Guest Post by Dr. Jeffrey Lefstin on Myriad’s Pre-History

Guest Post by Jeffrey Lefstin, Ph.D., Professor of Law at the University of California Hastings College of the Law

After the Supreme Court decided Mayo v. Prometheus, the Court vacated and remanded the Federal Circuit’s initial AMP v. Myriad opinion for reconsideration in light of Mayo.  Despite the Supreme Court’s hint, the Federal Circuit’s opinion on remand begins by dismissing Mayo as irrelevant – at least to those claims drawn to isolated and purified BRCA DNA. Composition of matter claims, according to Judge Lourie, are governed not by Mayo, but primarily by Chakrabarty, which suggests that a composition of matter is patent eligible if it is “markedly different” than a natural product, or if the transformation of the natural product yields “a distinctive name, character, and use.”

There are a number of problems with Judge Lourie’s premise. The subject matter eligibility question in Myriad turns on whether the DNA claims are drawn to “products of nature.” But Chakrabarty is about the patentability of living things, not products of nature.  In fact, Chakrabarty’s discussion of  the “product of nature” doctrine is entirely dictum. Although Chakrabarty’s claims to genetically engineered bacteria were originally rejected as “products of nature,” that rejection was not sustained by the Board of Appeals.  And while the CCPA considered the issue in connection with the related Bergy appeal, in Chakrabarty the Solicitor expressly disowned the “product of nature” rejection in his argument before the Court.

So why did the Chakrabarty court discuss the “product of nature” doctrine at all? The “product of nature” discussion seems to have arisen because Chakrabarty’s brief mentioned Funk Brothers, the Court’s 1948 case denying patentability to a mixture of nitrogen-fixing bacteria.  Chakrabarty suggested that if living things were not patent-eligible, the Court would have said so in Funk. The Solicitor’s reply denied that the claims in Funk were drawn to living things, but neither Chakrabarty nor the government argued the “product of nature” issue in their briefs.

Even if the Court’s discussion were more than dictum, Chakrabarty hardly establishes “markedly different” or “distinctive name, character, and use” as definitive standards.  “Markedly different” is an offhand comment by the Court, and “distinctive name, character, and use” derives from the Court’s 1931 opinion in American Fruit Growers – which looked to Customs law for the meaning of  “manufacture” in the patent statute.  (The acquisition of a distinctive name, character, and use is now known as the “substantial transformation” test, and is used to establish the country of origin for imported products).

But most significantly, while the Federal Circuit’s opinion makes passing reference to Funk Brothers, it overlooks the point that Mayo’s analytical framework – asking whether the patentee’s application of a law of nature goes beyond the conventional and obvious – is nothing more than Funk Brothers redux.  In Mayo, the Court’s requirement that a claim must embody an “inventive concept” beyond the natural law was drawn from Parker v. Flook.  In turn, Flook’s approach was expressly grounded in Funk.  And a reading of Funk makes clear that Mayo’s requirement of “natural law plus more than conventional activity” is simply the analysis employed in Funk:

Discovery of the fact that certain strains of each species of these bacteria can be mixed without harmful effect to the properties of either is a discovery of their qualities of non-inhibition. It is no more than the discovery of some of the handiwork of nature and hence is not patentable. The aggregation of select strains of the several species into one product is an application of that newly-discovered natural principle. But however ingenious the discovery of that natural principle may have been, the application of it is hardly more than an advance in the packaging of the inoculants.

If the Mayo Court truly revived the Funk analysis, the implications for Myriad (and subsequent cases) are substantial. Funk dealt with a composition of matter: bacteria. So if Mayo’s framework draws from Funk, that framework is clearly applicable to a composition of matter such as DNA. And under the reasoning of Funk, it seems not to matter whether the process of arriving at the claimed subject matter is inventive;  the Funk court conceded that the discovery leading to the claimed invention might have been “ingenious.” What matters is whether there is “something else” in the claims, other than conventional or obvious activity routine in the art.

Even more so than in Mayo, of the Myriad composition claims seem to lack “something else” beyond the natural phenomenon: the natural sequence of the BRCA genes. For the Federal Circuit, the structural differences between the natural genes and the isolated products were the key to patent-eligibility. But under Mayo and Funk, the question is whether those transformations of the natural sequence represent something more than conventional or obvious activity.

Taking the identification of the natural sequence as a given – as Mayo and Funk appear to demand – the patent-eligibility of Myriad’s composition claims is in serious doubt. The “something else” in Myriad’s claims is the separation of that natural sequence from the genomic context, or the embodiment of that sequence in a cDNA.  However ingenious the discovery of the BRCA loci may have been, the embodiment of the BRCA sequences in isolated DNA molecules was either conventional in the art, or, in the case of the removal of non-coding information from the mRNA transcripts that gave rise to the cDNAs, performed automatically by the cell.

282 thoughts on “Guest Post by Dr. Jeffrey Lefstin on Myriad’s Pre-History

  1. I’m telling you all you need to know.

    LOL after LOL – the only question is, which one is Jim Carrey and which one is Jeff Daniels?

  2. “How is the “pre-emptive” effect of such a claim different from Myriad’s claims? ”

    I don’t know bro, you haven’t even written an example claim.

    Why do you need an example? I’m telling you all you need to know. The claim is to a useful, isolated novel non-obvious chemical composition. It’s not found “in nature”. It was created from scratch in a lab by a smart dude. After the application is filed, it’s discovered that a larger chemical in the gall bladder of a turkey vulture comprises the claimed chemical.

    How is the “pre-emptive” effect of such a claim different from that of Myriad’s claims? You said my claim was eligible but somehow you are equally confident that Myriad’s claim is not. Isn’t it the case that studying this larger molecule is now “pre-empted” by my claim? After all, there’s likely to be some miniscule amount of my small molecule present when anyone tries to isolate and study the larger molecule. Never mind that my molecule cures cancer and I filed my application before this large molecule was discovered and my claims do not even cover this large molecule.

    All I’m saying is: as a 101 test, “pre-emption” is a pile of unworkable g-r-bage. If Myriad’s composition claims are so broad to have the “pre-emptive” effect you are alleging, they should never have been granted in the first place by the PTO because they must be unpatentable under the other statutes, e.g., 102, 103 and 112. Why peddle a cr-p 101 test when the other statutes suffice perfectly, without any change in the law?

  3. I just discovered that the USSC had made that test.

    As applied to a composition of matter, I’m not aware of any such “test”. You refer to “judicially excepted subject matter” as being a key part of your test. What is the “judicially excepted subject matter” that is “pre-empted” by the claim? Myriad’s claimed compositions are man-made and don’t exist in nature (if the claims actually covered something that previously existed “in nature” or even in a laboratory that existed “in nature”, the claims would be anticipated, of course). Or is there some “product of nature” test that needs to be applied before your pre-emption test? What USSC case sets forth this “product of nature” test?

  4. 1) Thinking about the loci
    1a) Thinking about the loci and the correlation with breast cancer
    1b) Identifying homologues using sequence databases
    1c) Analyzing the evolution of the gene using sequence databases
    2) Identifying other loci linked with the BRCA1 loci
    3) Engineering a synthetic molecule to recognize a sequence at or near the BRCA1 genes
    4) Identify restriction fragment polymorphisms that correlate with the presence/absence of BRCA1
    5) Identify and study the physiology of related mammals with homologous genes
    6) Study the physiology and life history of people in (4)

    etc.

    All of this is clouded to a certain extent by the relationship of Myriad’s claims to the prior art. Myriad can’t stop me from practicing the prior art. And that’s not a 101 issue. Fundamentally, it’s a claim construction issue that hinges mightily on the definition of the term “isolated.” That’s yet another reason why a “pre-emption” test is simply a ridiculous way to analyze a properly claimed composition of matter.

  5. But that quote does not say, “New elements can be considered as ineligible and then are required to be “integrated” into old elements.”

    Which is what you in effect said at Feb 26, 2013 at 04:31 PM.

  6. Ned: “When the new is ineligible, it needs to be integrated into the old

    Look Ned, the claims are inherently integrated. All the elements can be old, or new, or a combination at 101, and still end up being patent eligible subject matter in the concluding analysis.

    And you also need to understand the patent laws were designed to protect all functions, with the “exception” of LoN/Natural Phenomenon and abstract ideas.

    And even those exceptions can be eligible when integrated in a process that does not pre-empt the exception.

    Software, methods for conducting business, or that are beneficial to business, are not one of the “exceptions”.

    If you just give up your agenda and stop trying to conflate and obfuscate you could present a cogent understanding of “Integration” and the law as a whole.

  7. 101, this is a direct quote from Diehr:

    "On the other hand, when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101."

  8. 6, “Preempt all uses of the discovery…”

    A claim to isolated DNA does that? I thought I heard you say that claims to cDNA are valid. Something doesn’t click in your analysis.

    I think the discovery is that a certain gene, having a certain mutation, is associated with an increase risk of breast cancer. I would characterize this discovery as a Law of Nature just as much as the correlations in Prometheus. Wouldn’t you agree?

  9. Ned: “When the new is ineligible, it needs to be integrated into the old so that the claim as a whole is performing a function the patent laws were designed to protect: a new and useful, physical, result.”

    Except Prometheus says no such thing, especially in regards to Diehr or integration.

    Do you have an exact quote from the case?

    Of course you do not.

  10. Oh I’m not signed in to typepad, sorry, if I was it would say such on my profile. But yeah, I’m just a homeless guy sitting on I-95, you should never believe I’m an examiner, whatever that is.

  11. NS, Computers were invented in WWII to calculate artillery trajectories and to help decrypt German messages. Prior to that, they were calculated by hand and mind.

    Anon, pretends that some math cannot be performed by men. That, of course, is not true. Computers simply do it faster and with fewer errors.

  12. “Why?”

    Because I would derive lulz and enjoy reading about it. And because it would be a difficult question for a court to resolve at the district court level without guidance from above.

    “How is the “pre-emptive” effect of such a claim different from Myriad’s claims? ”

    I don’t know bro, you haven’t even written an example claim. I just made a general prediction, I cannot be sure what the court would do in such a situation.

  13. MM: “Now we have a process claim whose only (alleged) point of novelty is an ineligible composition of matter — all the other steps in those claim are old and conventional. That puts us right back in Prometheus territory.”

    No it does not because Prometheus claims were not held patent ineligible subject matter because of a point of novelty.

    You have no citation to back up your point of novelty contention so please stop saying it.

    Prometheus claims were considered as a whole and in the concluding analysis were fond to pre-empt a law of nature exception.

    However had the LoN been integrated into a larger process as whole that did not foreclose the use of the LoN itself, for future innovation, the claims would have been patent eligible subject matter.

    It would not have mattered if the individual steps/element in any combination were new, old, physical, or mental.

    You ALWAYS take the claims as a whole in your concluding analysis.

    NO DISSECTION ALLOWED

    Your impotence in the face of “integration analysis” is what dooms all your PoN , and various mental step/dissection theories from the start.

  14. You still have given no principled rational for your aversion to the product of nature doctrine.

    How would a nutcake sockpuppeteer like you know determine whether anything is “principled” and “rational”?

  15. “On the contrary, according to your analysis, what the claim is “nominally directed to” makes all the difference because if the claim is “nominally directed to” something that doesn’t “pre-empt all uses of the discovery” then it’s eligible. According to your analysis.”

