patient, (2) wherein the presence of said mutation indicates a greater likelihood of cancer in said patient.
Assume step (1) is old and claim (2) is construed as a step of thinking about the correlation between the mutation and cancer recited in the claim. The claim is ineligible after Prometheus because the recitation of an old step can not rescue the ineligible subject matter. Why is that the case? Because the claim is effectively a claim to the inelgible subject matter. Why is that the case? Because practitioners of the prior art (who are otherwise non-infringers) become literal infringers merely because they think about the correlation.
Irrefutable. It was irrefutable before Prometheus. It’s irrefutable after. Show me one (just one!) non-anonymous commenter who disagrees with any of the above analysis and I will invite that person here for a well-deserved reaming. It will be a lot of fun, I promise. Fun for me, that is. For you … not so much. LOL.
Cripes, even Kevin “Stubbornest Man on Earth” Noonan knows the score now. The only supersuckers out there now are you, supersuckie, and your supersuckie sucktical suckpuppets.
“Prometheus proved my theory”
I just read Prometheus.
There is no such theory.
[oldstep]+[newthought] is not a patent claim lol
That’s gibberish.
Oh..maybe they included that in the new Office Guidelines….
::Checking::
Nope! Not there!
Everyone is laughing at you.
Don't like direct quotes, do we?
My quote is also a direct quote and it explains that the holding was based on
….the constitutional purpose: Promote the Progress in the useful Arts.
suckie: the constitution itself forbid those things that the Court has added to the 101 jurisprudence.
Like what, suckie?
[sits back and prepares to laugh and/or vomit]
supersuckie: You might check out how the restof the world viewed the case
The rest of the world agrees with me that claims in the form [oldstep]+[newthought] are ineligible for patenting after Prometheus.
Absent a change in the statute, you will never ever see such a claim reach the Supreme Court again. It’s over.
If you can find me one (just one!) non-anonymous commenter anywhere on earth who is on the record saying that a claim in the form [oldstep]+[newthought] is eligible for patenting, I would appreciate knowing who that person is. I will mock that person mercilessly until they wake up from their confused (and most likely drug-induced) slumber.
Otherwise, supersuckie, you can (how did you say it? oh right) STFU.
you lost… I won
Only in your dreams. You might check out how the restof the world viewed the case with the example of the Office, whose Official Guidance mentions your theory…
wait…
wait…
wait…
NOT AT ALL.
STFU already
LOL. As I’ve noted before, supersuckie: you are occasionally extremely useful because you’re extreme suckitude is not terribly unusual in the field of patent prosecution. By addressing your supersuckiness, I can directly address dozens or maybe hundreds of ignorant and/or misinformed readers out there who, like you, truly and deeply s-ck the big one.
Meanwhile, the rest of us (e.g., Breyer’s clerks and the clerks of a few of the more enlighted judges out there) can all have a big laugh at your pitiful expense.
Keep the pitches coming, supersuckie! I’ll keep hitting them out of the park. Maybe at some point I’ll grab the bat with both hands but it’s hard to imagine that every being necessary.
supersuckie: Post an actual claims proving your theory
Prometheus proved my theory, n-tcase: you can’t rescue an ineligible method step (i.e., a method of thinking a new thought) by sticking old (but eligible) cr-p in front of it.
You argued that I was wrong about this for years prior to the Prometheus decision. You argued that Diehr forbid any consideration of what was ineligible or eligible or old or new within a claim. You lost that argument. I won.
9-0.
Now you want to pretend that Prometheus — a case which you were utterly wrong about it in every respect, to the extent you were comprehensible (a rare occurrence but blind squirrel etc) — somehow affirmed your beliefs.
That’s supersuckie, suckie. You’ve now achieved supersuckie status. Congratulations, supersuckie.
Drop “the progress…” and you hit the self description on the head.
It’s not that I can’t read…
I can read fine. It’s what I am reading. It’s pure gobbledygook.
Try again.
“I’m sure you are familiar with” …blah blah blah.
Post an actual claims proving your theory or STFU already!
