Guest post by Paul Cole, European Patent Attorney, Partner, Lucas & Co; Visiting Professor, Bournemouth University, UK.
New patent eligibility guidance issued by the USPTO (Andrew Hirshfeld, 4th March) will be the subject of a discussion forum this Friday 9th May.
Since the Kalo case, 333 U.S. 127 (1948) has been discussed in recent Supreme Court opinions including Chakrabarty, Myriad, and Mayo and is proposed to form the subject of an example forming part of that guidance, reflection on the true legal basis of the opinion is timely. Despite dicta in Chakrabarty and Myriad it is arguable that when viewed in its timeframe Funk concerned unobviousness not eligibility. If that view is correct, then the Kalo fact pattern should not be used as an eligibility example under current law.
The Kalo appeal was from a lengthy and careful opinion by Judge Walter C. Lindley in the Court of Appeals for the 7th circuit, 161 F.2d 981 (1947). At first instance the claimed subject matter which related to a composite culture of mutually non-inhibitive bacteria for inoculation of leguminous plants was held to be a product of nature and hence not patent-eligible. Judge Lindley reversed this finding in the following terms:
The mistake of the District Court, we think, lay in its conclusion that this did not amount to patentable invention within the meaning of the statute. Though the court recognized the value of Bond’s work, it thought that he had merely discovered a law of nature, whereas in fact the evidence is clear that what he discovered was that certain existing bacteria do not possess the mutually inhibitive characteristics which had previously prevented a successful commercial composite inoculant and that those uninhibitive species may be successfully combined. It was this contribution of noninhibitive strains which successfully combine that brought about a new patentable composition. This was application of scientific knowledge to things existing in nature and the utilization of them in a desirable composite product which had not been previously achieved but which he did achieve and of which the public now has the benefit.
We think this is clearly within the decisive definitions of patentable invention… Bond taught the method by which the composite is to be made and claims the product composed by that method, namely, a composite inoculant, comprised of different species of bacteria in sufficient numbers of each species. The noninhibitive property of bacteria was not previously known and when Bond discovered it and taught a successful composition of noninhibitive strains in combination of elements in one inoculant operating successfully on several different groups of legumes, he did much more than discover a law of nature. He made a new and different composition, one contributing utility and economy to the manufacture and distribution of commercial inoculants.”
A reader of Lindley is bound to wonder why such a conventional and straightforward opinion should have been selected for certiorari. An explanation of the significance of new effect in established patent law can be found as long ago as 1822 in Evans v Eaton 20 U.S. 356 (1822) and its evidential nature was explained by Justice Bradley in Webster Loom v Higgins
105 US 580 (1881), subsequently approved e.g. by Justice Brown in Carnegie Steel v Cambria Iron Co 185 US 402 (1902):
It may be laid down as a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention.
The majority opinion of the Supreme Court Kalo decision was authored by Justice William O. Douglas.
His starting position was that a law of nature cannot be monopolised and he recognised the existence of the relevant non-inhibitory bacterial strains as an example of such a law. He went on to hold that invention must come from the application of the law of nature to a new and useful end and that the aggregation of select strains of the several species into one product was an application of the newly discovered natural principle. He acknowledged that there was advantage in the combination because the farmer need not buy six different packages for six different crops. He could buy one package and use it for any or all of his crops. The packages of mixed inoculants held advantages for dealers and manufacturers by reducing inventory problems, and the claimed subject-matter provided an important commercial advance.
Against this strong evidential background what was the basis for his reversal? A key to his reasoning may be found in his earlier opinion in Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84 (1941) that (as the law then stood) novelty and utility were necessary but not sufficient requirements for patentability. In addition the claimed subject-matter had to reach the level of inventive genius that the Constitution authorized Congress to reward.