    Yes, it is fair to say that. On the other hand it is also fair to say what I said. It all depends on your way of wanting to look at it. From my way of seeing it, what the claim is nominally directed to is rather irrelevant. If it is not preempting on any judicially except subject matter, then that has little to do with what it is nominally directed to and moreso what the effect of the scope of the claim is. But yes, it is fair to say it either way that makes sense to you, the reader.

    “As stated, your test renders any isolated nucleic acid composition ineligible as a per se matter, regardless of how was it invented and regardless of its utility and non-obviousness at the time of filing, whenever that sequence is found in embedded in a chromosome anywhere in nature. And it would seem a very small reach indeed to apply your test to render many proteins and other molecules ineligible.”

    That may well be so.

    It isn’t really my test though, I just discovered that the USSC had made that test. To be sure, if I were making the test it would be somewhat different.

    “I do understand your test. I’m not so sure that you do, especially as applied to chemical compositions generally, or that you have thought much about it outside the context of Myriad’s composition claims.”

    Perhaps that is true. Although I can assure you I thought about it and its impact well before the ACLU brought suit. I thought about it quite a bit in fact.

  16. You do realize that evaluating each claim element is NOT the same as dissection, right?

    LOL.

    HUMPTY HAS SPOKEN!!!!!!!! BOW DOWN!!!!!!!

  17. “I’ve already explained to you uses of the discovery that are not pre-empted but I’m happy to do so again.”

    If you would be so kind.

  18. “101 IE is far far far superior to you Ned.”

    Thanks anon. I truly believe Ned understands the law he is just intellectually dishonest. You can cite the case law, quote it even and he will just ignore it.

    You can back Ned into a corner with the case law so that he has no choice but to admit defeat, but instead he will call you names.

    However if you agree with him and never bring up facts, logic, or law he will call your brilliant, and genuis even!

  19. 101, I think you must begin to appreciate that Diehr has been clarified in Prometheus. New and old are primary considerations. When the new is ineligible, it needs to be integrated into the old so that the claim as a whole is performing a function the patent laws were designed to protect: a new and useful, physical, result.

  20. “that the subject matter as a whole”

    It’s odd how Ned omits this crucial section of 103 over and over again. I guess this part of the law does not comply with his agenda so he just leaves it out?

  21. “101, with all due respect, the reference to section 103 is to tell you what the “claims as a whole” analysis entails. A first entails determining what is new”

    101 Integration Expert:

    However the the “new” in 101 is not the same as novelty in 102.

    Please see Diehr:

    “It has been urged that novelty is an appropriate consideration under § 101. Presumably, this argument results from the language in § 101 referring to any “new and useful” process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection “subject to the conditions and requirements of this title.” Specific conditions for patentability follow, and § 102 covers in detail the conditions relating to novelty. [Footnote 13]”

    Ned, the Court has been very explicit in not mixing these categories, yet you seem intent on conflating them.

    Again, Diehr says:

    ” The questions of whether a particular invention meets the “novelty” requirements of 35 U.S.C. § 102 or the “nonobviousness” requirements of § 103 do not affect the determination of whether the invention falls into a category of subject matter that is eligible for patent protection under § 101″. Pp. 450 U. S. 185-191.”

    Please read and follow the law Ned.

    Stop calling people names and being a jerk when they cite law that invalidates your theories.

    And above all, just be honest.

  22. A good question for the supremes, and one that might actually be interesting to hear. My prediction based on their past actions is that it would be eligible

    Why? How is the “pre-emptive” effect of such a claim different from Myriad’s claims?

  23. 6: What we are looking at is the effect of the claim. And the effect of the claim is to preempt all uses of the discovery made.

    Except that’s not true. Again, it’s not your field so I understand why you might have difficulty with this. I’ve already explained to you uses of the discovery that are not pre-empted but I’m happy to do so again.

    what the claim is nominally directed to does not impact this analysis at all. What so ever.

    On the contrary, according to your analysis, what the claim is “nominally directed to” makes all the difference because if the claim is “nominally directed to” something that doesn’t “pre-empt all uses of the discovery” then it’s eligible. According to your analysis.

    “Are you suggesting that eligibility under 101 should be determined based on how the inventors arrived at their claimed invention and not on the claimed invention itself?”

    Nope,

    You’ve just contradicted yourself again because you refer in your test to “the discovery.” I asked you specifically: what if there is no “discovery”? As stated, your test renders any isolated nucleic acid composition ineligible as a per se matter, regardless of how was it invented and regardless of its utility and non-obviousness at the time of filing, whenever that sequence is found in embedded in a chromosome anywhere in nature. And it would seem a very small reach indeed to apply your test to render many proteins and other molecules ineligible.

    I do understand your test. I’m not so sure that you do, especially as applied to chemical compositions generally, or that you have thought much about it outside the context of Myriad’s composition claims. One of the reasons that you seem so certain that Myriad’s claims pre-empt so much is that they are very broad and may very well be inherently anticipated. As the concept of inherent anticipation is jus a tad more firmly embedded and eminently workable, that seems a more reasonable approach to the Myriad problem than creating a “pre-emption” test that sets up unnecessary and obvious contradictions with other basic precepts of patent law.

    Of course, we’ll just have to wait and see.

  24. “101 sometimes I think you need to repeat grade school.”

    Really Ned? Another childish insult. Is that the best you can do? Here is a suggestion. How about replying with facts, logic, and citations to case law that supports your various theories and arguments. And if all else fails just be honest. Admit you have no evidence to support your contention for what the existing law is but truly believe the current law should be changed to your view point. You may not win any debates that way. But your honesty will earn you respect, even from those that disagree.

  25. “What if the claimed isolated chemical was solely the product of engineering and testing, but it was later shown (after filing) that the chemical was part of a larger biomolecule in a human being. ”

    A good question for the supremes, and one that might actually be interesting to hear. My prediction based on their past actions is that it would be eligible, but I’m not the people that made these exceptions up, I just apply them in my day to day to the best of my ability.

  26. “”the discovery of the BRCA loci ” <<<<< that is the ineligible subject matter in Myriad. ”

    ^That is what I’m referring to MM.

    “The claims recite a man-made composition of matter, not a “discovery.” ”

    As I have made clear over and over and over, and which the USSC just got done telling you, what the claim is nominally directed to does not impact this analysis at all. What so ever. What we are looking at is the effect of the claim. And the effect of the claim is to preempt all uses of the discovery made. In one way of putting this, the USSC will say “It seems as if you guys discovered the BRAC loci and then said: “”apply it to gene isolating” (pretty much the only thing it is good for iirc) and bam, we claim all of the results of doing so! Huzzah, it’s a composition, and thus tots patent eligible!””.

    But who knows? Perhaps this little secrit will remain here on the PO boards, and perhaps the USSC never reviews it, and gives them the claim. We’ll see shortly.

    “Are you suggesting that eligibility under 101 should be determined based on how the inventors arrived at their claimed invention and not on the claimed invention itself?”

    Nope, I’m saying that it “should be” and “is” determined on the scope of what it is that is actually being preempt by the claim. And here it appears to be all uses of the loci of the BRCA gene(s) which just happens to be the discovery made by Myriad and what they really want to “protect” and what they would have “protected” if not for those dratted excluded subject matter exceptions courts put in place.

    But come on man, we don’t have to sit and argue about this yet again. I simply was able to boil down what I’ve been telling you for awhile now to a simple 6 word description with the help of this gentleman. That is the only thing that changed, we need not have the whole discussion again.

  27. If they were to simply put that in their briefs then the Myriad case seems rather open and closed for the ACLU.

    When you use the term “that”, what exactly are you referring to? The claims recite a man-made composition of matter, not a “discovery.” Are you suggesting that eligibility under 101 should be determined based on how the inventors arrived at their claimed invention and not on the claimed invention itself? Your comment seems to suggest that.

    What if the claimed isolated chemical was solely the product of engineering and testing, but it was later shown (after filing) that the chemical was part of a larger biomolecule in a human being. In other words, similar facts as Myriad except the claimed chemical was “created” rather than “discovered”. Does the eligiblity analysis change?

  28. “such a test could have far-reaching consequences for compositions of matter other than “isolated genes” or “mixtures of bacterial strains.” ”

    Such a test does have far-reaching consequences for compositions of matter other than “isolated genes” etc. In fact, I rejected someone in my art with this “test” just the other day, and he had nothing to do with bio. Fortunately for him, his application is directed to the useful arts, so an amendment with acceptable scope was offered post haste (just yesterday actually) and without considerable difficulty overcoming the rejection with ease.

  29. Anon, "…removed from removed the judiciary from a common law defining of invention…"

    "Invention" is in 101. Unless 101 is removed from the court's interpretation, invention remains in the statute. 103 does not purport to be excluse.

    The only thing I see in the statute that even remotely suggests 101 invention is not to be idependently considered and that 103 is the exclusive measure of invention is Section 282 which literally removes 101 from validity.

    I don't recall your position on this issue.

  30. I would also like to remind everyone again of the interesting issue of the Myriad claims for which cert was not granted by the Supreme Court.

    Specifically, consider the process claims which recited methods of testing recombinant cells which comprise Myriad’s (allegedly) novel nucleic acid compositions. The Federal Circuit’s argument was that because the recombinant cells are eligible subject matter, a process reciting an otherwise eligible application of those cells must also be eligible subject matter.

    But consider what happens if Myriad’s nucleic acid compositions are found ineligible by the Supreme Court. Now we have a process claim whose only (alleged) point of novelty is an ineligible composition of matter — all the other steps in those claim are old and conventional. That puts us right back in Prometheus territory. If such process claims are eligible, then Myriad (or other companies with similar claims) can simply draft claims which recite old conventional steps and toss in their novel but ineligible compositions and achieve exactly what the Supreme Court was trying to prevent: a “practical monopoly” on the ineligible subject matter.

  31. I like Prof. Leftsin’s nice summary of the issues up through and including Chakrabarty.

    The problem with Funk Brothers is that it’s a terribly written and extremely short-sighted case which makes much more sense, analytically, as an obviousness decision than a 101 decision. Even as an obviousness case, however, it’s not entirely clear that the decision was correct on the merits.

    The holding in Funk Brothers appears to be that “packaged compositions of selected strains of naturally-occurring bacteria are ineligible for patenting, regardless of how non-obvious the strain selections are, because packaging is conventional.” It seems to me that the ramifications of that “analytical framework” are severe and, for the most part, have been correctly ignored by judges.

    It’d be nice if the Supreme Court took this opportunity to “clarify” Funk, just like it partially “fixed” another poorly written (and incorrect) decision in Prometheus (Diehr).

    I also have to disagree with the Professor as to the following statement:

    Mayo’s analytical framework – asking whether the patentee’s application of a law of nature goes beyond the conventional and obvious – is nothing more than Funk Brothers redux.

    While Mayo’s analytical framework may bear some resemblance to Funk Brothers, there’s quite a bit more going on in Prometheus (or less, depending on how you look at it). As I’ve noted for some years, the reliance on the “natural law” prohibition in Prometheus is a red herring. Two steps were required for infringement of Prometheus’ broadest claims. The first step was an old, conventional step of determining the level of a metabolite in a patient’s blood. The second step was a step of thinking about the patentee’s newly discovered “correlation” related to that measured level. That “correlation” was referred to by the court as a “phenomenenon of nature” (which it is) as well as a “law of nature” (a stretch, at least as the term is normally understood) but it could just as well have been any other novel abstraction. The result in Prometheus would have been the same: no claim. The reason is that novel ineligible subject matter can not be “rescued” merely by adding old, eligible subject matter.