FAIL.
Literally, you are sticking your fingers in your ears and chanting your little mantra instead of addressing points that people bring up that DESTROY your position.
At least fake a try.
Your answer is a FAIL.
You are asked to explain the direct quote of the Supreme Court in Pennock that they use to explain their authority on the matter.
Is that the best you can do?
Fish, give me the 112, p. 1 rejection for the following claim.
1. E=mc*2.
I disclose a hand held calculator that may be used to perform the calculations.
suckie: MM, is that supposed to be a rebuttal to the Supreme Courts 9-0 decision on “Integration” ?
It’s like the creationist when a new fossil is found that confirms a paleontologist’s prediction of what features a previously unknown ancestral organism might possess.
Somehow the creationists always try to pretend that the fossil proves that God created all life on earth and evolution is a “myth.”
Suckie is exactly like those creationists. Except even more st—pid and more dishonest. I didn’t think that was possible until I met suckie.
"Retard the progess…."
"Retard the progress…."
Really? Pennock and Morse both used "retard the progress of the useful Arts."
Ms. Light, you do know that the PTO considers double-patenting a form of 101 problem?
@ Ned — 112, p.1 is a good tool for weeding out “abstract ideas” — 101 IMHO is not
if you had an actual claim to post,
I’m sure you are familiar with the claims at issue in Prometheus. Do you need me to re-post those? We can swap in any old step and any new thought you like into those claims if it makes you happy, suckie.
But we know that won’t make you happy, suckie. It’ll make you sad. It’ll make you kick up dust and attack strawmen. Again.
Regardless, let me know if that’s how you’d like to proceed, suckie.
LOL.
Pure Gobbledygook.
Only because you can’t read, suckie.
But we knew that already.
“Do you think that by calling people names you win a legal argument?”
But that’s what is stenciled on the inside of his tinfoil helmet, so it must be true.
“Do you really believe that by ignoring the law and the guidelines they will disappear?”
But that’s what Ned Heller does and the Law according to Ned seems to be a pleasant enough fantasy land to dwell in.
MM, is that supposed to be a rebuttal to the Supreme Courts 9-0 decision on “Integration” ?
And is your response to the Official USPTO Guidelines on “Integration Analysis”, simply to ignore the guidelines exist?
Do you really believe that by ignoring the law and the guidelines they will disappear?
Do you think that by calling people names you win a legal argument?
“That’s nice. But you see a claim in the form [oldstep]+[newthought], don’t you, suckie? And that’s why you choose to address a strawman rather than the actual issue.”
Perhaps if you had an actual claim to post, instead of BS spin and conjecture, people would take you serious enough to at least respond.
Until then you will continued to be ignored, and laughed at.
1. Its the law of the land!
Remember when suckie claimed that the “law of the land” forbid you from recognizing that the [oldstep] in Prometheus [oldstep]+[newthought] claims was actually old?
I do. Suckie was wrong about that, of course. Suckie’s wrong about pretty much everything. That’s why we call him …
From Ned’s case of choice Pennock:
“In the case at bar, it is unnecessary to consider whether the facts stated in the charge of the court would, upon general principles, warrant the conclusion drawn by the court, independently of any statutory provisions; because, we are of opinion, that the proper answer depends upon the true exposition OF THE ACT OF CONGRESS, under which the present patent was obtained. (emphasis added)
Ned, explain.
Nice smokescreen Ned.
Way to divert attention from your very own Burdick move of completely getting wrong what the guest professor was saying (on top of getting wrong what ANL has said several times).
I just finished re-reading Pennock and I suggest you re-read it too and see what the basis of authority the Court rests its decision on (hint: you are dead wrong on the case law again).
How do you stand being so wrong so often?
Supreme Carefulness,
Thank you for properly noticing.
You further miss my point by ignoring what I actually said. I say that the Supreme Court itself is the one carefully “tracing it’s authority” rather than my nakedly asserting how that the Court authority comes about. Re read the 101 cases and note the careful wording so purposefully chosen by the Court in case after case.