Several reasons supported the conclusion that the Kalo invention did not meet the standard of inventive genius. Each of the species of root nodule bacteria contained in the package infected the same group of leguminous plants that it always infected. No species acquired a different use. The combination of species produced no new bacteria, no change in the six species of bacteria, and no enlargement of the range of their utility. Each species had the same effect it always had. The bacteria performed in their natural way. Their use in combination did not improve in any way their natural function. They served the ends nature originally provided, and acted quite independently of any effort of the patentee. The claimed inoculant was not the product of invention unless invention borrowed from the discovery of the natural principle itself. It was hardly more than an advance in the packaging of the inoculants. Packaging was a simple step once the discovery had been made and all that remained were the advantages of the mixed inoculants themselves which were not enough.
The Funk opinion, amongst others, was relied on in Chakrabarty for the proposition that laws of nature, physical phenomena, and abstract ideas are not patent-eligible. As to the patentability of the Chakrabarty microorganism it was distinguished on the facts.
In Myriad Justice Thomas treated Funk as a patent-eligibility case, observing that the Bond composition fell squarely within the law of nature exception because the patent holder did not alter the bacteria in any way. Arguably such a position is inconsistent with the finding of Justice Douglas that the claimed product was an application of the principle discovered by Bond and hence implicitly patent-eligible. Classification of Funk as an unobviousness opinion accords with the reasoning of Justice Douglas whereas classification as an eligibility opinion is difficult to reconcile with his reasoning, especially against the background of his explicit reference to Cuno.
The USPTO example takes the position that the bacteria in Funk were not changed in any way, but that position is factually untrue. The naturally occurring bacteria have been the subject of a selection process to identify those strains that do not interfere, and the non-interfering strains have been cultivated and mixed. The claimed composition does not occur in nature, is produced by human intervention and has new utility. It is far from clear that the decision that was reached in 1948 would have been reached under the law as it exists post-1952 since the “flash of genius” test was rejected by Congress in favour of § 103.
For the above reasons it is submitted that the wiser course would be to delete Example D from the USPTO guidance.
Tons of great points here – guaranteed to be ignored by the anti-anons.
The points don’t fit into their policy sheets.
You should make us a list so we can have them all to put into our policy sheets.
You should pay attention.
No list needed – try reading instead.
[…] natural bacteria by way of distinguishing the case from Funk Brothers.[1] As Paul Cole’s recent post notes, the patentee had discovered that certain strains of bacteria could be mixed together without […]
The key point: when Funk Bros. was decided, there was no section 102 or 103. There was (what is now only) 101. For a long time, however, the courts construed the word “invention” to require more than just novelty, even though “new” and “useful” were the only words in (what was then) 101.
In 1952, Congress did its level best to destroy the word “invention” and replace it with 102/103. Read Chief Judge Rader’s opinion in CLS Bank.
So, Kalo was deciding the substantive meaning of a word that, after 1952, should have none.
I hate this mess the supremes have made by not reading the statute!
David, I somewhat agree. But see, link to patentlyo.com
Somewhat agree Ned?
Gee, who has been telling you this all along?
David, when considering the differences between the claimed subject matter and the prior art, is there any statutory basis in 103 for ignoring ineligible subject matter? How does one deal with printed matter, for example?
May I suggest that if the only difference is the ineligible, that the only recourse the PTO and the courts have is to shift to 101 and provide a test. One cannot simply ignore the ineligible per Prometheus.
“ How does one deal with printed matter, for example?”
Asked and answered Ned – many many many many times now.
How dare you act as if I have not presented this answer, given how many times you have run away from the conversations.
And, David, if only 102/103 apply, then there is no statutory basis for excluding a claim to a product nature newly discovered, particularly since §102(f) has been repealed.
Thus if one reads the statutes literally, they lead to a conclusion that is unacceptable from a constitutional perspective. Thus the courts have to construe the statutes in a way that avoids the constitutional problem.
“Thus the courts have to construe the statutes in a way that avoids the constitutional problem.”