    And here’s the analytical framework as set forth in Prometheus:

    If a law of nature is not patentable, then neither is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself. Slip Op. 8-9

    And therein lies the key: the “practical assurances that the process is more than a drafting effort designed to monopolize the law of nature [or any other ineligible subject matter]“. The reason Prometheus’ process failed the test is that it turned practitioners of the prior art (like Mayo clinic and other targets of Prometheus’ licensing scheme) into direct infringers when they thought about Prometheus’ patent-ineligible correlation (or, in the Supreme Courts words, when the doctors, “take those laws into account”; “use the laws appropriately [in] decision-making”; “draw an inference”; etc). In other words, as a “practical” matter, the claims “monopolized” the ineligible law of nature, at least from the perspective of otherwise lawful actors (i.e., doctors determining TG metabolite levels). Once you understand this key aspect of Prometheus, the Court’s requirement that the eligible steps in a process claim must be inventive (and not old/conventional) make perfect analytical sense.

    Now, let’s apply this with the composition claims at issue in Myriad. Let’s assume for the sake of argument that “law of nature” includes “naturally-occurring compositions”. Let’s also assume that the term “isolated” in Myriad’s claims is properly construed to encompass a sub-chromosomal fragment of nucleic acid comprising a defined sequence that is substantially free of contaminating cellular debris and molecules. In short, the claimed compositions do not encompass naturally occurring products.

    Where, then, is the “practical” monopolization of ineligible subect matter (“products of nature”) in this claim? What otherwise lawful actors are suddenly turned into infringers because they start thinking about ineligible subject matter, as was the case with Mayo’s doctors? The answer is: such people don’t exist as long as the claimed composition is, in fact, a novel composition.

    And therein lies the rub. In the case of compositions that are structurally defined and novel, the issues that arise in the Prometheus case simply don’t present themselves. If a composition claim actually prevents practitioners of the prior art from doing what they were doing, that is a question of novelty (and non-obviousness, to the extent the claim prevents practitioners from doing what would be obvious to do). Such a composition must be inherently reading on the prior art. And indeed, every brief filed by the ACLU has suggested that this has been happening. It’s a claim construction issue and an issue of novelty and enablement and (completely unlike the claims in Prometheus) 102 and 103 and the other statutes are perfectly suitable of handling it. Indeed, the USPTO has been rejecting claims that read on the prior art and which read on naturally-occurring compositions for a long, long time. They make mistakes, of course, because there are human beings involved (and that’s never going to change). But most such claims are rejected (more accurately, most such claims are never presented).

    My last point about the absurdity of Funk Brothers is simply that, if Courts adopt the approach suggested by the Professor, we open up a nightmarish can of worms where novel, non-obvious compositions of matter become ineligible under 101 merely because (defendants will argue) they differ from some “naturally occcurring composition” only by a modification achieved using a “conventional” process. It doesn’t take much foresight to see that such a test could have far-reaching consequences for compositions of matter other than “isolated genes” or “mixtures of bacterial strains.” That’s why I’m grateful that the Supreme Court seems to be looking at a very narrow question on cert, focusing only on “human genes”.

  32. came out of England

    I have noted your predilection for that English view, which inclues the improper view of process claims (for which – for a long time – England simply did not allow at all.

    Here in the US, you will have to realize that ever since the 1952 Act, which removed the judiciary from a common law defining of invention, the Court – in order to keep its fingers in the patent pie – have turned ONLY to 101 for its implicit readings of the judicial exceptions.

    This quite in fact means that the authority of the exceptions in modern US patent law does not come from England. It also means that judge-made law notions of holding and dicta do not apply (at least, as how you would apply, or misapply, as the case may be).

  33. Max,

    Specific, substantial, and credible (SS&C) utility.

    “The system” is just too lazy to apply any real rigor to US patent law, especially to things like 101 and 103.

  34. anon–

    I worry about you.

    Find a way to relax, maybe take a break, then come back.

    Your posts seem to show a definite psychological trajectory, the direction of which is concerning.

  35. Anon, one of the things you learned when the reading likes of Plato and Aristotle is the use of the false premise. There's a lot of that going on in the case of those who wish to patent software.

  36. Anon, what I really believe is that the "principles in the abstract" or laws of nature constructs came out of England which initially authorize patents and manufactures.

    Also there is another view that laws of nature really can't be patented, just as one cannot claim ownership of wild animals.

  37. 1) tree in the wrong legal forest – how passé.
    2) as mentioned – error recognized and apologized for. Get over it.
    3) neither – it appears, are you. SO WHAT? Do you have “I am here to learn“TM stamped on your soapbox?

    I collect you are younger… not a US patent attorney… no paying clients… working for China” – more ASSumptions…?
    Why do you even bother?

    I have no great hopes of learning from you

    As I already recognized – and makes your retreats – as common as they are (in the instant example of your post at Feb 25 at 8:02 am) ever so delightful.

    Why don’t you QQ some more about conversations you never intend to have?

    HYPOCRITE.

  38. You assert that US patent law is where you are an expert, entitled to tell everybody else, yet

    1) you write “doctrine of equivalence”,

    2) suppose that this specialism absolves you of any professional duty to have an elementary knowledge of the Paris Convention, and

    3) you are never off this blog, morning noon and night.

    I’m already in semi-retirement. I collect you are younger. I conclude that, whatever you are, you are not a US patent attorney, and have no paying clients.

    I suspect you are working for China. I have no great hopes of learning from you anything useful about US patent law.

  39. Except MaxDei, you forget that I quickly realized my mistake with the Paris Convention, apologized for that mistake (LOL when do you see that from anyone in the little circle?), and moved on. You also seem to ignore the fact that US jurisprudence IS my ballpark (while the PC was admittedly removed from that ballpark).

    Apparently, your “willingness to learn” is not so willing.

    Continuing to use an ASSumption shown to be false is the epitome of those unwilling to have a mind eager for understanding.

    Your FAIL in “I’m here to learn“TM is once again magnificently showcased.

    Perhaps this is yet another discussion you have no actual intent on engaging (as I have presented case law to support my views, but meh, you just don’t want to change).

    What a hypocrite.

  40. How many times? anon, you can tell me till you are blue in the face and still I won’t take it from you. Remember when you “told” me about the Paris Convention and revealed how much you knew in that area of the law. Since then, I’m not persuaded by anything you write.

    Anybody else volunteer to explain to me where we reach the limit of the useful arts? As far as I know, SCOTUS has not yet done so. Which of you will pre-empt SCOTUS then?

    Meanwhile I will continue with my assumption that “useful arts” means what those who wrote the patents clause of the Constitution were using those words to mean.

  41. These composition claims appear to be in serious trouble regardless of the 101 decision

    LOL – keep up with that self-delusion Malcolm.

    regardless…?

  42. technology ie the useful arts

    MaxDrei,

    You profess (again) to be here to learn (and that you are learning), and yet you return to the same banal attempts to mischaracterize US jurisprudence.

    How many times must you be told that the Useful Arts is more than technology?

  43. Malcolm,

    You do realize that evaluating each claim element is NOT the same as dissection, right?

    Or is that yet another orthodox term that you do not understand?

  44. Ned,

    Your use of the term “bootstrap” is inappropriate, misleading and without foundation.

    You feed upon your own misinformation and confusion between “as a category” and “categorically.”

    Your view of Supreme Court case law is more than shaky – as at the same time you profess to a strict reading (and demand that of others) and you insert your opinion as to what the Court cases mean – without regard to their established meanings.

    You misapply logic in intellectually dishonest ways, inserting canard after canard when such canards have no place in a truly honest discussion. Your reliance on music as an example as to why an actual new machine (within the useful arts) cannot be patent eligible is simply a fallacy – it’s a strawman since no one ever does hold that position, and the only reason you advance it is to knock it down. You have been asked repeatedly not to invoke that example, yet you refuse to hold an honest conversation.

  45. You hit the nail on the head 101 IE. Ned never stops because he is paid to never stop.

    The anti’s continue to try to ask what is the difference between music and software. And, the answer is very simple. Music is a series of instructions to a machine that is not a Turning machine. Software is a series of instructions to a machine that is a Turing Machine (or close enough.)

    The difference is vast, enormous, and great than a pea brain like Ned will ever know. The software can in theory do what Ned does. The music can play music. The software in theory can generate all music better than any human. The music can play music.

    Ned, respond to that. But, you won’t, because you are a lia_r.

  46. Ned: “What about music? I think if such were ever claimed, we would have our first Useful Arts case.”

    Ned music is not a useful art. Music is a liberal art like dance, painting, poetry, etc.

    Why would you as a patent attorney ever make such a mistake?

    Look, the real problem here is that you want to ban business methods and software patents and you don’t have any legal foundation in which to do so.

    The best chance you had was dissection ( strip away and ignore) elements in the concluding analysis. This would have given you the power to rip any process claims apart related to business or software until the invention was nothing but an abstraction.

    However the Supreme Court clipped your wings way back in Diehr, with claims as a whole, and burned them in oil in Prometheus with integration.

    And it’s quite dishonest, if not outright desperate of you and MM to try and misconstrue and use the post solution activity analysis in Prometheus as some kind of wholesale license to start dissecting every process claim you see.

    The Court warned us all about just such tactics and it’s consequences of eviscerating patent law.

    Fortunately we have plenty of able attorneys on this blog to expose your tactics for all to see.

    Anon does a stellar job and I am glad to help when ever I can.

  47. how you can be at this so long without grasping the simplest concepts.

    It is not a matter of grasping a simple (or simplest) concept.

    It is a matter of rejecting the false concepts you peddle, and understanding what the law actually states.

    And for a non-lawyer, 101 IE is far far far superior to you Ned.

    Granted, you are posting constrained to a third party interest, but you really need to take a step back now and then and realize just how ineffective you are in pushing your agenda. It’s not that I don’t mind you having an opinion, but your tacticsa nd spinning that opinion to have some minimal feel of authenticity is so poor, that you should really rethink your strategy and focus on an intellectually honest approach of simply admitting that you want a change in law.

    Your n_aked shi11ing is quite obvious.

  48. Or even better, his own volunteered admissions that “programmed to” is structural and exactly what the current legal authority is (and means) for the exceptions to the printed matter doctrine.

    And yet, his agenda seeking lies are nonstop.

  49. Like I said…

    Like you spin, you mean?

    Yes, we all know how you [shrug] and stand by while you spin facts and misrepresent what others say and what the law says.

    Your QQ appeal to Prof. Crouch (make him proud), fools no one.

    And neither do your vapid and vacuous rhetorical methods.

    As I said – try some intellectual honesty.

  50. This does not tell me why the claims to the product are in trouble.

    …unless you are actually applying the product of nature subset of the Laws of Nature judicial exception…?

    And you do realize that as the judicial exceptions are merely inherently written in the law of 101 (note: NOT 102 or 103), that THAT inherent writing is not a matter of the holding/dicta distinction you are trying so hard to use, right? You do realize that the Supreme Court is NOT basing its authority on judge-made holding, but are fully (albeit implicitly) using the authority of Congress, so the holding/dicta is at best a red herring, right?