Ned,
You definitely took my point out of context. Please read again and see that I use 101 in both the beginning and end paragraphs, as well as I reference my prior post on the subject which dealt with 101.
And not that it matters to the subject, but I am not a female.
” I have no idea why you are waiting for that or why you think it would be meaningful for me (or anyone else) to perform “integration analysis” (whatever that means) on those claims.”
I will give you two very meaningful and powerful reasons:
1. Its the law of the land!
See Supreme Court ruling 9-0 on integration! ( Prometheus )
2. Everyone is required to do it!
See the Official USPTO Guidelines instructing the entire examining corps on “Integration Analysis”
Now just who the do you think you are that you don’t have to follow the law and abide by the same rules as everyone else in the patent community?
“policy expressed in the constitution”
last check the constitution was not the creature of the Supreme Court.
You do recognize what Article I indicates, right? you studious and attentive recognizer of which branch of the government was specifically charted with the power you.
By the way, suckie, that’s how you answer a question. And I do it all the time. It’s something you never do. Just one of the important differences between you and me. The other major difference is that I have a working brain and you have a sack of s–t between your ears.
it seems that you want to give the appearance that you know what “effectively” means
I’ve provided the definition in comments here on numerous occasions, suckie. It means “for practical purposes.”
More specifically and directly (because I know you need the hand-holding), in the context of patent litigation (let me know if it makes sense to you to consider the definition in this context) it means that if the claim is deemed eligible and enforceable it could be used to prevent an otherwise non-infringing actor from using ineligible subject matter or performing an act that, by itself ((e.g., thinking about something), constitutes ineligible subject mater.
Pretty simple and straighforward stuff. Show me a claim that “effectively” protects ineligible subject matter according to this definition and I’ll show you an ineligible claim. Better yet, show me such a granted claim that meets this definition and I’ll infringe it publically and charge people to watch me infringing it. And then we can watch the patentee go up in flames together. It’ll be awesome, suckie.
Mr. Nee. Rich did not write the '52 Act. Frederico did.
Rich was on a coordinating committee. He accepted and coordinated comments and suggestions of the entire bar in writing 103, 112, p. 3 (now 6) and 271(b) and (c). Those were the only provisions really changed by Rich from Frederico's draft. Frederico was and is the authority on most of the '52 Act.
suckie “The judicial exception in Prometheus was …more precisely, a mental step of thinking about a newly discovered natural “principle” or a newly discovered correlation.”
Or more precisely, um no
Really, suckie. In your opinion are all methods of administering 6-TG to a patient ineligible for patenting after Prometheus? Because all such methods would implicate the correlation between dosage and metabolite levels that was discussed in the specification and during trial.
In fact, suckie, there was something else in the claims that was extremely important to the outcome of the case. Do you recall what it was, suckie?
LOL. Man, this blog has the d—–st trolls.
Amidst all of the questions you keep asking of others, MM, it seems that you want to give the appearance that you know what “effectively” means.
Yet, you never seem able to commit to explaining what that actually is.
Very curious
(and no doubt, you will reply with questions for me, which only reinforces the curiousty that a man so supposedly steeped in knowledge as yourself, never seems to be able to express that knowledge)
Permeated? What permeated is the policy expressed in the constitution: Promote progress in the useful Arts.
Leo, the point she made was about judicial exceptions generally. Double patenting is one of them. ANL argued that they all are based on statutes. I beg to differ. I really don't think so.
Of course, the delicious part of Ned making the 1952 Act sound so wonderful is the part he leaves out: how Judge Rich was intimately involved in this great process, which leads to Judge Rich, as a member of the court at the circuit level able to know so much more than the Justices of the Supreme Court (with their wax nose twisting) on patent law.
How could the Supreme Court know more than the man who wrote the law himself?
And yet, to hear it from Ned, this great and careful act, this majestic and righteous deed is somehow wed to a monster, the devil incarnate who all on his own sought to destroy patent law.
It just doesn’t add up.