That is not the only recourse, and surely if (especially in the patent arena, given the EXPLICIT delegation of authority in the Constitution) any such “interpretation” that amounts to re-writing (as would have happened in Bilski had Stevens not lost his majority position) would result in a violation itself of the doctrine of separation of powers.
This is no silly government appointment at the heart of this issue – this is the entire legal engine of innovation and something explicitly decided by our founding fathers in the very fabric of the constitution.
The Court (note the capital, as that is where the buck must stop) CANNOT create a new constitutional problem in their attempts to maintain their implicit writings and not let those writings become dead letters when it becomes evident that the 1952 Act stripped them of the mechanism of defining “invention” by the tool of common law evolution.
This is an area expressly given to Congress and the Court needs to have its Come to Jesus moment.
See link to urbandictionary.com
As if there truly was ever any doubt:
The context is present day law. The error is citing non-present day cases and law and merely presuming that they “translate” directly.
They do not.
“In 1952, Congress did its level best to destroy the word “invention” and replace it with 102/103. ”
“So, Kalo was deciding the substantive meaning of a word that, after 1952, should have none.”
You’re not the one that gets to decide if that word “should have none” or if it should (and does) have meaning. And neither is some random congress that meets throughout the years or the 1952 congress either, even if they really really want to. The USSC is, through their interpretation of the statute ivo the constitution itself. Apparently when Graham v Deere was being decided there was considerable concern that the supremes would outright undo congress’s attempt to take away “invention”‘s substantive meaning in 103. Similar happened with 101, except they simply interpreted 101 into compliance with the constitution. This interpretation of 101 by the supremes is nothing less than their attempt to rescue the statute from being outright, on its face, unconstitutional. If you don’t like it, then you can take it up with them. And if they are ever persuaded by you to declare 101 unconstitutional because it extends beyond inventions then I will be here to lol@u.
If the congress wants the word “invention” to have no meaning then they can dam well skippy amend the constitution.
“ And neither is some random congress”
Sorry 6 – the Founding Fathers thought otherwise. See Golan
(of course, if you actually cared about the law you would already have known this)
Reading the map is just not the same as writing the map.
(and yes, if the Court did deem that Congress erred, it would mean holding that the entire 35 USC 101 was unconstitutional – but you have failed to provide ANY type of sustainable legal logic to support your rather presumptuous conclusion – you need more if you want to play this game)
I’m not the one playing the power game re re. The ussc is, and they’re doing it legit. Again, if you don’t like it, don’t tell us about it. Tell the ussc about it. Seriously, we cannot help you in this regard, only the ussc can. Of course the congress could help you if you wanted to amend the constitution to fix the problem that underlies the problem you’re having, but that is never going to happen.
“ Of course the congress could help you if you wanted to amend the constitution ”
LOL – you need top check that document, as you got the players all mixed up. (Hint: Article I is powers delegated to Congress)
“Back to the majority opinion, it can be viewed such that when a law of nature is involves, as was here, the law requires a little bit more than the obvious such that the claim not preempt the law. We saw the same line of reasoning in Flook, Mayo, and in Bilski. What is sufficient is never explained, but it does suggest that obviousness is part of the answer.”
Quite right. Once one is possessed of the law of nature or empirical fact that certain species of Rhizobium are not mutually inhibiting, it is trivial to put them into the same package—an advance in the art of packaging(?). A trivial implementation of a law of nature is patent-ineligible. Flook, Mayo. This is definitely a § 101 case.
This is a cornerstone of the principle that a conventional and routine computer implementation of an abstract idea for a business method is not patent-eligible, a principle that will be mention in the upcoming Alice v CLS opinion (I predict).
For a discussion of clues to “What is sufficient is never explained” see:
Mayo v. Prometheus: No Patents on Conventional Implementations of Natural Principles and Fundamental Truths, [2012] EUR. INTELL. PROP. REV. 502 link to docs.law.gwu.edu
quoted with permission from,
Richard H. Stern
Consider the source – an individual with an agenda and a philosophical ends justify any means mantra if there ever was one.