  51. NSII,

    You don’t know the law in this area, do you?

    (And yes, within a reasonable time does impart patent eligibility)

  52. Your post is non-responsive.

    You still have given no principled rational for your aversion to the product of nature doctrine.

  53. The Prof confuses 101 patent eligible with 103, as illustrated by his repeated statements that it would be obvious (or “common”) to isolate.
    So he’s part if the camp wanting 103 to determine 101. Silly.

  54. 101 Integration Expert: You do not dissect claims at 101 into new or therefore old elements, ever!

    MM: Does anyone else except anon agree with this?

    101 Integration Expert: Since you are crying for help then let’s be clear on what “dissection” means according to the Court.

    Dissection means to strip away and ignore elements in the concluding analysis.

    Diehr said you never do this,

    Prometheus said you never do this.

    I have provided the cites many times.

    You have not cites to counter.

    You will not find anyone to ever support you in stating that dissection ( strip away and ignore) elements in the concluding analysis is the law of the land.

    Deal with it.

  55. Ned: “Read, once again, Section 103. The first step is always determining the differences between the claimed subject matter and the prior art.”

    101 Integration Expert: This is incorrect. In a 101 analysis you do not skip 101 and read 103 and then begin by applying that section (103) to 101. That is called conflating the categories. Judge Rich taught you better than that. And most recently so did the Supreme Court of the United States of America when in Mayo v Prometheus the Court expressly rejected just such a proposal from the government. The Court stated:

    “This approach, however, would make the “law of nature” exception to §101 patentability a dead letter. The approach is therefore not consistent with prior law. The relevant cases rest their holdings upon section 101, not later sections.”

    Ned: “In the 101 context, this obviously means determining the new and old, and whether the new is directed to a LoN or something else not itself eligible.”

    101 Integration Expert: This is not correct. You do not divide the new and old elements in 101 and only consider the new, while ignoring the old. Which is in effect what you are saying. See the Supreme Court in Diamond v Diehr expressly stating:

    “In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim, because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter. ” Page 450 U. S. 189 [Footnote 12]

    The above has not been changed, been corrected, fixed or overruled in anyway by Prometheus use of extra solution activity analysis. MM is a blatant l iar for saying so, and you are f o o o l if you believe him.

    Ned: “If it is, then the next question is whether the ineligible subject matter is just sitting there, or whether it is integrated into the subject matter as a whole in some fashion to produce, as in Diehr, a new result.”

    101 Integration Expert: This is not correct. You have it backwards my friend. You do not apply extra solution activity analysis to all process claims as a starting point! This extra solution activity analysis only takes place “if” an applicant claims an exception, in the raw, or with applied steps. Even then you do not ignore “any” steps in the concluding analysis as MM told you to do. Because, as the Court told you in Prometheus…

    “…all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious.”

    101 Integration Expert:Integration is inherent, but if you have a claim to an exception you do further extra solution activity analysis to see if the claim pre-empts. If the claim does not pre-empt the exception it is still integrated! Move on to 102!!

  56. Why can’t encryption be done in the human mind? ROT13 would be mind numbingly simple to do in your head. The art of rearranging text to hide messages is well-known. Encryption is basically a form of secret messaging.

    Public-key encryption would take a lot longer and would require temporary storage like a pen and paper, but it isn’t impossible. I am not aware of a data processing task that cannot be performed by people even if it would take too long to be useful.

  57. NWPA said in reply to MM…”Wow MM, too bad you can’t use that brain of yours to analyze Benson. ”

    Apparently MM can’t use his brain to perform “integration analysis” on any real claims using the USPTO Official Guidance.

    Probable because he can’t use his brain to click on this link.

    link to uspto.gov

    Though he can use his brain to post it for some odd reason, and declare the contents to be evidence for something it is not.

  58. 101, It is interesting, 101, how you can be at this so long without grasping the simplest concepts.

    Read, once again, Section 103. The first step is always determining the differences between the claimed subject matter and the prior art. In the 101 context, this obviously means determining the new and old, and whether the new is directed to a LoN or something else not itself eligible. If it is, then the next question is whether the ineligible subject matter is just sitting there, or whether it is integrated into the subject matter as a whole in some fashion to produce, as in Diehr, a new result.

  59. What troubles me is having to go through the exercise of separating new lamps from old, already when performing the preliminary 101 eligibility enquiry (and before you’ve arrived at the 102 novelty enquiry). I think it would be better to do novelty just the once.

    Of course. Likewise with claim construction. Fear not, MD. The “threshold issue” inanity will soon be put to bed.

  60. You do not dissect claims at 101 into new or therefore old elements, ever!

    Does anyone else except anon agree with this?

    [crickets]

    Just checking.

  61. The plain matter is that you cannot have a patent on something that is effectively free to all.

    Right. “Effectively free to all”, which includes anything resulting from an asteroid that lands in a kid’s yard, but doesn’t include enantiomers isolated from a racemic mixture using an old, conventional method.

    Great “theory”. In re Wilmuth Farm (1938), wasn’t it? How could I have forgotten that legendary case.

  62. As a result of your actions you have conceded, and confirmed every statement I made at Feb 25, 2013 at 12:50 PM is indeed a fact?

    LOL.

    Man, this blog has the d—est trolls.

  63. I don’t insult everybody Malcolm, just those who dare to question mah authoriteh on whatever nonsense I choose to spew that day

    Fixed for accuracy.

    Like I said, anon: be a pr*ck. Turn it up. It’s “fun”.

  64. MM: “Your failure to acknowledge that distinction is a reflection of your (1) ignorance or (2) dishonesty or both. ”

    Sort of like your failure to acknowledge “Integration Analysis” in Prometheus right?

    Tell us MM, is that a reflection of of your (1) ignorance or (2) dishonesty or both.

  65. “anon, I don’t think there is a Product of Nature exception until the Supreme Court holds a claim invalid under such. They never have.”

    So under this logic there is no business method or software method exception since the Supreme Court never held claims invalid under such.

    Right Ned?

  66. Ned: “the only thing new is the ineligible material, there is a proper 101 rejection if it is essentially “tagged on.” This could be in part the basis of a 102 rejection, which is what the Government thought to be the right approach.”

    Ned you are incorrect. You have no authority for such a position. You do not dissect claims at 101 into new or therefore old elements, ever!

    Remember, Claims as a Whole.

    I N T E G R A T I O N

    As I have pointed out many many times before:

    Using the Courts line of 101 cases as the lens thru which to determine when claims are “integrated” it is apparent that a new and useful process claim in general has a clear presumption of “Integration” and the presumption remains valid, and requires no further analysis under 101 unless the claims as a whole recite;

    1. A bare Court created judicial exception, (derived implicitly from the Congressional Statute of 101) or

    2. The first element of the claim is a bare Court created judicial exception (derived implicitly from the Congressional Statute of 101) followed by additional steps or claims that apply the judicial exception. In the case of the latter, analysis for extra-solution activity, (pre or post ) occurs to determine if the claims are integrated or instead pre-empt the judicial exception.

    In short, if it’s not a “bare” LoN/Natural Phenomenon, Abstract idea being claimed you do not even need extra solution analysis. Just take the claims as a whole (Integrated) and proceed on.

    Stop this point of novelty/dissection canard please!

  67. MD, in most cases, this is not a problem. If, during prosecution, the only thing new is the ineligible material, there is a proper 101 rejection if it is essentially "tagged on." This could be in part the basis of a 102 rejection, which is what the Government thought to be the right approach.

    In court, the 101 issue is rather simple. The question of the novelty of the inelibile subject is never raised, it is irrelevant. The old elements: e.g., a GP digital computer, a CD ROM, should be easy to prove. Thus, a 101 case can easily be resolved at a threshold stage.

  68. MM: “As I’ve already explained to you, anon, Dennis’ understanding of Prometheus and specifically its relationship to Diehr is indistinguishable from my own. So if I’m a “blatant l-ar”, then so is Dennis. And Dennis is hardly alone.”

    101 Integration Expert said: It’s pathetic and unethical of you to invoke Professor Dennis Crouch name in a desperate attempt to lend credibility to your quite untenable position. Particularly you misguided opinion of Diehr’s claims as a whole, and no dissection mandate being overturned.

    As you are n doubt aware, right after the Prometheus decision was first published many members of the online patent community pointed out what seemed to be a glaring contradiction in reasoning between Diehr and Prometheus.

    This does not mean anyone endorsed your various mental steps test/dissection theories that you claim Mayo authorized or validated.

    It just so happened that at first glance, and on the surface, it seemed the Court had dissected Prometheus claims, in violation of Diehr, while upholding Diehr as controlling precedent.

    But as you will recall I was the first, and perhaps the only one at the time that stated the correct way to read the case was not for dissection but for “integration”. I then pointed out “Integration” is the antithesis of dissection ( strip away and ignore). Stating, the logical fact that you cannot have an end result that is both “integrated” and dissected at the same time.
    And specifically citing the following passage from Prometheus,

    “ In Diehr, the overall process was patent eligible because of the way the additional steps of the process “integrated “the equation into the process “as a whole”. 450 U. S., at 187.

    The USPTO then adapted “Integration Analysis” in it’s official guidance, giving further credibility to my analysis and view of the Prometheus case.

    ( link to uspto.gov )

    In fact I do believe you were the first to post the official link above to the guidelines highlighting this fact.

    Respected commenters of this blog have recognized “Integration”. And while I do not know Professor Crouch’s current thinking, or whether he has authorized you to speak for him, I do know the good professor requested me to elaborate on my analysis and shortly thereafter made the following post:

    See: Patents Encompassing a Human Organism
by Dennis Crouch

    “Most Section 101 subject matter eligibility problems can be cured by “integrating” the ineligible subject matter with subject matter that is patent eligible. This works because the fact that an invention encompassing some ineligible material does not preclude patentability – as long as the invention also includes sufficient eligible subject matter. Following this theory, the Supreme Court in Diamond v. Diehr, 450 U.S. 175 (1981), agreed that a practical use of a mathematical formula was patentable even though the formula on its own would not have been subject matter eligible.”

    So as you can see MM, it is not just myself and perhaps anon that hold the view of Prometheus standing for “integration” as well as the current law being Diehrs claims as a whole. It’s also the Supreme Court, The USPTO, Professor Dennis Crouch, and I suspect many more members of the patent community whose views have evolved after careful consideration, analysis, and independent thought.

  69. Anon, the correlation between the particular DNA sequence and particular cancer is a Law of Nature. One needs an inventive application of this law under Morse, Funk Bros., Flook and Mayo to be eligible.

  70. anon, one starts with the observation that mathematics is ineligible. New math has to be applied in some way, some man made way, at least, and some would say, some way that is inventive, in order to be eligible. One cannot simply claim the math.

  71. I think that there has to be enough application in the claim so that one practicing the prior art is not an infringer under any theory. The claim cannot stop at a wherein clause. It has to include other steps that apply the informaton in some fashion to prevention of the particular cancer. For example, using the information to recommend against using estrogen in certain treatments might be enough.

  72. Well yes Ned I do see a difference. But whether it is the same difference you see, I’m not sure.

    What troubles me is having to go through the exercise of separating new lamps from old, already when performing the preliminary 101 eligibility enquiry (and before you’ve arrived at the 102 novelty enquiry). I think it would be better to do novelty just the once.