So enquiring minds want to know: what is the real reason why Ned despises Judge Rich? And of course that real reason is because it intereferes with Ned’s nonlegal agendas, his alliance with Stern and (certain Lilly kissups). Ned’s passion is shown to be directly counter to the great and wonderfully crafted law of 1952.
Here is the comment.
Ned, this is most definetely not correct. Even as far back as Pennock, the deference to Congress permeated the decision.
Not sure about this, but roughly isn’t that the same exact argument that failed in fighting against extensions for copyrights in the Sonny Bono Case?
But to the point here, double-patenting is a bit of a red herring, as there are already other laws against it. If in fact Congress did try that, then like ANL indicates THEN the big C question may come into play.
Point in fact though, ANL is precisely correct on how careful the Supremes have been in establishing their authority. Very much contrary to the assertion in another place, patent law is most definitely NOT an animal of the Supreme Court.
ANL pointed this out previously as well.
Gee, Ned, we were talking about eligible subject matter under Section 101, and ANL was specifically talking about the judicial exceptions. Do you really think it’s fair to read a “position” on double patenting into her comment?
A new light,
Double-patenting stemmed from cases decided in the mid 1800’s. The SC cited no authority, but reasoned the second patent, being for the same invention as previous patented, was invalid.
Is it your position that Congress can constitutionally grant more than one patent to the same inventor, for example, by giving him the benefit of his first filing date and letting him file continuation after continuation, granting him a patent on the same invention, again and again and again and again and again without end, and with a patent expiration date extending from the date of grant?
“or, more precisely, a mental step of thinking about a newly discovered natural “principle” or a newly discovered correlation.”
Or more precisely, um no – BS detector flies off the charts….
I see.
The Fed. Cir., through judicial legislation expanding the scope of patentable subject matter, adds certainty?
Judicial activism provides certainty?
Really?
The Fed. Cir. is not only defying the SC, but it is also defying the expressed will of Congress. The expansion of utility patents into plants essentially trashes a lot of the careful crafted provisions of the Plant Patent Act.
This but one example. But Rich long tried to get software eligible. Ditto business methods. The software and banking world was and still is not amused.
The Federal Circuit have long been lead by radicals.
Certainty? What a fricken joke.
Now we have patented plants spreading across the landscape by natural processes making infringers of ordinary folk who are doing what they have long had the right to do. How did we get in this situation?
Radicalism.
staff, Feinstein and Boxer both opposed FTF. Why? Because in their view FTF does not protect startups, it increases costs, and otherwise damages the very people who most need patents: those who can least afford them, the very people whose ingenuity provides America with all its new jobs.
anon, I actually agree about Stevens. He was fundamentally unsound on patent law and will not go down in history as the second coming of Story, to say the least.
suckie Prometheus is about having enough inventive aspect present to effectively differentiate from the judicial exception.
The judicial exception in Prometheus was deemed to be a newly discovered “natural law” or, more precisely, a mental step of thinking about a newly discovered natural “principle” or a newly discovered correlation.
Shockingly, the Supreme Court found that adding an old step with zero “inventive aspect” before the new mental step was not enough” to prevent the claim from turning certain members of the public into infringers, i.e., the claim effectively protected the ineligible subject matter (i.e., thinking about the correlation), at least with respect to certain members of the public who, except for the mental step, would otherwise not be infringing any patent claim.
Of course, the claim did not turn me into an infringer when I thought about the correlation. Nor did it turn you into an infringer, suckie, when you thought about the correlation. So the case wasn’t about removing the ineligible subject matter from the public domain entirely. You understand that, don’t you, suckie? You do know what they meant by “effectively”, don’t you, suckie?
Of course you don’t, because you’re a f——g idjit.
anon, if the specification disclosed a practical application, but even so, the claim amounted to a total preemption of the concept, far beyond enablement, perhaps this is a kind of 112 problem and not a 101 problem.
Take any mathematical algorithm. That algorithm does not become patent eligible simply because I disclose one use for it. But if I claim that algorithm in the field of the disclosed application, I have somewhat limited the use to a practical application, but I have not enabled all ways of implementing the algorithm in the field. Such is a 112 problem, and is not really a 101 problem.