Patent eligiblity and patentability were separated in 1952 Ned.
You STILL need to accept the change in law that happened at that time.
OK – how do you have pharmaceutical patents, then for known or natural products?
Paul: how do you have pharmaceutical patents, then for known or natural products?
If the products are “known”, then they aren’t patentable for all kinds of non-controversial reasons. Methods for using the known products may be patentable, however.
If the products are previously unknown products that exist “in nature” then by extrapolation from Myriad the answer is “you don’t have patents on them”. Myriad doesn’t address the general question, unfortunately, in a meaningful direct way. The opinion is very focused on DNA.
Consider: I claim a composition (useful as a dye) consisting of a highly pure molecule that I’ve synthesized, with the degree of purity bounded on both ends and set forth expressly in the claim, along with the mass of the composition. Is my claim ineligible when it turns out that some individuals in a colony of Lake Michigan smelt have fat sacs that comprise, on average, 3 molecules of the same molecule?
What’s the policy that would justify finding my claim ineligible? Can anybody articulate it?
“Myriad doesn’t address the general question, unfortunately, in a meaningful direct way”
Wrong.
Just because you refuse to understand does not mean that the question has not been addressed. Your Red Queen / Humpty Dumpty ways are shining through – Malcolm decrees that the reasoning is not meaningful or direct, so it must not be so (the ever slippery meaning of “effectively” comes to mind).
“Myriad doesn’t address the general question, unfortunately, in a meaningful direct way”
Wrong.
Then answer the hypothetical I presented, articulate the policy underlying your answer, show me where the Myriad opinion supports your answer, and show me where the Myriad opinion discusses the relevant policy.
That should be really easy for you. Unless you’re completely full of it.
Myriad has been fully discussed Malcolm.
The archives are working – I suggest that instead of spewing 30,000 words of mewling QQ, that you spend your time reviewing what I have already shared with you.
You should have paid attention the first time.
THE WOOD-PAPER PATENT, 90 U.S. 566, 23 L. Ed. 31 (1874)
“There are many things well known and valuable in medicine or in the arts which may be extracted from divers substances. But the extract is the same, no matter from what it has been taken. A process to obtain it from a subject from which it has never been taken may be the creature of invention, but the thing itself when obtained cannot be called a new manufacture. It may have been in existence and in common use before the new means of obtaining it was invented, and possibly before it was known that it could be extracted from the subject to which the new process is applied. Thus, if one should discover a mode or contrive a process by which prussic acid could be obtained from a subject in which it is not now known to exist, he might have a patent for his process, but not for prussic acid. ” Id. at 593-594.
Ned,
Take a small step to combine this with the reality that the universe is not static, and you may yet walk the path of enlightenment.
Paul, even from court’s opinion in Funk Bros., one could see a hint of the Wood Paper Patent: “We do not have presented the question whether the methods of selecting and testing the non-inhibitive strains are patentable. We have here only product claims. Bond does not create a state of inhibition or of non-inhibition in the bacteria. Their qualities are the work of nature. Those qualities are of course not patentable. ”
Douglas could equally had rested his opinion on the product of nature exclusion from Wood Paper, where the product itself was not eligible, but a process involving the product was eligible.
When claiming the product, more than the product must be claimed. The principle of Funk Bros. is that the product or law of nature itself cannot be the basis of patentability when claiming products.
Consider the printed matter exception with respect to a manufacture. The way the PTO applies it is by not giving the printed matter any weight when considering patentability. That is what Douglas said about a law of nature in Funk Bros. in connection with product claims. A process of extracting the product of nature, or of using it may be eligible — see, e.g., Diehr. But the product or law itself cannot be claimed and thus can be given no weight in a product claim.
“When claiming the product, more than the product must be claimed. ”
Think.
Through.
That.
Sentence.
Slowly.
“Consider the printed matter exception with respect to a manufacture.”