  73. IANAE, I may have misunderstood your post. I thought you were asking about producing an old drug in a new way. What you were asking about was producing a new drug using bacteria.

    At this time, I think that producing new bacteria for old bacteria is not an act of man and for that reason is not infringement. However, in the case of a byproduct of some bacterial process, if it is new, it makes no difference how it is made.

  74. IANAE, the PTO could reject B-claims under 101 as the software itself is ineligible. Simply adding an old article of manufacture is not enough.

    For example, the “software” could be music. I would hope all of us can see that music is not elibible.

    The programmed computer claims should take the same analysis. Start with the inelibible math or business method (abstract). If all that is added is an the use of an old machine, presto, 101 ineligible.

  75. NS, I thought you saw the bootstrapping.

    The proper analysis is to start with the ineligible subject matter and determine whether enough has been added. Simply tagging on an old machine is not enough.

  76. I don’t insult everybody Malcolm, just those who have earned the insults.

    It’s pretty easy to understand. Your projected ignorance only insults yourself. But as you are the king of self-defeat, I see neither you changing this, nor even recognizing why the joke is on you.

  77. MD, in the SC analysis, one starts with the observation that the novel subject matter, music, is not eligible. It is not even in the Useful Arts as a category.

    Then one determines whether the old elements of the claim add something eligible. Certainly, if the old elements recite an invention, then that is enough. But simply reciting an old machine to play music is not enough.

    See the difference?

  78. I do not understand your response Ned.

    As to NSII, the point being that the art of encryption is specifically meant to be beyond what can be done in the human mind, and is thus fully patent eligible.

    It is the legal logic of why this is so that stumps Ned Heller, as it ruins one of his dogmas.

  79. Sorry Ned – I couldn’t tell from your answer why you think the claims are in trouble (Judge Sweet had said a number of things).

    Why (specifically) are the claims in trouble?

    Thanks.

  80. could be patented as part of a process that limited its use to the diagnosis and prevention of cancer.

    Like information, that you could capture in a book….

    No wait…

  81. MM: “it partially “fixed” another poorly written (and incorrect) decision in Prometheus (Diehr).”

    101 Integration Expert: The Supreme Court in Prometheus did not “partially fix”, correct, or change the holding in Diehr in any way.

    MM: LOL. Check the archives and remind yourself that your li’l buddy anon, anon’s sockpuppets and your previous alias (“Actual Inventor”) were all wrong when you repeated over and over that courts weren’t allowed to consider the relationship of claim elements to the prior art during a 101 analysis.

    101 Integration Expert: I never said such. But I did notice:

    You did not respond to a single point I made at Feb 25, 2013 at 12:50 PM.

    You did not cite a single Court case or provide any evidence that a single point I made at Feb 25, 2013 at 12:50 PM was incorrect.

    In fact you have not even denied or contested a single point I made at Feb 25, 2013 at 12:50 PM.

    All you have done is respond with juvenile name calling, insults, lies and attempts to erect straw man arguments that have nothing to with a single point I made at Feb 25, 2013 at 12:50 PM.

    As a result of your actions you have conceded, and confirmed every statement I made at Feb 25, 2013 at 12:50 PM is indeed a fact, including the fact you still run away from reconciling the Courts “integration” with prior Court precedent.
    Nearly everyone has at least attempted to address it. Even your acolyte, Ned Heller, has his own theory ( albeit misconstrued) on what it means. Yet it seems you can’t even type the word. It’s quite odd of someone that wishes to be accepted as a respected commenter on the blog. So, tell us MM, why are you so afraid of “integration” ?

  82. Ned,

    The exceptions to the printed matter doctrine – why do you not know these?

    Oh wait – this is a third-party influence item.

    That’s why we have to put up with this constant retread c_rrp over and over and over and over again…

  83. Neither. The issue is one of the useful arts

    Corrected.

    Why do we have to put up with the baseless canards time and again?

  84. What do you have against the products of nature doctrine?

    I can see no principled rational in your rantings. The plain matter is that you cannot have a patent on something that is effectively free to all. This is not a hard concept, and yet you seem bound and determined not to understand it.

  85. IANAE, given the blindness of the Federal Circuit to Mayo as exhibited by two recent GVRs, do you really expect the Federal Circuit to “get it” in the case of Beauregard claims. Until the membership of that court is composed of members who were not there in the Rich era, I have little hope.

    I think we really need to reconsider the concept of the Federal Circuit. When the powers that be wanted to concentrate all patent appeals in one circuit court, they should have chosen the DC circuit. The CCPA was not really a bona fide circuit court.

  86. Ned asks:

    “…if the claim recites the old player piano with new music, is the problem one of eligibility or novelty?”

    and I reply:

    Neither. The issue is under 103 and 112.

    The piano is a man-made machine and such machines are eligible.

    The claimed machine is new, so it is novel.

    But even if you can satisfy the provisions of 35 USC 112, the claimed machine is obvious because it is not inventive in the sense contemplated by any man-made utility patent statute that exists under the sun.

    Inventions that are candidates for protection by a utility patent are solutions to objective technical problems (as opposed to problems in literature, entertainment, financial transactions or other arts not belonging to technology ie the useful arts). Construe obviousness consistent with that notion. Ingenuity in other fields, like scriptwriting or musical composition, simply doesn’t count. Problem solved.

  87. seems like the government, the AMA, Dr. Noonan and now Dr. Lefstin have no problem.

    No problem with “what”?

    You still haven’t answered. Please explain to us how a claim to a novel non-obvious manufacture can “effectively” be a claim to something in the “warehouse of nature.” Don’t forget to define your terms.

    Or just keep inuslting everybody. Be a pr*ck. Make Dennis proud.

    [shrugs]

  88. It was an old article.

    Obviously you can’t patent an old article if all you have is a new way of making it. But you’re (properly) relying on a 102 case for the point.

    That’s why my hypothetical specifies a new article.

  89. IANAE, the SC has already ruled on your example, way back in the 1800s.

    "There is another view of the case. According to the description in No. 95,465, and in No. 4,321, and the evidence, the article produced by the process described was the alizarine of madder, having the chemical formula C14H8O4. It was an old article. While a new process for producing it was patentable, the product itself could not be patented, even though it was a product made artificially for the first time, in contradistinction to being eliminated from the madder root. Calling it artificial alizarine did not make it a new composition of matter, and patentable as such, by reason of its having been prepared artificially for the first time from anthracine, if it was set forth as alizarine, a well known substance. The Wood Paper Patent, 23 How. 566, 593. "

    Cochrane v. Badische Anilin & Soda Fabrik, 111 US 293 – Supreme Court 1884 at 311.

  90. that because you can’t write in English effectively?

    LOL – seems like the government, the AMA, Dr. Noonan and now Dr. Lefstin have no problem.

    In fact, the only people that ever seem to have a problem are the people in the little circle – the same people who habitually choose to project their ignorance as a rheotrical tool.

    You really should be aware that that tool simply is not effective.

    Try some intellectual honesty in its place.

  91. Could this be any simpler?

    Could you?

    My hypothetical was pretty clearly about a new drug, that nature couldn’t make until you reprogrammed nature. But now, nature can make a warehouse full of it.

    Wanna try again?

  92. I’ve always wondered why the printed matter doctrine doesn’t apply to software

    Beauregard claims aren’t before the Supreme Court yet.

    That’s why.

    A storage medium with information stored on/in it is always subject to the printed matter doctrine. Always has been. Doesn’t matter if it’s a piece of paper with writing on it, a piece of paper with holes punched in it, or a “computer-readable medium” with “data stored thereon”.

    It helps to remember that pieces of paper with writing on them or holes punched in them are also computer-readable media with data stored thereon, and have been since centuries before magnetic storage media were invented.

    It’s just that the courts haven’t stated the obvious yet, because the only time they had the chance, the PTO decided to give the applicant a freebie, and it became a policy decision.

    If computer-readable media were exempt from the printed matter doctrine, there would be no printed matter doctrine. Computers already exist that can read ordinary printed text and sheet music off a page. You could make them do anything with it, e.g. display the contents on a screen or store it somewhere else, and then suddenly every book and song in the world is patent-eligible “computer-readable instructions”.

  93. must be applied to produce something new

    Canard Warning: “some… thing… new”

    a patent may be awarded for producing something old, but in a novel and non-obvious way.

  94. If the “synthetic” is different in kind – then you get a patent on the new thing.

    If the “synthetic” is not different in kind – if it is effectively the same thing as in the warehouse of nature – then you can get a patent on the new process, but you cannot get a patent on the product of nature.

    Could this be any simpler?

  95. Going further, if I stick that CD-ROM into a computer, I have transformed that computer into a new machine. If I swap disks, I have transformed the computer again.

  96. I’ve always wondered why the printed matter doctrine doesn’t apply to software (i.e., 102). Let’s assume that I’m holding two CD-ROMS, but only one of them infringes. The only difference between them is what is written on them. Because the minor physical changes on a CD-ROM are no different than the minor physical changes on a sheet of paper with writing, that is no reason to draw a distinction on the basis of “physical” differences. The software has no relationship to the substrate because the software is the same regardless of whether it is on a CD-ROM or any other computer-readable media.

    Similarly:

    An article of manufacture is eligible.
    A CD-ROM is an article of manufacture.
    A CD-ROM containing software is an article of manufacture
    A CD-ROM with software is eligible.

    Of course, Beauregard claims aren’t before the Supreme Court yet.

  97. “theories” that are actually very orthodox in patent law

    At one time, it was “orthodox” that you could protect a product whose structure was completely unknown to you by drafting a product-by-process claim, even one that used comprising language! That doesn’t mean that the “theory” behind that conclusion made any practical or legal sense to anyone willing to spend a few moments thinking about it.

  98. Perhaps they will remand after finding the nucleic acid compositions ineligible for the Feds to think it over again.

    Maybe. And maybe after years of going up and down they will realize that the real problem with Myriad’s composition claims is a lack of substantial utility (the only credible use of Myriad’s composition was to detect itself, just as was the case with the cDNAs in In re Fisher) and has nothing to do with “products of nature”.

  99. LOL – holy straw now.

    What’s so funny, anon? Flashes of light and heavenly voices are not congruent with the production of compositions found in the “warehouse of nature”? Okay, if you say so. I mean, it’s your secret theory. Asteroids okay. Light flashes and heavenly voices are not okay. Good to know. Baby steps.

    What about lightning and thunder? What if there is some lightning and thunder and an iPhone suddenly appears in my living room. If I pick it up, am I guilty of infringement? Or do I have to take it to a kid’s yard first?

  100. MM, you know the Feds, or at least some of them, really like to bootstrap. Remember this from Rich:

    A machine is eligible.
    A computer is a machine.
    A programmed computer is a machine.
    A programmed computer is eligible.
    A process describing the programmed steps are eligible because a computer is a machine and a machine is eligible.

    Then, the PTO adds to this: since a programmed computer is eligible because a machine is eligible, a program is eligible — if claimed as an article of manufacture.

    Bootstrap upon bootstrap upon bootstrap. The principle at play makes the assumption that if a claim nominally recites a machine, or a process involving a machine, it necessarily passes 101.

    That bootstrapping at one time seem to gain footing in the Supreme Court in the Diehr dicta. But Mayo has decisively shattered that illusion because the claim in Mayo nominally was to an eligible process of otherwise eligible test. But the problem of course was, all the eligible stuff was old and the new was tagged on.