DSI,
I concur. For example, some of the items in Stevens’ Bilski opinion were attempted to be used for supporting the actual opposite of what they were cited for.
I also concur with the level of “my way” philosophy at the Court. Douglas was famous for it. So was Stevens, even after giving a warning about twisting the wax nose of 101. But you have to remember, at that level you really do not answer to anyone.
Just a thought…
Is the converse true? If a specification contains how to make and use, should the claims be read as requiring that which is provided to be necssary and thus not be abstract?
“Congress seemed unaware, at times, that many of the provisions in the new law were highly controversial”
My congressmen knew. I personally informed them.
Fish, 101 is not new — it dates from 1790, 1793.
Regarding abstract, see. Le Roy v. Tatham and O'Reilly v. Morse.
Regarding the latter case, the court noted that when abstract ideas are claimed, a specification of how to make and use them becomes unnecessary. Therefore the requirement of 112, p.1 to file a specification describing how to make and use reinforces the fact that abstract ideas are not eligible.
Although the attorney arguing doesn’t seem to be familiar with the word “effectively”.
What does it mean to you, 6? And given that the claims at issue in Prometheus would never impact our ability (our = yours and mine) to legally think about the correlation recited in the claim, what did the Supreme Court mean when they said that the claim was effectively a claim to the ineligible correlation itself?
Did you ever figure out what ineligible subject matter is included within the scope of Myriad’s composition claims (effectively or otherwise)? Or are you still kicking up dust around that subject and telling people to be “patient”?
LOL.
Mr. Don't see,
Until the AIA, American patent law was a creature of the Supreme Court, not of congress. Get that through your very thick skull, please.
The AIA has such severe constitutional problems that it might not survive at all.
I am told that the idea of utility model protection for software came from IBM.
“IBM (per GC Nick Katzenbach) proposed this to Department of Justice in 1976. Department of Justice at instigation of then chief of Patent Section stupidly shot it down, too flushed with victory in Supreme Court cases.
FYI:
• A Sui Generis Utility Model Law As an Alternative Legal Model for Software, 1 U. BALT. INTELL. PROP. L.J. 108 (1993).
• Solving the Algorithm Conundrum: After 1994 in the Federal Circuit Patent Law Needs a Radical Algorithmectomy, 22 AIPLA Q.J. 167 (1994)
• On Defining the Concept of Infringement of Intellectual Property Rights in Algorithms and Other Abstract Computer-Related Ideas, 23 AIPLA Q.J. 401 (1995)
● link to docs.law.gwu.edu
You are right, Oops. I mixed up Burdick and Sheppard.
While congress has the power to make law, we need to contrast what happened in ’47-’51 and what happened in the last five or six years.
On the one hand, Congress delegated the initial draft to the most skilled government patent lawyer. The edits were made by patent law experts and a consensus was sought on any change.
In the last five years, Congress never asked the government to draft anything, AFAIK. Neither were any drafts floated to the patent bar generally for their approval. Rather, the draft seems to have come from the AIPLA executive level folks. The AIPLA did not ask their members for comment.
There was no consensus that this was a good draft, and all objections were suppressed. Congress seemed unaware, at times, that many of the provisions in the new law were highly controversial. I give you universal prior art for one.
The draft should have been floated for public comment by the PTO, somewhat like they ask for comment on new rules. That at least would have help remove the rough edges from the AIA.
suckie I am still waiting for you MM, to perform Integration Analysis on Ultramercials claims using the new Official Office Guidelines on Integration
That’s nice, suckie. I have no idea why you are waiting for that or why you think it would be meaningful for me (or anyone else) to perform “integration analysis” (whatever that means) on those claims. But go ahead and keep waiting, suckie.
In the meantime, if you ever do stumble across an “integrated” claim in the form [oldstep]+[newthought], please do let us know. Until then, the irrefutable fact remains that all such claims are ineligible under 101. You understand why it’s irrefutable, don’t you, suckie? Reason number one is that you can’t refute it. Let me know if you need another reason. I suspect that reason number one will suffice.