LOL.
As I have often asked Ned himself to do (and which it appears that Ned has never fully done so – incorporating as need be the exceptions to the judicial doctrine of printed matter), Ned’s invitation only serves to expose his own duplicity when it comes to Ned’s agenda against software patents.
“The way the PTO applies it is by not giving the printed matter any weight when considering patentability”
Wrong – again, ask why Ned refuses to recognize the exceptions.
One massive Ned FAIL – because Ned refuses to understand the concept in all of its meaning.
Ned,
That article is pure schlock. I found three errors within a two minute glance, including a misrepresentation of the Prometheus “dead letter” comment.
It is nothing but lemming chum.
Ned, did you just quote yourself and then respond to your own quote by saying “quite right”? See: link to patentlyo.com (comment 2.2)
If so, that’s pretty funny.
As for this: Once one is possessed of the law of nature or empirical fact that certain species of Rhizobium are not mutually inhibiting, it is trivial to put them into the same package—an advance in the art of packaging(?).
This “packaging” business seems a bit of a red herring. I understood the claim in Funk to be an inoculent comprising different Rhizobium species. I don’t think the claim covers a box containing different tubes where each tube comprises an isolated species.
Along the same lines, I don’t think anyone disagrees about the eligibility of a claim to a specific non-naturally occuring mixture of Rhizobium species, where those Rhizobium species are expressly identified and are shown by the applicant, in the original filing, to have the unexpected property “discovered” by the applicant. The utility of this “one size fits all” mixture seems substantial enough …
For a more pertinent example, contrast that situation with a mixture of of, say, two to five separately ineligible DNA molecules, where the utility of the mixture is its use in well-known methods for identifying the presence/amount of similar molecules in a cell or elsewhere (a utility that isn’t even recognized as a substantial utility under 101!).
No, MM, that was something sent me by Richard, and with his permission, I posted here. His views are entitled to some weight given that he was responsible for the government briefs in Benson and Flook, that have, with Douglas’s opinion in Funk Bros., laid the basis for modern 101 jurisprudence. Just awhile back he identified himself as the source of the MOT test that appears in Benson — actually a quote from Deener — that the Federal Circuit wanted to adopt as the exclusive test, and the Supreme Court endorsed, but not as exclusive.
No, MM, that was something sent me by Richard
Got it — I wasn’t sure where the quote began.
Well, we know know who to blame for the mess of 101.
Thanks Ned.
Ned, we know who Stern is. And we know that Lemley has taken over Stern’s role.
I will simply say that I don’t think that Stern’s opinions are patent law. I think they are politics.
Night, but there is a difference. I rarely agree with Lemley and I rarely disagree with Richard Stern.
Stern advised me to read and understand the Supreme Court cases. Best advise ever.
Ned, I agree that Stern is less wild than Lemley and that Stern bases his political arguments on his interpretation of the SCOTUS. And, I agree that Stern is the one that put us in the position we are in now.
But, again, Stern’s rhetoric has nothing to do with science or patent law. It is an attempt to limit eligibility. Stern should be lobbying Congress and not muddling patent law.
And, yes, Stern also told me to read all the SCOTUS cases, which I did. I am pretty sure I have read every SCOTUS case that has to do with a patent.
Stern is just more devious.
Look at the article posted in a foreign journal more closely.
Errors abound. It is no surprise that the article is nothing more than propaganda.
Ned, there are scientific facts that you cannot escape. You can smear them and damage the dialog, but you cannot escape them.
Information processing methods are inventions and have structure. If one doesn’t want patent protection for them, then go to Congress.
And in patent law, scope of enablement, a specification should contain only what is new, etc.
“Stern advised me to read and understand the Supreme Court cases. Best advise ever.”