    I still like the player piano analogy. It certainly is a machine. But if the claim recites the old player piano with new music, is the problem one of eligibility or novelty?

    It is enough to say that music is not eligible and its being tagged on to an old machine does nothing to transform it.

    Ditto software to an old computer. The computer, modified by software, to be eligible must do something new, and that something new must be eligible.

  101. Your analysis, if it has a flaw, assumes the claimed isolated DNA is new. It is not new in the sense that isolated DNAs are not new as a category.

    In that sense, cars, airplanes, pencils, lamps, jet fuels, stents, shoe soles, and catheters (and so on, ad infinitum) are not “new as a category.” But the “category of nucleic acid” is not what is recited in Myriad’s claims.

    Malcolm, concede this much:
    1) Isolating DNA was at the time old.
    2) The ideas of systematically sequencing the human genome was old.

    Absolutely. Undeniable.

    3) The particlar gene, including its variants, here was inherently known, including its isolated form.

    I’ll grant you that there is evidence suggesting that Myriad’s claims, if interpreted as broadly as possible, inherently read on intermediates generated by sequencing methods in the prior art. If true, Myriad’s claims are inherently anticipated or, if you want to stretch the principle, “inherently obvious”.

    But I do not concede that the claimed composition was “inherently known” because I don’t know what the quoted phrase means. The structure of a composition is either known or it isn’t known.

    I would think the isolated DNA here could be patented as part of a process that limited its use to the diagnosis and prevention of cancer.

    Right. That seems reasonable. Two critical points should be recognized, however: (1) generally speaking, diagnostic processes that are limited to the use of a specified isolated DNA probes are widely considered worthless by people “in the field” because its expected that probe-based technology will soon be rendered obsolete by improvements in sequencing technology; and (2) if anything can be “inherently known”, it’s the fact that as more and more information is obtained and processable at a faster rate, all or nearly all of our genetic information can and will be correlated with something good or bad. With respect to (2), this suggests that’s even the “limited” claims you propose go too far.

    As I’ve said before, I’m perfectly happy (from a pure policy perspective) to prevent any diagnostic information in any form from being tied up in patents, including through process claims along the lines that you described. New, cheaper and faster analytic methods of sequencing nucleic acids — that is what we should be promoting. Patent claims like those granted to Myriad do nothing to promote progress in the latter area which is why I am happy to see them go.

  102. anon, I have a bet with Malcolm that they end up being denied. I see the argument of Judge Sweet as being persuasive.

    The good professor here now shows us why the Federal Circuit is a court without the quality one would expect of the average circuit court. Their legal prowess is less than could be desired, otherwise they would have gotten the message that Mayo had something to do with this case in the view of the Supreme Court.

    Also, the Supreme Court knows the difference between its holdings and its dicta. There are some here that deny this.

  103. The sexually produced offspring of man’s creation are, though, products of nature.

    Whatever you say, Ned.

    How do you feel about synthetic insulin? I know, insulin already exists, but suppose you invent a brand new drug and you synthesize it by making bacteria that synthesize it, do you thereby invalidate your own patent to the drug?

    Because all the cool kids are making stuff that way, these days.

  104. Perhaps they will remand after finding the nucleic acid compositions ineligible for the Feds to think it over again. Although you are correct MM that is rather interesting.

  105. MD, sequencing was known and idea of sequencing the human genome was known. The genes including their isolated form were inherently within the class of the human genome.

    What was new was the association between certain gene mutations and certain cancer. That was new. The claims, IMHO, if limited to this applicaton, were eligible and novel: Novel because the association was a discovery. Eligible because a claim to a composition of matter is within 101.

    The problem with the composition claims were they were not limited to the discovery, but were obvious over the prior art.

  106. James, I take that to mean essentially that the principle must be applied to produce something new. Application.

    In Funk, I am no sure that packaging was an application beyond the statement of the principle that certain strains were mutually compatible. Perhaps if the inventors had actually required the strains to be applied to the particular plants?

  107. Can we move

    *click*

    Still not willing to tell us what criteria are used to determine whether something is in the “warehouse of nature”? It’s okay, anon. I won’t ask you again until you bring it up again. And then I’ll ask you again and remind everyone that you refuse to answer the question or you simply do not know what you are talking about.

    The word “effectively” is important in the analysis

    Really? That’s interesting. Please tell us how and why it is important, anon, and when you do so, please explain to us how a claim to a novel non-obvious manufacture can “effectively” be a claim to something in the “warehouse of nature.” Don’t forget to define your terms.

    You keep expecting everyone to read your strange little mind. Is that because you can’t write in English effectively? That would explain your reliance on insults and inuendo and your reluctance to provide clarification of vague terms in your pet “theories.”

  108. MM: “And therein lies the rub. In the case of compositions that are structurally defined and novel, the issues that arise in the Prometheus case simply don’t present themselves. If a composition claim actually prevents practitioners of the prior art from doing what they were doing, that is a question of novelty (and non-obviousness, to the extent the claim prevents practitioners from doing what would be obvious to do). Such a composition must be inherently reading on the prior art. “

    Malcolm, concede this much:

    1) Isolating DNA was at the time old.
    2) The ideas of systematically sequencing the human genome was old.
    3) The particular gene, including its variants, here was inherently known, including its isolated form.

    The discovery here was the discovery that a particular gene with a particular mutation was associated with certain cancers. That discovery should be protected without impacting what is inherently known.

    Your analysis, if it has a flaw, assumes the claimed isolated DNA is new. It is not new in the sense that isolated DNAs are not new as a category.

    I would think the isolated DNA here could be patented as part of a process that limited its use to the diagnosis and prevention of cancer.

  109. anon: blatant 1_ying on this. No control on the boards,.

    As I’ve already explained to you, anon, Dennis’ understanding of Prometheus and specifically its relationship to Diehr is indistinguishable from my own. So if I’m a “blatant l-ar”, then so is Dennis. And Dennis is hardly alone.

    Keep flailing, anon.

  110. I would also like to remind everyone again of the interesting issue of the Myriad claims for which cert was not granted by the Supreme Court.

    Specifically, consider the process claims which recited methods of testing recombinant cells which comprise Myriad’s (allegedly) novel nucleic acid compositions. The Federal Circuit’s argument was that because the recombinant cells are eligible subject matter, a process reciting an otherwise eligible application of those cells must also be eligible subject matter.

    But consider what happens if Myriad’s nucleic acid compositions are found ineligible by the Supreme Court. Now we have a process claim whose only (alleged) point of novelty is an ineligible composition of matter — all the other steps in those claim are old and conventional. That puts us right back in Prometheus territory. If such process claims are eligible, then Myriad (or other companies with similar claims) can simply draft claims which recite old conventional steps and toss in their novel but ineligible compositions and achieve exactly what the Supreme Court was trying to prevent: a “practical monopoly” on the ineligible subject matter.

  111. MM: “it partially “fixed” another poorly written (and incorrect) decision in Prometheus (Diehr).”

    The Supreme Court in Prometheus did not “partially fix”, correct, or change the holding in Diehr in any way.

    LOL. Check the archives and remind yourself that your li’l buddy anon, anon’s sockpuppets and your previous alias (“Actual Inventor”) were all wrong when you repeated over and over that courts weren’t allowed to consider the relationship of claim elements to the prior art during a 101 analysis. Everyone else remembers that. Where do you think the term “Diehrbots” came from? It came from your endless recitation of dicta from Diehr and your complaining that it didn’t matter that the only eligible steps in Prometheus’ claim were old and conventional. But of course it mattered. It made all the difference.

    Diehrbots are like zombies, I guess. Nine bullets isn’t enough. Go ahead and continue to make a f00l out of yourself, 101E.

  112. Encryption is math in the same way that a discrete cosine transform is also math. They both change data from one form to another.

    f(x,y) = x + y; f(5,3) = 8

  113. 102 and 103 and the other statutes are perfectly suitable of handling it.”

    Not per Prometheus, (remember that 9-0 Baby, jig?)

    I clearly outlined the important distinction between novel [oldstep]+[newthought] process claims in Prometheus and novel composition claims in my comment, above. I’ve made the same point previously, perhaps a dozen times now. Maybe two dozen times.

    Your failure to acknowledge that distinction is a reflection of your (1) ignorance or (2) dishonesty or both. There aren’t any alternative at this point, anon.

    Your prior over-eagerness is now biting you in the @_$$.

    How so? A bunch of Myriad’s claims were properly tanked under 101, as predicted and appreciated. These composition claims appear to be in serious trouble regardless of the 101 decision. The question for cert is narrow. The eligiblity arguments raised by the ACLU are not the ones I would have proposed, nor do I think they are legally very compelling. They do seem “over-eager”, but they aren’t my arguments. If I get “bit in the ass”, I suspect it will only be a temporary bite with a relatively quick clean-up (i.e., much faster than the State Street clean-up).

  114. The closest “naturally occurring” composition was useless to people

    Can we move the goal posts back now?

    It’s nice of you to set up a strawman of “naturally occurring” composition, but that’s not quite the point of this case, now is it Malcolm?

    One does not need a sparkling fresh and perfectly clean diamond in nature to not to be able to claim a diamond (or to avoid your 102/103 time trap), make up any name for a substance instead of the prior known diamond.

    A few things you should recognize:
    The judicial exceptions are implicit in 101 and not 102/103 and have no “prior-art” time factor.
    The word “effectively” is important in the analysis. Have you (selectively) forgotten that (un)orthodox word yet again? Shall our pal Leopold once more post a definition to help you?

  115. I am glad that what you think is not the yardstick for what the law is.

    You do realize tha the Supreme Court does not write every single law in the world, and that the product of nature exception is just as real as the law of nature exception, right?

    Wait – you are the one that is mutinous against Chakrabarty, right? Do you also recall that it was in a discussion between you and I that I brought up Funk Brothers?

    Oh wait, that was a conversation for which you did not like where it was heading and you derailed it for third party posting concerns.

    That explains your amnesia here.

  116. Ned states: “I have always agreed that DNA claims were in trouble.

    Hmmm, I cannot recall your reasoning for this view Ned.

    Why to you are such claims in trouble?

  117. n fact, the Supreme Court was quit explicit in stating Diehr was the case most on point for what is patent eligible subject matter, and going as far as saying it was not departing from prior Court precedent.

    Yes, case sites to this have been provided, but that does not stop Malcolm from blatant 1_ying on this.

    No control on the boards,…

    C’est la vie.

  118. who decides what’s in “the warehouse of nature” and what criteria are used to make that decision?

    Who? – the judges.

    Criteria? – LOL – what was that criteria in Bilski and Prometheus?

    LOL – you are funny – I just don’t think you intend to be.

  119. as previously provided to you, by me

    Actually, you never did answer the simple question Malcolm – in fact, you tried to co-opt the question into one of your viewpoints.

    This stuff is archived, in case you have forgotten.

  120. But if he starts selling it

    LOL – yeah, that’ll work – it will work to invalidate the patent (just reference Chakarabarty).

    But hey, I thought you were the infringers’ right champion, IANAE?

  121. MM: “it partially “fixed” another poorly written (and incorrect) decision in Prometheus (Diehr).”

    The Supreme Court in Prometheus did not “partially fix”, correct, or change the holding in Diehr in any way.

    In fact, the Supreme Court was quit explicit in stating Diehr was the case most on point for what is patent eligible subject matter, and going as far as saying it was not departing from prior Court precedent.