LOL.
It is implicitly there.
“She was arguing against the wisdom of leaving making the attempt because of the existence of powerful lobbies that seem to control the process of passing legislation in Congress.”
Actually Ned, you pulled a Bruce Burdick here.
You have this completely backwards. She was arguing FOR Congress to step in and control the situation and REMOVE it from the courts, especially the Supreme Court.
The Supreme Court has a similar problem of failing to follow the statute. For example, where is “abstract ideas” found in 101?
suckie Squint as I may, I see no [newthought] claim form in Prometheus.
That’s nice. But you see a claim in the form [oldstep]+[newthought], don’t you, suckie? And that’s why you choose to address a strawman rather than the actual issue.
If you really don’t believe that the claims at issue in Prometheus were [oldstep]+[newthought] claims, just say so suckie. Copy my statement verbatim and write “I disagree.” Then I will correct you by citing to the relevant passages from the Supreme Court’s opinion and the various briefs of the party.
Is anyone else besides suckie confused about the construction of the claims at issue in Prometheus and what acts were required for infringement of those claims? Now is the time to admit it. It would seem shocking for confusion to remain at this late date but then again …
… this blog has the d—–est trolls. The are almost as d—- as the regular commenters at a certain other patent blog. Almost.
Squint as I may, I see no [newthought] claim form in Prometheus. The young lady is correct, the case was about having enough inventive aspect present to effectively differentiate from the judicial exception.
Are you done with my ex-husband’s dictionary yet?
Correction:
If you don’t think that philosophy outweighs merit at the Supreme Court level, you are either incredibly naive, a liar, or both.
I think you are confused. I have said nothing about unanimous rulings.
If you think that philosophy outweighs merit at the Supreme Court level, you are either incredibly naive, a liar, or both.
suckie There was no [newthought] claim form.
Nice strawman. There was, of course, a claim in the form [oldstep]+[newthought] in Prometheus. You’d have to be incredibly dishonest or incredibly st—-d not to recognize that.
But this blog does have the d—–est trolls, suckie.
And you’re one of them.
Mr. C, I don't know how "ideological leanings" has anything to do with unanimous Supreme Court opinions. Benson was unanimous. Prometheus was unanimous. Bilski was unanimous that the claims on appeal were ineligible because they were abstract.
Leo, I don't think her argument was so much about whether Congress had the power to deal in section 101 matters. She was arguing against the wisdom of leaving making the attempt because of the existence of powerful lobbies that seem to control the process of passing legislation in Congress. She saw this firsthand and passing the AIA. Obviously she was impressed and appalled at the same time.
Back in the 40s, when Congress decided to codified the patent laws, they tasked Federico of the USPTO to do it. Him personally. His draft was then reviewed by a committee of experts. Harry Ashton, president of the AIPLA recognized that the bar want to make some changes to the law. But he insisted that no change would be proposed unless there was a broad consensus among all patent bar associations that's such a change was good and appropriate. The 1952 patent act therefore was drafted by patent law experts and vetted by patent law experts. That was quite different from what happened with the AIA, where interest groups from the bankers, biotech, pharmaceutical manufacturers, computer systems manufacturers, big international businesses of all sorts, universities, coalesced on one side of an issue and drowned out people with a different interests such as small inventors and startups who provided most of the job growth in the United States and who, with pharmaceuticals, most needed patents to survive. This was not pretty, and what came out of the process was a mess that will take 100 years to figure out and undo.
So even though I do not fully agree with her words, I agree with what she had to say about Congress.
“the Supreme Court is composed of some of the best legal minds in our country, and the staff by law clerks who are the best”
No, sorry, not buying that. If what you say is true, then all the more reason to be disappointed with what can be only be called schlock that comes out from the Supreme Court regarding patent law.
And let’s not turn a blind eye to the orders-of-magnitude greater propensity for deciding not on the merits, but on the ideological and philosophical leanings of the Justices involved.