You have not followed his advise completely Ned, as your ‘understanding’ is incomplete and heavily tainted by your propensity to see everything through the Ned-IMHO-law-Should-Be-Thus spectacles. The same spectacles that let you see 6 as an Einstein of patent law and examination and only let you see the “swagger” of Malcolm. The same spectacles that (still) prevent you from personally understanding the Nazomi case and personally prevent you from accepting the Black’s Law dictionary holding of Alappat that I have provided to you.
Reading and understanding are defeated when you refuse to do so completely, colored by your third party interests as they are.
I agree anon. Stern is more devious. He is old school where there is some shame for making outrageous arguments. Stern could not with a straight face make the arguments that Lemley made in his functional claiming paper.
“ but there is a difference. I rarely agree with Lemley and I rarely disagree with Richard Stern”
This statement exemplifies the bias that Ned brings to the table.
Whether or not the two are in fact similar is not important to Ned. What is important is only whether or not Ned can fit the writings into his pre-ordained agenda.
Ned fails when he cannot (or does not) realize the limits of his own lack of objectivity.
Proposed amendment to 35 USC 101:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, including any new and useful application, alteration, or combination of a law of nature, natural phenomena, natural product, or abstract idea, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
It is and always has been the sense of Congress that the subject matter of patents should be broad, including anything under the sun that is made by man. The patent laws and the subject matter of patents should be construed broadly to provide liberal encouragement to ingenuity. While it is the sense of Congress that the patent laws have always included this broad mandate, the present amendment is made to make explicit this broad reading and to specifically overrule certain court decisions that may be considered to conflict with the text, purpose,and intent of the patent laws. These cases include O’Reilly v. Morse, 15 How. 62, 56 112-121 (1854), American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 283 U.S. 11 (1931), and Funk Brothers Seed Co. v. Kalo Innoculant Co., 333 U.S. 127, 333 U.S. 130 (1948), Gottshalk v. Benson, 409 U.S. 63, 409 U.S. 67 (1972), Parker v. Flook, 437 U.S. 584 (1978), Bilski v. Kappos, 561 U.S. 177, 130 S.Ct. 3218 (2010), Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. __ (2012), Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. __ (2013), and Alice Corporation v. CSL Bank International, 572 U.S. __ (2014), to the extent these cases are considered to limit patentable subject matter under section 101 of Title 35. The phrase added to section 101 refers to “any…application, alteration, or combination of a law of nature, natural phenomenon, natural product, or abstract idea” and is meant to encompass any application, any alteration, and any combination, no matter how small or insignificant and regardless on any consideration of preemption of the law of nature, natural phenomenon, natural product, or abstract idea. If the invention includes anything beyond the literal law of nature, natural phenomenon, natural product, or abstract idea added by man it is patentable subject matter. As examples, unnaturally isolated natural products, unnatural combinations of unaltered natural products, and implemented computer software are patentable subject matter. It is the sense of Congress that the other conditions and requirements of Title 35 adequately protect the public interest against the interest of inventors and that, together with section 101, serve to promote the progress of the useful arts without further limitation.
I think there is a typo:
“regardless on any consideration of preemption of the law of nature”
I think you mean –regardless of any–..
With that: Ahmen and Make it So!
Bob, are you the second coming of Rich who thought he could write fundamental patent laws better than Thomas Jefferson?
In retrospect, Rich’s handiwork has all come a cropper, from 103, to 112(f) to 271(b) and (c) that were inartfully drafted and have been interpreted to require a change in the law that Rich clearly did not intend.
Rich was and is the worst example in history of a fox of the patent bar let loose in the chicken house of patent law.
I will oppose any effort that this become law.
Thanks Mr. Kettle.
Good luck with that, Bob.
I’ll let you know when the monkeys start flying out of my behind.
Scientists create “alien” life form with artificial genetic code
link to cbsnews.com
Dolly is not patentable subject matter. You heard it first here.
NO, I didn’t. I saw it on the CAFC website. 🙂
D’oh!
Well, DanH, while I too heard it first elsewhere, here, at least, I did hear it first from your post. 😉
link to cafc.uscourts.gov
Lots of interesting news these past few days. Thanks, DanH.