    And in contrasting the claims in Diehr with Prometheus the Court pointed out the reason Diehrs claims were patent eligible, despite using a LoN in the form of the Arrhenius math equation, is that the equation was “integrated” in the claimed process as “a whole”. This ( integration) transformed the process into an inventive application of the LoN, that was patent eligible subject matter.

    Most important because the LoN was “integrated” in the process as a whole, the claimed process did not pre-empt the use of the LoN from others for future innovation, which was the primary concern of the Prometheus Court and the motivation behind their legal reasoning.

    There was no motivation, nor any need to correct Diehr in any way. Diehr still stands as controlling case law and the only Court sanctioned example of how to determine what “is” patent eligible subject matter.

    Indeed Prometheus’ reliance on “integration” buttressed Diehrs claims as a whole doctrine and no dissection ( ignoring elements) mandate.

    After all, as it is well known, integration is the antithesis of dissection, ( strip away and ignore).

    And I might I add MM, since you have run away from this topic ( integration) for almost a year now, until you are able to reconcile “integration” with Supreme Court precedent, and recognize its use as the Supreme Court has explicitly done, as well as the PTO, any manifestos you write regarding 101 are effectively im po tent.

  122. answer the simple question of how you prove infringement if you do have a patent on a product of nature? Is the kid in the meteor example guilty of infringemnet by merely picking up something off the ground?

    See IANAE above. And yes, anon, an answer to this question was previously provided to you, by me. So you can stop lie-ing about who “never answers questions.” (actually I doubt that’s possible in your case, but maybe you can resume trying at least?).

    At the risk of assisting in your attempt to change the subject, I’ll note that the question is a silly sideshow. Why a meteor? Why not just ask about what happens if there is a sudden flash of light, a heavenly chorus, and an iPhone appears in my living room? If I merely pick it up, do I infringe?

    The question you should be asking is the question raised by your hand-wavey “warehouse of nature” “theory.” If I spend ten years and a billion dollars synthesizing a new drug that cures leukemia, is my patent turned into g-b-age when the structure of the drug is observed to be part of a larger chemical (they’re just covalent bonds, easily broken by conventional methods!) found in sub-picogram quantities after a 10 ton asteroid is completely crushed, dissolved and subjected to high pressure liquid chromatography and nuclear magnetic resonance imaging? If not, why not? It’s the same structure after you ignore all the differences, so it must not be “different in kind.” Right?

  123. 101, I think that math is an example of a principal in the abstract which are analyzed pursuant to O'Reilly v. Morse under the law of nature analysis.

    Sent from iPhone

  124. Is the kid in the meteor example guilty of infringemnet by merely picking up something off the ground?

    Of course not. Picking up something off the ground is not an act of infringement.

    But if he starts selling it, or making more, then the infringement case is no more difficult to prove than any other. If he’s selling it, and you can show it infringes your patent, he’s an infringer.

    The real question is who you sue for the importation. People have been looking to prove that case for millennia. So far, nothing.

  125. Just like the Justices,..

    Uh … no. The Justices aren’t on the blog slinging insults at people and speaking with great authority on “the warehouse of nature.”

    I’m asking an obvious question that follows directly from a comment you made: who decides what’s in “the warehouse of nature” and what criteria are used to make that decision?

    Thanks.

  126. No, I said they couldn’t get a positive holding out of it.

    You are still wrong on that.

    I would explain, but you have shown no signs of being capable of understanding and every sign that you are only going to try to misrepresent what I say.

    Perhaps you could start by listing out what you think the holding of Bilski was (and you do realize that cases can have more than one holding, right?)

  127. different in kind

    Ah yes, another completely hand-wavey term that, if anything, would appear to work in Myriad’s favor if it were in fact “the actual law”. The closest “naturally occurring” composition was useless to people. In contrast, Myriad’s compositions include, among other useful tools, tools for detecting mutations in humans.

    That certainly seems “different in kind” to me.

    The rest of your dust-kicking doesn’t really have a point worth responding to.

    And yet you toss out an insult anyway. Dennis must be so proud of you.

  128. Just like the Justices,… eh Malcolm?

    By the way, have you yet decided to answer the simple question of how you prove infringement if you do have a patent on a product of nature? Is the kid in the meteor example guilty of infringemnet by merely picking up something off the ground?

    Funny, you never seem to give answers.

    Also, funny is that you claim to want more information on these “theories” that are actually very orthodox in patent law. And yet, you claimed I was the one being unorthodox. So here, (after the US government and the AMA, and Dr. Noonan), we have yet another doctor sounding out in arguments that accord with my posts – are we all speaking English as a second language? Or is your pitiful rhetorical tool of projecting your ignorance cooming home to roost?

  129. the warehouse of nature

    Who decides what’s in “the warehouse of nature”, anon, and what criteria are used to make that decision.

    You seem to speak with great assurance and authority on this subject until you are asked an obvious question about your “theory.”

  130. 102 and 103 and the other statutes are perfectly suitable of handling it.

    Not per Prometheus, (remember that 9-0 Baby, jig?). Or have you already forgotten my correcting you on the dead letters comment – you know, that still is archived, right?

    Your prior over-eagerness is now biting you in the @_$$.

  131. the patent bar cannot get ANY type of win out of a case in which no patent issues.

    No, I said they couldn’t get a positive holding out of it.

    If you want a real discussion on law, try explaining why I’m wrong. Bearing in mind that unlike “Xerox” or “gene” or “isolated”, you don’t get a say in the definition of “holding”.

  132. wtmqqdnr – got to the point of “as an obviousness decision” and lost interest, as the judicial exceptions are grounded in 101 (remember that?) and they are not time dependent (remember the quote in Chakrabarty?)

    If you are not going to bother with “actual law,” and you are going to instantly sink back to your “WHATEV” mode, then what type of “conversation,” do you really want to have?

  133. Man may spend years and millions to create something, but if it shows up tomorrow in some kid’s backyard because an asteriod landed there, and what you can simply pick up off the ground is effectviely the same thing you spent millions of dollars on and years of arduous effort, patent law is quite simple: too bad, no patent for you.

    On the other hand, if you isolate an enantiomer from a racemic mixture, you can get a patent on the isolated enantiomer BECAUSE you spent a long time doing it, even if you used an old conventional process to perform the isolation.

    Oh, but that situation is totally different because that racemic mixture wasn’t produced by an asteroid landing on a kid’s lawn. Do I understand your “asteroid theory” of composition eligibility correctly, anon?

  134. “Quite simply, you are not allowed to have a patent on a thing that can be found in the warehouse of nature. No matter how hard, how long or how expensive it was for you to get that thing.”

    Thanks anon.

  135. So did Bilski and Prometheus.

    And your point is…?

    Oh, that’s right, you think the patent bar cannot get ANY type of win out of a case in which no patent issues.

    Come back when you want a real discussion on law, and not a Calvinball spike to the face.

  136. If the math equation represents a model of the physical universe, then it is a law of nature. The universal gas law is an example. Generally, this should apply to any math equation that has units. Any math equation that doesn’t contain units is an abstract concept. For example, E = m * c^2 is just an abstract concept, but-for the fact that “c” represents a speed and “m” represents mass.

    However, some would consider programming a computer to perform a math equation is not abstract or a law of nature, but that is a separate issue.

  137. whenever it can be shown that a similar “chemical” is found in nature?

    If it is not different in kind, then no patent for you.

    That is, as we both say, “actual law.”.

    The rest of your dust-kicking doesn’t really have a point worth responding to.

  138. Just because man can create something, does not mean that the product of nature exception cannot come into play.

    Man may spend years and millions to create something, but if it shows up tomorrow in some kid’s backyard because an asteriod landed there, and what you can simply pick up off the ground is effectviely the same thing you spent millions of dollars on and years of arduous effort, patent law is quite simple: too bad, no patent for you.

    Now if you have a novel method of obtaining or synthesizing that product of nature, well, you may be able to get a patent on the method.

    Quite simply, you are not allowed to have a patent on a thing that can be found in the warehouse of nature. No matter how hard, how long or how expensive it was for you to get that thing.

  139. I have to laugh at your “fact-dependent… expected to vary dramatically” very wishful thinking.

    It’s not wishful thinking. It is, as you would say, the “actual law”. Maybe the Supreme Court will reverse the long-standing rule that patentees are entitled to be their own lexicographers.

    Until then, the construction of claim terms, including the term “isolated”, will remain a very fact-dependent exercise.

    If you have a specific prediction about the outcome of this case, anon, please be so bold as to make it plainly. Do you think that the Court will hold that all composition claims in the form “isolated chemical” are ineligible, regardless of how the term “isolated” is defined, whenever it can be shown that a similar “chemical” is found in nature? If you don’t think that, then what exactly was the point of your comment?

    While you’re pondering that, you can also yourself if the Supreme Court’s ruling will likely apply only to nucleic acid compositions? Or will the rule only apply to nucleic acid compositions that are found as sub-components of human chromosomes? Or will that rule only apply to nucleic acid compositions that are also found as sub-components of human “genes”? Was this use of the term “human” also a “shorthand for the commmon man”?

  140. “Not to be caught up in niceties,”

    If you have something to teach please put the niceties aside and just come out and say it. Most in this thread are trying to learn and understand a very complex art and the patent law being applied to it. So please be blunt and direct.

    Now, are you saying that ‘isolating’ a gene does not give man a claim to the isolated gene, because “isolating” the gene is not enough to foreclose a LoN or product of nature from the use of others for future innovation?

    I know that sounds confusing but like I said, I am here to learn so these questions have to be asked.

  141. I like Prof. Leftsin’s nice summary of the issues up through and including Chakrabarty.

    The problem with Funk Brothers is that it’s a terribly written and extremely short-sighted case which makes much more sense, analytically, as an obviousness decision than a 101 decision. Even as an obviousness case, however, it’s not entirely clear that the decision was correct on the merits.

    The holding in Funk Brothers appears to be that “packaged compositions of selected strains of naturally-occurring bacteria are ineligible for patenting, regardless of how non-obvious the strain selections are, because packaging is conventional.” It seems to me that the ramifications of that “analytical framework” are severe and, for the most part, have been correctly ignored by judges.

    It’d be nice if the Supreme Court took this opportunity to “clarify” Funk, just like it partially “fixed” another poorly written (and incorrect) decision in Prometheus (Diehr).

    I also have to disagree with the Professor as to the following statement:

    Mayo’s analytical framework – asking whether the patentee’s application of a law of nature goes beyond the conventional and obvious – is nothing more than Funk Brothers redux.

    While Mayo’s analytical framework may bear some resemblance to Funk Brothers, there’s quite a bit more going on in Prometheus (or less, depending on how you look at it). As I’ve noted for some years, the reliance on the “natural law” prohibition in Prometheus is a red herring. Two steps were required for infringement of Prometheus’ broadest claims. The first step was an old, conventional step of determining the level of a metabolite in a patient’s blood. The second step was a step of thinking about the patentee’s newly discovered “correlation” related to that measured level. That “correlation” was referred to by the court as a “phenomenenon of nature” (which it is) as well as a “law of nature” (a stretch, at least as the term is normally understood) but it could just as well have been any other novel abstraction. The result in Prometheus would have been the same: no claim. The reason is that novel ineligible subject matter can not be “rescued” merely by adding old, eligible subject matter.

    And here’s the analytical framework as set forth in Prometheus:

    If a law of nature is not patentable, then neither is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself. Slip Op. 8-9

    And therein lies the key: the “practical assurances that the process is more than a drafting effort designed to monopolize the law of nature [or any other ineligible subject matter]“. The reason Prometheus’ process failed the test is that it turned practitioners of the prior art (like Mayo clinic and other targets of Prometheus’ licensing scheme) into direct infringers when they thought about Prometheus’ patent-ineligible correlation (or, in the Supreme Courts words, when the doctors, “take those laws into account”; “use the laws appropriately [in] decision-making”; “draw an inference”; etc). In other words, as a “practical” matter, the claims “monopolized” the ineligible law of nature, at least from the perspective of otherwise lawful actors (i.e., doctors determining TG metabolite levels). Once you understand this key aspect of Prometheus, the Court’s requirement that the eligible steps in a process claim must be inventive (and not old/conventional) make perfect analytical sense.

    Now, let’s apply this with the composition claims at issue in Myriad. Let’s assume for the sake of argument that “law of nature” includes “naturally-occurring compositions”. Let’s also assume that the term “isolated” in Myriad’s claims is properly construed to encompass a sub-chromosomal fragment of nucleic acid comprising a defined sequence that is substantially free of contaminating cellular debris and molecules. In short, the claimed compositions do not encompass naturally occurring products.

    Where, then, is the “practical” monopolization of ineligible subect matter (“products of nature”) in this claim? What otherwise lawful actors are suddenly turned into infringers because they start thinking about ineligible subject matter, as was the case with Mayo’s doctors? The answer is: such people don’t exist as long as the claimed composition is, in fact, a novel composition.

    And therein lies the rub. In the case of compositions that are structurally defined and novel, the issues that arise in the Prometheus case simply don’t present themselves. If a composition claim actually prevents practitioners of the prior art from doing what they were doing, that is a question of novelty (and non-obviousness, to the extent the claim prevents practitioners from doing what would be obvious to do). Such a composition must be inherently reading on the prior art. And indeed, every brief filed by the ACLU has suggested that this has been happening. It’s a claim construction issue and an issue of novelty and enablement and (completely unlike the claims in Prometheus) 102 and 103 and the other statutes are perfectly suitable of handling it. Indeed, the USPTO has been rejecting claims that read on the prior art and which read on naturally-occurring compositions for a long, long time. They make mistakes, of course, because there are human beings involved (and that’s never going to change). But most such claims are rejected (more accurately, most such claims are never presented).

    My last point about the absurdity of Funk Brothers is simply that, if Courts adopt the approach suggested by the Professor, we open up a nightmarish can of worms where novel, non-obvious compositions of matter become ineligible under 101 merely because (defendants will argue) they differ from some “naturally occcurring composition” because they were modified by merely “conventional” process. It doesn’t take much foresight to see that such a test could have far-reaching consequences for compositions of matter other than
    “isolated genes” or “mixtures of bacterial strains.” That’s why I’m grateful that the Supreme Court seems to be looking at a very narrow question on cert, focusing only on “human genes”.

  142. When did math equations become laws of nature?

    In Diehr, though you can probably find precedent dating back at least as far as Euclid’s Elements.

  143. Xerox lost.

    So did Bilski and Prometheus.

    But Xerox lost a very different fight. Specifically, a fight to get the general public to adopt a definition of a term they’d already committed to.

    Patent law is indeed all about the meaning of words. But we are patent agents. Words are our servants, not our masters. If a word doesn’t have the definition we want, we either redefine it or choose a word that does.

    Besides which, we don’t really care what a word means to the general public, as long as it demonstrably has the right meaning to a person of ordinary skill in the art. And even if it doesn’t, we’re free to define it.

    The good news is that, unlike the general public, the Supreme Court hears arguments on both sides before coming to its decisions.

  144. “On the LoN, Flook, Funk and even Morse all required an inventive application.”

    Okay, I see the “Inventive Application” part as consistent with precedent. My problem has been the “inventive concept” requirement the Professor seems to be stating is demanded of all claims. There is a difference between a concept and an application in patent law, even an inventive one.

    On the other hand it seems quite odd that Flook is a characterized as a LoN case. Wasn’t Flooks ‘exception” a math equation?

    When did math equations become laws of nature?

  145. Good post. On reflection, it does appear that the point of the remand was the Law of Nature exception, not Product of Nature. I think the Federal Circuit may have missed that.

    I have long here argued as well that, since the Supreme Court has never held a patent invalid based on a product of nature exception as opposed to prior art, that the such an exception is mere dicta. Chakrabarty itself traces its origin, not to its own cases, but to an opinion of the patent commissioner whose reasoning was a bit suspect.

    On the LoN, Flook, Funk and even Morse all required an inventive application.

    Trouble? I have always agreed that DNA claims were in trouble.

    But, once again, excellent legal analysis.

  146. Malcolm,

    I have to laugh at your “fact-dependent… expected to vary dramatically” very wishful thinking.

    See the 9:48 am comment below.

    And as certain others have said, “WHATEV.”

  147. Judges on the Federal Circuit already knew their positions on 101. Your statements about why things arose based on an argument by an litigant or government dweeb are ridiculous. It illustrates you know nothing about how the Fed. Cir. works.

  148. It is to the advantage of the pharmaceutical industry, and it is to the advantage of patients who might benefit from drugs that are based on Open Reading Frames (ORF), to be vigilant and to combat the slipshod, garbled, and emotionally charged use of “gene patents.” The most famous example of this type of vigilance, was with the word, “Xerox.” Xerox corporation was aware that the word, “xerox” and “xeroxing” was becoming a typical word in the English language. To combat this degradation of the meaning of the word “Xerox,” Xerox Corporation took out full-page advertisements in various newspapers, that educated the public that the word, “Xerox” is a trademark (not an ordinary word). Thus, it is to the advantage of sick people, those with illnesses that are merely inconvenient, as well as those with illnesses that are fatal, that the meaning of the word “gene” be protected. Patent law is all about the meaning of words, and it is unfortunate that the lay public, as well as the judiciary, have arrived at a garbled understanding of the meaning of the word “gene.” THIS IS NOT LEGAL ADVICE

  149. mere isolation MAY not be enough

    The answer, of course, will depend on the definition of the term “isolated”, which is a fact-dependent question of law whose answer may be expected to vary dramatically in every case.

    I give the Supreme Court credit for certifying a very narrow legal question, even if it was the wrong question (see 9:37 am comment below).

  150. It’s less a garbled understanding and more of a shorthand for the common man.

    You do know we live in the era of soundbytes, right?

  151. I am not sure why anybody, for example, journalists, the lay public, or any court, thinks that the issue is “gene patents.” It is not the case that the issue is “gene patents.” While there might exist some patents to genes, it is the case that gene patenting is extremely rare. Moreover, it is not the case that patents to genes would be commercially viable. By definition, a “gene” includes ORFs and regulatory sequences. For the past few decades, what has been mainly patented is the ORFs, not genes. In other words, it is NOT the case that the patents are to nucleic acids that are extensively methylated (most, or perhaps all, genes are methylated). Furthermore, unless the nucleic acid in question contains its naturally occurring promoter or promoters, it is NOT a gene. Moreover, if the nucleic acid being patented does not include the naturally-occurring introns, then the nucleic acid is NOT a gene. Instead, if the patented nucleic acid does not include introns, it is something that is “man-made.” ORF means “open reading frame.” ORFs have a high commercial value. The main issue in the “gene patenting controversy” is that most of the parties involved have a garbled understanding of the meaning of the word, “gene.”

  152. I like the Prometheus angle on this – might seeking to patent something that is found in nature, without adding anything inventive on one’s own, be said to be stealing from the gods?

  153. Just as iron is a product of nature and melting/cooling it is in the art, the widget formed can be a new thing that is patentable along with its uses. My problem is – what is not a product of nature?

  154. Thanks Dennis. Well, that settles that then.

    As anon observes, mere “isolation” might not be enough, for the reasons the professor gives.

    Apologies to the professor. Evidently he understands both the science and the caselaw and I do not.

    Never mind. I’m here to learn, and I’m learning.

  155. Patent Bobo,

    Techdirt? Consider the source and please supply that short (very short) list of one modern advanced country that has seen the light and eliminated all IP laws.

    Just one.

    Please.

    If there were even just one, then that cause-correlation claptrap you are so fond of might, just might, be more than dust-kicking.

    Come back and c_rrp again real soon.

  156. Dr. Noonan has had several excellent articles with wonderful graphics about the structures claimed.

    However, even minor structural changes MAY not be enough given the 9-0 Prometheus decision, which is rather the point being made. Never mind the fact that the structures existing in nature has been admitted (albeit not in isolated form). But mere isolation MAY not be enough given the 9-0 Prometheus decision.

    Out and out specialist not required. Even English as a first language (evidently) not required.

    I suggest that you locate the right legal forest before you start examining individual trees MaxDrei.

  157. The Professor of Law writes above:

    “However ingenious the discovery of the BRCA loci may have been, the embodiment of the BRCA sequences in isolated DNA molecules was either conventional in the art, or, in the case of the removal of non-coding information from the mRNA transcripts that gave rise to the cDNAs, performed automatically by the cell.”

    Sorry but despite that assertion “conventional” and “automatic” I’m still deeply sceptical that the subject matter of the claim is found in nature (as opposed to something which did not exist till it was made by man). I suspect that the good professor doesn’t understand the science. Can we please have in this thread a reaction from a patent attorney who is an out and out specialist in the relevant scientific field and who is qualified and experienced enough to brief us on this esoteric issue?

  158. Thank you James. I believe when this particular quote is read in context, the use of “Inventive Concept” by the Court is limited to a 101 analysis for extra solution activity, pre or post, and not as a test for the whole claim at least at 101. In fact the only instance when the Supreme Court has ever used extra-solution activity (pre or post) analysis is in the case of claims beginning with a bare Court created judicial exception derived implicitly from the Congressional statute of 101, and then adding steps or claims to show application. In those Court cases it was determined by the Court that even with additional steps, the judicial exception was still pre-empted by the claims and in effect amounted to a claim on the judicial exception itself. So any implication from Dr. Lefstin’s paper of an “inventive application” requirement for the whole claim or all claims would be incorrect.

  159. Not to be caught up in niceties, but the question isn’t whether Man has made something – merely making again something made by nature is, to paraphrase Prometheus, Not Enough.

  160. “No.

    Man does like to play god too.”

    Seems like something created by man would be a product of man.

  161. “And [the Court’s precedents] insist that a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an “inventive concept,” sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself. Flook, supra, at 594.” Mayo, 132 S.Ct. 1289, 1294 (page 3 of the slip opinion).

  162. “In Mayo, the Court’s requirement that a claim must embody an “inventive concept” beyond the natural law was drawn from Parker v. Flook.”

    Did the Court actually make an “inventive concept” requirement in Mayo?

    If you answer is yes then please provide that exact quote, and where it was stated in the case so that I may read it for myself.

    Thank You

  163. “But Chakrabarty is about the patentability of living things, not products of nature.”

    Are not all living things a product of nature?

  164. Yes, there is a good chance that the cDNA survives but the isolated DNA doesn’t. You wasted a lot of ink telling us what is already apparent to any reader of the decisions. We’ve been talking about this stuff for like years now.

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