In re: Roslin Institute (Dyke, Moore, Wallach)
This is the right result, of course, because the compositions created by the patent-eligible (and already patented) methods are indistinguishable from existing animals. Might as well try to patent an unalterered bacterium that you found.
For better or worse, the Federal Circuit cites the very same Funk Brothers case discussed here, glossing over the fact (just as the majority in the Supreme Court did) that there was no indication in the record that the claimed mixture of bacteria was found in nature.
Roslin’s argument here was incredibly weak. In a nutshell, their argument was “Man made it, therefore it’s eligible.” That’s a non-starter, when the thing you made is simply a copy of something that you didn’t make.
Roslin also attempted to argue that their clones were necessarily different from the parent, due to the manner in which they were created and the inevitable effect of the environment and chance on the development of the embryo. But alas — none of those structural differences were recited in the claims. Boo hoo hoo! Sound familiar?
Yeah, I’m no biologist, but that case looked exceptionally easy to me.
I also thought the Funk Brothers discussion was interesting, for the reasons you mention. That’s one of those cases that stands for a (quite reasonable, in my view) proposition of law that doesn’t quite fit with the facts of the case. Benson is another.
“In a nutshell, their argument was “Man made it, therefore it’s eligible.” That’s a non-starter”
LOL _ funny that, that was your argument with me in the Myriad case before the Court rendered its decision.
funny that, that was your argument with me in the Myriad case
No, that wasn’t my argument. And I’m not going to waste everybody’s time proving again that you’re an ignorant illiterate a—wipe.
LOL – take that up with the guy who kept pressing you on how you were going to enforce a patent on something that was effectively the same thing that could be picked up from the ground (or the stomach of an iguana, or the underside of barnacles in the deep Atlantic, or any other number of inane examples you kept on coming up with.
You can’t even remember your own spin. Hilarious.
Another interesting petition for cert:
link to supremecourt.gov
Rule 52(a) of the Federal Rules of Civil Procedure provides that in matters tried to a district court, the court’s “[f]indings of fact . . . must not be set aside unless clearly erroneous.” The question presented is as follows: Whether a district court’s factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Rule 52(a) requires.
This was a pretty stunning Fed Cir reversal where numerous facts supporting the defendant’s (and the district court’s) construction were all but waved away by a judge (Linn) who appeared completely ignorant of the technology and how a skilled artisan would construe the claim. More details in the prior post here, particularly in the comments (e.g., comment 16):
link to patentlyo.com
MM, just reading through your post and the opinion, I find that I agree with you that Linn basically decided this fact based claim construction case on himself on appeal, and that he was probably wrong. The only disclosure was of NADPH, and that was part of the definition given in the patent. The patentee walked away from his own definition to cover the later invention of a different co-product developed by the defendant, NADH.
I wonder, though, whether the Supreme Court is going to get involved here because they too would have to assess the facts to see that the Feds were wrong. Scalia, for one, is uncomfortable with doing that kind of assessment at the Supreme Court level.
In other news, I notice that Advanced Biological Labs — perhaps the most masochistic entity in the history of patent law — has invited the Supreme Court to take a deep whiff of their ineligible claim to a database of therapies.
link to supremecourt.gov
Whether claims to a computerized expert system and method for evaluating treatment options for complex medical conditions which necessarily requires the use of computer, are patent eligible since they do not preempt all practical applications of an abstract idea of “guiding the selection of a therapeutic treatment regimen for a patient with a known disease or medical condition
It requires a computer, folks! Totally different from other old technology for storage and retrieval of organized information like an encyclopedia of therapies which everybody knows is, like, so totally eligible for patenting.
Already jumping to “in other news” when you have not yet provided any (substantive) comments on the merits of the several items in this thread?
Why the rush to get away?
you have not yet provided any (substantive) comments on the merits of the several items in this thread
Get your medication adjusted, TB.
(yawn) – an empty post Malcolm.
@ttaboy.
It requires a a crank and a comb, folks! Totally different from other old technology for cleaning and picking seeds our of cotton like using your fingers and manually combing through the cotton which everybody knows is, like, so totally eligible for patenting.
It requires a a crank and a comb, folks!
Les knows a lot about cranks.
Oh dear! 🙁
MM, the real test is set forth in Bilski: method absent the computer eligible: is it seeking to claim a notoriously old, and fundamental principle or a law of nature? If so, the recitation of the computer is not enough.
Can you tell us whether the subject matter being claimed is notoriously old and fundamental?
Ned: the real test is set forth in Bilski
Because claims come in fundamentally different flavors, I am 100% certain that there are more tests than whatever test was “set forth” in Bilski. Here’s what I wrote in a previous thread and there isn’t much more to say about this incredible piece of junk. You’ll also recall that the attorney who filed the petition in this case (Robert Sachs) is a member of that small but extremely vocal crew attorneys who simply refuse to admit or discuss the facts about Prometheus’ claims and what Prometheus was atttempting to do with their claims. And we don’t really need to speculate about the reason for their failure in this regard. Everybody knows what these people are fighting for and why. It has nothing to do with “principle”. If they were “principled” they wouldn’t have such trouble admitting the basic facts.
My thoughts on these particular claims have already been expressed elsewhere, e.g., link to patentlyo.com
As a friendly reminder, it’s now the year 2014. For patent law purposes, the generic “computing device” is as ancient as the generic wheel. Tacking the phrase “computer” (or any similarly non-inventive combination of old, conventional junk) to an information processing method described in generic terms (e.g., “determining”, “comparing” “sorting” “ranking” etc) should not be considered sufficient to turn ineligible subject matter into eligible subject matter. And it shouldn’t have been sufficient 40 years ago. Receiving, storing, processing and transmitting information is what programmable computers do. That’s why humans invented computers. Computers are proxies for information processing that humans would otherwise need to do themselves or with pencil and paper. Saying that “a computer can receive/store/process/transmit this information too if you program it to do so” is not “inventing.” At best, it’s stating the obvious.
The issues are very similar to the situation where an “inventor” is appending a “new” “non-obvious” mental step (or disembodied idea) to an old conventional step (the issue in Prometheus v. Mayo). All that’s happening there is that the claim to the ineligible subject matter is being limited to a field (i.e., the field represented by the prior art step). That sort of limitation isn’t sufficient to confer eligibility because people practicing the prior art are impermissably constrained — they become infringers when they think about the “new” fact/idea/natural law. Likewise, when a description of some “new” “non-obvious” determination method is appended to “a computer” without any description of the actual structural improvements to the computing device, people who use programmable computers (again — ancient devices) for their intended purpose (information processing) become infringers when they apply the computer to a particular field, even if they are first people to ever successfully reduce to practice the application in question.
The particular claim at issue in this case is so incredibly junky on so many levels that terms like “appalling” are far more appropriate than “ineligible.” It’s like someone getting a claim to a “new car” wherein the car contains a previously undescribed collection of books in the back seat. This is your broken patent system crying out in agony right here. You don’t need to be a patent attorney (or a “computer expert” — LOL!) to look at claims like this and understand that something has gone terribly wrong. Unfortunately for everyone, this nonsense has been going on for years.
Ah, yes. This is that non precedential case that I first brought up in a different thread.
BTW, I don’t think the issue is purely mental steps. I think the issue is what the algorithm is doing. If it does nothing more than produce a number or information, then there is a problem.
BTW, I was once deposed by a very aggressive Robert Sachs. I wonder if this Sachs is that Sachs.
“If it does nothing more than produce a number or information, then there is a problem”
Sort of like cryptography Ned?
You may want to have a little chat with Mr. Perry before his oral argument to the Supreme Court.
Oops, too late. D@m, what would Stern say?